JD Supra Law

FEBRUARY 7, 2023

LLC, the District of Delaware ruled on summary judgment that ASC is estopped from asserting two obviousness grounds against a patent claim because it raised the same grounds in inter partes reexamination proceedings. At issue was whether pre-America Invents Act (AIA) reexamination estoppel under 35 U.S.C. § ASC Engineered Sols.,

Invention 98

Invention Patent 98

Patent Trademark Blog

MARCH 13, 2024

How do you defend a patent infringement claim? Accusations of patent infringement should be taken seriously. Whether they are asserted in the form of cease-and-desist letter or an Amazon patent violation, an accused infringer needs to gauge the seriousness of the problem. Do the accused products infringe the asserted patent?

Patent Infringement 52

Patent Infringement Cease and Desist Patent Design Patent 52

JD Supra Law

OCTOBER 25, 2023

This case addresses how Patent Term Adjustment (PTA) interacts with obviousness-type double patenting (ODP). for infringement of four patents. Subsequently, Samsung requested four ex parte reexaminations asserting that the patents were unpatentable based on ODP, which was not raised by the examiner during prosecution.

Patent 62

Patent 62

JD Supra Law

JUNE 5, 2023

In the final installment of this three-episode series, Troutman Pepper attorney Andy Zappia moderates a discussion with his colleagues Michael Goldman and Megan Thisse O'Gara on the mechanics and strategic considerations for using reexamination as a means to amend claims in IPR and PGR proceedings. By: Troutman Pepper

Intellectual Property 55

Intellectual Property Patent 55

JD Supra Law

JANUARY 25, 2024

Cellect owned four patents with claims that were found unpatentable by the PTAB in ex parte reexaminations for obviousness-type double patenting. The patents were granted Patent Term Adjustment (“PTA”) for the Office’s delay during prosecution pursuant to pre-AIA 35 U.S.C. §

Editing 70

Editing Patent IP 70

JD Supra Law

OCTOBER 9, 2023

The Patent Trial and Appeal Board (“PTAB”) recently published a revised PTAB Oral Hearing Guide (August 2023) updating prior guidance on hearings. Submitting demonstratives for ex parte and reexamination proceedings; and 4. Submitting demonstratives for ex parte and reexamination proceedings; and 4. By: Jones Day

Publishing 65

Publishing Patent 65

JD Supra Law

FEBRUARY 19, 2024

The recent resurgence in ex parte reexamination demonstrates the importance of this post-grant review vehicle. By: Sterne, Kessler, Goldstein & Fox P.L.L.C.

Patent 62

Patent 62

IP Watchdog

JANUARY 8, 2022

Reexaminations continue to gain favor, seeing a 47% increase over last year; the Patent Trial and Appeal Board (PTAB) sees fewer filings; and filings by non-practicing entities (NPEs) rose by 4%, according to Unified Patents’ 2021 Patent Dispute Report: Year in Review, published earlier this week.

Reporting 119

Reporting Publishing Patent Patent Infringement 119

IP Law 360

MAY 31, 2023

Patent and Trademark Office has rebuffed the latest bids from Salesforce to strike out patents at the heart of a nearly decade-old suit over a mobile app, one of the first times that ex parte reexaminations were rejected because of ties to failed challenges from defensive patent group RPX Corp. An attorney at the U.S.

Patent 96

Patent Trademark 96

IP Watchdog

SEPTEMBER 29, 2021

Court of Appeals for the Federal Circuit (CAFC) ruled today in a precedential opinion that Alarm.com, which was denied institution on three inter partes review (IPR) petitions it filed against patents owned by Vivint, Inc., Patent and Trademark Office (USPTO) to grant the reexamination request after it had denied the IPRs under 35 U.S.C. §

Patent 85

Patent Trademark Patent Infringement Government 85

IP Law 360

FEBRUARY 9, 2024

Supreme Court to reject a patent owner's petition asking to reexamine the obviousness analysis done on her now-invalid image ironing patents, arguing that her argument was forfeited when it was not brought before the Patent Trial and Appeal Board. Two office supply companies have told the U.S.

IP 52

IP Patent 52

The IP Law Blog

JANUARY 6, 2022

28, 2021), the Court granted defendants’ motion to stay pending ex parte reexamination even though the case had already previously been stayed pending inter partes review. As background, on March 19, 2020, the court granted a motion to stay the instant case during the pendency of an inter partes review of one of the patents at issue.

