IP Law 360

SEPTEMBER 27, 2022

Accord has created exacting standards that must be met in order for negative limitations in patent claims to satisfy the written description requirement, but whether the dissent is correct that the majority opinion heightened the standard is an arguable point, say Jonathan Fitzgerald and Jaime Choi at Snell & Wilmer.

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Patent 75

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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Patent IP Law Trademark 102

Patent Trademark Blog

MARCH 10, 2022

When would an expungement or reexamination be available? Known as TMA, the new rules give IP owners more cost-effective ways to attack trademark registrations based on non-use. Known as TMA, the new rules give IP owners more cost-effective ways to attack trademark registrations based on non-use. Not in the past, and not now.

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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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Reporting Publishing Patent Patent Infringement 118

Patent Trademark Blog

MAY 15, 2024

What is a patent declaratory judgment lawsuit? A patent declaratory judgment action is an infringement lawsuit in reverse. The patent owner is the defendant. Need to defend a patent infringement claim? Contact US patent attorney Vic Lin at (949) 223-9623 or at vlin@icaplaw.com to explore how we can help.

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Patent Infringement Cease and Desist Patent Due Diligence 59

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.

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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. §

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Patent Trademark Patent Infringement Government 85

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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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.

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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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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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Patent Trademark Litigation Intellectual Property 121

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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Designs Design Design Patent Patent 58

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.

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Patent Journalism Editing Registration 52

JD Supra Law

NOVEMBER 4, 2022

Kilpatrick Townsend’s Ted Davis recently spoke at the Federal Bar Association’s IP Law Fall Conference 2022 on the topic of “Petitions for Expungement or Reexamination and Other Aspects of the Trademark Modernization Act.”

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Trademark IP Law Patent 52

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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Patent Intellectual Property 52

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

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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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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Art Patent Trademark Government 68

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.

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Patent Branding Brands Branding 40

Patent Trademark Blog

JULY 11, 2022

Mission Impossible: Can you block a design patent application? Design patent applications are not publicly viewable. It can be nearly impossible to figure out what design patent applications are pending. Suppose your competitor indicates that their product is patent-pending. But, it won’t be easy.

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IP Law 360

DECEMBER 1, 2021

An inventor has asked the Federal Circuit to reverse an inter partes reexamination decision that invalidated his patent covering a device for unclogging drains — asserted in a decade-old New Jersey lawsuit — and that he says was "so weak that no one will appear to defend it."

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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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Litigation Patent Art Intellectual Property 52

IP Law 360

JANUARY 25, 2022

A former chief judge of the Patent Trial and Appeal Board said Tuesday there's been a noticeable increase in requests for ex parte reexaminations, which jumped more than 60% in fiscal year 2021 over the prior year.

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Patent 75

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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Patent Intellectual Property 52

IP Intelligence

SEPTEMBER 12, 2023

An applicant files a first patent application with medium-to-narrow claim coverage. The first patent application issues with some or substantial patent term adjustment (PTA) caused by one or more delays at the U.S. Patent and Trademark Office (e.g., Patent A – earlier-filed and later-expiring patent).

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Patent Patent Application Ownership Government 59

IP Law 360

OCTOBER 12, 2023

Patent Trial and Appeal Board in several key ways including inter partes review, post-grant review and ex parte reexamination practice, say Jeffrey Shneidman and Jacqueline Tio at Fish & Richardson. Recently proposed legislation, the PREVAIL Act, would change post-grant practice before the U.S.

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Patent 40

IP Law 360

DECEMBER 13, 2021

Samsung secured a reexamination of a wireless battery charging patent after losing an inter partes review bid, but the underlying infringement case will go to trial Jan. 3, after Eastern District of Texas Judge Rodney Gilstrap denied Samsung's motion for a stay on Friday.

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Patent 75

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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The IP Law Blog

MARCH 26, 2021

The validity of a United States patent can be challenged in federal court litigation. Patents can also be challenged in the U.S. Patent and Trademark Office, which, in most cases, is a quicker and less costly process. In IPRs and PGRs, anyone except the patent owner may file a petition to challenge the patent.

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Patent Litigation Art Ownership 52

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 discussed her new appointment as WIPO’s first IP and Gender Champion. Adam Ernette (UIC) reports on the seminar.

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Reporting Law IP Patent 57

IP Law 360

FEBRUARY 24, 2022

Patent and Trademark decisions barring it from seeking ex parte reexaminations of three Vivint Inc. patents, reversing a Virginia federal judge's ruling that judicial review of the USPTO's estoppel decisions isn't available. The Federal Circuit on Thursday revived Alarm.com's challenge to several U.S.

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IP Law 360

JANUARY 11, 2022

Patent and Trademark Office director that barred it from seeking ex parte reexaminations of three Vivint Inc. patents it was accused of infringing should be subject to judicial review. A Federal Circuit panel on Tuesday seemed open to Alarm.com's argument that August 2020 decisions by the U.S.

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Trademark Patent 52

IP Law 360

DECEMBER 8, 2021

Patent and Trademark Office can reexamine patents after denial of inter partes reviews, the agency should scrutinize serial and parallel ex parte reexamination requests to curb abusive petitions, says Craig Smith at Lando & Anastasi. Following the recent Federal Circuit Vivint decision, narrowing when the U.S.

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IP Law 360

OCTOBER 4, 2021

Patent and Trademark Office can reexamine patents after an inter partes review petition is denied may encourage patent owners to attack a growing number of reexamination requests by petitioners, but the reach of the ruling appears limited, attorneys say. A Federal Circuit decision narrowing when the U.S.

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IP Law 360

NOVEMBER 18, 2022

Patent and Trademark Office has terminated a reexamination it previously ordered of a patent on emission control systems for engines, finding that the challenger could have raised the same arguments in an earlier inter partes review.

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Fish & Richardson Trademark & Copyright Thoughts

SEPTEMBER 2, 2021

IAM recently named four Fish & Richardson principals to the 2021 edition of “Strategy 300: The World’s Leading IP Strategists.” This exclusive list honors legal professionals across all industries who have earned a reputation for developing strategies that maximize the value of IP portfolios. 2021 IAM Strategy 300. John Dragseth.

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IP Law 360

NOVEMBER 22, 2022

The Federal Circuit on Tuesday shot down a pair of mandamus petitions from patent owners seeking to end ex parte reexamination proceedings of their patents, ruling that both parties must wait until final decisions in their respective cases are issued before they can appeal.

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Patent 40