The USPTO is Trying—But the Most Abusive Practices to Kill Patents Are Still in Play

In modern Patent Trial and Appeal Board (PTAB) practice, aggressive procedural strategy is no longer the exception—it is the operating norm. As the U.S. Patent and Trademark Office (USPTO) has increasingly relied on discretionary denials to constrain inter partes review (IPR), petitioners have adapted. One emerging tactic is the strategic use of ex parte reexamination as a fallback mechanism—deployed either after discretionary denial or, after an unfavorable IPR, or after the petitioner sees the handwriting on the wall and before a final written decision (FWD) is issued in an IPR.

If the use of reexamination is allowed to render meaningless IPR estoppel provisions, it creates a structural loophole. A patent owner’s victory at the PTAB—whether procedural or on the merits—becomes provisional at best. A determined challenger can simply reroute through the Central Reexamination Unit (CRU), repackage arguments, and start again. This should not be a feature of the system—it is a gaping hole and structural failure.

And while the USPTO just today took first steps to rein in the growing reexamination practice by allowing patent owners to challenge the existence of a substantial new question of patentability (SNQ) prior to determining whether to institute a reexamination proceeding, the Pre-order Procedure Regarding SNQ published in the Official Gazette specifically prevents patent owners from raising discretionary considerations until after an SNQ determination has been made. While this is an important first step and will likely prevent the institution of some—perhaps many—ex parte reexaminations, the real mischief associated with repackaging failed IPRs as reexaminations is not SNQ related.

Something Happened on the Way to Invalidity

Witness the procedural maneuvering in the dispute between Western Digital and Godo Kaisha IP Bridge over U.S. Patent No. 11,968,909. This is a case study in how far a petitioner can push parallel proceedings—and a quintessential example of the gaming that has become the norm with patent challenges at the USPTO.

Western Digital initiated its challenge in conventional fashion, filing an inter partes review (IPR) petition against the ’909 patent on September 27, 2024. The case proceeded through full trial, culminating in an oral hearing before the PTAB on January 23, 2026. Notably, that hearing was conducted alongside two related IPRs involving the same parties and closely related technology—underscoring 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 those companion proceedings involving U.S. Patent No. 8,405,134. The outcome was mixed: some claims were found unpatentable, while others survived. That split result likely sent the petitioner a clear signal—this panel was not inclined to invalidate across the board. And that being the case, a pivot in strategy was required.

A Tactical Filing—Or System Gaming?

Within 48 hours of the FWD on the ’134 patent—and just days before the expected FWD in the ’909 patent IPR—Western Digital filed a request for ex parte reexamination of the ’909 patent. The sequencing is difficult to overlook when seeking for a motive. After a full IPR trial, post-hearing, and on the eve of a dispositive decision, the petitioner initiated a parallel proceeding targeting the same claims already before the Board, this time in an ex parte reexamination proceeding.

The petitioner’s reexamination request focused on claims 5–6 and 9–20 and relies primarily on two prior art references: Kishi and Parkin. Critically, these are not newly discovered references. The request itself concedes that Kishi had already been used in rejecting a related child application prior to the IPR filing, and Parkin was of record during prosecution. In other words, this is not about surfacing overlooked art that was not considered—it is about re-deploying known art in a different procedural vehicle and just days before the PTAB is expected to issue a FWD that will likely allow at least some of the claims to stand.

This maneuvering and timing raise a critical question: If the art was available, why wasn’t it fully leveraged in the IPR? That answer may lie in the statutory estoppel framework.

Estoppel as a Trigger—Not a Constraint

The answer lies in 35 U.S.C. § 315(e). IPR estoppel bars a petitioner from raising in subsequent USPTO proceedings any ground it “raised or reasonably could have raised” once a FWD issues. The operative issue is timing. By filing the reexamination request before the FWD in the ’909 IPR, Western Digital attempts to position itself to argue that estoppel does not attach. And while that argument is not frivolous under current precedent, it is undeniably aggressive—and it highlights a structural vulnerability in the statute.

From a tactical standpoint, the move reflects a hedge: proceed through IPR, assess signals from oral hearing and related decisions, and if risk materializes, deploy a secondary proceeding before estoppel locks the door. From a policy standpoint this strategy raises a more uncomfortable question—whether the system is being used as designed, or whether there are structural design flaws that allow petitioners to merely exploit gaps in procedure to gain second or even third bites at the apple?

The Director’s Discretion: A Real Check or a Paper Tiger?

This is precisely the type of scenario where 35 U.S.C. § 315(d) comes into play. The statute gives the Director authority to manage overlapping proceedings, including staying, consolidating, or terminating them “during the pendency of an inter partes review.”

The timing here is decisive. If the Director acts to terminate a reexamination before the FWD in the ’909 IPR issues, there is little question that the reexamination falls within the scope of § 315(d). If the Office waits, the analysis becomes more complicated—and the petitioner’s timing strategy becomes more effective.

Substantively, the rationale for intervention in this case is strong. The reexamination targets the same claims already adjudicated in the IPR, relies on prior art that was known (and could have been raised earlier), and appears to function as a fallback mechanism rather than a bona fide new challenge. Allowing it to proceed risks normalizing a two-track approach: litigate aggressively in IPR, then relitigate everything once again in reexamination if the IPR outcome looks unfavorable.

Redoing everything in ex parte reexamination is not efficient. And it is not consistent with the purpose of IPR as a streamlined, cheaper, one-shot alternative to litigation. It is also a waste of agency resources. Moreover, it pits the PTAB against the CRU, which is absurd.

A Precedent in the Making

If left unchecked, this approach creates a blueprint. Future petitioners would have every incentive to follow the same playbook but with greater intentionality from the start. If allowed to stand it is easy to envision a petitioner even purposefully holding back certain prior art, proceed through IPR, and then using reexamination as a late-stage safety valve. The result would be duplicative proceedings, increased burden on the Office, and a dilution of estoppel as a meaningful constraint.

The PTAB was designed to provide finality. That objective is undermined if parties can effectively queue up a second challenge before the first challenge concludes.

The Director has both the statutory authority and the institutional interest to step in. Terminating the reexamination now—before the FWD in the ’909 IPR issues—would send a clear signal that end-runs around estoppel will not be tolerated. It would also reinforce that petitioners are expected to put their best case forward in the IPR, not hold reserves for a second attempt. All of which seems perfectly in line with the stated preference by the Office to encourage early challenges that will result in quiet title for patent owners.

Bottom Line

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 reexamination proceeding, the most abusive gaming is not SNQ related and would be most appropriately considered under 315(d).

If the Office allows this reexamination 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.

Right now, 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 reexamination belongs to the Director.

Image Source: Deposit Photos
Author” Devon
Image ID: 27409057