Do Not Give the Requester a Second Brief: Why Patent Owners Should Usually Waive the Post-Order Statement When Ex Parte Reexamination Runs Alongside Litigation

Executive Summary: This article argues that a patent owner facing a third-party-requested ex parte reexamination alongside infringement litigation should ordinarily waive the optional post-order statement authorized by 35 U.S.C. § 304. Filing before the first Office action requires the owner to address potential theories before the examiner has identified an actual rejection, gives the requester a statutory opportunity to refine its challenge, and creates additional prosecution history that may affect claim construction, infringement, validity, related patents, and even post-judgment proceedings. Federal Circuit decisions involving parallel litigation and reexamination demonstrate that statements made to preserve patentability can become consequential intrinsic evidence regardless of whether the examiner adopts them or a court ultimately finds a disclaimer. Waiver, however, is disciplined sequencing rather than substantive surrender: it does not necessarily forfeit a properly preserved challenge to the substantial-new-question determination, excuse required disclosure, or prevent the owner from responding fully once the examiner states a developed position. Filing should therefore be reserved for circumstances in which a discrete error or imminent litigation event presents a concrete benefit that outweighs the requester-reply and litigation risks.

I.                   Introduction

When an issued patent is simultaneously before a district court and the U.S. Patent and Trademark Office, the patent owner is not managing two separate disputes. It is creating one record that will be read in two forums. Claim terms may already be disputed in the infringement action, infringement contentions may depend on a particular construction, and the accused infringer may be looking for admissions that can be used against the patent. At the same time, the USPTO has ordered ex parte reexamination but has not yet issued a rejection.

That is the setting in which 35 U.S.C. § 304 gives the patent owner at least two months to file a statement addressing the substantial new question of patentability identified in the order. See also 37 C.F.R. § 1.530(b)–(c). Filing may feel like the natural response to an attack on an issued patent. Silence can appear passive at precisely the moment when the patent seems most exposed.

But the post-order statement is not free. By the time it becomes available, reexamination has already been ordered. The statement cannot prevent that initial procedural event, but it may ask the examiner to reconsider whether the order identified a substantial new question of patentability. If the examiner agrees that no substantial new question remains, prosecution may be terminated or the order may be vacated, as appropriate. Manual of Patent Examining Procedure § 2246(II) (9th ed. Rev. 01.2024, Nov. 2024) [hereinafter MPEP]. When the first Office action rejects a claim based in whole or in part on the reference underlying the challenged question, the owner may ordinarily raise the same threshold objection in its response. 37 C.F.R. § 1.111(b); MPEP § 2246(II).

The strategic question is therefore not whether waiver necessarily abandons the threshold objection. It is whether there is a concrete reason to disclose that objection before the examiner has issued a rejection and while the requester retains a statutory reply. Filing the statement triggers that reply after the requester has seen the owner's arguments. 35 U.S.C. § 304; 37 C.F.R. § 1.535. The owner thus gives its adversary another merits brief while committing substantive positions to a public prosecution record before the examiner has identified the rejection that actually must be answered.

That trade is usually unfavorable when infringement litigation is pending. A statement can reveal how the owner intends to distinguish the art, which claim constructions matter to infringement, where technical testimony may be needed, and which defects in the request are most consequential. The requester's reply can then repair the challenge. The same owner statements can later become intrinsic evidence in claim construction, noninfringement, invalidity, post-judgment, or related-patent disputes.

This article addresses third-party-requested ex parte reexamination running alongside infringement litigation, with the patent owner defending the issued claims as written. In that setting, the better default is ordinarily to prepare the merits response immediately, waive the optional statement, and wait for the first Office action. Filing should require a concrete benefit that outweighs both the requester-reply risk and the litigation cost of creating an additional prosecution paper.

II.                Section 304 Gives the Requester the Last Party Brief Before the First Office Action

Section 304 appears balanced. After the USPTO determines that a substantial new question of patentability exists, the patent owner receives at least two months to file a statement. If the owner files one, the requester receives two months from service to reply. 35 U.S.C. § 304. Each side appears to receive one additional paper.

