Reexamination Filing Surge Dismissed as Speculative

Back in September, I explained that the USPTO received an unprecedented number of reexamination filings in the closing days before the September 16th. This surge was a result of several factors: First, the fee for ex parte patent examination was jumping from $2520 to $17,500 as of the 16th;  and, as a result of the one year anniversary of enactment of the America Invents Act (AIA) on the 16th, September 15th was the last day to file a request for inter partes patent reexamination.

Currently, the Central Reexamination Unit (CRU) is working through the bolus of filings, still trying to get them all docketed and reviewed within the 90 day statutory period. Seizing upon this influx of work, a Patentee recently argued against staying their district court proceeding pending inter partes patent reexamination — arguing that the USPTO process would now be much slower.

In Polaris Industries v. BRP US Inc. and Bombardier, the Court dismissed this argument, explaining that:

Regarding the length of the reexamination process, Polaris argues that the recent influx of requests for reexamination at the PTO will cause extraordinary delay. The Leahy-Smith America Invents Act (the “Act”) amended the inter partes reexamination process for all requests filed after September 15, 2012. . . . Because of this deadline, the PTO received an unusually large volume of reexamination requests in September 2012.  . . ., Polaris argued that this high volume of requests will cause the PTO’s reexaminations of the ’285 and ’923 patents to extend to 7 to 10 years.

 However, the actual effect of the Act on the PTO’s reexamination process remains to be seen. See Inogen, Inc. v. Inova Labs, Inc., No. SACV 11–1692–JST, 2012 WL 4748803, at *3 (C.D. Cal. Mar. 20, 2012) (noting reluctance to rely on current reexamination statistics given the Act’s amendments). The court in Inogen posited that because the Act raised the threshold for granting requests for inter partes reexaminations (termed “inter partes reviews” under the Act), the PTO may actually grant fewer requests in the future. Id. Given the uncertainty of the PTO’s future workload, Polaris has not provided persuasive evidence that the reexaminations of the ’285 and ’923 patents will be pending for nearly a decade. On the other hand, BRP promptly requested the reexaminations after the dispute between the parties emerged, and BRP has not engaged in improper litigation tactics that might otherwise warrant declining a request for a stay.

As I pointed out previously, there will almost certainly be a short term slowing at the Central Reexamination Unit (CRU) while the bolus of filings is processed; however that affect should be short lived. This is because there are far fewer filings coming in the door now that the fees for ex parte reexamination have been drastically increased and inter partes patent reexamination is no more.  (Note that the new PTAB trial filings do not go to the CRU)