LexisNexis® Legal Newsroom
Case Stayed 5 years in Favor of Inter Partes Patent Reexamination to Restart?

Back on September 25, 2005, Judge Farnan of the United States District Court for the District of Delaware stayed the litigation between Hasbasit Belting, Inc. v. Rexnord Industries, Inc. ( Civil Action 03-185 ) relating to U.S. Patent 6,523,680 . The stay was entered in favor of inter partes reexamination...

Estoppel by Inaction, BPAI Forecloses Argument in Patent Reexamination

Silence in Original Prosecution History Used Against Patent Owner As discussed previously, prosecution history is applied inconsistently in patent reexamination claim interpretation analysis . In applying a plain meaning analysis to claim language, prosecution history is considered as a necessary...

Concluded Ex Parte Reexamination Results Ignored by District Court?

Estoppel of 35 USC § 317(b) Applies Only to Inter Partes Patent Reexamination One of the risks often associated with ex parte patent reexamination is that an outcome favorable to a patent holder is considered to "gold plate" a patent that is later asserted against the requester...

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...

Troutman Sanders LLP: Defendant Cashes-In Bet on Prosecution History Estoppel

By Matthew Osborne Judge Hilton, in a textbook case of Prosecution History Estoppel , granted a fitness equipment manufacturer summary judgment of non-infringement without breaking a sweat. The 24 page opinion in Fitness Gaming Corp. v. Icon Health & Fitness, Inc. , Case No. 1:11CV200, 2011...

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...

Fitch, Even, Tabin & Flannery LLP: Citation of Patent Owner Statements and Application of Estoppel to Ex Parte Reexamination

The Leahy-Smith America Invents Act (AIA) expands the scope of information that third parties may cite in a patent file to include written statements of a patent owner filed in a proceeding before a federal court or before the U.S. Patent and Trademark Office (USPTO). The AIA also provides for the application...

Patents Post-Grant: The Asymmetric Estoppel of Business Method Patent Challenges

Unsuccessful CBM Challengers Forced Back into Court? As discussed last week [Oct. 8th - 12th], the Transitional Program for Covered Business Method Patents, or "CBM" proceeding offers significant advantages to qualifying patent challengers . While technically a Post Grant Review (PGR) proceeding...

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...

PTAB Designates Informative Decisions on Privity & Estoppel

PTAB Announces New Informative Decisions The Patent Trial and Appeal Board (PTAB) has designated the recent decision granting a request for additional discovery in Arris Group, Inc. v. C-Cation Techs., LLC , IPR2015-00635 (Paper 10) (PTAB May 1, 2015) as an informative decision. The decision grants...