In considering whether or not to stay a parallel litigation in view of a pending patent reexamination the court will consider several factors. One of the more hotly contested factors is whether the stay will unduly prejudice, or present a clear tactical disadvantage to, the non-moving party.
While delay is common to all stayed cases, the degree of delay caused by patent reexamination can be considered prejudicial. For example, it has been argued, successfully at times, that a delay that is not merely lengthy, but potentially indefinite is prejudicial to the non-moving party. For this reason, especially when it comes to inter partes patent reexamination, the average length of the proceeding can be instructive to the Court.
Hoping to convince the Court of a prejudicial delay, Patentees will argue that inter partes patent reexamination takes on the order of 5-7 years to complete through appeal. Defendants, on the other hand, will cite to published USPTO statistics that indicate inter partes patent reexamination pendency to be an average of 36 months, including appeal.
So, which party is manipulating the truth?
In order to understand the USPTO statistics, it is important to consider the limited data set of inter partes patent reexamination. Since its inception in 1999, there have been only 1200 inter partes reexamination requests filed. Of those 1200, only 253 have been concluded. Of those 253 concluded cases, only 29 have concluded after appeal to the BPAI or CAFC.
Only 29 decided appeals in 12 years of practice, the first of which reached the CAFC in January 2011.
So, while the USPTO is certainly reporting accurate numbers, the overall average is skewed by the 224 proceedings that have terminated prior to appeal (close to 90% of the concluded cases).
As shown in the chart below, (Click to Enlarge) when calculating separate averages for cases that have ended prior to appeal, as compared to those that concluded after appeal, the difference is quite significant.
So, in essence, defendants arguing the 36 month figure are misleading the court. That is to say, if the disputed claims are confirmed/allowed, the defendant has the sole power (by virtue of appeal right that will almost certainly be exercised) to convert a 36 month proceeding to one that has historically lasted up to 5 years or more.
Still, this silly numbers game persists in virtually every dispute over whether or not to stay a parallel court proceeding pending inter partes patent reexamination.