Ex Partes Reexamination

News & Analysis as of

Defend Trade Secrets Act Clears United States Senate Judiciary Committee

The Defend Trade Secrets Act (“DTSA”) has cleared the Senate Judiciary Committee with broad bipartisan support. Currently, state law governs civil claims for trade secret misappropriation, generally under a particular state’s...more

Supreme Court Decision In B&B Hardware V. Hargis Industries: Potential Impact on Trademark Prosecution and Enforcement...

In March 2015, the United States Supreme Court delivered an important decision in trademark law. In B&B Hardware, Inc. v. Hargis Industries, Inc., No. 13-352, slip op., 575 U.S.____ ; 135 S.Ct. 1293 (2015) (“B&B Hardware”),...more

PTAB Designates Decision in LG Electronics v. Mondis Tech IPR as Precedential

As a follow-up to our Alert yesterday, the Board also designated their decision in LG Electronics, Inc. v. Mondis Tech Ltd., IPR2015-00937, Paper 8 (PTAB September 17, 2015) as precedential, a decision explaining the one-year...more

Inter Partes Review Is Not for Pending Claims - Ford Motor Co. v. Signal IP, Inc.

Addressing the issue of the utility of consolidating an inter partes review (IPR) with an ex parte reexamination proceeding, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) denied a...more

PTAB Finds Claims to Be Directed to Covered Business Method, but Denies Institution Anyway - E-Loan, Inc. v. IMX, Inc.

Considering whether to institute a covered business method (CBM) review for a patent directed to mortgage loan systems and methods, the Patent Trial and Appeal Board (PTAB or Board) agreed that the patent was a covered...more

PTAB Update -- The Constitutionality Edition - MCM Portfolio LLC v. Hewlett-Packard Co. (Fed. Cir. 2015)

In a decision that likely came as no surprise to anyone, the Federal Circuit upheld the constitutionality of IPR proceedings as provided for by the America Invents Act. With an analysis of two pre-1900 Supreme Court cases...more

PTAB Decisions on Instituting CBM Review Are Based Only on the Petition and Preliminary Response - American Express Company v....

Addressing whether a petitioner seeking a covered business method (CBM) review could file a reply to the patent owner’s preliminary response, the Patent Trial and Appeal Board (PTAB or Board) answered in the negative,...more

Preponderance Standard Applies to Ex Parte Re-examinations - Dome Patent L.P. v. Lee

Addressing the presumption of validity in ex parte re-examinations, the U.S. Court of Appeals for the Federal Circuit reiterated that the presumption of validity does not apply to patents under reexamination in the U.S....more

Claim Amendments Are Not Always What They Seem - R+L Carriers, Inc. v. Qualcomm, Inc.

Addressing whether language added to a claim during ex parte re-examination resulted in substantive changes, the U.S. Court of Appeals for the Federal Circuit affirmed the lower court’s dismissal of the infringement claims,...more

Federal Circuit Review | October 2015

Federal Circuit Revives Possibility of Permanent Injunction in Apple-Samsung Patent Dispute - In Apple Inc. v. Samsung Electronics Co., Appeal No. 2014-1802, the Federal Circuit reversed for abuse of discretion the...more

Beware Reexamination Amendments

In R+L Carriers, Inc. v. Qualcomm, Inc., the Federal Circuit affirmed the district court’s dismissal of R+L’s infringement claims against Qualcomm, finding that the claims issued after reexamination were not “substantially...more

Federal Circuit: PTAB’s Claim Construction Standard Is BRI, but Sometimes with an Obligation - Power Integrations v. Lee

In a decision with potentially far-reaching impact, U.S. Court of Appeals for the Federal Circuit concluded that the Board of Patent Appeals and Interferences (Board) in arriving at a claim constructions, is obligated to...more

En Banc Federal Circuit Preserves The Patent Laches Defense Over Dissent

In a divided en banc decision in SCA Hygiene Products v. First Quality Baby Products, the Federal Circuit preserved the defense of laches for patent cases even though the Supreme Court eliminated that defense in copyright...more

Federal Circuit Confirms Laches Remains Available in Patent Infringement Actions

Laches is an equitable defense based on a plaintiff’s unreasonable delay in pursuing a claim. In 2014, the Supreme Court effectively eliminated the laches defense in copyright cases, ruling that the copyright statute allows...more

R+L Carriers, Inc. v. Qualcomm, Inc. (Fed. Cir. 2015) - Be Wary of Claim Amendments During Reexamination

Traditional patent law holds that a patentee of a patent that survives reexamination is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of issuance of...more

Second Bite at Invalidity Proves Fruitless

Order Denying Motion for Judgment on the Pleadings, Klaustech, Inc. v. AdMob, Inc., Case No. 10-cv-05899-JSW(Judge Jeffrey S. White) - As noted previously on Orrick’s blog, here, here, and here, 35 U.S.C. §101 motions...more

Non-Apportioned Damages Awards Can Make Design Patents Highly Valuable

Companies should make design patents a key part of a company’s patent strategy due to the possibility for non-apportioned awards for design patent infringement. For companies manufacturing products in high volume, especially,...more

Single-APJ Institution Pilot Program -- USPTO Requests Written Comments for IPR Proceedings

On August 25, 2015, the United States Patent and Trademark Office published a "Request for Comments on a Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant Administrative Reviews"...more

Patenting: A Guidebook For Patenting in a Post-America Invents Act World

Patenting - Patenting generally offers a superior means for legally protecting most inventions, particularly since: • copyright, when available, does not provide a broad scope of protection; and • the ability...more

No En Banc Review of Panel Decision Vacating a Civil Contempt Remedye - Plus, Inc. v. Lawson Software, Inc.

Addressing the issue of contempt for violation of a non-final injunction, a divided U.S. Court of Appeals for the Federal Circuit declined to rehear en banc a panel decision that vacated a civil contempt holding for violation...more

Case Dismissed After Claims Upon Which Lawsuit Was Initiated Were Cancelled During Re-Examination

Defendant Extended Disc North America, Inc. ("EDNA") filed a motion for summary judgment of non-infringement and invalidity, and, alternatively, a motion to dismiss against plaintiff Target Training International, Ltd.'s...more

District Court Denies Motion to Stay Pending Ex Parte Reexamination Where Defendant Was Competitor of Plaintiff and Chose Ex Parte...

Plaintiff Ecolab Inc. ("Ecolab") filed a patent infringement action alleging that Gurtler infringed Ecolab's patent for "SANITIZING LAUNDRY SOUR," United States Patent No. 6,262,013 (the "'013 Patent"). Gurtler subsequently...more

District Court Denies Motion to Stay Pending Ex parte Reexamination Where Defendant Was Competitor of Plaintiff and Chose Ex Parte...

Plaintiff Ecolab Inc. ("Ecolab") filed a patent infringement action alleging that Gurtler infringed Ecolab's patent for "SANITIZING LAUNDRY SOUR," United States Patent No. 6,262,013 (the "'013 Patent"). Gurtler subsequently...more

Board Declines to Terminate Reexamination

In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00419 and IPR2013-00424m Paper 48 (December 12, 2014), the patent owner sought permission from the Board to file a motion to terminate an ex parte...more

Board Allows New Reexamination Filing to Amend Claims at Issue in Concurrent IPR

It is well settled under the AIA that it’s possible to have concurrent proceedings during an IPR. In Game Show Network, LLC and Worldwinner.com, Inc. v. John H. Stephenson (IPR2013-00289), the Board addressed a related issue...more

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