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It was not long ago that we reported on significant changes at the USPTO regarding the institution of AIA trials, including the Director having the final say on institution decisions and the manner in which discretionary and non-discretionary factors would be considered. One result of that development was an increase in requests for ex parte reexamination. However, recent decisions denying ex parte reexamination suggest that third party requesters need to consider the effect of prior or parallel inter partes review (IPR) proceedings relating to the patent(s) at issue in deciding whether to seek ex parte reexamination.
In two recent decisions, one responsive to an ex parte request by Geotab (Control No. 90/015,984) and another responsive to an ex parte request by Hisense USA (Control No. 90/016,174), panels at the USPTO denied the requests under 35 U.S.C. § 325(d). The patents that were the subject of these requests had a similar history: The requester in each instance had previously filed an IPR petition with respect to the patent at issue for which institution was denied. Months after filing the IPR petitions, each requester filed requests for reexamination that relied essentially on the same prior art positions as were presented in the IPR. In each decision denying the requests, the panel concluded that the “[r]equester is the same challenger” as in the preceding IPR, and “[t]he current Request includes at least some of the same or substantially the same prior art or arguments previously presented to the Office.”
As a result of these developments, it is important that parties considering challenging the validity of a patent appreciate that the USPTO likely no longer considers IPR and EPRs as separate, unrelated paths to invalidating a patent. While it previously may have appeared reasonable to look to an ex parte reexamination request after the denial of institution of an IPR, recent panel decisions by the USPTO make clear that a more holistic approach is warranted. One takeaway may simply be that challengers should plan post-grant patent challenges along one path (e.g., IPR or ex-parte reexamination) without the expectation that the other path will be thereafter available.
Edited by Orville Cockings and James Vezeris
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