the article TiVo Ruling Suggests Shift in Patent Cases in The Recorder suggests that the use of re-examination is on the up-swing. One notes that in patent litigation, patent defendants are more apt to win on claim construction/noninfringement arguments than they are to win on invalidity arguments. In the Eolas case, a director-ordered re-exam produced NO CHANGE whatsoever in the claims of the Eolas/Berkeley patent, in spite of arguments by W3C advanced by the law firm of Pennie & Edmonds.
The article states:
A rarely used rule lets patents be challenged in a bureaucratic review process rather than in court. In Texas on Monday, U.S. Magistrate Judge Caroline Craven stayed EchoStar's countersuit against TiVo until the patent office decides on TiVo's request for such an inter partes exam.
If a case is stayed pending the outcome of the re-examination process, it could mean as much as a seven-year delay before a patent owner can go back to court to enforce their patent, said Lance Johnson, a partner at Roylance, Abrams, Berdo & Goodman.
Patent defendants may also like how much cheaper inter partes is. Patent cases can cost as much as $2 million to litigate. Inter partes proceedings cost $100,000 to $150,000 in legal fees, including the $8,800 filing fee, according to Paul Haughey, a partner at Townsend and Townsend and Crew in San Francisco.
Requests for re-examinations have also increased noticeably over the last three years. The growing popularity may me