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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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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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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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.

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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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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.

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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

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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Fish & Richardson Trademark & Copyright Thoughts

OCTOBER 5, 2022

Supplemental examination allows a patent owner (only) to ask the USPTO to consider, reconsider, or correct any information the patent owner deems relevant to the patent. This is true regardless of whether or not an ex parte reexamination is instituted by the USPTO in response to a supplemental examination request.

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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.

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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.

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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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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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Fish & Richardson Trademark & Copyright Thoughts

OCTOBER 5, 2022

Together, they collectively replace inter partes reexamination with 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. patents filed prior to March 16, 2013), since post-grant review is not available for these patents.

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Fish & Richardson Trademark & Copyright Thoughts

DECEMBER 6, 2021

Four subjects stand out this month: (1) stays of district court litigation pending IPR, (2) subject matter eligibility under § 101, (3) service of foreign subsidiaries, and (4) damages expert opinions. This post is our latest review of noteworthy case developments in Texas district courts in the month of November 2021. Sable Networks, Inc.

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Fish & Richardson Trademark & Copyright Thoughts

SEPTEMBER 7, 2021

In the August 2021 edition of our monthly Texas Patent Litigation Monthly Wrap-Up, we cover a case concerning the doctrine of prosecution laches. 2021), the Personalized Media court held that the asserted patent U.S. 8,191,091 (the “’091 Patent”) is unenforceable under the doctrine of prosecution laches. Patent Nos.

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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

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. This bizarre result has an equally bizarre litigation history.

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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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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

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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The IP Law Blog

MARCH 17, 2022

When entering into contracts, parties commonly include forum selection clauses to govern future litigation between the parties. For clarity, this covenant not to sue includes, but is not limited to, patent infringement litigations, declaratory judgment actions, patent validity challenges before the U.S. emphasis added).

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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. Improve PTAB rules to protect inventors from costly, unnecessary litigation. Ensure UPSTO has resources it needs to administer a patent system that promotes innovation.

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Fish & Richardson Trademark & Copyright Thoughts

SEPTEMBER 16, 2022

Information and statements” may include, among other items, information that “refutes, or is inconsistent with, a position that the applicant takes in” either “opposing an argument of unpatentability relied on by the Office” or “asserting an argument of patentability.”. the party has a duty to submit the information to the USPTO.”.

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LexBlog IP

JUNE 20, 2022

dismissal of litigation without prejudice restarts one-year window). Given the low frequency, relatively noncontroversial) If new claims are added to a patent by reexamination or reissue, even if petitioner is outside of its window, those claims get a fresh window. full examination, including 101 and 112.

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Bio Law Blog

NOVEMBER 8, 2021

Apple argues that the Patent Trial and Appeal Board’s Fintiv factors improperly impede IPRs for patents asserted in co-pending district court litigation. During the litigation, in February 2020, Apple filed IPR petitions challenging three of the same patents. ” 35 U.S.C. § § 314(d).

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Fish & Richardson Trademark & Copyright Thoughts

DECEMBER 22, 2022

The implementation of the America Invents Act in 2012 significantly changed patent practice in the United States, in part by creating an avenue to challenge a patent’s validity at the Patent Trial and Appeal Board (PTAB) without enduring the time and expense of district court litigation. Responding to the AIA.

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Fish & Richardson Trademark & Copyright Thoughts

MAY 5, 2021

McDonough is a principal in Fish’s Boston office and her practice emphasizes patent prosecution , portfolio management , reexamination, counseling , and due diligence in the computer software and electrical fields. I was a patent litigator at Fish before transitioning to patent prosecutor and that trial experience informs my work.

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LexBlog IP

SEPTEMBER 29, 2021

Expanding IPR/PGR jurisdiction to include Obviousness-Type Double Patenting and the use of Patentee admissions (in spec, drawings or claims). dismissal of litigation without prejudice restarts one-year window). Aqua Products overruled, burden on patentee to prove patentability of amended claims. Overruling Click-to-Call (i.e.,

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Invention Litigation Government Patent 52

LexBlog IP

MARCH 17, 2022

When entering into contracts, parties commonly include forum selection clauses to govern future litigation between the parties. For clarity, this covenant not to sue includes, but is not limited to, patent infringement litigations, declaratory judgment actions, patent validity challenges before the U.S. emphasis added).

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Patently-O

FEBRUARY 8, 2022

That prevision bars an IPR petitioner involved in patent litigation from asserting any invalidity grounds that the petitioner had “raised or reasonably could have raised during that inter partes review.” patents only cover infringement within the territorial bounds of the United States. patent laws. ” Id.

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LexBlog IP

JULY 19, 2021

This statutory design was responsive to the previous criticism of inter partes reexamination estoppel, which attached only after all appeals were exhausted. This unbalanced scenario can be exploited by Patent Owners. . § 315(e)(2) was set to by legislators to attach at the time of the PTAB’s Final Written Decision (FWD).

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LexBlog IP

DECEMBER 21, 2021

USPTO announced on December 21, 2021, that it has created a new Petition for Expungement or Reexamination form to be used in TMA actions. This mechanism allows the USPTO to reexamine the accuracy of the applicant’s claim of use at the time the averment was made. Ex Parte Challenges to Current Trademark Registrations.

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The IPKat

JANUARY 9, 2022

Over to Adam : "Patents and Technology: Perspective, Truth, and Change WIPO’s Deputy Director-General of Patents & Technology, Ms. Jorgenson also discussed how COVID-19 affected WIPO and the Patent Cooperation Treaty (PCT) system. expungement and reexamination) would “greatly impact” trademark practice.

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LexBlog IP

SEPTEMBER 9, 2022

On July 29th, 2022, the current director of the United States Patent and Trademark Office (USPTO), Katherine Vidal, published a notice in the federal register regarding the duty of disclosure before the patent office. For reexamination proceedings, “each individual” associated with the patent owner has a duty of disclosure.

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LexBlog IP

JUNE 19, 2023

That is, whether paying $80K for one petition, or $40K each for two petitions (to fit all of the patent claims), is just a question of administrative efficiency. This is false. of course, but I imagine there will be some agency sensitivity to the criticism nonetheless.

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IP Tech Blog

APRIL 11, 2022

Dynaenergetics Europe GMBH , affirming — on a procedural technicality — a precedential decision of a Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board (PTAB) that granted a motion to amend claims in an inter partes review (IPR) proceeding. LLC , ‘that patent monopolies are kept within their legitimate scope’”.

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