Historical Patent Reexamination Statistics Belie Modern Practices

When considering whether or not to stay a parallel litigation in view of a pending patent reexamination a district court will consider several factors. While delay is common to all stayed cases, the degree of delay caused by patent reexamination can be considered prejudicial. 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, citing those cases that have been fully contested 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. (As pointed out previously, the 36 month statistic is skewed by the small number of completed inter partes patent reexaminations that have been fully contested through appeal).

However, regardless of the statistical theory advanced to the court, what neither theory considers is that historical statistics are weighed down by years of past USPTO practices. As one plaintiff found out recently, the USPTO has greatly streamlined the processing of inter partes patent reexamination relative to past practices.

In LG Electronics USA Inc. et al. v. Whirlpool Corp. et al. (DCNJ), the Court denied Whirlpool’s bid to stay the action last January pending inter partes patent reexamination of the patents in suit. The Court determined at the time that the reexaminations could very well take more than five years and the motion was denied without prejudice.

More recently, Whirlpool was successful in securing a six month stay. Thereafter, LG requested reconsideration. In considering the request, the Court noted:

[I]n its motion for reconsideration, LG insists that the Court was under a false impression that the reexaminations were moving quickly [when deciding to grant the six month stay] and that a final determination is imminent. LG would have the Court ignore what has actually taken place and substitute statistical evidence of the average pendency of inter partes reexamination. This argument is questionable at best. In its February 2011 opinion denying a stay of the case, the Court relied on a prediction that reexamination could take longer than five years. Specifically, in its January opposition brief, LG noted that the average pendency of inter partes reexamination was over 36 months, not including appeal.

In its opposition to the second motion to stay, and in its current brief to the Court, LG offers the same argument, namely that the entire reexamination process, including all appeals, is statistically likely to take as long as four years. Statistical evidence is clearly unconvincing in the face of an actual timeline. It became apparent that reexamination had proceeded much faster than expected, a fact the Court noted during the October 4, 2011 hearing. In particular, three of the four reexaminations have rendered actions closing prosecution and have issued right of appeal notices in under 12 months, far short of LG’s 36 month prediction.

(emphasis added) full decision here

It may be that the the Court was interpreting LG’s 36 month prediction to refer to the examination phase alone. (i.e., “not including appeal”).  Actually, the 36 month figure is published by the USPTO is the average time to NIRC. (so, it does include appeals, but these numbers are skewed as explained in the link above)

Still, statistical debates aside, the issuance of a RAN within 12 months is a significant improvement over past IPX time lines.