Reissue vs. Reexamination in IPR and PGR Practice - Patents: Post-Grant Podcast
Never Surrender? Recapturing Subject Matter in Reissue Proceedings
IN RE KOSTIC - Before Stoll, Clevenger, and Cunningham. Appeal from the Patent Trial and Appeal Board. When considering whether a reissue claim broadens the scope of the original patent, the PTAB determines the actual scope...more
Takeaways: - Claim construction for determining whether reissue claims are improperly broadened is based on fundamental claim construction cannons and not applicant intentions. - Patent Owners should check patented claims...more
The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s rejection of a proposed reissue claim for being broader than the original claim, denying the inventors’ argument that the analysis...more
On March 13, 2025, the U.S. Court of Appeals for the Federal Circuit affirmed a five-year patent term extension (“PTE”) for Merck’s sugammadex patent, holding that the district court had correctly calculated PTE based on the...more
Takeaways - -Intra-patent claim inconsistencies are errors correctible via reissue. -Subtle legal distinctions in reissue may require PTAB appeals. Patent prosecution errors occur. One such error that occurs is...more
The Federal Circuit appeal in Merck Sharp & Dohme B.V., Merck Sharp & Dohme, LLC v. Aurobindo Pharma USA, Inc. et al., concerns whether patent term extension (PTE) for regulatory delay, in particular delay for FDA drug...more
Addressing the same invention requirement for reissue patents, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board decision to reject an overly broad reissue application. In re Float‘N’Grill...more
Federal Circuit Summaries - Before Prost, Renya, and Wallach. Appeal from the Patent Trial and Appeal Board. Summary: A patent owner cannot retroactively bring a continuation-in-part patent within the scope of § 121...more