The parties' positions, however, are not symmetrical. The order reveals the examiner's threshold rationale: it identifies the claims and issues, the patents or printed publications relied on, and a brief rationale supporting each substantial new question. MPEP § 2246. But the order does not reject the claims or commit the Office to a particular anticipation or obviousness determination. The requester has already chosen the art, framed the asserted substantial new questions, identified the challenged claims, and supplied an element-by-element explanation. The patent owner has not yet seen a first Office action stating which proposed merits grounds the examiner adopts, which mappings the examiner accepts, how the examiner understands disputed terms, or which weaknesses in the request the examiner considers material.

Filing the optional statement changes that posture. The statement must clearly explain why the claims are not anticipated or rendered obvious by the cited patents or printed publications, considered individually or in appropriate combinations. 37 C.F.R. § 1.530(c); MPEP § 2249. The requester then receives the owner's analysis before making its final authorized merits submission.

The authorized reply is broader than an ordinary response to the owner's wording. USPTO guidance states that the requester is not limited to issues raised in the patent-owner statement and may cite additional patents and printed publications or raise other issues properly within ex parte reexamination. MPEP § 2251. The reply remains bounded by the lawful scope of the proceeding; it is not an invitation to inject unrelated eligibility, disclosure, or conduct theories. Within the available anticipation and obviousness inquiry, however, it gives the requester a chance to improve the challenge after learning the owner's answer.

The repair opportunities are practical, not theoretical. If the owner identifies a missing limitation, the requester can search for an additional publication directed to that feature. If the owner attacks the rationale to combine, the requester can reformulate the rationale or identify a teaching it omitted. If the owner explains that the request depends on an overbroad construction, the requester can retreat to a narrower construction and revise the mapping. A response intended to defeat the request may instead become an issue list for strengthening it.

If the owner does not file a statement, no requester reply or other requester submission will be considered at that stage. 37 C.F.R. § 1.535; MPEP § 2251. The requester will continue to receive Office actions and served patent-owner responses, but it ordinarily becomes an observer rather than an active merits advocate. It cannot participate in the owner's appeal or appeal an adverse patentability determination itself. 37 C.F.R. § 1.550(g); MPEP §§ 2254, 2273.

That difference matters more in co-pending litigation because the requester may be the accused infringer or may be aligned with it. The optional statement provides an early, formal account of the owner's patentability theory before claim construction, expert discovery, or summary judgment may be complete. Even if litigation counsel and reexamination counsel are fully coordinated, the statement reveals strategic information to the other side at a time of the requester's choosing and activates a regulatory mechanism for answering it.

The right distinction is therefore not between preparing and remaining silent. The patent owner should conduct the same rigorous analysis it would perform if a statement were due: chart the claims, test the asserted combinations, investigate the references, identify construction issues, and develop any necessary technical evidence. The distinction is between preparing the defense and prematurely disclosing it. An internal response can be refined after the examiner acts. A filed statement cannot be recalled, and the requester receives it while a statutory reply remains available.

III.             The Order Is a Threshold Decision, Not the Rejection

The impulse to answer immediately often rests on a mistaken premise: that the order granting reexamination is an adverse patentability determination. It is not. The order reveals the examiner's threshold rationale, not a rejection. It identifies the claims and issues, the cited patents or printed publications, and the rationale supporting each substantial new question without deciding that the claims are unpatentable over the art. MPEP § 2246.

That distinction should govern the timing of the owner's advocacy. The first Office action identifies the examiner's developed position and should present the grounds with enough completeness that the issues can be addressed in a focused response. MPEP § 2262. Only then does the owner know which references, mappings, constructions, and rationales actually require an answer.

Although the owner may request reconsideration of the substantial-new-question determination in the optional statement, it may also request reconsideration in an Office-action response when the rejection relies in whole or in part on the reference underlying that question. If the examiner agrees that no substantial new question remains, prosecution may be terminated or the order vacated, as appropriate. To obtain later Board review, the owner must first request reconsideration from the examiner and then separately raise the issue in its appeal brief. 37 C.F.R. §§ 1.111(b), 1.530; MPEP §§ 2246(II), 2274(VI). Waiver therefore need not surrender the threshold objection.

An opening statement necessarily precedes that information. The owner may rebut a combination the examiner never adopts, dispute a construction the examiner does not use, or offer alternative arguments covering several hypothetical theories. Each additional alternative may add a characterization of the claim, specification, prior art, or asserted invention to the public record without advancing resolution of an actual rejection.

