In a March 2025 article, we provided strategy considerations for both parties handling ex parte reexaminations following denied inter partes reviews (IPRs) in view of the United States Patent and Trademark Office (USPTO) Acting Director’s new rules and procedures.
Fast forward six months, and the newly-sworn-in Director has proposed additional new rules and procedures as discussed in a client alert earlier this month. Additionally, recent developments in issued decisions (i.e., USPTO case law) have reinforced the conclusion that parties should now consider reexaminations as an equal part of their post-grant strategy.
Recent developments are a reminder that parties should consider reexaminations, not just IPRs and post-grant reviews (PGRs), when contemplating post-grant strategies. These developments include:
- An IPR filed against a patent that had already survived reexamination where the IPR asserted at least one prior art patent already of record. Here the Acting Director stated, “the most efficient process is for Petitioner to file a reexamination request that includes Walton,” rather than proceed with the IPR. Intel Corp. v. USTA Tech., LLC, IPR2025-00838, Paper 10 (Sept. 19, 2025) (Stewart);
- In another IPR, the panel terminated an IPR for good cause because the Petitioner indicated it planned to file reexamination requests instead. Amazon.com, Inc. v. DivX, LLC, IPR2025-01062, -01222, -01223, Paper 12 (Aug. 29, 2025);
- In August 2025, the Acting Director moved some senior judges to the Central Reexamination Unit (CRU) – Previous Chief Judge Scott R. Boalick and Previous Vice Chief Judge Mike Tierney;
- An overall 25% institution rate since April 2025 with the lower end of the spectrum focused on cases in the electrical arts and the higher end of the spectrum focused on bio/pharma/chemical patents that have above a 50% institution rate.
But pivoting (back) to reexaminations as a post-grant strategy requires parties to understand that the proceeding does not allow for the same chance of success for stays in district court litigation. Nor do they provide a predictable timeline to complete or a clear indication of success with the ability for a patent owner to amend or add claims to overcome rejections, as we have discussed in prior articles.
Here are five trends parties need to know under the current environment:
- Defendants/requestors who either receive a denial of institution or have a proceeding terminated before final written decision, and thus before estoppels would arise, appear to be waiting until after a district court litigation verdict with a damages award to file reexaminations. Empirical data indicates that may be so the challenger can focus on claims for which the verdict is based. A natural result of this is that patent owners now need to win three or four times per claim per patent—at the PTAB, at trial, at the CRU (or PTAB appeal from CRU), and at the Federal Circuit from trial appeal (and maybe from PTAB appeal).
- Examiners are requiring meaningful interviews with experts and demonstratives before drafting fulsome, almost brief-like replies for a patent owner to successfully navigate from Office Action to Notice of Intent to Issue Reexamination Certificates without having to amend claims on which damage verdicts are based.
- Patent owners are using reexamination challenges from stayed litigation to amend claims and/or add new claims focused on accused products, sometimes adding dozens of new claims directed at accused products.
- Requestors are attempting to stay involved in the ex parte reexamination through 37 C.F.R. §§ 1.182 and 1.183 petition practice despite rules stating that post-request, filing an ex parte reexamination should be a single-party reexamination. Based on this aggressive petition practice, patent owners are also embracing petitions practice. Both parties need to use either daily/weekly manual monitoring or paid monitoring services to keep track of filings as the rules suggest a two-week opposition period to respond to the opposing party’s petitions.
- Requestors are filing two, three, or four reexaminations either in parallel or as a series to respond to Office Action replies or confirmed/allowable claims.
Takeaway
In the end, experienced reexamination counsel with a deep understanding of the unique reexamination rules and procedures is required for both parties to most strategically defend and challenge patents at the USPTO when the PTAB denies trial either discretionarily or on the merits.
