USPTO still trying but most abusive practices to kill patents at play

USPTO still trying but most abusive practices to kill patents at play

And while it is great that the USPTO is allowing patent owners to challenge the existence of a SNQ prior to determining whether to begin a re-examination proceeding, the most abusive gaming is not SNQ-related and would be most appropriately considered under 315(d)

Aggressive procedural strategy is no longer the exception but the operating norm in modern Patent Trial and Appeal Board (PTAB) practice. Petitioners have adapted as the U.S. Patent and Trademark Office (USPTO) has increasingly depended on discretionary denials to constrain inter partes review (IPR). An emerging tactic is the tactical use of ex parte reexamination as a backup mechanism—deployed either post discretionary denial or post an unfavorable IPR, or post the petitioner seeing the handwriting on the wall and prior to a final written decision (FWD) being issued in an IPR.

A structural loophole is created if the use of re-examination is allowed to render meaningless IPR estoppel provisions. Whether procedural or on the merits, a patent owner’s victory at the PTAB becomes provisional at best. A determined challenger can simply reroute through the Central Reexamination Unit (CRU), repackage arguments, and start over. This is a gaping hole and structural failure. While the USPTO has taken first steps to contain the growing re-examination practice by permitting patent owners to dare a substantial new question of patentability’s (SNQ’s) existence prior to determining whether to start a re-examination proceeding, the pre-order procedure about SNQ published in the Official Gazette particularly prevents patent owners from raising discretionary considerations until after an SNQ determination has been made. This is an important first step and may prevent institution of some—perhaps many—ex parte re-examinations. However, the real mischief associated with re-packaging failed IPRs as re-examinations is not SNQ-related.

For instance, the procedural maneuvering in the dispute between Western Digital and Godo Kaisha IP Bridge over a certain US patent is a case study in how far a petitioner can push parallel proceedings, and a typical example of the gaming that has become the norm with patent challenges at the USPTO. Western Digital filed an IPR petition against the patent on September 27, 2024. The case proceeded through full trial, culminating in an oral hearing before the PTAB on January 23, 2026. Significantly, that hearing was conducted alongside two related IPRs involving the same parties and closely related technology—highlighting that this was not a one-off challenge, but part of a coordinated, multi-front invalidity campaign. Just two months later, on March 27, 2026, the Board issued a FWD in one of the companion proceedings involving another patent. The outcome was mixed: some claims were found unpatentable, while others survived. Within 48 hours of the FWD, and just days before the expected FWD in the patent in question, Western Digital filed a request for ex-parte re-examination of the patent. The request depended primarily on two prior art references. It was not about surfacing overlooked art that was not considered but about re-deploying known art in a different procedural vehicle and just days before the PTAB was expected to issue a FWD that would likely allow at least some of the claims to stand. This maneuvering and timing raised a critical question: If the art was available, why wasn’t it fully leveraged in the IPR? That answer might lie in the statutory estoppel framework. By filing the re-examination request before the FWD in the patent in question, Western Digital attempted to position itself to argue that estoppel does not attach. And while that argument was not frivolous under current precedent, it was undeniably aggressive—and highlighted a structural vulnerability in the statute. If left unchecked, this approach creates a blueprint wherein future petitioners would have every incentive to follow the same playbook but with greater intentionality from the start.

This is not just a dispute between two parties over MRAM technology. It is a live test of how tightly the USPTO intends to police the boundaries between parallel proceedings. And while it is great that the USPTO is allowing patent owners to challenge the existence of a SNQ prior to determining whether to begin a re-examination proceeding, the most abusive gaming is not SNQ-related and would be most appropriately considered under 315(d). If the Office allows this re-examination to proceed, it effectively endorses a “two bites at the apple” model. If it shuts it down, it reinforces the integrity—and finality—of the IPR process, and the importance of quiet title. Currently, the system is at an inflection point. After taking an important first step at the SNQ inquiry, the next move that will once and for all stop abusive gaming of re-examination belongs to the Director.