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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
Ex parte reexamination proceedings have been available for over 40 years. The reexamination statutes, Public Law 96-517 of July 1, 1981 (also known as the Bayh-Dole Act), included 35 U.S.C. § 303, which codified, in part,...more
Before Bryson, Lourie, and Reyna. Appeal from the United States Patent and Trademark Office (“PTO”), Patent Trial and Appeal Board (“Board”). Summary: Estoppel under 37 C.F.R. § 42.73(d)(3)(i) only applies to obtaining new...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
The Patent Trial and Appeal Board (“PTAB”) recently published a revised PTAB Oral Hearing Guide (August 2023) updating prior guidance on hearings. The revised Guide includes changes to: 1. Remote participation in PTAB...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
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
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
In Alarm.com Incorporated v. Hirshfeld1 the Federal Circuit analyzed whether a party’s challenge to the United States Patent & Trademark Office (“USPTO”) Director’s decision to vacate requests for ex parte reexamination...more
Over the last 20-plus years, US Court of Appeals for the Federal Circuit cases concerning written description and enablement have become a hot-button issue in the chemical and life sciences practices. The year 2021 was no...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