The two primary tools available from the patent office that are used by patent challenger, such as an alleged infringer, to invalidate a threatening patent are the filing of an Inter-Partes Review (IPR) or an ex-parte reexamination. IPR proceedings are conducted by the Patent Trial and Appeal Board (PTAB), while reexamination proceedings are conducted by the Central Reexamination Unit (CRU) branch within the patent office.
There has been a resurgence in reexamination requests, especially those initiated by challengers who are estopped from requesting IPRs. For example, a challenger may be estopped from filing an IPR because more than one year has elapsed from the time when they were served with a complaint for patent infringement. Additionally, a challenger may have already attempted to invalidate a patent by filing an IPR, but was unsuccessful.
For a patent challenger to have the patent office undertake an ex parte reexamination of a patent, it must establish a substantial new question of patentability (SNQ), which is the threshold requirement to initiate areexamination. In 2023, the Federal Circuit, in In re Cellect, 81 F.4th 1216 (Fed. Cir. 2023), lowered the threshold for finding an SNQ. Currently, an SNQ may include issues a patent examiner circumstantially might have considered, but did not expressly consider during the original prosecution of the application lead to the patent.
During reexamination, a patent owner has the ability to amend claims. In some cases, the amendment of claims may cut off potential damages from the amended claims through the operation of intervening rights. In other cases, the amendment of claims, or the adding of new claims, may bring about greater infringement potential for the new or amended claims, which may be directed to infringement reads focused on other infringing products.
The Katz Firm practices before the CRU and has experience with ex parte reexam proceedings. The Katz Firm can provide you with a fixed fee quotation for at least some steps of the reexamination process. For example, a fixed fee may be quoted for the filing of the ex parte reexamination request. The ex parte reexamination process involves a number of deadlines, so if a reexamination has been filed against your patent, it is important that strategy be evaluated quickly. Contact the Katz Firm for a free no-obligation quotation.