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Litigation Patent Art Patent Law 98

Patent Trademark Blog

MARCH 10, 2022

When would an expungement or reexamination be available? This post will cover some key differences between an expungement and a reexamination, including situations that might warrant one or the other. Reexamination = repeat examination. What are the requirements for reexamination? Not in the past, and not now.

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Registration Registering Trademarks Trademark IP 98

IP Law 360

NOVEMBER 28, 2023

Patent and Trademark Office for an ex parte reexamination of chemical and seed company Corteva Agriscience's patent on insect-resistant plants on the basis of obviousness over another Corteva patent. A company that specializes in plant breeding technology on Tuesday asked the U.S.

Patent 52

Patent Technology Trademark 52

JD Supra Law

FEBRUARY 16, 2023

Varian filed two petitions for IPR of BMI’s ’096 patent, which the Board instituted. A previously filed, parallel ex parte reexamination on the ’096 patent, initiated by Varian, was also ongoing during the IPRs. The reexamination challenged, among others, claims 1 and 18 of the ’096 patent.

Patent 52

Patent 52

JD Supra Law

DECEMBER 6, 2022

On November 16, 2022, the United States Patent and Trademark Office (“PTO”) vacated a reexamination proceeding because the patent challenger relied on unpatentability grounds that reasonably could have been raised in an earlier inter partes review. Ex parte Reexamination of U.S. 16, 2022).

Trademark 52

Trademark Patent 52

LexBlog IP

DECEMBER 12, 2022

Re-work Frustrates Patent Owners & The System. I have written about Patent Owner estoppel for years. But, it is fairly common for unsuccessful Patent Owners to go right back after a PTAB loss and pursue substantively identical claims through patent reissue or reexamination. 16,654 (Apr. 22, 2019)).

Patent 52

Patent Patent Application Branding Brands 52

JD Supra Law

SEPTEMBER 6, 2023

Cellect owns four patents directed to devices (such as personal digital assistant devices or phones) comprising image sensors. Samsung then requested ex parte reexaminations, asserting that the patent claims were unpatentable based on obviousness-type double patenting (ODP). Opinion by Lourie, joined by Dyk and Reyna.

Patent 65

Patent 65

IP Watchdog

FEBRUARY 23, 2024

Unified Patents is again growing its legal department, and seeks to add an experienced, registered patent attorney. Patent and Trademark Office (USPTO), in particular working on ex parte reexamination proceedings, post-grant petitions (IPR, PGR, and CBM), or other administrative drafting and litigation experience.

Patent 52

Patent Journalism Editing Registration 52

IP Watchdog

OCTOBER 27, 2023

Court of Appeals for the Federal Circuit (CAFC) affirmed a pair of final written decisions at the Patent Trial and Appeal Board (PTAB) invalidating patent claims owned by Monterey Research and covering improved static random access memory (SRAM) cell designs. On October 26, a panel majority of the U.S.

Designs 59

Designs Design Design Patent Patent 59

LexBlog IP

OCTOBER 4, 2023

Inter partes review (IPR) replaces inter partes reexamination as an avenue for a third party’s patentability challenge and the provision in the AIA for inter partes review was effective on September 16, 2012. Read more

Patent 52

Patent Intellectual Property 52

JD Supra Law

SEPTEMBER 6, 2023

28, 2023) In a significant appeal from ex parte reexamination proceedings before the Patent Trial and Appeal Board, the Federal Circuit addressed whether related patents can be invalidated for double patenting when they expire on different dates due to patent office delays.

Patent 59

Patent 59

IP Watchdog

MARCH 2, 2022

District Court for the Eastern District of Virginia affirming the United States Patent and Trademark Office (USPTO) Director’s vacatur of ex parte reexamination proceedings based on the estoppel provision of the inter partes review (IPR) regime. sued Alarm.com for infringement of three patents, U.S. Patent Nos.

Patent 122

Patent Trademark Litigation Intellectual Property 122

JD Supra Law

MARCH 4, 2022

Hirshfeld, the US Court of Appeals for the Federal Circuit ruled that decisions by the US Patent and Trademark Office Director vacating ex parte reexamination based on estoppel may be subject to judicial review under the Administrative Procedure Act. In Alarm.com Inc. By: Morgan Lewis

Trademark 97

Trademark Patent 97

Fish & Richardson Trademark & Copyright Thoughts

OCTOBER 5, 2022

Together, they collectively replace inter partes reexamination, with post-grant review being available immediately after patent issuance, and inter partes review becoming available only after the period for post-grant review has passed. Final Rules for Trials before the Patent Trial and Appeal Board.

