On March 16, the USPTO responded to a recent release of U.S. Chamber of Commerce 14th annual International IP Index report, which ranked the United States No. 1 on the index. Director Squires’ remarks, delivered on March 12...more
In an Official Gazette notice dated 1 April 2026, the USPTO announced a new procedure allowing patent owners to submit a limited “pre order” paper addressing whether a third party ex parte reexamination request raises a...more
In the April 1, 2026 issue of the Official Gazette, the U.S. Patent and Trademark Office published a new process permitting patent owners to file an early, limited response to a request for ex parte reexamination....more
The U.S. Patent and Trademark Office (USPTO) is instituting a new process in ex parte reexamination (EPRx) proceedings that will permit a patent owner to submit a pre-order paper to dispute the existence of a substantial new...more
Key Takeaways - The USPTO will allow patent owners to file a 30-page pre-order paper before the Office decides whether a reexamination request raises a substantial new question of patentability, effective for requests filed...more
After issuing an April Fool’s Day press release announcing an imagined “AI-assisted evaluator for patent eligibility determinations,” the USPTO issued another press release on April 1, 2026, that stakeholders need to take...more
In the mid-2000s, the U.S. 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....more
The Director of the U.S. Patent Office, John Squires, entered an order on Thursday, March 6, 2026, stating that he will convene a sua sponte rehearing regarding the Board’s 2025 decision regarding obviousness-type double...more
In February’s Part I article (“First Strike“), we described how anonymous ex parte reexamination can function as an early-stage lever, used by potential defendants and other market participants to reduce assertion risk before...more
On February 6, USPTO updated the certification regarding the filing of anonymous requests for ex parte reexamination. ...more
Unique to reexamination, the Rules and Manual of Patent Examination Procedure (MPEP) allow for the real requester of a reexamination to remain anonymous so long as their counsel provides proper certifications....more
For years, parallel proceedings at the Patent Trial and Appeal Board (PTAB) were the near-automatic response of a defendant in district court patent litigation. Accused infringers routinely filed petitions—especially inter...more
On February 6, 2026, the USPTO updated its guidance on anonymous requests for ex parte reexamination. When a patent has previously been the subject of an IPR or PGR that produced a final written decision on at least one...more
Last week, Judge Nusrat J. Choudhury (E.D.N.Y.) denied a motion to stay a patent case pending completion of ex parte reexamination (“EPR”) proceedings challenging the validity of some but not all of the patents-in-suit. ...more
In In Re Gesture Technology Partners, LLC, Case No. 2025-1075 (Fed. Cir. December 1, 2025) (“Gesture”), the Federal Circuit reinforced the power of ex parte reexaminations as powerful tools for invalidating active and expired...more
On appeal from an ex parte reexamination (“EPR”) decision, the Federal Circuit held that a final written decision of an inter partes review (“IPR”) does not preclude the Patent Office from maintaining an ongoing EPR. ...more
Welcome to TC’s IP Corner® Holiday edition. We are excited to share this quarterly newsletter with our clients, colleagues, and friends as we examine hot topics, interesting cases, and weird yet entertaining happenings in the...more
The Federal Circuit recently affirmed a Patent Trial and Appeal Board decision finding claims that had been subject to an ex parte reexamination unpatentable. As a threshold issue, the court held that IPR estoppel under 35...more
The United States Court of Appeals for the Federal Circuit reviewed an appeal from the Patent Trial and Appeal Board’s decision in an ex parte reexamination of U.S. Patent No. 7,933,431, owned by Gesture Technology Partners,...more
The US Court of Appeals for the Federal Circuit affirmed a decision by the Patent Trial & Appeal Board, concluding that inter partes review (IPR) estoppel under 35 U.S.C. § 315(e)(1) does not apply to ongoing ex parte...more
The Federal Circuit recently made ex parte reexamination proceedings more attractive for those accused of patent infringement. The Court’s decision in In re Gesture Technology Partners, LLC, No. 2025-1075 (Fed. Cir. Dec. 1,...more
DUKE UNIVERSITY, ALLERGAN SALES, LLC v. SANDOZ INC. [OPINION] (2024-2078, 11/18/2025) (Dyk, Stoll, Stark) - Stark, J. The Federal Circuit found a patent claim invalid because the patent lacked written description support...more
We have written multiple pieces about the ongoing intellectual property dispute between The Pokémon Company / Nintendo (collectively “Nintendo”) and PocketPair (makers of the 2024 smash hit video game Palworld)....more
Key Takeaways - The Federal Circuit upheld the USPTO director’s discretion to deny IPRs, rejecting due process and APA challenges to the agency’s evolving policy framework....more