Posts Tagged: "ex parte reexamination"

When One Door Closes, Try Reexam: TikTok Filing Underscores USPTO Forum Shopping Problem

Here we go again! We’ve heard the story in the past, which is sadly all too common. A patent owner prevails in federal district court, and also prevails at the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) challenge, but somehow finds themselves still fighting an ex parte reexamination. How is this possible? Perhaps something will be done—this time—because the abusive, harassing challenger is Chinese company TikTok, who is seeking to invalidate the very same claims it failed to invalidate in an IPR that was denied institution on the merits.

Post-Vivint Patent Office Treatment of Ex Parte Reexaminations After Non-Instituted IPRs

Given the various ways the Patent Trial and Appeal Board (PTAB) can exercise discretion to deny institution of an inter partes review (IPR) petition (and the corresponding non?appealability of those decisions), ex parte reexamination is becoming an attractive option to challenge patent validity following a decision not to institute. Because a later filed ex parte reexamination is often viewed as a “second bite at the apple,” there were questions as to how the U.S. Patent and Trademark Office (USPTO) should treat these second attempts at invalidating a patent. For IPRs, the PTAB has used several bases for discretionary denial of a later-filed IPR, but those bases were not being applied to follow-on ex parte reexamination requests. However, in In re Vivint, the Federal Circuit held that the USPTO has the authority to discretionarily deny an ex parte reexamination request under 35 U.S.C. § 325(d), i.e., if “the same or substantially the same prior art or arguments previously were presented to the Office.”

Federal Circuit Slams USPTO for Granting Ex Parte Reexam to Serial IPR Filer

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled today in a precedential opinion that Alarm.com, which was denied institution on three inter partes review (IPR) petitions it filed against patents owned by Vivint, Inc., could not simply “repackage” arguments raised in its IPR petition to challenge the same patent via ex parte reexamination. The opinion was authored by Chief Judge Moore. In so ruling, the CAFC said that it was “arbitrary and capricious” and an abuse of discretion for the U.S. Patent and Trademark Office (USPTO) to grant the reexamination request after it had denied the IPRs under 35 U.S.C. § 325(d).

Opticurrent Survives Reexam, Moves Forward with CAFC Appeal on Damages

On February 12, the U.S. Patent and Trademark Office entered a notice of intent to issue an ex parte reexamination certificate on a patent owned by Opticurrent, LLC, which will confirm all challenged patent claims without any amendments or changes to the specification and drawings. The USPTO’s notice brings an end to a patent battle in which Opticurrent argued that Power Integrations engaged in some unusual gamesmanship to challenge the validity of patent claims asserted against it in district court.

Rule 36 Affirmances at the Federal Circuit – Week of October 8, 2018

During the week of October 8, 2018,  there were five cases involving patents that were decided without an opinion as a result of Rule 36 affirmances at the United States Court of Appeals for the Federal Circuit. Three of those cases were issued by panels including Chief Judge Sharon Prost. In two cases, the Federal Circuit upheld district court invalidations of asserted patents whereas another two affirmed rejections of applicants claims by the U.S. Patent and Trademark Office. The last case was a summary affirmance of a victory by German drugmaker Erfindergemeinschaft UroPep over Eli Lilly in the Eastern District of Texas.