USPTO statistics demonstrate that Patent Owner's fair much
better in ex parte patent reexamination as opposed to inter partes patent
reexamination. Current statistics indicate that all claims are canceled in
patents subject to ex parte reexamination in 12% of cases, while the same
statistic stands at 49% for patents subject to inter partes reexamination.
Of course, the number of
concluded inter partes reexamination as compared to ex parte reexamination is
still relatively small, likely skewing the statistics. Yet, it is quite clear
that eliminating the active voice of the third party requester, as well as
avoiding third party appeal of confirmed/allowed claims is highly desirable
from a Patent Owner perspective.
Knowing that ex parte patent
reexamination presents the most favorable odds to a Patent Owner, is there a
preemptive strategy a patent owner can employ to diffuse the risk of inter
partes patent reexamination?
In deciding to grant or deny a
request for reexamination, the USPTO analyzes the proposed Substantial New
Questions of Patentability (SNQs) presented with respect to previously
considered art of the original prosecution, as well as concluded/ongoing
reexamination proceedings. Where an earlier initiated ex parte reexamination
includes the same, or cumulative art, a later request for inter partes
reexamination that is based on such art and presented in the same light, must
be denied MPEP
2642. Thus, by "front loading" prior art in a patent owner initiated ex
parte reexamination request the opportunity to seek inter partes reexamination
based on the same art may be foreclosed to a third party.
For example, Forecast Consoles
filed an April 2005 request for ex parte reexamination of its own patent
(U.S. Patent No. 6,857,712) which the USPTO assigned Reexamination Control No.
90/007,706. An SNQ was established based on a Catta patent and an Evan
printed publication. Subsequently, in August 2005, third party requester TBC
sought inter partes reexamination of this same patent. In addition to the Catta
patent and the Evan publication used to establish an SNQ for the independent
patent claims, other references were included to establish an SNQ, however,
these other references were only used in connection with dependent claims.
In Reexamination Control No.
95/000,106 the USPTO did not order inter partes reexamination, finding that
because the Catta and Evans references were used as the basis for an SNQ in the
ex parte reexamination filed by the patent owner (i.e., presented in the same
light), they could not be used as a basis for an SNQ by the third party
requester against the independent claims in the IPR proceedings. Furthermore,
TBC's failure to raise an SNQ against the independent claims prevented them
from presenting an SNQ against the dependent claims, although additional prior
art was used with Catta and Evans against the dependent claims.
Subsequently, the ex parte
reexamination proceeding terminated with all original patent claims confirmed;
resulting in a true victory for Forest Consoles in preempting TBC's inter
partes reexamination efforts.
To be sure, a preemptive ex parte
reexamination filing by a Patent Owner is a bold step, unlikely in many
concurrent litigation contexts. Still, the lesson to be learned for third
parties is to initiate inter partes reexamination promptly, especially in
highly specialized technologies that have a limited universe of available prior
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