In the February 2008 issue of Venable’s IP News & Comment, we reported the increasing importance of using inter partes reexamination as a sword in shielding litigation. 15 The mid-year statistics of 2008 show that inter partes reexamination has skyrocketed. The statistics reveal that inter partes reexamination is a strong tool for rendering patents unenforceable.
In 2007, third parties filed 126 reexamination requests, which had increased by 56 requests in the previous year.16 The latest data from the United States Patent and Trademark Office shows that inter partes reexamination continues to rise. Through June 30, 2008, the number of reexamination filings has already passed the entire year’s filings of 2007 to reach a startling 128 reexaminations. Based on the past 5 years, a linear regression model shows that the projected number of filings for 2008 to be about 137. Within only 6 months, the number of filings is almost at that projected target and there are still 6 months to go. Based on the pace for 2008, the number of projected reexamination requests now is approximately 256 requests by the end of 2008. In summary, over the past 5 years inter partes reexamination has shown great increases, but 2008 shows an explosion of interest in inter partes reexamination. Figure 1.1 displays the increase in reexamination requests over the past 5 years along with the targets for 2008.
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A potential downside to inter partes reexamination is the pendency of the request. The United States Patent and Trademark Office is behind in processing inter partes reexaminations. In fact, only 32 inter partes reexamination certificates have issued as of September 2, 2008, and the other requests are still pending. Surprisingly, 22 of the 32 certificates issued with all claims canceled or disclaimed of the patent at issue. Only four certificates issued with all of the claims confirmed, and six certificates issued with claim changes. Therefore, in 68% of the requests for inter partes reexamination the patent was rendered unenforceable. Figure 1.2 shows the percentages.
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A comparison of the inter partes reexaminations statistics with the average disposition of patent litigation trials from 1990-2003 is revealing: 70.7% of the patent litigation cases found the patent valid and enforceable.17 This percentage is almost at direct odds with the percentage outcomes in inter partes reexamination (68% unenforceable). With the average pendency for an inter partes reexamination certificate being approximately 32.7 months and the national average pendency for a patent litigation case being approximately 26 months, a stay in litigation pending the outcome of an inter partes reexamination may increase the overall pendency of the matter, while the resolution of the matter can completely change in favor of the alleged infringer.18