Re-examinations are increasingly becoming a routine part of patent litigation. Recent statistics show a dramatic surge in re-examination filings, especially for patents involved in parallel litigation proceedings. In litigation, a defendant must prove invalidity of a patent by clear and convincing evidence. See, e.g., U.S. Surgical Corp. v. Ethicon Inc., 103 F.3d 1554 (Fed. Cir. 1997). However, at the U.S. Patent and Trademark Office (PTO) during re-examination, patentability is evaluated by the less demanding preponderance-of-the-evidence standard. See, e.g., Manual of Patent Examining Procedure § 2286; see also Ethicon Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). Thus, defendants seeking to invalidate or narrow a patent based on prior art patents or printed publications may have a better chance of doing so via the PTO than the courts. There are some risks and benefits of filing re-examinations, however, so attorneys must consider the logistical issues.
To initiate a re-examination, a request must raise a substantial new question of patentability affecting one or more claims of a patent, based on patent(s) or printed publication(s). See 35 U.S.C. 304, 312, 313. There are two types of re-examinations available: ex parte and inter partes. Anyone, including the patentee or a third party, can initiate an ex parte re-examination. See 37 C.F.R. 1.510. Since 2002, the number of ex parte re-examination requests has jumped by more than 240%, from 272 requests in fiscal year 2002 to 658 requests in fiscal year 2009. See Ex Parte Re-examination Filing Data (June 2010), www.uspto.gov/patents/EP_quarterly_report_June_30_2010.pdf. Of the patents for which ex parte re-examination was requested, 32% were known to be in litigation.
