USPTO Director Scrutinizes Potentially Susceptible Pokémon Patent

We have written multiple pieces about the ongoing intellectual property dispute between The Pokémon Company / Nintendo (collectively “Nintendo”) and PocketPair (makers of the 2024 smash hit video game Palworld).[1] On November 3, 2025, this ongoing saga took a relatively surprising turn, at least as it relates to one issued patent in Nintendo’s patent portfolio.

As we discussed in our IP in Gaming newsletter last month, Nintendo recently obtained a new patent covering in-game battle mechanics (U.S. Pat. No. 12,403,397).[2] Many commentators were publicly critical of this patent as being overbroad and/or not adequately examined by the United States Patent and Trademark Office (USPTO) prior to issuance.[3] It is worth noting that the ‘397 patent was filed by Nintendo prior to PocketPair’s early access release of Palworld, so it requires some speculation to surmise that Nintendo filed this patent application with the intent of targeting PocketPair.[4] Still, under a traditional patent litigation paradigm, some might have assumed that Nintendo would eventually sue (or at least threaten to sue) PocketPair for patent infringement of this newly minted patent. At that point, PocketPair might attempt to invalidate the patent (either in United States District Court or in a proceeding at the USPTO, such as an Inter Partes Review). However, now (only two months after the ‘397 patent was issued), something unusual has happened. The recently appointed Director of the USPTO, John A. Squires), has ordered an Ex Parte Reexamination of the patent.[5]

A traditional Ex Parte Reexamination is a proceeding established under 35 U.S.C. § 302 whereby any person (e.g., the patent owner or a third party) can request that the USPTO reconsider the validity of an issued patent based on prior art that the person believes has a bearing on the patentability of any claim in the issued patent.[6] If, within three months of the request, the USPTO determines that there is a “substantial new question of patentability” raised based on the prior art, the USPTO will conduct a reexamination.[7] The reexamination will then proceed in a similar fashion to traditional patent examination (with some minor distinctions). If the requesting party was a third party, they will not be permitted to be involved in the reexamination process (i.e., the reexamination proceeds ex parte).

Reexam proceedings are fairly uncommon, but certainly not unheard of. For example, according to the USPTO’s statistics, 318 requests for Ex Parte Reexamination were filed between October 1, 2024 and June 30, 2025.[8] Likewise, between the creation of the Ex Parte Reexamination proceeding (July 1981) and September 30, 2024, patent owners have requested Ex Parte Reexamination 4,066 times and third parties have requested Ex Parte Reexamination 11,300 times.[9]

However, and most interestingly in Nintendo’s case, the USPTO Director can themselves request Ex Parte reexamination. This is quite rare. In fact, this only occurred in 175 (or about 1.1%) of the reexaminations filed between July 1, 1981, and September 30, 2024.[10] Thus, it might be fair to surmise that the USPTO Director only files reexamination requests in cases that they feel are of particular interest to the public and/or involve some potentially precedential issues. One substantial distinction worth noting between director-initiated Ex Parte Reexamination proceedings and all other Ex Parte Reexamination proceedings is the rate at which the patentee is ultimately forced to cancel claims. According to the USPTO’s statistics, when considering all Ex Parte Reexams from July 1981 to September 2024, in 21.6% of cases, all the originally patented claims were maintained; in 13.7% of cases, all the originally patented claims were canceled; and in 64.7% of cases, the originally patented claims were modified prior to being accepted.[11] Significantly, though, in cases where the Ex Parte Reexam was initiated by the Director, all of the originally patented claims were canceled 26.4% of the time.[12]

In other words, the percentage of cases in which the originally patented claims are completely canceled as a result of the reexamination proceeding nearly doubles when the reexamination is director-initiated. If the Nintendo Ex Parte Reexam follows the prior director-initiated statistics put out by the USPTO (which, admittedly, are based on a relatively small sample size of 175), the claims of the Nintendo patent have a 9.8% chance of making it through unscathed, a 26.4% chance of being entirely canceled, and a 63.8% chance of being amended.[13]

While I will refrain from diving too deep into the merits of the substantial new question of patentability here, the contentions at least warrant mentioning. In the reexamination order, the Director questioned the Examiner’s statement that the prior art fails to teach that “a player can be allowed to perform two types of battles, that is, a battle by the first mode in which the player performs an operation input and a battle by the simpler second mode” in the Examiner’s Reasons for Allowance. In doing so, the Director pointed to two pieces of prior art: a published U.S. patent application from 2002 assigned to Konami (U.S. Pat. App. Pub. No. 2002/0119811) and a published U.S. patent application from 2020 assigned to Nintendo, itself (U.S. Pat. App. Pub. No. 2020/0254335). It will be up to the reexamination examiner to determine just how relevant those two pieces of prior art are.

