Posts Tagged: ex parte reexamination


Phillips Claim Construction Standard Applies to Ex Parte Reexam After Patent Expires

The Court held that the Board improperly continued to apply the BRI standard following the expiration. While the examiner properly applied the BRI prior to expiration, the …

SCOTUS asked to consider proper scope of ex parte reexamination proceedings at USPTO

Pactiv, LLC v. Lee presents a question fundamental to all ex parte reexaminations: whether, after the PTO initiates an ex parte reexamination, that proceeding is limited in …
By Paul Hughes
1 month ago 6

Judgment With Prejudice is Res Judicata and not Vacated Even if Mooted by Later Reexamination

Cardpool, Inc., v. Plastic Jungle, Inc., NKA Cardflo Inc. (Fed. Cir. Apr. 5, 2016) (Before Newman, Reyna, and Wallach, J.) (Opinion for the court, Newman, J.)(Federal Circuit held …

How the AIA requires the USPTO to be a patent system arms dealer

Not only does the Patent Office handsomely charge for the acquisition and maintenance of a patent, they also handsomely charges for the right to challenge those patents …
By Gene Quinn
6 months ago 35

Teaching Away Insufficient to Overcome Motivation to Combine References

While Dome’s argument against obviousness based on Tanaka teaching away was plausible, it was not sufficient to overcome the district court’s factual findings that a …

Patent Strategy: Building a patent portfolio with meaningful rights

Last week I wrote about adopting a patent strategy in order to lay the foundation for success. What the article did not touch upon, however, is how …
By Gene Quinn
1 year ago 1

Part 2 – The AIA: A Boon for David or Goliath?

Our inter partes challenge data from pre- and post-passage of the AIA clearly show that of the relatively few initial denials made by the USPTO of an …
By Steve Moore
3 years ago 2

Kappos on Patent Trial and Appeal Board Trial Proceedings

Kappos explained that the PTAB has started and will continue, in at least some cases, to issue shorter per curiam decisions, which will allow them to decide …
By Gene Quinn
4 years ago 1

David Kappos Headlines Post-Grant Patent Trial Program in NY

A new addition to the program just announced today is David Kappos, who is the immediate former Director of the United States Patent and Trademark Office. Kappos, …
By Gene Quinn
4 years ago 1

Managing Costs of Patent Litigation

It’s no secret patent litigation costs are immense. According to the American Intellectual Property Law Association, the cost of an average patent lawsuit, where $1 million to $25 …
By Chris Neumeyer
4 years ago 4

New Patent Fees: USPTO Exercises Fee Setting Authority

The final rules on patent fees will publish in the Federal Register on Friday, January 18, 2013. Fees are going up for most, but not as much as feared. …
By Gene Quinn
4 years ago 5

The Enforcement of Bad Patents is the Problem

Right now the best business to be in at the moment is the patent enforcement business, at least if you are concerning yourself with low-risk monetization with …
By Gene Quinn
4 years ago 18

AIA Rules: Citation of Prior Art and Estoppel in Reexamination

In order for one to file a statement of the patent owner in Federal court the submissions must: (1) Identify the forum and proceeding in which patent owner …
By Gene Quinn
4 years ago 1

Supplemental Examination at the USPTO

At the conclusion of the supplemental examination if the certificate issued indicates that a substantial new question of patentability is raised an ex parte reexamination will be …
By Gene Quinn
4 years ago 9

USPTO Proposes Significantly Higher Patent Fees

The recurring theme will be decreased fees for those who qualify for micro-entity status, but increased fees for everyone else. That is great, but micro-entity status will …
By Gene Quinn
4 years ago 8