Waiting does not forfeit the merits defense. It permits the defense to be aimed at the missing limitation, defective combination rationale, or evidentiary gap that matters. Reexamination must proceed with special dispatch, and the owner should use the interval to prepare for a compressed prosecution sequence. 35 U.S.C. § 305; MPEP §§ 2260, 2271. But speed of preparation does not require speed of public disclosure.

In ordinary prosecution, answering a theory the examiner never adopts is inefficient. In concurrent infringement litigation, it can be affirmatively harmful. The owner may be taking positions about the same claim language that the court is construing and the same technical relationships that the parties are applying to the accused product. Waiting for an actual Office action reduces the number of positions that must be taken and therefore the number that can later be portrayed as inconsistent.

IV.            Parallel Proceedings Are Not Separate Worlds

The Federal Circuit's parallel-reexamination cases make clear that the administrative and judicial proceedings can directly affect one another. In Fresenius USA, Inc. v. Baxter International, Inc., Fresenius requested ex parte reexamination in 2005 while district-court litigation over the same claims was pending. The proceedings continued in parallel through a jury verdict, multiple appeals, further damages proceedings, and a final USPTO determination. Because the infringement case remained nonfinal, the final USPTO judgment holding the asserted claims unpatentable required dismissal of the infringement claims. 721 F.3d 1330, 1335–47 (Fed. Cir. 2013).

Fresenius does not decide whether a patent owner should file an optional § 304 statement. It demonstrates why that choice cannot be treated as a routine prosecution decision divorced from litigation strategy. The court and the USPTO may consider different art, apply different records, and reach results on different schedules. The Federal Circuit noted that structures Fresenius failed to prove were present in the district-court prior art were found in different references before the USPTO. Id. at 1332–36. A position that is dispositive in one forum may still need to be developed and preserved in the other.

The lesson is not to say everything at the first available opportunity. It is to coordinate both proceedings while distinguishing an optional opening statement from a required response to an actual rejection. Waiver should narrow the public record, not the owner's internal analysis. Once the examiner identifies a ground, the owner must present every material answer needed to preserve patentability and maintain consistency with the litigation case.

V.               The Reexamination Record Can Decide Claim Construction

The reported decisions rarely turn on whether the consequential words appeared in the optional statement, a later Office-action response, an appeal brief, or a declaration. No Federal Circuit decision holds that filing a § 1.530 statement is categorically improper. The cases establish the broader proposition on which the waiver strategy rests: an owner's statements during reexamination can become intrinsic evidence and can shape the scope and outcome of infringement litigation. See Krippelz v. Ford Motor Co., 667 F.3d 1261, 1266–68 (Fed. Cir. 2012). An optional statement is therefore an additional—and avoidable—paper from which litigation consequences may arise.

The closest appellate example involving an actual Patent Owner's Statement is LSI Industries, Inc. v. ImagePoint, Inc. In response to a pending declaratory-judgment action and a summary-judgment motion asserting invalidity, the patent owner requested reexamination. The litigation was stayed, the USPTO confirmed the claims, and the process generated what the Federal Circuit described as a "voluminous prosecution record." 279 F. App'x 964, 966–68 (Fed. Cir. 2008) (nonprecedential).

When the litigation resumed, the opponent mined that record for claim-construction restrictions. The Federal Circuit examined language in the owner's Patent Owner's Statement and concluded that its general description of male and female components was not a clear disclaimer. But other reexamination arguments did clearly define a "divider member" as requiring a snap-fit connection, and that understanding carried into three related continuation patents using the same term. Id. at 968–71. The case is nonprecedential, and the optional statement itself did not produce the disclaimer the opponent sought. Its practical lesson is nevertheless direct: even a statement ultimately held too general to narrow the claims became an appellate issue, while other reexamination language affected multiple patents in the family.

Krippelz supplies the sharper precedential warning. Jacob Krippelz sued Ford in 1998 and requested ex parte reexamination about a year later, expressly identifying the pending litigation and submitting references Ford had raised. The USPTO initially rejected the asserted claim, but the Board ultimately confirmed it after Krippelz and his expert distinguished diffuse light from a claimed "beam" and discussed a bulb placed at or near the focal point of a reflector. Krippelz, 667 F.3d at 1263–67.

