Third Party Observation in Patent Prosecution in China
Takeaways: 1. Nontraditional and unique issue petitions are common for patent owners to properly prosecute reexamination proceedings. 2. Well-drafted petitions influence outcomes and preserve PTAB, District Court, and/or...more
Long before the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB) patent revocation proceedings, the patentability of one or more claims of any patent could be reviewed via Ex Parte Reexamination...more
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more
Inter partes reviews (IPRs), ex parte reexaminations and post-grant reviews (PGRs) are all post grant proceedings offered by the United States Patent and Trademark Office (USPTO) that allow parties to challenge the validity...more
The patent claim survival rate before the Patent Trial and Appeal Board continues to strongly favor petitioners. Accordingly, motions to amend the challenged claims have been growing among patent owners in inter partes...more
The US Court of Appeals for the Federal Circuit denied a petition for panel rehearing regarding the constitutionality of decisions issued by the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board...more
Virnetx Inc. v. Cisco Systems, Inc., Appeal No. 2019-1671 (Fed. Cir., May 13, 2020). Inter partes reexamination was a non-trial procedure that allowed third parties to participate in patent reexamination, and has now been...more
35 U.S.C. § 315(d) and 37 C.F.R. 42.122(a) vest the PTAB with the power to stay, transfer, consolidate, or terminate any matter pending before the U.S. Patent and Trademark Office while an inter partes review involving the...more
The US Court of Appeals for the Federal Circuit affirmed in part, vacated in part and remanded the decisions in two re-examinations after finding that they contained inconsistent holdings on identical issues on essentially...more
Addressing the pre-AIA estoppel provision of 35 USC § 317(b), the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision not to terminate all pending re-examinations of a patent...more
The US Court of Appeals for the Federal Circuit found that the Patent Trial and Appeal Board (PTAB) properly instituted an inter partes re-examination even though the requester had asked it to deny institution and had...more
Addressing statutory estoppel issues in connection with inter partes re-examination, the US Court of Appeals for the Federal Circuit ordered the Patent Trial and Appeal Board (PTAB) to dismiss a re-examination against certain...more
The multiple flavors of review and prosecution at the Patent Office produce an environment where a patent family could be subject to inconsistent results. Conceivably, patents in a pre-AIA patent family could simultaneously...more