In Thermaltake Technology Co., Ltd. et al v. Chien-Hao Chen et al, IPR2024-01230, Paper 12 (PTAB Feb. 19, 2025), the PTAB granted the institution of inter partes review (“IPR”) while an ex parte reexamination (“EPR”) on the...more
Ex parte reexamination (EPRx) comes with risks and rewards for both patent challengers and patent owners. Patent challengers enjoy a lower threshold for institution and avoid the estoppel risk of other post-grant proceedings...more
Ex parte reexamination (EPRx) is a powerful tool that allows any party — including the patent owner — to request that the United States Patent and Trademark Office (USPTO) reassess the validity of an issued patent based on...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. As a result, the...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
Takeaways: - Patent owner requested reexaminations are not an admission of claim unpatentability. - Patent owners can and should control the reexamination request narrative. Patent owners must consider the pros and...more
For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued “Updated Guidance for Making a Proper Determination of Obviousness” under the U.S. Supreme Court’s ruling in KSR Int’l Co. v....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
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
The US Court of Appeals for the Federal Circuit dismissed a portion of an appeal from the Patent Trial & Appeal Board (Board) regarding obviousness because the patentee did not have standing to challenge the decision...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
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
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
Sterne, Kessler, Goldstein & Fox invites you to the webinar, "PTAB Analysis, Trends, and Forecast: Fintiv and Discretionary Denials," on Monday, March 21, 2022, from 1:00 to 2:00 PM (EDT). In conjunction with the release...more
The USPTO Patent Trial and Appeal Board (PTAB) has increasingly used its discretionary denial authority in recent years. Although the PTAB’s discretion under 35 U.S.C. § 314(a) and Fintiv grabbed many headlines in 2021, the...more
Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed patent litigation. In its first...more
[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
In This Issue - Artificial Intelligence: Deepfakes in the Entertainment Industry — Advances in “deepfake” media techniques that use deep learning AI—from uncanny impersonation videos of Tom Cruise and other...more
Last week the Federal Circuit judges geared up for their October argument session and perhaps enjoyed the beautiful fall weather in Washington. But the Court still found time to issue a dozen decisions in a wide range of...more
These days, we generally think about inter partes review as a first option to challenge patentability. Rightly so. But don’t forget about ex parte reexamination (“XPR”). Even in the IPR era, patent challengers are still...more
Exactly two weeks after affirming a decision by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) rejecting claims for failure to satisfy the subject matter eligibility standard under 35 U.S.C. § 101,...more
As of 2020, post grant proceedings have been in use for eight years. Designed as an alternative to district court litigation post grant proceedings have offered litigants a faster and more cost effective forum for resolving...more