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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.

Archive for the ‘Empirical Analyses’ Category

Patent Reexamination is Getting Faster

Posted On: Mar. 4, 2013   By: Scott A. McKeown
speedDecrease in Patent Reexamination Docket Leads to Faster Orders

Back on September 16, 2012, the America Invents Act (AIA) replaced the old inter partes patent reexamination system with a new proceeding, known as Inter Partes Review (IPR). Since petitions for IPR are not handled by patent examiners, but instead, the judges of the Patent Trial & Appeal Board (PTAB), the USPTO’s Central Reexamination Unit (CRU) has experienced a significant cut to their incoming workflow. This change in workflow, coupled with the fact that requests for ex parte reexamination are also off by roughly 50% of pre-AIA filing rates, has resulted in an apparent benefit for patent challengers.

Ex parte patent reexamination requests are being processed faster.

Read the rest of this entry »

Examiner Claim Confirmations in Inter Partes Patent Reexamination, What Happens on Appeal?

Posted On: Oct. 1, 2012   By: Scott A. McKeown
PTAB reversalHow Often Are Examiner Claim Confirmations Upheld in Inter Partes Patent Reexamination

For challengers in an inter partes patent reexamination (IPX), confirmation of patent claims by the examiner can pose a significant set back. That is to say, the challenger would be estopped (35 U.S.C. § 317(b)) from raising invalidity defenses that “could have been raised” relative to the confirmed claims during the IPX proceeding, in a later court proceeding.

Although IPX is no longer available as an option to patent challengers, the rate of affirmance by the PTAB in such situations will still be of significant interest in the years to come thanks to the avalanche of IPX filings submitted to the USPTO earlier this month.

Based upon the outcomes of the IPX decisions issued so far in 2012, challengers have about a 50/50 chance of reversing at least one claim of the examiner confirmation. Read the rest of this entry »

Record Patent Reexamination Filings in 2011

Posted On: Dec. 6, 2011   By: Scott A. McKeown
reexamination-statisticsUSPTO Considers Record Number of Requests for Patent Reexamination 

In fiscal year 2011 the USPTO initiated a total of 1133 patent reexamination proceedings (both ex parte and inter partes). The 2011 tally represents an overall increase in filings of about 7% relative to 2010 numbers.

Interestingly, while ex parte filings receded slightly, inter partes filings surged by 33% relative to 2010. In FY 2011 374 requests for inter partes patent reexamination were filed.

USPTO statistics for 2011 are found (here)

Ex parte patent reexamination proceedings are typically disfavored over inter partes reexamination proceedings as being too one-sided, and historically biased in favor of patent holders. Likewise, as patent reexamination is increasingly employed as a litigation tool, it is not surprising that the more robust proceeding is now Read the rest of this entry »

Recent Patent Reexamination Appeal Results (FY 2011)

Posted On: May. 31, 2011   By: Scott A. McKeown
statistics-arrow2011 Patent Reexamination Appeal Results (Q1-Q3)

As discussed last week, every quarter, the BPAI releases general statsistics on patent reexamination appeals.  As promised, I have now gathered statistics that are specific to the type of reexamination proceeding. (Special thanks to the USPTO for providing me these figures).

Below are statistics from October 1, 2010 through May 20, 2011.  Note that Q3 of FY 2011 has not yet closed, so, these statistics to not quite cover all of Q1-Q3.  First let’s look at the overall statistics for 2011. Read the rest of this entry »

Appeal Results in Patent Reexamination

Posted On: May. 18, 2011   By: Scott A. McKeown
oddsHow do Appellants Fare on Appeal in Patent Reexamination?

Every quarter of the fiscal year, the USPTO releases a statistical analysis of the number patent reexamination filings and concluded proceedings. In addition to this helpful information on new filings and concluded proceedings, the USPTO releases appeal statistics that explain the results of appeals art unit 3900, the Central Reexamination Unit (CRU).

An analysis of the appeal results from the CRU show a slightly higher affirmance rate and lower reversal rate relative to the rest of the examining corps. Below is a chart providing the outcome of all reexamination appeals from 2009 through April 2011. Read the rest of this entry »

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). Read the rest of this entry »

What Happens After A Case is Stayed Pending Patent Reexamination?

Posted On: Mar. 21, 2011   By: Scott A. McKeown
Looking_Back42% of 2007 Cases Remain Stayed

Patent reexamination parallel to a district court/ITC litigation is often initiated in an attempt to stay the more cost prohibitive court proceeding. Court’s will stay the ongoing litigation pending the patent reexamination outcome in the interests of judicial economy.

But, what happens to these cases? Are they ultimately dismissed altogether? Do the majority of these cases resume? Do the answers to these questions vary based upon the type of patent reexamination request?

In 2007, 81 cases were stayed pending patent reexamination. Looking at the status of these cases today, long term results demonstrate a significant advantage for defendants.  Read the rest of this entry »

SNQ Rates in Patent Reexamination

Posted On: Jan. 24, 2011   By: Scott A. McKeown

                                                                                                                          Inter Partes SNQs Outpace Ex Parte 2:1 

Untitled

Looking back on 2010 patent reexamination filings, the mean number of Substantial New Questions of Patentability (SNQs) presented differs based upon the type of reexamination proceeding.  For ex parte patent reexamination, the mean value is 8.7 SNQs per request, for inter partes patent reexamination the number is 17.3 SNQs per request. The median values are 6 for ex parte patent reexaminations and 11 for inter partes patent reexamination. Of course, these numbers are unlikely to surprise most practitioners.

For example, ex parte patent reexamination may be requested by a patent owner. In such situations there is certainly little motivation to bury the USPTO in reasoned statements to undermine patentability (IDS filings are another issue altogether). More importantly, requesters of ex parte patent reexamination are not bound by the estoppel provisions of inter partes patent reexamination. Read the rest of this entry »

Patent Reexamination Filings at All Time High

Posted On: Nov. 9, 2010   By: Scott A. McKeown
uspto_logoMarked Increase in Patent Reexamination Filings for Fiscal Year 2010

With September marking the end of fiscal year 2010, the USPTO has released year end statistics for patent reexamination operations. A total of 780 ex parte patent reexamination filings were made in fiscal 2010.  This is an 18% increase over 2009 filings figures, and an all time record for such filings. (report here)

Inter partes patent reexamination filings for fiscal 2010 totaled 281. This is a 9% increase over 2009 filings, and also an all time record for such filings. Roughly 70% of these filings are related to a co-pending litigation. (report here)

As to operational statistics of the Central Reexamination Unit (CRU), highlights include a reduction in the delay to a first action on the merits (FAOM). For example, in 2007, the average time from filing of a request for patent reexamination to FAOM was about one year for ex parte patent reexamination. This pendency has decreased to 7 months for 2010. (report here)

For insight into the post grant/litigation strategies driving the year-over-year increase  Read the rest of this entry »

U.S. Based Filers Dominate Patent Reexamination

Posted On: Aug. 2, 2010   By: Scott A. McKeown
reexamreqs(click to enlarge embedded images)

Patent reexamination has evolved into a highly effective risk management tool for organizations faced with potential patent infringement liability. This post grant review mechanism of the USPTO is increasingly employed not only as a true alternative to costly patent litigation as originally intended by Congress, but also as a parallel track procedure offering strategic advantage relative to a concurrent litigation.

Still, some organizations outside the U.S., most notably the Japanese, appear to be operating in accordance with outdated perceptions as to the strategic value and efficacy of modern day patent reexamination.  Read the rest of this entry »