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 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

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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Patent Invention Government Intellectual Property 109

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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Patent 65

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 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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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 28, 2023

Trademark reexamination: A new way of attacking registrations Back in the old days, you had to file a TTAB cancellation in order to cancel a trademark registration for lack of use. This is where a trademark reexamination comes in. What trademark registrations are eligible to be reexamined?

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Trademark Registration Litigation Blogging 98

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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Patent 65

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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Patent Technology Trademark 52

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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Invention Patent 98

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

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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Patent Public Domain Patent Application Art 100

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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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. §

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Editing Patent IP 70

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

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 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

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

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 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 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

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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Publishing Patent 65

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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IP Patent 52

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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Design Patent Patent Application Designs Design 52

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

Fish & Richardson Trademark & Copyright Thoughts

AUGUST 4, 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). The plaintiff-patent owner in Onpoint sought a stay pending IPR filed by the defendant.

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Litigation Patent Patent Infringement 71

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

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

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

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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Patent Patent Application Branding Brands 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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Trademark Patent 52

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

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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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.

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Design Patent Designs Design Patent 77

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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Litigation Patent 55