LexisNexis® Legal Newsroom
Turning Off an Inter Partes Patent Reexamination

Can an Ongoing Patent Reexamination be Stopped? With most patent reexaminations now being conducted concurrent to a district court or ITC proceeding, a common question of such plaintiffs is "what becomes of the patent reexamination once the litigation settles?" In the case of ex parte...

Patents Post-Grant: Limited Patent Reexamination Choices for Late Stage Litigants

Inter Partes Patent Reexamination is Not Always the Best Choice In the case of Inventio AG v. Otis Elevator Co. (SDNY) [ enhanced version available to lexis.com subscribers ] , the Court found that entry of a permanent injunction was against public interest where a pending ex parte patent reexamination...

Patents Post-Grant: USPTO to Revise Ex Parte Patent Reexamination Procedures

Ex Parte Patent Reexamination Practices Adjusted to Account for Estoppel The new estoppel provisions of Inter Partes Review (IPR) and Post Grant Review (PGR) differ from the previous estoppel provisions of inter partes patent reexamination in that they not only prevent a subsequent request...

Patents Post-Grant: USPTO Proposal to Destabilize Large Patent Portfolios

Rules to Implement Post Grant Proceedings to Add New Layer of Patentee Estoppel The estoppel impact of inter partes patent reexamination (IPX) has long been a concern for third party requesters. Should an IPX requester fail in its attempt to invalidate a patent before the USPTO, the estoppel provisions...

Patents Post-Grant: AIA Changes to Greatly Increase Stays of District Court Actions?

Speedy, One Sided Estoppel to Force Judicial Deference The estoppel provisions of Post Grant Review (PGR) and Inter Partes Review (IPR) are markedly different than those in existence today for I n ter Partes Reexamination (IPX). Most importantly, PGR/IPR estoppel attaches upon a written determination...

Patents Post-Grant: Anonymity of Patent Reexamination Requests

Revised Rule on Anonymous Requests Subject to Practitioner Interpretation The estoppel provisions of Inter Partes Review (IPR), Post Grant Review (PGR), and the Transitional Program for Covered Business Method Patents (TPCBMP) will impact related court proceedings involving the same patent , and USPTO...

PTAB Considers "Could Have Been Raised" Estoppel

New Decision Explores 315(e)(1) Estoppel Today, the Patent Trial and Appeal Board (PTAB) added the recent Decision on Institution rendered in Dell, Inc. v. Electronics and Telecomms. Res. Inst ., IPR2015-00549 Decision Denying Institution, Paper 10, Mar. 26, 2015, to the list of Representative...