News & Analysis as of

Patents Patent Re-Examination Patent Trial and Appeal Board

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – March 2025

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

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

Cellect and Allergan: Obviousness-Type Double Patenting (ODP) in Reexamination and Reissue

Takeaways: 1. ODP in reexamination and reissue remains unpredictable despite Allergan 2. Patent Owners should carefully review ODP rejections to ensure they are proper Obviousness-type double patenting (ODP) is a legal...more

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

Reexamination Petition Practice Is a Critical Tool for Patent Owner Success

Takeaways: 1. Nontraditional and unique issue petitions are common for patent owners to properly prosecute reexamination proceedings. 2. Well-drafted petitions influence outcomes and preserve PTAB, District Court, and/or...more

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

What’s in a Name? Why Reexamination Is Not a Re-Examination

Long before the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB) patent revocation proceedings, the patentability of one or more claims of any patent could be reviewed via Ex Parte Reexamination...more

American Conference Institute (ACI)

[Event] 20th Paragraph IV Disputes - April 25th - 26th, New York, NY

Hosted by American Conference Institute, the 20th Annual Paragraph IV Disputes & the 40th Anniversary of the Hatch-Waxman Act returns for another exciting year with curated programming that will take a retrospective look at...more

Fox Rothschild LLP

USPTO Post-Grant Proceedings: An Overview

Fox Rothschild LLP on

Inter partes reviews (IPRs), ex parte reexaminations and post-grant reviews (PGRs) are all post grant proceedings offered by the United States Patent and Trademark Office (USPTO) that allow parties to challenge the validity...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Nike, Inc. v. Adidas AG, 955 F.3d 45 (Fed. Cir....

The patent claim survival rate before the Patent Trial and Appeal Board continues to strongly favor petitioners. Accordingly, motions to amend the challenged claims have been growing among patent owners in inter partes...more

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

Global Patent Prosecution - August 2020: Survey of PTAB and CNIPA Proceedings in View of Proposed Regulations Regarding...

In April, the Supreme People’s Court of China published a draft for comment for “Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving Patent Authorization and...more

McDermott Will & Emery

Arthrex Extended to Inter Partes Re-examination

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit denied a petition for panel rehearing regarding the constitutionality of decisions issued by the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board...more

Troutman Pepper Locke

Arthrex and Reexamination

Troutman Pepper Locke on

Virnetx Inc. v. Cisco Systems, Inc., Appeal No. 2019-1671 (Fed. Cir., May 13, 2020). Inter partes reexamination was a non-trial procedure that allowed third parties to participate in patent reexamination, and has now been...more

Jones Day

PTAB Allows Patent Owner to Stay its Own Reissue Proceeding

Jones Day on

35 U.S.C. § 315(d) and 37 C.F.R. 42.122(a) vest the PTAB with the power to stay, transfer, consolidate, or terminate any matter pending before the U.S. Patent and Trademark Office while an inter partes review involving the...more

McDermott Will & Emery

Inconsistent PTAB Findings Lead to Error

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed in part, vacated in part and remanded the decisions in two re-examinations after finding that they contained inconsistent holdings on identical issues on essentially...more

McDermott Will & Emery

A Refresher on Re-Examination Estoppel

Addressing the pre-AIA estoppel provision of 35 USC § 317(b), the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision not to terminate all pending re-examinations of a patent...more

McDermott Will & Emery

PTAB May Institute Re-Examination Even Where Requester Wants It Denied

The US Court of Appeals for the Federal Circuit found that the Patent Trial and Appeal Board (PTAB) properly instituted an inter partes re-examination even though the requester had asked it to deny institution and had...more

McDermott Will & Emery

Inter Partes Re-Examination Estoppel Saves Rejected Claims

Addressing statutory estoppel issues in connection with inter partes re-examination, the US Court of Appeals for the Federal Circuit ordered the Patent Trial and Appeal Board (PTAB) to dismiss a re-examination against certain...more

Jones Day

Battle-Of-The-Stays - Chalk Up Another Victory to the Petitioners

Jones Day on

The multiple flavors of review and prosecution at the Patent Office produce an environment where a patent family could be subject to inconsistent results. Conceivably, patents in a pre-AIA patent family could simultaneously...more

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