Posts Tagged: reexamination


CAFC may consider whether an inter partes reexamination was properly instituted based on the presence or withdrawal of a party

In re AT&T Intellectual Prop. II, L.P., Appellant AT&T Intellectual Property II, L.P. (“AT&T”) appealed from a final decision of the Patent …

Cisco Successfully Invalidates Patent for Lack of Written Description

Cisco challenged Cirrex’s patent via inter partes reexamination, asserting a lack of written description. The Board affirmed the Examiner’s findings, that the patent, as amended, …

En Banc Federal Circuit Dodges PTAB Constitutionality

Patlex, which dealt with reexamination of applications by an examiner — not by an Article I tribunal — could be considered a next step beyond McCormick. MCM, however, simply …
By Gene Quinn
1 month ago 38

Affinity Labs of Texas Loses Reexamination Appeal; Reexamination Estoppel Does Not Apply

The Federal Circuit affirmed a Patent Trial and Appeal Board (“Board”) decision to uphold the unpatentability of several claims of a patent owned by Affinity Labs of …

I hope Trump’s ‘America first’ will apply to inventors

I believe it’s not a good thing to be an inventor in the US and I hope that Trump’s “America first” will apply to inventors. …
By Jean Paul Castille
6 months ago 1

In non-precedential decision CAFC reverses PTAB finding of obviousness in reexamination

In re: Natural Alternatives, LLC, 2015-1911 (opinion and errata) is a non-precedential but still notable case from the U.S. Court of Appeals for the Federal Circuit …
By John M. Rogitz
9 months ago 1

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
10 months 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
1 year ago 35

Appending Conventional Steps to Abstract Idea an Insufficient Inventive Concept

The Court held that dealing “physical playing cards” did not constitute patent eligible territory. This constituted a “purely conventional” activity, like the conventional computer implementation that fell …

CAFC Dismisses Inter Partes Reexamination Appeal By a Party Who was Not Initial Requester

Waters argued that Agilent could not appeal, because Aurora was the third-party requester of the reexamination, not Agilent. The Court held that the relevant question was whether …

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 …

Apple Design Patent Rejected in Reexamination by USPTO

Earlier this month the Central Reexamination Unit of the United States Patent and Trademark Office (USPTO) issued a non-final rejection of an Apple design patent at the …
By Gene Quinn
2 years ago 6

Collateral Estoppel Applies to Reexam Claim

The Federal Circuit held that the district court correctly applied collateral estoppel to the ’774 patent because reexamined claim 33 contains the same memory limitation previously found in claims 1 …
By Gene Quinn
3 years ago 0