Request Ex Parte Patent Reexamination, Lose, RepeatFor Patent Owners, one of the more frustrating aspects of ex parte patent reexamination is that the experience can be never ending. That is to say, even when an ex parte patent reexamination is favorably concluded, the same challenger can simply refile a second request to take another shot at the patent. Of course, the second request must present new, non-cumulative questions of patentability. Still, as the SNQ standard is a relatively low bar, seriatim filings are fairly commonplace. (In inter partes patent reexamination, estoppel provisions effectively prevent this tactic).Practically speaking, in the case of a parallel litigation, seriatim requests are not viewed favorably by courts. After all, you can’t simply present new invalidity contentions in court should the first set fail.Recently, in Voda v. Medtronic Inc., et. al. (OKWD) (here) the defendants were able to secure a stay pending a first request for patent reexamination. Shortly thereafter, the reexamination concluded favorably to the Patent Holder and the stay was lifted. Next, the defendants filed a second request for ex parte patent reexamination, and then a third request along with a second motion to stay the case. The court denied the second motion to stay, explaining: The court finds the first factor weighs against granting a stay. The first reexamination request resulted in a fourteen-month delay, and notice of the USPTO’s decision on that request was further delayed by defendants’ filing a second ex parte request for reexamination. Moreover, defendants’ filing of the third reexamination request and concomitant request for a stay has already resulted in additional delay as the court had to reschedule the status conference set for January 2011. Simplification of the issues to be tried in this action is likely to occur only if the USPTO issues a decision rejecting the patent’s claims. Given the recent confirmation of the ‘213 patent, that outcome is not certain and therefore this factor does not weigh in favor of granting a stay. Finally, defendants’ argument that this matter is in its early stages ignores the fact that the case has been pending for two years. This factor, therefore, also weighs in favor of denying defendants’ second motion to stay. (emphasis added)USPTO statistics indicate that inter partes patent reexaminations are far more effective for Requesters (i.e., claims amended and/or cancelled). Of course, such proceedings are not available for all patents, as was the case in Voda.The greater success rate of inter partes patent reexamination is often attributed to Requester participation; yet, this only be  part of the story. Due to the estoppel provisions of inter partes patent reexamination, the number of SNQs presented relative to ex parte patent reexamination tend to be higher. In other words, there is no “holding back” of art as is often the case with initial ex parte filings. Additionally, inter partes requests tend to be of a much higher quality due to the estoppel risk involved.For those Requesters seeking to employ an ex parte patent reexamination for stay purposes, the first shot might need to be your best shot.This case was brought to my attention by the great Docket Navigator.

For Patent Owners, one of the more frustrating aspects of ex parte patent reexamination is that the experience can be never ending. That is to say, even when an ex parte patent reexamination is favorably concluded, the same challenger can simply refile a second request to take another shot at the patent. Of course, the second request must present new, non-cumulative questions of patentability. Still, as the SNQ standard is a relatively low bar, seriatim filings are fairly commonplace. (In inter partes patent reexamination, estoppel provisions effectively prevent this tactic).

Practically speaking, in the case of a parallel litigation, seriatim requests are not viewed favorably by courts. After all, you can’t simply present new invalidity contentions in court should the first set fail.

Recently, in Voda v. Medtronic Inc., et. al. (OKWD) (here) the defendants were able to secure a stay pending a first request for patent reexamination. Shortly thereafter, the reexamination concluded favorably to the Patent Holder and the stay was lifted. Next, the defendants filed a second request for ex parte patent reexamination, and then a third request along with a second motion to stay the case. The court denied the second motion to stay, explaining: 

The court finds the first factor weighs against granting a stay. The first reexamination request resulted in a fourteen-month delay, and notice of the USPTO’s decision on that request was further delayed by defendants’ filing a second ex parte request for reexamination. Moreover, defendants’ filing of the third reexamination request and concomitant request for a stay has already resulted in additional delay as the court had to reschedule the status conference set for January 2011. Simplification of the issues to be tried in this action is likely to occur only if the USPTO issues a decision rejecting the patent’s claims. Given the recent confirmation of the ‘213 patent, that outcome is not certain and therefore this factor does not weigh in favor of granting a stay. Finally, defendants’ argument that this matter is in its early stages ignores the fact that the case has been pending for two years. This factor, therefore, also weighs in favor of denying defendants’ second motion to stay. (emphasis added)

USPTO statistics indicate that inter partes patent reexaminations are far more effective for Requesters (i.e., claims amended and/or cancelled). Of course, such proceedings are not available for all patents, as was the case in Voda.

The greater success rate of inter partes patent reexamination is often attributed to Requester participation; yet, this only be  part of the story. Due to the estoppel provisions of inter partes patent reexamination, the number of SNQs presented relative to ex parte patent reexamination tend to be higher. In other words, there is no “holding back” of art as is often the case with initial ex parte filings. Additionally, inter partes requests tend to be of a much higher quality due to the estoppel risk involved.

For those Requesters seeking to employ an ex parte patent reexamination for stay purposes, the first shot might need to be your best shot.

This case was brought to my attention by the great Docket Navigator.