Our Texas Patent Litigation Monthly Wrap-Up for July 2024 covers three decisions of interest from the Eastern District of Texas granting motions related to subject matter eligibility, stays pending inter partes review (IPR),...more
The Patent Trial and Appeal Board (Board) has published an updated Oral Hearing Guide to reflect current practice before the Board. The changes include: Remote option for participating in America Invents Act (AIA) trials....more
Takeaways: -A requester can have a voice in ex parte reexamination prosecution. - Requesters should strategically structure their request documents to hedge against potential patent owner amendment and argument. The...more
A significant procedure for patent owners, Supplemental Examination, was established in the 2012 America Invents Act when Congress determined there should be a proceeding to turn events that in the past could lead to...more
In our PTAB Spotlight Series, attorneys will share their valuable insights on PTAB practice today, the challenges and opportunities clients face, and the trends practitioners should follow....more
The recent resurgence in ex parte reexamination demonstrates the importance of this post-grant review vehicle. It has become particularly important for patent challengers who may be estopped from requesting inter partes...more
A review of 2023 reveals it was an active and impactful year in shaping the policy and practice before the Patent Trial and Appeal Board (PTAB or Board) at the U.S. Patent and Trademark Office (USPTO). In fact, all three...more
This Year in Review synthesizes key events and decisions from 2023 into a digestible guide that we hope will serve as a helpful reference for those who practice before, or adjacent to, the PTAB. As in the past, many of our...more
This case addresses how Patent Term Adjustment (PTA) interacts with obviousness-type double patenting (ODP). Background - Cellect sued Samsung Electronics, Co. for infringement of four patents. Subsequently, Samsung...more
Executive Summary - The patent application examination requirement is statutory based rather than a Constitutional requirement. For instance, from 1793 to 1836, the U.S. Patent System operated on a registration system...more
Addressing for the first time how patent term adjustments (PTAs) interact with obviousness-type double patenting (ODP), the US Court of Appeals for the Federal Circuit concluded that when members of a patent family have...more
In re Cellect, LLC, Appeal Nos. 2022-1293, -1294, -1295, -1296 (Fed. Cir. Aug. 28, 2023) In a significant appeal from ex parte reexamination proceedings before the Patent Trial and Appeal Board, the Federal Circuit...more
In decisions rare of their kind, the U.S. Patent and Trademark Office (“USPTO”) terminated two ex parte reexaminations in view of inter partes review (“IPR”) proceedings initiated by a different party. The decisions represent...more
Steep Drop in Discretionary Denials — But Will It Last? The Patent Trial and Appeal Board (PTAB) may be becoming more petitioner-friendly following a June 2022 memorandum that significantly narrows a precedent-setting...more
Varian filed two petitions for IPR of BMI’s ’096 patent, which the Board instituted. Elekta filed copycat petitions and successfully joined Varian’s two instituted IPRs. A previously filed, parallel ex parte reexamination on...more
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more
The US Patent & Trademark Office (PTO) terminated a pending ex parte reexamination after finding that the challenger was estopped because the prior art references could have been raised in a prior inter partes review (IPR)....more
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...more
Best Medical International, Inc. v. Elekta Inc., Appeal Nos. 2021-2099, -2100 (Fed. Cir. Aug. 26, 2022) - In this week’s Case of the Week, the Federal Circuit addressed issues of jurisdiction where a challenged claim was...more
This post reviews three July 2022 opinions from the Western and Eastern Districts of Texas resolving motions to stay. The first case involves the denial of a stay pending reexamination proceedings issued by the...more
In an opinion related to its 2021 ruling that a decision in earlier inter partes reexaminations of related patents had a preclusive effect that collaterally estopped the Patent Trial & Appeal Board (Board) from making new...more
The Board denied post grant review in Palo Alto Networks, Inc. v. Centripetal Networks, Inc. under 35 U.S.C. § 325(d) after applying the Advanced Bionics framework as informed by the factors outlined in Becton. IPR2021-01520...more
The USPTO is extending their pro bono efforts to allow those establishing a need to retain voluntary pro bono ex parte examination appeal counsel and eventually pro bono counsel for all proceedings conducted at the Board....more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
Ex parte reexaminations have re-emerged as an increasingly important component of patent litigation and licensing negotiations. With the passage of the America Invents Act (“AIA”) and the advent of inter partes reviews...more