The reexamination victory did not insulate the infringement case. The Federal Circuit treated the owner's reexamination arguments and expert declaration as intrinsic evidence. It held that the claimed "conical beam of light" required a reflector having a focal point and a source positioned at or near that point. Applying that construction, the court held the claim anticipated by a different reference, reversed the validity judgment, vacated the infringement and willfulness rulings, and directed entry of judgment of nonliability. Id. at 1266–68, 1270. A record created while litigation was pending and used to preserve patentability thus supplied a construction that helped undo a judgment worth approximately $56 million.

The decisive papers in Krippelz were later reexamination appeal submissions and a declaration, not an optional § 1.530 statement. That distinction limits the formal holding but strengthens the strategic point. Some later responses may be unavoidable. The optional opening statement is not. Filing it creates one more occasion to define what a term requires before the examiner has presented the rejection that may make such a definition necessary.

American Piledriving Equipment, Inc. v. Geoquip, Inc. shows why drafting reservations may offer little protection. During reexamination, the owner distinguished prior art by stating that "integral" components were parts of a one-piece counterweight. In later infringement suits, it argued that the statement was unnecessary, accompanied by other distinctions, and inconsistent with the examiner's view. The Federal Circuit nevertheless enforced the one-piece construction. An alternative argument can create disclaimer even when other grounds were also asserted, and the public may rely on the owner's statement regardless of whether the examiner agreed with it. 637 F.3d 1324, 1335–36 (Fed. Cir. 2011). The construction supported summary judgment of noninfringement in one of several related actions. Id. at 1328, 1336–37.

Together, these cases show that the risk is not confined to an obviously sweeping concession. A technical distinction directed to one reference can become a definition of a claim term. A description offered for one patent can influence related patents. And an owner cannot assume that a court will disregard a statement because the examiner did not expressly adopt it.

VI.            Even a Rejected Disclaimer Theory Can Disrupt the Litigation

The clear-and-unmistakable standard provides real protection. Ambiguous reexamination statements do not narrow a claim merely because an accused infringer proposes a restrictive reading. But defeating the disclaimer argument does not eliminate the cost of having created the issue.

Grober v. Mako Products, Inc. illustrates that cost in proceedings that were genuinely concurrent, although the administrative matter was an inter partes reexamination under the former statute. Grober filed an infringement action in 2004, the defendants then sought reexamination, and the district court stayed the case before later allowing discovery and claim-construction proceedings to continue. The USPTO confirmed the claims only after the notice of appeal. 686 F.3d 1335, 1340–41 (Fed. Cir. 2012).

The district court relied heavily on Grober's reexamination statements, adopted a narrow construction of "payload platform," and entered summary judgment of noninfringement. The Federal Circuit held that the statements addressed sensor location rather than the dimensions of the platform and therefore did not clearly disclaim a three-dimensional structure. It vacated the construction and noninfringement judgment. Id. at 1341–44. Grober prevailed on that issue, but only after the reexamination record became the basis of a dispositive district-court ruling and a full appellate dispute.

The record can also travel beyond the requester that created it. In 01 Communique Laboratory, Inc. v. LogMeIn, Inc., Citrix—not LogMeIn—had requested an inter partes reexamination. The owner submitted an expert explanation distinguishing systems in which the claimed "location facility" created a communication channel from systems in which another component performed that function. LogMeIn later used those statements to obtain a single-server construction and summary judgment of noninfringement in a different case. 687 F.3d 1292, 1297–99 (Fed. Cir. 2012).

The Federal Circuit rejected that reading because the expert had addressed who performed the function, not whether the facility could be distributed across multiple computers, and it vacated the judgment. Id. at 1298–1300. The case is both a doctrinal limit and a practical warning. Context may defeat an overbroad disclaimer theory, but it does not prevent another accused infringer from making one or prevent a district court from accepting it in the first instance.

The risk can persist even after trial. In Opticurrent, LLC v. Power Integrations, Inc., the accused infringer requested ex parte reexamination two months after an infringement trial. It later invoked the owner's reexamination arguments in seeking relief from the judgment, asserting inconsistent positions, a different claim construction, misrepresentation, changed circumstances, and an effect on ongoing royalties. No. 2021-1712, 2022 WL 539158, at 3–6 (Fed. Cir. Feb. 23, 2022) (nonprecedential). The majority read the disclaimer narrowly, found the owner's positions consistent, and affirmed denial of relief. Id. at 5–7. The patent owner prevailed, but the reexamination language supplied the premise for a post-verdict attack on infringement and prospective relief.

