Ex Partes Reexamination

News & Analysis as of

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

Pre-AIA Statute Did Not Give Patent Owner in an Ex Parte Reexamination the Right to Bring an Action in District Court

In re Teles AG Informationstechnologien - Addressing whether a patent owner involved in a pre-America Invents Act (AIA) ex parte reexamination, could challenge an adverse reexamination decision in a district court...more

Federal Circuit Fractured Over Finality in Fresenius

When the Federal Circuit denied Baxter’s petition for panel rehearing and rehearing en banc in Fresenius USC, Inc. v. Baxter International, Inc., Judge Dyk wrote an opinion concurring in the denial that was joined by Judge...more

PTO Reexamination Decision is Binding in Concurrent Infringement Litigation

Many patents are involved in parallel proceedings — post-grant proceedings before the United States Patent and Trademark Office (“PTO”) and infringement litigation in the courts. What happens when the courts and the PTO do...more

A Look at the USPTO Backlog Statistics

As the USPTO fiscal year comes to an end on September 30, I thought this would be a good time to review the USPTO backlog statistics. The currently available data reflects the backlogs as of the start of August 2013, and...more

USPTO Opposes Certiorari in Finjan v. USPTO

Last month, in an opposition brief filed by attorneys for the U.S. Patent and Trademark Office and Department of Justice, the Office asked the Supreme Court to deny petitioner's writ of certiorari in Finjan, Inc. v. United...more

Biosimilars Webinar - July 23, 2013

On Tuesday, July 23, Knobbe Martens hosted a live webinar event covering "Preparing for Biosimilars: Key Points for Participating in the U.S. Regulatory Framework." Partners Eli Loots, Carol Pitzel Cruz, and Sheila Swaroop...more

Patent Office Litigation Update: Conducting CRU Oral Hearings in Ex Parte Reexamination [Video]

Under the new contested proceeding rules, a patent owner or a third-party requester can file an ex parte reexamination request. In such cases, an interview at the U.S. Patent and Trademark Office Central Reexamination Unit...more

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