USPTO, Ex Partes Reexamination, Inter Partes Review (IPR) Proceeding

Federal Circuit Upholds USPTO Authority to Estop Patentees from Obtaining Patent Claims 'Not Patentably Distinct' from Previously...

Akin Gump Strauss Hauer & Feld LLP on 10/4/2024

The Federal Circuit recently upheld the USPTO’s authority under the estoppel provision 37 C.F.R. § 42.73(d)(3)(i) to prohibit a patent owner from obtaining patent claims that are not patentably distinct from claims previously...more

Intellectual Property Report - October 2024

Baker Botts L.L.P. on 10/3/2024

In 2023, global investments in energy transition projects surged to approximately $1.7 trillion. This unprecedented investment level underscores the transformative shift toward cleaner energy sources and technologies....more

Demonstrating Unequivocal Intent to Broaden in Reissue

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 10/1/2024

Takeaways: - Patentees must demonstrate “unequivocal intent” to broaden claims in a broadening reissue. - To establish a broadening reissue, a patentee’s actions must align with their words within the two year statutory...more

Patent Poetry: Federal Circuit Upholds IPR Estoppel Provisions

AEON Law on 8/5/2024

The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board (PTAB or Board) concerning the application of 37 CFR § 42.73(d)(3)(i)’s estoppel provisions in invalidating amended patent claims....more

Estoppel Does Not Apply to Previously Issued Claims

Knobbe Martens on 8/2/2024

Before Bryson, Lourie, and Reyna. Appeal from the United States Patent and Trademark Office (“PTO”), Patent Trial and Appeal Board (“Board”). Summary: Estoppel under 37 C.F.R. § 42.73(d)(3)(i) only applies to obtaining new...more

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – June 2024

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 6/21/2024

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – May 2024

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 5/20/2024

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

2023 PTAB Year in Review: Analysis & Trends: Reexamination Statistics and the Federal Circuit’s SNQ Clarification/Expansion

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/19/2024

The recent resurgence in ex parte reexamination demonstrates the importance of this post-grant review vehicle. It has become particularly important for patent challengers who may be estopped from requesting inter partes...more

2023 PTAB Year in Review: Editors’ Introduction

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/12/2024

A review of 2023 reveals it was an active and impactful year in shaping the policy and practice before the Patent Trial and Appeal Board (PTAB or Board) at the U.S. Patent and Trademark Office (USPTO). In fact, all three...more

2023 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/12/2024

This Year in Review synthesizes key events and decisions from 2023 into a digestible guide that we hope will serve as a helpful reference for those who practice before, or adjacent to, the PTAB. As in the past, many of our...more

In Re: Cellect, LLC No. 2022-1293 (Fed. Cir. Aug. 28, 2023)

Sheppard Mullin Richter & Hampton LLP on 10/25/2023

This case addresses how Patent Term Adjustment (PTA) interacts with obviousness-type double patenting (ODP). Background - Cellect sued Samsung Electronics, Co. for infringement of four patents. Subsequently, Samsung...more

Salesforce’s Reexams Estopped by RPX IPRs

Jones Day on 7/11/2023

In decisions rare of their kind, the U.S. Patent and Trademark Office (“USPTO”) terminated two ex parte reexaminations in view of inter partes review (“IPR”) proceedings initiated by a different party. The decisions represent...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Best Medical Int’l, Inc. v. Elekta Inc., 46 F.4th...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/16/2023

Varian filed two petitions for IPR of BMI’s ’096 patent, which the Board instituted. Elekta filed copycat petitions and successfully joined Varian’s two instituted IPRs. A previously filed, parallel ex parte reexamination on...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/8/2023

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

No Mulligans Here: PTO Rewinds Reexamination Based on Estoppel

McDermott Will & Emery on 12/8/2022

The US Patent & Trademark Office (PTO) terminated a pending ex parte reexamination after finding that the challenger was estopped because the prior art references could have been raised in a prior inter partes review (IPR)....more

Ex Parte Reexamination Barred Based on Earlier IPR

Jones Day on 12/6/2022

On November 16, 2022, the United States Patent and Trademark Office (“PTO”) vacated a reexamination proceeding because the patent challenger relied on unpatentability grounds that reasonably could have been raised in an...more

The Federal Circuit in Alarm.com Incorporated v. Hirshfeld: Parties CAN Seek Review of USPTO Director’s Decision to Vacate Ex...

Haug Partners LLP on 3/18/2022

In Alarm.com Incorporated v. Hirshfeld1 the Federal Circuit analyzed whether a party’s challenge to the United States Patent & Trademark Office (“USPTO”) Director’s decision to vacate requests for ex parte reexamination...more

2021 PTAB Year in Review: Analysis & Trends: Case Studies and Trends at the PTAB Involving 35 U.S.C. § 112

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/15/2022

Over the last 20-plus years, US Court of Appeals for the Federal Circuit cases concerning written description and enablement have become a hot-button issue in the chemical and life sciences practices. The year 2021 was no...more

2021 PTAB Year in Review: Analysis & Trends: Discretionary Denial under § 325(d): Strategic Implications of the PTAB’s Advanced...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/11/2022

The USPTO Patent Trial and Appeal Board (PTAB) has increasingly used its discretionary denial authority in recent years. Although the PTAB’s discretion under 35 U.S.C. § 314(a) and Fintiv grabbed many headlines in 2021, the...more

United States Patent and Trademark Office › Ex Partes Reexamination › Inter Partes Review (IPR) Proceeding