IP Watchdog

FEBRUARY 23, 2024

Unified Patents is again growing its legal department, and seeks to add an experienced, registered patent attorney. Applicants should have at least 5 years of law firm or other relevant experience before the U.S.

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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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JD Supra Law

APRIL 17, 2024

Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the USPTO formed the Central Reexamination Unit (CRU) and staffed it with 15 year+ Examiners and legal experts.

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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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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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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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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. Federal Circuit Decision. Conclusion.

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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.

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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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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.,

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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

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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. §

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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.

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Patent 62

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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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.

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Patent 62

Patently-O

AUGUST 28, 2023

28, 2023) regarding how Patent Term Adjustment (PTA) interacts with terminal disclaimers and obviousness-type double patenting (ODP). This case establishes binding precedent that a terminal disclaimer cuts off any extended patent term granted through PTA. Thus, PTE extends beyond a disclaimed term, while PTA does not.

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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

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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.

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LexBlog IP

SEPTEMBER 5, 2023

The Federal Circuit recently upheld the Patent Office’s decision to reject claims in four separate reexamination cases due to obviousness-type double patenting (ODP). Unless overturned, this decision will significantly affect patent families that have patents with different expiration dates.

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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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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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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.

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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).

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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.

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Patent 59

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.

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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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JD Supra Law

AUGUST 5, 2022

The first case involves the denial of a stay pending reexamination proceedings issued by the Honorable Alan D. Mazzant, III, granted the patent owner’s motion for stay pending resolution of the defendant’s petitions for inter partes review (IPR). In the second case, the Honorable Amos L. Finally, the Honorable J.

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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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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

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LexBlog IP

AUGUST 8, 2023

The Patent Office is not supposed to issue separate patents for the same invention to competing inventors. Several statutory provisions empower the Office to reject pre-AIA patent application claims of the later inventor. But sometimes it’s not clear who is the later inventor. Those provisions are therefore unhelpful.

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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

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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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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.

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Patent 52

JD Supra Law

MARCH 1, 2023

In this first of a three-episode series, Troutman Pepper attorney Andy Zappia moderates a discussion with his colleagues Michael Goldman and Megan Thisse O'Gara on the pros and cons of reissue versus reexamination as a means to amend claims in the context of IPR and PGR proceedings. Be on the lookout next. By: Troutman Pepper

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Intellectual Property Patent 40

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”).

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Patently-O

MAY 20, 2024

May 20, 2024), Cellect argues that the Federal Circuit erred in upholding the PTAB’s (PTAB) invalidation of Cellect’s four patents based on the judicially-created doctrine of obviousness-type double patenting (ODP). As a result, the patents had staggered expiration dates. Meanwhile, Dir. Cellect Cert.

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JD Supra Law

MARCH 20, 2023

Inter partes reviews (IPRs), ex parte reexaminations and post-grant reviews (PGRs) are all post grant proceedings offered by the United States Patent and Trademark Office (USPTO) that allow parties to challenge the validity of a patent. By: Fox Rothschild LLP

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