These decisions do not establish that every optional statement will narrow a claim. They establish something more useful for strategy: every additional statement supplies material that an accused infringer can test against claim-construction positions, infringement theories, expert testimony, related patents, and prior representations. The cost is not limited to losing a disclaimer dispute. It includes creating the dispute, funding it, and allowing it to affect the timing and posture of the infringement case.

VII.         Waiver Advances the Proceeding Without Conceding the Merits

Waiver also removes a defined interval from the reexamination schedule. If the owner files a statement, the requester receives two months from service to reply, and the examiner considers the authorized papers when preparing the first Office action. 35 U.S.C. § 304; MPEP §§ 2251, 2253. That sequence delays examiner-led prosecution even if the owner files early or the requester ultimately declines to respond.

Waiver may be recorded in two ways. Under the Central Reexamination Unit's Waiver of Statement Program, the Office contacts the patent owner by telephone after the request receives a filing date and before examiner review begins. The call is limited to waiver; merits discussion is not permitted. If the owner agrees, the Office records the waiver in an interview summary, and the owner need not—and should not—file a duplicate written memorialization because doing so may slow the proceeding. MPEP § 2249. If the Office has not already recorded a telephone waiver, the owner may instead file a short paper stating that it waives the § 1.530 statement and serve the paper on the requester. Id.

In a suitable case, the examiner may issue the reexamination order and first Office action on the same day or within a few days after an Office-requested waiver. Id. Waiver does not guarantee that timing or a particular overall schedule; examiner workload, complexity, appeals, and parallel litigation still matter. It simply removes a period that exists to accommodate an optional filing and the adversarial reply it triggers.

Most importantly, waiver does not concede patentability or surrender the right to respond to an Office action. It bypasses the preliminary party exchange and moves the case toward the examiner's developed position. If the district-court action is stayed, that sequencing may also help the owner explain that it selected a USPTO-authorized mechanism for accelerating the next substantive Office action rather than adding another round of party briefing.

VIII.       When Filing May Still Be Justified

The argument for waiver is strong, not categorical. The best reason to file is a discrete, objectively demonstrable error that can be corrected in a short submission and is unlikely to be repaired through the requester's reply. A facial misquotation of a reference, a mistaken relationship between two figures, or a readily resolved date problem may fit that description. If correction has a realistic prospect of producing immediate confirmation, early filing may be worth the reply it triggers.

But the comparison must be made explicitly. The question is not merely whether the examiner could benefit from the owner's explanation. It is whether the likely benefit exceeds the cost of showing that explanation to the requester and giving it two months to respond with refined theories and additional publications. If the issue is subtle, fact intensive, or susceptible to repair through another reference or rationale, waiver ordinarily remains preferable.

The timing and state of the litigation also matter. If the owner has already disclosed its principal construction, validity, and technical positions through contentions, claim-construction briefing, discovery, or expert reports, the requester may learn less from the statement than it would earlier in the case. That reduces—but does not eliminate—the incremental cost of filing. The statement still triggers a statutory reply and creates another public prosecution paper that may be used by other defendants or in later disputes.

A second argument is that a sophisticated requester has already presented its best case. That misses the value of the reply. The advantage is not simply another opportunity to add pages; it is the opportunity to read the owner's answer, identify the defenses the owner considers strongest, choose among alternative theories, and preempt the response the owner is likely to make to the examiner.

A third argument is that a court may expect prompt USPTO advocacy. The concern should be tied to a concrete judicial event, not a generalized desire to appear aggressive. A narrowly focused statement may be justified if it can materially affect an imminent stay, scheduling, or other case-management decision. Otherwise, waiver is fully consistent with diligence: the owner ends the requester's statutory briefing, moves toward the first Office action, and continues preparing the merits response.

The decision should therefore begin with three questions. What identified result can the statement achieve before the first Office action? What can the requester do with the information disclosed? And why can the argument not be made more effectively after the examiner identifies an actual rejection? Filing should require unusually clear answers, not a generalized desire to "tell the owner's side."

