LexisNexis® Legal Newsroom
Diffusing the Risk of Inter Partes Patent Reexamination

USPTO statistics demonstrate that Patent Owner's fair much better in ex parte patent reexamination as opposed to inter partes patent reexamination. Current statistics indicate that all claims are canceled in patents subject to ex parte reexamination in 12% of cases, while the same statistic stands...

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...

Waiver of Patent Owner Statement Disfavored in Ex Parte Patent Reexamination

New Ex Parte Patent Reexamination Pilot Program a Tough Sell Back in August, I reported on a new USPTO pilot program designed to decrease pendency in ex parte patent reexamination by seeking waiver of the right to file a Patent Owner Statement. According to 2009 PTO statistics, Patent Owners...

Requests for Information in Ex Parte Patent Reexamination

USPTO Relies on Case Law Predating Interrogatory Power of 37 CFR 1.105 As discussed previously, it is not uncommon for Patentees to introduce evidence of secondary indicia of non-obviousness when faced with an obviousness rejection. To be considered persuasive, the examiner must be able to identify...

Patent Reexamination Pilot Program Update

Patentees Frustrate USPTO Efforts to Reduce Ex Parte Reexamination Pendency As discussed in previous posts, in August of 2010 the USPTO announced a pilot program, aimed at reducing the pendency of ex parte patent reexamination by 3-5 months. The program entitled " Pilot Program for Waiver of...

Patents Post-Grant: SNQ Review Options in Patent Reexamination

SNQ Review Options Vary Significantly Between Ex Parte & Inter Partes Patent Reexamination As discussed back in March relative to inter partes reexamination, the proper mechanism for seeking review of a denied Substantial New Question Of Patentability (SNQ) may depend on the status of the...

Patents Post-Grant: Encouraging Waiver of a Patent Owner Statement in Ex Parte Patent Reexamination

USPTO Proposal Forces Patentee Cooperation in Violation of Statute? Last Monday, I proposed managing petition practice in inter partes patent reexamination based on the patent interference model already in place. As a reminder, this proposal is responsive to the proposed collection of working concepts...

Patents Post-Grant: Thereasense Decision & Inter Partes Patent Reexamination

Therasense Decision to Influence the Choice Between Ex Parte vs. Inter Partes Patent Reexamination? On May 25, 2011, the Federal Circuit issued its the long awaited en banc decision in Therasense, Inc. v. Becton, Dickinson & Co . 2008-1511 . The majority opinion authored by Chief Judge Randall...

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...

Fitch, Even, Tabin & Flannery LLP: Court Rules Patent Owners' Avenues for Review of Ex Parte Reexamination Decisions Are Restricted

On March 5, 2012, in Teles AG v. Kappos , the U.S. District Court for the District of Columbia barred a patent owner's civil action under 35 U.S.C. § 145 that was brought from an ex parte reexamination proceeding, and transferred the appeal to the Court of Appeals for the Federal Circuit. ...

Building a Better Post Grant

From the U.S. Patent and Trademark Office : Guest blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Teresa Stanek Rea Currently, the USPTO has two principal ways of challenging granted patents - inter partes reexamination and ex parte reexamination...

Patents Post-Grant: Judge Newman again Questions the Constitutionality of “Do Over” Patent Reexamination

AFC Forced to Disturb Earlier Ruling Based on More Liberal Patent Reexamination Standards Patent reexamination is often initiated in parallel with an ongoing infringement litigation. In some cases, an infringer that fails to prove invalidity in the courts can effectively "undo" the effect...

Patents Post-Grant: Patent Reexamination Surge Headed to USPTO

Imminent AIA Changes to Drive Significant Patent Reexamination Filings in the Near Term In one month's time, the USPTO will simultaneously switch over to a new patent reexamination fee structure, and to a new inter partes trial model of the Patent Trial & Appeal Board (PTAB). These changes...

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: Is There Value to Ex Parte Patent Reexamination after the AIA?

Ex Parte Patent Reexamination Filings Fall by 50% After AIA Prior to September 16, 2012, ex parte patent reexamination was the only USPTO option for challenging the validity of patents that issued from patent applications filed before November 29, 1999. This is because the inter partes patent reexamination...