Lastly, there is something to be said about what the aggressive decision to pursue a director-initiated Ex Parte Reexam might, itself, indicate about priorities at the USPTO. As noted above, many commentators have decried the issuance of the ‘397 patent as a failure of the USPTO examination process and as a potentially overzealous patentee taking advantage of shortcomings of the USPTO. Thus, it is possible that Director Squires and those working under him took the criticism (and bad press) seriously, performed their own analysis of the patent in question, and ultimately concluded that there was an issue to be remedied or, at the very least, investigated further. This decision to potentially strike down an issued patent is particularly notable when juxtaposed with Director Squires’s recent pro-patentee track record with respect to discretionary denials.[14]

At least with respect to U.S. patent law, the institution of this reexamination will likely give some patentees pause when considering whether, and how aggressively, to pursue patents with very broad claims. Traditionally, while patentees certainly would expect to be counterattacked by those they were targeting for alleged infringement, patentees rarely needed to consider the possibility of an attack initiated by the USPTO itself. It will be interesting to see if public sentiment influences the USPTO’s Ex Parte Reexamination strategy moving forward. If so, this might be particularly relevant in the gaming industry, as gamers are just about as vocal a crowd as any, and love getting out their pitchforks against perceived injustice.

[1] See, e.g., https://patentdocs.org/2024/04/30/palworld-friend-or-foe/; https://www.gamesindustry.biz/nintendos-patents-were-designed-to-take-on-palworld; https://www.mbhb.com/intelligence/snippets/what-the-pokemon-companys-patent-applications-are-evolving/; https://patentdocs.org/2025/05/12/pocketpair-provides-post-on-permutations-to-palworld-based-on-pokemon-patents/comment-page-1/; https://www.mbhb.com/intelligence/snippets/what-do-changes-to-palword-mean-for-the-pocketpair-nintendo-ip-dispute/.

[2] https://www.mbhb.com/intelligence/snippets/gaming-industry-ip-news-an-active-nintendo-and-a-significant-copyright-debate/

[3] See, e.g., https://www.pcgamer.com/gaming-industry/an-embarrassing-failure-of-the-us-patent-system-videogame-ip-lawyer-says-nintendos-latest-patents-on-pokemon-mechanics-should-not-have-happened-full-stop/; https://www.vice.com/en/article/baldurs-gate-3-dev-reveals-why-nintendos-pokemon-patent-could-be-dangerous/

[4] The ‘397 patent was filed as U.S. Pat. App. No. 18/116,023 on March 1, 2023 and Palworld was released into early access on January 19, 2024.

[5] https://www.mbhb.com/wp-content/uploads/2025/11/Reexam_Order.pdf

[6] https://www.law.cornell.edu/uscode/text/35/302

[7] https://www.law.cornell.edu/uscode/text/35/303

[8] https://www.mbhb.com/wpcontent/uploads/2025/11/USPTO_Reexam_Statistics.pdf

[9] https://www.mbhb.com/wpcontent/uploads/2025/11/USPTO_Reexam_Lifetime_Statistics.pdf

[10] https://www.mbhb.com/wpcontent/uploads/2025/11/USPTO_Reexam_Lifetime_Statistics.pdf

[11] https://www.mbhb.com/wpcontent/uploads/2025/11/USPTO_Reexam_Lifetime_Statistics.pdf

[12] https://www.mbhb.com/wpcontent/uploads/2025/11/USPTO_Reexam_Lifetime_Statistics.pdf

[13] https://www.mbhb.com/wpcontent/uploads/2025/11/USPTO_Reexam_Lifetime_Statistics.pdf

[14] https://ipwatchdog.com/2025/10/19/squires-takes-ipr-institution-decisions-memo-ptab-judges/