IX.             What the Patent Owner Should Do Before and After Waiving

Waiver should change the filing sequence, not the level of preparation. Counsel should begin the claim chart, prior-art investigation, claim-construction analysis, and response outline before communicating waiver whenever possible. Because the first Office action may accompany the order or follow within days, waiver can compress the owner's preparation period even as it eliminates the requester's statutory reply. MPEP § 2249. The team should identify unsupported mappings, test combination rationales, and determine which issues turn on claim language and which may require technical evidence.

Waiver controls the timing of optional advocacy; it does not suspend the duty of candor. The patent owner, its counsel, and others substantively involved in the reexamination remain responsible for disclosing patents and printed publications material to patentability. An information disclosure statement should be filed within two months after the order or as soon thereafter as possible. 37 C.F.R. § 1.555(a)–(b). The owner may satisfy that obligation through a separate information disclosure statement without making it part of a § 1.530 statement. A separate paper must comply with 37 C.F.R. § 1.98, be served as required, and remain confined to identifying the information and explaining its relevance rather than arguing the merits. 37 C.F.R. § 1.550(f); MPEP § 2280.

That work should be coordinated with the litigation team before any prosecution paper is filed. Terms disputed or likely to be disputed in claim construction should be identified. Proposed reexamination positions should be compared with infringement contentions, noninfringement defenses, expert reports, hearing transcripts, licensing positions, and the prosecution histories of related patents. The objective is not identical phrasing across different procedural settings; it is a set of positions that can coexist without creating avoidable tension.

Coherence does not require pretending that the two forums apply identical legal standards. For an unexpired patent, the USPTO generally gives claims their broadest reasonable interpretation consistent with the specification. In re Yamamoto, 740 F.2d 1569, 1571–72 (Fed. Cir. 1984). For an expired patent, the Office applies the framework of Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). The Office also evaluates unpatentability under a preponderance standard without applying § 282's presumption of validity, while a district court applies Phillips and requires invalidity to be proved by clear and convincing evidence. 35 U.S.C. § 282(a); Dome Patent L.P. v. Lee, 799 F.3d 1372, 1379–81 (Fed. Cir. 2015); Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. 91, 95 (2011). USPTO guidance directs the examiner to consider an existing judicial construction and explain a materially different interpretation. MPEP § 2258. The owner should account expressly for these differences while avoiding factual or intrinsic-record positions that cannot coexist.

The owner should also maintain an issue matrix showing which arguments have been presented in each forum and which must be preserved in response to an Office action. Fresenius is a warning against treating waiver as substantive inaction: an argument that succeeds in court does not protect the patent at the USPTO unless it is properly developed in the administrative record when required. 721 F.3d at 1335–36. Once the first Office action issues, the owner should answer every material rejection fully.

An examiner interview can help test the dispositive issues, and a third-party requester may not participate. MPEP § 2281. Any interview summary and written response should be drafted with the same litigation awareness as the substantive argument. The examiner's actual reasoning—not every hypothetical weakness in the request—should define the response.

Most importantly, the response should be no broader than the rejection requires. If one missing limitation resolves the asserted combination, the owner need not provide a global definition of the invention. If the rationale to combine fails, the owner need not characterize every possible implementation of a claim term. If a construction is too broad, the owner should explain the textual and intrinsic basis for the correct construction without converting a preferred embodiment into a claim requirement. Waiting for the Office action makes that discipline possible.

X.                Conclusion

The optional patent-owner statement is easy to view as a free opportunity to defend an issued patent. In a third-party-requested ex parte reexamination running alongside infringement litigation, it is not free. It triggers a requester reply, requires the owner to answer before the examiner has issued a rejection, reveals strategic information to a litigation adversary, and adds another paper to an intrinsic record that may affect the judicial case.

Waiver is not passivity. It is disciplined sequencing. It does not abandon a properly preserved threshold objection or excuse required disclosure; it limits optional merits advocacy. The patent owner prepares immediately, denies the requester an automatic post-statement reply, moves the proceeding toward the examiner's developed position, and files its merits response when there is an actual rejection to answer. The parallel-litigation cases show why that discipline matters: reexamination language can narrow claims, cross patent families and defendants, support dispositive motions, or generate costly disputes even when the owner ultimately defeats the proposed disclaimer.

In most litigated ex parte reexaminations, the better first response is therefore not an opening statement. It is a waiver—and a disciplined decision to wait for the rejection that actually must be answered.