The Importance of Interview
Summaries in ex parte Patent Reexamination
Last Friday, Star Scientific
(hereinafter "Star") released an update on their ongoing ex parte
patent reexaminations of U.S. Patents 6,425,401 & 6,202,649 . The
reexaminations are directed to Star's patented...
requested ex parte reexamination of only claims 1, 3 and 6 of its own
U.S. Patent No. 7,034,083 (the "'083 Patent") based upon certain prior
art. However, the USPTO ordered reexamination on all claims (i.e., claims
1-6) of the '083 Patent.
Last Friday we explained the case
of Ex parte Yasukochi et al , in which the
Patentee argued that a rejection applied in reexamination was considered
during original prosecution, and thus, could not constitute an SNQ. (The
rejection at issue did not appear in the original request for
Stay of Parallel Litigation Denied Due to Lack of Estoppel?
When implementing a patent
reexamination strategy, a threshold determination is whether or not to
initiate ex parte or inter partes patent reexamination, or
both. This decision is very straight forward for older patents (i.e.,
Preemptive Filing May Provide More Patentee Flexibilty in Amending
Prior to the AIA, some patentees would preemptively challenge their own patents in an ex parte reexamination proceeding in the hopes of staving off an imminent inter partes reexamination challenge . The thinking was that since the...
by Charles L. Gholz and W. Todd Baker
In Fresenius USA, Inc. v. Baxter International, Inc. , 721 F.3d 1330, 107 USPQ2d 1365 (Fed. Cir. 2013) ( opinion for the court by Circuit Judge Dyk, joined by Circuit Judge Prost; dissenting opinion by Circuit Judge Newman), the majority held (1) that...
Improved Speed For Overlooked Post-Grant Patent Options
Once upon a time, patent reexamination was the only mechanism to challenge a U.S. patent at the USPTO. First introduced as an ex parte proceeding in the 1980s, patent reexamination was expanded to include an inter partes option in 1999. Thereafter...