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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Surviving Patent Reexamination

Posted On: Apr. 18, 2011   By: Scott A. McKeown
oddsHow Likely Is It to Recover At least 1 Original Claim?  

One of the factors considered by district court judges in deciding whether to stay a case pending patent reexamination is the likelihood that the proceeding will simplify issues for trial. Typically, litigants will cite to published USPTO reexamination statistics in the hopes of persuading the court that simplification will/will not result.

For example, recent ex parte reexamination statistics indicate that all claims are confirmed in 23% of cases, all claims cancelled in 12% of cases, and some claims amended in 65% of cases. As such, defendants will argue that in 77% of cases there are claim changes (cancellation + amendment). On the other hand, plaintiffs will take the other extreme and emphasize the 12% of cases in which all claims are cancelled– reasoning that there is a very low likelihood that the case will be completely disposed of via patent reexamination. However, in deciding whether or not stay a district court litigation pending patent reexamination, perhaps a more helpful statistic to courts would be the % of cases concluding with at least 1 confirmed claim.

Since the USPTO does not provide such statistics, I have compiled them for the last 12 months (Feb. 2010 – Feb. 2011). As shown below, I have broken out ex parte and inter partes cases separately. Confirmed claims were those claims that were actively reexamined and indicated as confirmed in the reexamination certificate, or claims amended to include dependent claims only. The charts below represent the 807 certificates printed from February 2010 – February 2011.

Ex Parte Patent Reexamination 59% of Cases Have 1 Claim Confirmed

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Inter Partes Patent Reexamination 41% of Cases Have 1 Claim Confirmed

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These survival rates demonstrate that there is much more to the story than the all-or-nothing USPTO statistics, and the combined cancellation/amendment figures of defendants.

2 Responses to “Surviving Patent Reexamination”

  1. Paul F. Morgan says:

    Those claims included in these statistics as re-confirmed as patentable over the newly cited art that are “claims amended to include dependent claims only” are not blessed Scott-free [pun intended], as they are subject to statutory “intervening rights.” Other confirmed claims here may not necessarily include the broadest and most easily proven infringed claims. Even ignoring both such caviats, and viewing these new statistics in their most favorable light for patent owners, they still show that in more than half of current inter partes reexaminations not one challenged claim survives, which seems like vastly better odds for defendants than corresponding jury trial challenges based only on prior art patents and publications [a statistic I would like to see more reliably reported].

  2. True, much better odds for defendants in Alexandria Virginia relative to Marshall Texas.

    Intervening rights may be a tough sell if the dependent claim is placed in independent form (always had that scope anyway). Of course, as I have pointed out here repeatedly, there is rarely a reason to submit such an amendment in patent reexamination.