Reexams Leveled Off in Q1, But Data Indicate Continued Shift Away from AIA Reviews
May 14, 2025
Acting USPTO Director Coke Morgan Stewart revamped the standards governing discretionary denials at the Patent Trial and Appeal Board (PTAB) in Q1 2025—withdrawing guidance from her predecessor, Kathi Vidal, that limited the NHK-Fintiv rule, and creating a new process where the director handles discretionary denial requests. The uncertainty caused by these changes has led defendants to increasingly choose another alternative for validity challenges—ex parte reexaminations, which among other advantages are not subject to discretionary denials to the same extent.
The number of requests for ex parte reexam increased by 21% in 2020 (the year that the PTAB designated its Apple v. Fintiv decision, which established the five NHK-Fintiv factors, as precedential) and then by 53% in 2021. While they held steady at about 330 requests per year in 2022 (the year Vidal issued the just-overturned guidance limiting NHK-Fintiv) and 2023, they surged by 27% in 2024.
Though reexam filings were relatively flat in the first quarter of 2025 compared to Q1 2024 (which in turn was 41% higher than Q1 2023), data indicate that the share of patents with reexam requests that have also been challenged at the PTAB continues to fall, reaching just 15% in Q1 2025 after dropping to 20% in 2024 as a whole—further indicating a shift away from IPR. In addition, 58% of the patents with reexam requests filed last quarter have also been litigated in district court, up from 54% this past year.
See RPX’s report on the first quarter for more on the PTAB and other key trends shaping patent litigation so far this year.
