How Long Does Reexamination Take?

Scott Daniels | November 21, 2011

A critical issue in cases with parallel District Court infringement actions and PTO reexaminations is whether the court will stay its proceeding pending completion of the reexamination.  A court’s ruling on whether to stay often turns on how long it expects the reexamination to last.  A judge is quite likely to stay a case when he or she expects a short reexamination, but is  just as likely to deny a stay when a long reexamination is anticipated. 

The PTO keeps statistics on the average length of reexaminations, and those statistics are routinely cited by patentees and accused infringers alike, as support for their respective positions.  But there is no “average” reexamination and the length of pendency varies widely.  Two PTO Board reexamination decisions from last week illustrate the point.  Both reexaminations were inter partes and both resulted in cancelation of the claims at issue.  Yet one lasted two years and eight months (95/000,444), and the other, six years and five months (95/000,099).  Moreover, there is at least anecdotal evidence that the PTO is now handling reexaminations a good deal more expeditiously than its historical data would suggest.

This apparent distinction between the PTO’s statistics and individual reexaminations was the focus of a thoughtful stay opinion last week by Chief Judge Garrett Brown of the New Jersey District Court in LG Electronics v. Whirlpool.  Judge Brown had previously stayed the case at Whirlpool’s request pending completion of reexamination of the four patents-in-suit.  LG later sought reconsideration of the stay, arguing in part that Judge Brown’s initial expectation – that the reexaminations were moving quickly and that a final determination is imminent – was mistaken.

But Judge Brown was not buying: “LG would have the Court ignore what has actually taken place and substitute statistical evidence of the average pendency of inter partes reexamination.” He acknowledged LG’s assertion “that the entire reexamination process, including all appeals, is statistically likely to take as long as four years.  Statistical evidence is clearly unconvincing in the face of an actual timeline” (emphasis added).  In fact, the reexaminations proceeded much faster than would be expected from the statistics.  “[T]hree of the four reexaminations have rendered actions closing prosecution and have issued right of appeal notices in under 12 months, far short of LG’s 36 month prediction.” 

Judge Brown is not alone is his skepticism of the pendency statistics.  Many judges, who have issued stays, have also limited the period of the stay so that they revisit the stay decision if the reexaminations linger on.  Conversely, many judges, who have initially issued denials seem to be quite willing to reconsider those denials when the parallel reexamination moves more quickly than expected.  For litigants the message is to argue the particulars of the case at hand, rather than to rely solely on the PTO’s data.

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