Litigation 52

Litigation Settlement Patent Public Use 52

JD Supra Law

MARCH 18, 2022

Hirshfeld1 the Federal Circuit analyzed whether a party’s challenge to the United States Patent & Trademark Office (“USPTO”) Director’s decision to vacate requests for ex parte reexamination without deciding if a “substantial new question of patentability” was raised, is subject to judicial review.

Trademark 98

Trademark Patent 98

Patently-O

OCTOBER 7, 2022

D746,078 (Patent being litigated). Zahner sued Katri Sales for infringement, and the defendant turned-around and filed a request for ex parte reexamination. But, the design patent also claimed priority to Zahner’s prior utility patent application (Serial No. Close-up of the Design Patent drawing.

Design Patent 78

Design Patent Designs Design Patent 78

IP Watchdog

JANUARY 3, 2023

The United States Patent and Trademark Office (USPTO) issued a Notice on the “Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and Appeal Board” on July 29, 2022 (87 FR 45764-67), without a big reaction from the IP community.

Patent 103

Patent IP Trademark Law 103

LexBlog IP

OCTOBER 12, 2021

Section 325(d) gives the Patent Trial and Appeal Board (“PTAB”) discretion to deny a post-grant petition when “the same or substantially the same prior art or arguments previously were presented to the Office.” The Federal Circuit has now held that § 325(d) applies to requests for ex parte reexamination.

Patent 52

Patent Art Intellectual Property 52

JD Supra Law

SEPTEMBER 15, 2022

the Federal Circuit held that a patent owner lacked standing to appeal an inter partes review (IPR) decision as to a claim the patent owner had previously canceled in a separate ex parte reexamination proceeding. Elekta Inc., By: Fitch, Even, Tabin & Flannery LLP

Patent 52

Patent 52

JD Supra Law

FEBRUARY 18, 2022

appealed the inter partes reexamination decision of the Patent Trial and Appeal Board (Board) holding un- patentable as obvious original claims 1–19, 28, and 31 of SynQor’s patent, U.S. 7,072,190 as well as newly presented claims 34–38, which were proposed during the reexamination proceeding. SynQor, Inc.

Patent 52

Patent 52

Intellectual Property Law Blog

MARCH 15, 2021

District Court of Delaware that patent claims were invalid for indefiniteness based on conflicting positions taken by the patentee during prosecution. After further prosecution, a patent was granted. Later, the patent was subjected to ex parte reexaminations. Background. Infinity Computer Products , 20-1189 at 12.

Patent 100

Patent Public Domain Patent Application Art 100

JD Supra Law

MARCH 23, 2022

Ex parte reexaminations have re-emerged as an increasingly important component of patent litigation and licensing negotiations. Ex parte reexamination requests have increased dramatically—often providing a. Over the last few years IPR institution rates have declined. By: Sterne, Kessler, Goldstein & Fox P.L.L.C.

Invention 52

Invention Licensing Litigation Patent 52

JD Supra Law

JULY 11, 2023

Patent and Trademark Office (“USPTO”) terminated two ex parte reexaminations in view of inter partes review (“IPR”) proceedings initiated by a different party. The decisions represent another loss for Salesforce following a decade of legal efforts to strike down patents assigned to Applications in Internet Time, LLC (“AIT”).

Trademark 40

Trademark Patent 40

Fish & Richardson Trademark & Copyright Thoughts

OCTOBER 5, 2022

Ex parte reexamination (EPRx) has been available since 1981 (see MPEP 2200 ) and remains available under the America Invents Act (AIA). reexamination) of the patent in question. For the most part, as its name implies, ex parte reexamination proceedings involve only the patent owner and the USPTO.

Art 40

Art Invention Patent Litigation 40

IP Law 360

NOVEMBER 3, 2023

Patent and Trademark Office over its decision to throw out the car brand's bid to reexamine the patentability of a cruise control patent, the latest fight in a larger one over the patent. BMW has sued the U.S.

Patent 40

Patent Branding Brands Branding 40

LexBlog IP

FEBRUARY 24, 2022

Dispute Over Reexamination Vacatur Sent Back to VA Court. Indeed, patent reexamination filings — the clunky mechanism the AIA was supposed to supplant — surged by 60+% last year. The sole express textual preclusion in the ex parte reexamination scheme does not support preclusion here. § 315(e)(1).

Invention 52

Invention Patent Art Government 52