(click to enlarge)
One of the threshold questions in considering patent reexamination, whether a patent owner, or third party is:
How long will it take?
This question is also the subject of significant debate when litigants in a concurrent district court proceeding argue for/against staying the proceeding. Defendants will often point to the published PTO statistics which identify a 24-28 month pendency to conclusion (NIRC). Conversely, Patentee’s point out that these published number do not account for appeal processing. As can be seen from the chart above, reexaminations that are contested through to appeal, are taking roughly 5 years (ex parte or inter partes). Thus, it is quite disingenuous for defendants that file an inter partes reexamination request to argue that patent reexamination will be completed within the PTO’s published time frame. Certainly, if the Office confirms or allows claims within that published time frame, the defendant is not going to just walk away to resume the litigation, but appeal, likely up to the CAFC. CAFC pendency is not accounted for in the above chart, but likely adds another 8-12 months to a true “conclusion.”
With almost all inter partes reexamination being involved in concurrent litigation as shown below, courts would be wise to catch on to this bit of “creative advocacy.”