Tony, while I’m not a lawyer by trade, and you should definitely seek counsel’s advice on this, I had a chance to read through the utility patent in question just now. Just having been through over 30 patent infringement claims (on both sides) over the last 5 years alone, the structure of that awarded patent is rife with opportunities to challenge it.
After talking to counsel, I think your counsel should send a note suggesting how ludicrous the claim of infringement is, while you simultaneously file for an ex parte reexamination of the patent, because the method you use for the said outcome is materially different from the original patent, and that can frequently cause the USPTO to support a reexamination request.
An
ex parte reexamination of an issued patent would involve only the patent owner and the USPTO.
As a third party challenger, you get to file the initial reexamination request.
There are three possible outcomes for each claim in a reexamined patent:
- confirmed (unchanged);
- canceled; or
- changed.
I found the following stats on the web:
USPTO statistics for 2019 show that 91% of requests for reexamination were granted, meaning that the successful requests satisfied the requirement of showing a substantial new question of patentability (SNQ).
In reexamination proceedings where the request was filed a third party (i.e., not the patent owner or the Patent Office), 79% of claims were canceled or changed. So if you are thinking of requesting reexamination of someone else’s patent, you have over 90% chance of the request being granted and, once granted, an almost 80% of seeing claims canceled or amended. So, a third party has a roughly 72% chance of success in getting patent claims canceled or changed as a result of reexamination.
