IP Watchdog

NOVEMBER 27, 2023

A patent owner prevails in federal district court, and also prevails at the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) challenge, but somehow finds themselves still fighting an ex parte reexamination. We’ve heard the story in the past, which is sadly all too common. How is this possible?

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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.

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JD Supra Law

MARCH 1, 2023

Please join Troutman Pepper's Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings. Be on the lookout next. By: Troutman Pepper

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Patently-O

JANUARY 22, 2024

by Dennis Crouch The Federal Circuit has denied Cellect’s en banc petition on the interplay between obviousness-type-double-patenting and patent-term-adjustment. The situation here is creating some strategic challenges for patentees with large patent families. That appeal process will typically take years to complete.

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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.

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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.

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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.

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JD Supra Law

SEPTEMBER 3, 2021

After an inter partes review (“IPR”) is instituted, a patent owner may move to amend challenged claims to overcome the prior art. For example, the US Patent & Trademark Office (Office) has itself explained that a patent owner may file a reissue application or a request for ex parte reexamination.

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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. §

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More Than Your Mark

JULY 2, 2021

Hologic, Incorporated that the doctrine of assignor estoppel (a rule that prevents people who assign their patents to a company from then challenging the validity of their patent) is alive and well, but subject to certain important exceptions. The Validity of a Patent. Contact Norris McLaughlin about Patent Protections.

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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.

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LexBlog IP

JANUARY 7, 2022

The Patent Reexamination and Invalidation Department (PRID) of the China National Intellectual Property Administration (CNIPA) maintained the validity of Chinese design patent No. the ’645 patent) in an invalidation proceeding. [1] the ’645 patent) in an invalidation proceeding. [1]

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LexBlog IP

JUNE 23, 2022

The Patent Reexamination and Invalidation Department (PRID) of the China National Intellectual Property Administration (CNIPA) invalidated the CN Invention Patent No. within six months before the priority date of the ’987 patent), and all the inventors of the ’987 patent are also authors of the article.

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LexBlog IP

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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Patently-O

MAY 30, 2024

2023) has set the stage for a potentially significant Supreme Court case on the interplay between the Patent Term Adjustment (PTA) statute, 35 U.S.C. § 154(b), and the judicially-created doctrine of obviousness-type double patenting (ODP). 23-1231 (U.S. May 28, 2024).

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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)).

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LexBlog IP

MARCH 13, 2023

Combining Multiple Inventions in an Single Patent Application @media screen and (max-width: 1023px) {.thegem-vc-text.thegem-custom-640f87a71087f6782{display: However, is combining multiple related inventions into a single patent application worth the cost savings? thegem-vc-text.thegem-custom-640f87a71087f6782{display: block!important;}}@media

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LexBlog IP

MARCH 29, 2022

The Patent Reexamination and Invalidation Department (PRID) of the China National Intellectual Property Administration (CNIPA) maintained the validity of CN Invention Patent No. the ’000 patent) in an invalidation proceeding. [1] the ’000 patent) in an invalidation proceeding. [1]

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IP Watchdog

NOVEMBER 28, 2022

Patent and Trademark Office’s (USPTO’s) grant of a request for ex parte reexamination of Sound View Innovations’ U.S. The '213 patent covers a "Method for Streaming Multimedia Information Over Public Networks." 6,708,213 by DISH Network LLC.

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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.

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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

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Fish & Richardson Trademark & Copyright Thoughts

MAY 27, 2021

Fish & Richardson is proud to announce that six of its attorneys were named recipients of the Pro Bono Achievement Certificate by the United States Patent and Trademark Office (USPTO). This recognition acknowledges those law firms and attorneys who help make the Patent Pro Bono Program a success. Jacqueline Tio – Georgia PATENTS.

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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).

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The IP Law Blog

MARCH 17, 2022

When doing so, parties need to actively consider whether they intend that forum selection clause to prohibit filing petitions, such as petitions for inter partes review of patents, with the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”). Patent and Trademark Office …. emphasis added).

