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Tag Archives: Ex Parte Reexamination

Federal Circuit Holds The Reexamination Door Open In In Re Baxter

Posted by Courtenay Brinckerhoff on Posted in Federal Circuit Decisions

When the Federal Circuit denied the Request for Panel Rehearing and Rehearing en banc in In re Baxter, the court let stand its two decisions that affirmed conflicting rulings on the validity of the same patent. In Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288 (Fed. Cir. 2009), the court affirmed the district court decision that upheld the validity of claims 26-31 of U.S. Patent 5,247,434, while in its May 17, 2012 decision in In re Baxter, the court affirmed the USPTO Board decision that the claims were invalid as obvious. Parallel litigation and USPTO proceedings involving the same patent may become more rare now that the America Invents Act (AIA) has replaced inter partes reexamination with inter partes review and placed restrictions on parallel litigation proceedings, but still could arise from pending inter partes reexamination proceedings or from ex parte reexamination proceedings, which are not subject to the same restrictions.Continue reading this entry

USPTO Reverses Course to Permit Anonymous Ex Parte Reexamination Requests

Posted by Andrew Baluch on Posted in Patent Reform; Reexam; USPTO Proposed Rule Changes

Responding to public feedback, the USPTO announced that it has dropped a controversial proposal that would have required all requests for ex parte reexamination to identify the requester’s “real party in interest.”  The change is one of several new provisions in a Final Rule, released August 6, 2012, which implements a new estoppel provision in the America Invents Act (AIA) barring ex parte reexamination of a patent following the completion of an inter partes review or post-grant review.  Third-party requesters and patent owners alike will need to be familiar with the Final Rule which goes into effect on September 16, 2012.  Continue reading this entry

Proposed AIA Implementation Rules: Estoppel Against Ex Parte Reexamination

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

On January 5, 2012, the USPTO issued a Federal Register Notice with proposed rules to implement provisions of the America Invents Act relating to the citation of prior art and written statements in a granted patent.  While I wrote about those changes previously, the same rules package includes proposed changes to the ex parte reexamination rules that I write about here. The USPTO will consider written comments received by March 5, 2012. Continue reading this entry