Tag Archives: Reexamination

Beware Reexamination Amendments

In R+L Carriers, Inc. v. Qualcomm, Inc., the Federal Circuit affirmed the district court’s dismissal of R+L’s infringement claims against Qualcomm, finding that the claims issued after reexamination were not “substantially identical” to the original claims. Considering the claim language at issue and the court’s comments, this decision suggests that almost any reexamination amendments could … Continue reading this entry

Fresenius Escapes $25 Million Damages Award, Based on Invalidation of Baxter Patent In Ex Parte Reexamination

In Fresenius, USA Inc. v. Baxter International, Inc., the Federal Circuit interpreted the ex parte reexamination statutes (35 USC §§ 301-307) as providing that the final cancellation of claims in a reexamination proceeding is binding on concurrent litigation proceedings, as long as the litigation is still pending. This decision validates the use of ex parte … Continue reading this entry

Federal Circuit Holds The Reexamination Door Open In In Re Baxter

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 … Continue reading this entry

Will You Pay $17,750 For Ex Parte Reexamination?

Today’s Federal Register includes the USPTO’s proposed rules to implement the Supplemental Examination provisions of The America Invents Act. I am in London for the C5 Biosimilars Forum, so I have not been able to read the 70 page notice, but the proposed new ex parte reexamination fee caught my eye as I skimmed through: $17,750.… Continue reading this entry

The Effect of Proposed Changes to US Reexamination Practice

On April 25, 2011, the USPTO published a Notice of Public Meeting to discuss proposed changes to reexamination practice. The proposed changes are the latest in an ongoing and largely successful effort by the USPTO to improve the pace of reexamination proceedings while still maintaining quality. The current proposals are unrelated to patent reform legislation … Continue reading this entry

Can Rapid Reexamination Incentivize Humanitarian Technologies?

On September 20, 2010, the USPTO issued a “Request for Comments on Incentivizing Humanitarian Technologies and Licensing Through the Intellectual Property System.” The proposal under consideration would offer a “fast-track ex parte reexamination voucher” designed to incentivize technologies “that address humanitarian needs.” At times like these I wish I had more “inside” information so I … Continue reading this entry