Ex Partes Reexamination

News & Analysis as of

Supreme Court Hears Oral Arguments In First Appeal From AIA Post-Grant Proceeding: Justices Focus on Practical Consequences of...

On April 25, 2016, the U.S. Supreme Court heard oral arguments in its first appeal from a decision by the USPTO’s Patent Trial and Appeal Board (“PTAB” or “Board”) in an inter partes review proceeding (“IPR”) under the...more

It’s Not the Broadest Reasonable Interpretation, but the Broadest Reasonable Interpretation in Light of the Specification

In In re Man Machine Interface Tech. LLC, [2015-1562] (April 19, 2016), the Federal Circuit affirmed-in-part, reversed-in-part, vacated-in-part, and remanded the PTAB’s affirmance of the rejection of claims of U.S. Patent No....more

USPTO Seeking Comment on Proposed Amendments to Trademark Rules of Practice

On April 4, 2016 the U.S. Patent and Trademark Office published a Federal Register notice asking for comments to proposed amendments to Trademark Rules of Practice. Specifically, the rules to practice before the Trademark...more

Invalidity Determination Would Not Apply to Reexamination Claims That Did not Exist at Time of Judgment

In Cardpool, Inc. v. Plastic Jungle, Inc., [2014-1562] (April 5, 2016) the Federal Circuit affirmed the district court’s denial of vacatur, because the denial was within the district court’s discretion and also because the...more

Unenforceability Due to Client Failure to Correct Counsel’s Misrepresentations to PTO - The Ohio Willow Wood Company v. Alps...

In the ongoing saga between two manufacturers of liners for prosthetic limbs, the US Court of Appeals for the Federal Circuit confirmed a finding of inequitable conduct committed by the patent owner while the patent at issue...more

Sometimes the Application of a New Technology is Obvious from the New Technology itself

In In re Cree, [2015-1365] (March 21, 2016), the Federal Circuit affirmed the decision of the PTAB in an ex parte reexamination that the claims directed to the production of white light through the “down-conversion” of blue...more

IP Litigation Insider - March 2016

Are Ex Parte Reexaminations An Overlooked Method of Challenging Patents? In the wake of the September 16, 2011, enactment of the America Invents Act ("AIA"), many third-party individuals and organizations began utilizing...more

Motion To Stay Pending Reexam Is Denied

Cronos Technologies, LLC v. Expedia, Inc., et al., C.A. Nos. 13-1538 – LPS; 13-1541-LPS; 13-1544-LPS, March 21, 2016 Stark, C. J. Defendants’ motion to stay pending ex parte reexamination is denied....more

Sensor Maker Cannot Shake Infringement Suit on Summary Judgment

A New Hampshire District Court recently denied defendant sensor makers’ attempt to tilt the case in their favor by denying summary judgment of invalidity and non-infringement. SignalQuest asserted three patents relating...more

E-Loan, Inc. v. IMX, Inc. (PTAB 2016)

Typical "Business Method Patent" Struck Down by PTAB using CBM Review - On February 16, 2016, the USPTO Patent Trial and Appeal Board (PTAB) issued a final written decision in the Covered Business Method (CBM) patent...more

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

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