Ex Parte Reexam Filings Swung Back Upward in 2023

One of the most controversial practices followed by the Patent Trial and Appeal Board (PTAB) is the NHK-Fintiv rule, which allows the discretionary denial of America Invents Act (AIA) petitions due to the status of parallel proceedings. Some stakeholders have argued that NHK-Fintiv introduces too much uncertainty into the AIA review process, by conditioning institution on factors, like district court trial timing, that are out of the petitioner’s control.

An early result of this uncertainty was a shift by frequent defendants from AIA reviews to ex parte reexaminations, which are not subject to discretionary denials to the same extent. The number of reexam requests went up by 21% in 2020 and then by 53% in 2021, with an increasing share of those patents having previously been litigated in district court and subjected to PTAB challenges—together, indicating that this prior uptick was the result of NHK-Fintiv. Yet reexam requests began to fall in 2022 as PTAB discretionary denials also dropped, in part due to a June 2022 guidance designed to address certain criticisms of NHK-Fintiv.

However, the data now indicate that reexams are on the upswing again: Filings increased each quarter this past year, with Q4 2023 outpacing that same quarter in 2022 by 25% (though the full year came in slightly below 2022 by number of requests filed). Moreover, while the share of reexam-requested patents that were previously challenged before the PTAB fell last year, from 33% to 24%, the share of patents previously litigated in district court went up, from 59% to 61%—suggesting that reexams remain an attractive tool for at least some defendants.

See RPX’s fourth-quarter review for more on this and other key trends impacting the PTAB.