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Patently-O

JUNE 21, 2024

by Dennis Crouch A second amicus brief has been filed – this one from the Intellectual Property Owners Association (IPO) – encouraging the Supreme Court to grant certiorari in Cellect, LLC v. The case concerns the interplay between the Patent Term Adjustment (PTA) statute, 35 U.S.C. § Vidal , No.

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Fish & Richardson Trademark & Copyright Thoughts

SEPTEMBER 2, 2021

His practice centers on complex legal analysis and writing – in federal appeals, patent prosecution, reexamination, pre-suit and due diligence investigations, and patent opinions. Christine Goddard. Principal Christine Goddard, Ph.D., Eric Schulman.

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LexBlog IP

FEBRUARY 9, 2023

315(e)(1) from requesting ex parte reexamination of claims 6-11, 14, 15, and 19 of the ‘821 patent on the grounds raised in the request due to improper certification relating to estoppel under Rule 1.510(b)(6). The requester was estopped under 35 U.S.C. Read more

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LexBlog IP

JANUARY 27, 2023

10,464,992 (“the ’992 patent”), assigned to Regeneron Pharmaceuticals, Inc. While the ’992 patent was included in the Complaint against Mylan, it is not one of the narrowed six patents Regeneron indicated it will pursue for expedited trial. Mylan Pharmaceuticals Inc. Regeneron Pharmaceuticals, Inc.,

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LexBlog IP

AUGUST 22, 2023

According to the petition, the ’992 patent claims “encompass a formulation comprising the VEGF inhibitor protein, aflibercept, which Regeneron markets under the trade name EYLEA®, and three excipients that are commonly used to stabilize proteins like aflibercept: polysorbate 20, phosphate buffer, and sucrose.”

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LexBlog IP

NOVEMBER 19, 2021

29, 2021), the Patent Trial and Appeal Board affirmed a reexamination examiner’s final rejection of Vivint’s patent claims as unpatentable over prior art. In due course, the Patent Office would have issued a certificate canceling those claims. Appeal 2020-1992 (Fed. presented to the Office.” ” Id.

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LexBlog IP

MARCH 10, 2022

Among other things, the TMA created new procedures for challenging pending applications and registrations and updated several rules relating to the prosecution of trademark applications before the United States Patent and Trademark Office (“USPTO”). Intellectual Property , Trademarks. Related Services.

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LexBlog IP

JULY 22, 2021

The United States Patent and Trademark Office (USPTO) has announced the final deadline for submission of applications for its Patents for Humanity COVID-19 award: The submission deadline is 5 p.m. The USPTO will only continue to accept applications for the Patents for Humanity COVID-19 category until September 30, 2021.

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The IPKat

JANUARY 9, 2022

Back in October, University of Illinois Chicago School of Law’s Center for Intellectual Property (“IP”), Information, and Privacy Law organized and virtually hosted its International IP Practice Seminar. Jorgenson also discussed how COVID-19 affected WIPO and the Patent Cooperation Treaty (PCT) system. Peter Spies (DTL Ltd.),

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IP Watchdog

OCTOBER 1, 2021

billion agreement to buy Acceleron Pharma in a bid to stave off the 2028 patent cliff for Keytruda. billion agreement to buy Acceleron Pharma in a bid to stave off the 2028 patent cliff for Keytruda.

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LexBlog IP

JULY 17, 2023

Patent Trial and Appeal Board (PTAB). The PREVAIL Act serves as a supplement to the proposed STRONGER Patents Act, introduced in 2019. Ensure UPSTO has resources it needs to administer a patent system that promotes innovation. The drafters have also identified multiple petitions as a source of increased cost to patent owners.

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LexBlog IP

MARCH 17, 2022

When doing so, parties need to actively consider whether they intend that forum selection clause to prohibit filing petitions, such as petitions for inter partes review of patents, with the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”). Patent and Trademark Office.

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LexBlog IP

JULY 28, 2023

On July 19 and 20, 2023, the PTAB granted institution of IPR2023-00442 , filed by Samsung Bioepis regarding Regeneron’s Patent No. 10,130,681 which is directed to treating angiogenic eye disorders with alibercept, and institution of IPR2023-00462 , filed by Celltrion regarding Regeneron’s Patent No. 90/014,448). .”

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