News & Analysis as of

Patent Ownership Inter Partes Reexamination

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Reexamination of Expired Patents

Takeaways - - Expired patents may be eligible for reexamination. - Owner’s options during reexamination of an expired patent are severely limited. Similar to reexamination practice, which has long allowed reexamination...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #17 for Surviving an Instituted IPR: Alternatives to Motions to Amend in IPR Proceedings

After an inter partes review (“IPR”) is instituted, a patent owner may move to amend challenged claims to overcome the prior art. However, there are also alternative paths to amending claims over the prior art even after an...more

Polsinelli

Amendments Through Reissue or Reexamination During a Pending AIA Proceeding

Polsinelli on

My previous posts discussed the Board’s new Motion to Amend pilot program for AIA proceedings and the Board’s precedential opinion Lectrosonics Inc. v. Zaxcom Inc., Cases IPR2018-01129, -1130, Paper 15 at 4 (PTAB Feb. 25,...more

Schwabe, Williamson & Wyatt PC

2017 and Early 2018 Supreme Court and Precedential Patent Cases From the Federal Circuit

Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more

Foley & Lardner LLP

Federal Circuit Criticizes PTAB Reliance On Routine Testing

Foley & Lardner LLP on

In Honeywell International, Inc. v. Mexichem Amanco Holdings S.A. DE C.V., the Federal Circuit vacated the decision of the USPTO Patent Trial and Appeal Board that invalidated Honeywell’s patent in an inter partes...more

McDermott Will & Emery

New Party Has No Cause of Action to Appeal PTAB Decision (Agilent Technologies, Inc. v. Waters Technologies Corp.)

Addressing the statutory cause of action requirement to appeal a reexamination decision, the U.S. Court of Appeals for the Federal Circuit dismissed an appeal, finding that the appellant was not a third-party requester of the...more

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