Reexamination

Bizarre Facts Beget Bizarre Result

Before the Federal Circuit’s recent decision in In re Vivint, Inc., Appeal 2020-1992 (Fed. Cir. Sept. 29, 2021), the Patent Trial and Appeal Board affirmed a reexamination examiner’s final rejection of Vivint’s patent claims as unpatentable over prior art. In due course, the Patent Office would have issued a certificate canceling those claims. But Vivint … Continue Reading

Does Section 285 Permit an Award of Attorney’s Fees for Patent Office Proceedings?

By Sandip H. Patel on July 27, 2020 Posted in Inter Partes Review, IPR, Reexamination, Stays

Back in 1988, the Federal Circuit reversed a district court decision that refused to award a party its reasonable attorney’s fees incurred in successfully litigating a patent’s validity before the Patent Office. PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565 (Fed. Cir. 1988). The Office determined that the patent asserted in litigation—stayed … Continue Reading

USPTO to Patent Owners – Don’t Forget About Reexams and Reissues

By Heather R. Kissling on July 1, 2019 Posted in Amendments, Ex Parte, Inter Partes Review, IPR, Reexamination

Recently updated statistics from the USPTO provide little comfort for patent owners seeking to amend claims during an IPR proceeding. The Motion to Amend Study, Installment 5 through FY2018, updated March 2019, reports that patent owners have filed a motion to amend in 326 of the 3,599 completed trials (9%) and in 90 of the … Continue Reading

Play the Claim

By Sandip H. Patel on April 17, 2018 Posted in Biotechnology, Claim Construction, Ex Parte, Reexamination, Sections 102/103

Monsanto Technology LLC v. E.I. DuPont de Nemours & Co. Appeal 2017-1032 (Fed. Cir. Jan. 5, 2018), illustrates “[t]he life of a patent solicitor has always been a hard one.” [1] The case concerns an inter partes reexamination of a Monsanto patent in which the Patent Office concluded the claimed subject matter was inherently described in an … Continue Reading

ODP Dooms CIP

By Sandip H. Patel on February 21, 2018 Posted in Ex Parte, Reexamination

In re Janssen Biotech, Inc., Appeal 2017-1257 (Fed. Cir. Jan. 23, 2018), is a cautionary tale concerning patents protecting a blockbuster drug providing patients an important therapy and bringing its owners billions of dollars in annual revenue. It began twenty-five years ago with a then-unremarkable decision to file a patent application. The filed application was … Continue Reading