LexisNexis® Legal Newsroom
Learning From the Mistakes of Star Scientific

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...

Owner Initiated Patent Reexamination Backfires in Ex parte Yasukochi et al.

Hisamitsu Pharmaceutical 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. Generally...

BPAI to Review Disputed SNQ Determinations in Ex Parte Patent Reexamination

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 reexamination...

Choosing Between Ex Parte & Inter Partes Patent Reexamination

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., those patents...

Patentee Tactic for Looming PTAB Patent Challenges

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...

There Was a Simpler Way to Decide Fresenius v. Baxter!

by Charles L. Gholz and W. Todd Baker Excerpt: 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...

Patent Reexamination Speed Presents New Opportunity

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...