Posts Tagged: "reexamination"

In modern Patent Trial and Appeal Board (PTAB) practice, aggressive procedural strategy is no longer the exception—it is the operating norm. As the U.S. Patent and Trademark Office (USPTO) has increasingly relied on discretionary denials to constrain inter partes review (IPR), petitioners have adapted. One emerging tactic is the strategic use of ex parte reexamination as a fallback mechanism—deployed either after discretionary denial or, after an unfavorable IPR, or after the petitioner sees the handwriting on the wall and before a final written decision (FWD) is issued in an IPR.

The current U.S. Patent and Trademark Office (USPTO) leadership has made its position on serial patent challenges crystal clear. USPTO Director Squires warned that “even extremely strong patents” cannot survive repeated rounds of review. See NPRM Comments (10/16/2025)…. Once again, Director Squires and Deputy Director Stewart are right on the mark. Allowing excessive serial challenges to patents is unfair to patent owners and undermines the patent system.

This week on IPWatchdog Unleashed we discuss whether patent owners are better off facing post-grant challenges at the Patent Trial and Appeal Board (PTAB) or the Central Reexamination Unit (CRU) at the United States Patent and Trademark Office (USPTO). PTAB practitioners Matt Phillips and Kevin Greenleaf joined me for about how patent owners and challengers should be strategically thinking about the shifting post-grant environment at the USPTO. Our conversation highlights the growing reality that post-grant practice is no longer defined solely by inter partes review (IPR), but that ex parte reexamination has seen a resurgence in popularity, which requires careful evaluating timing, procedural dynamics, cost, and institutional realities. Fundamentally we attempt to answer the question of whether patent owners are better off in reexamination, or whether they are better off with IPR at the PTAB.

On Friday, the U.S. Patent and Trademark Office (USPTO) published an order granting a third-party request for ex parte reexamination of patent rights owned by American computer memory developer Netlist and asserted in a larger infringement action against tech giants Samsung and Google across several legal fora. The USPTO’s reexamination grant comes despite a series of so far unsuccessful validity challenges raised by alleged infringers against the same patent rights, which are now challenged by an anonymous party repackaging many of the arguments that previously failed.

One of the most intriguing, and frankly long overdue, reforms the United States Patent and Trademark Office (USPTO) needs to consider is putting an end to the practice of for-profit entities like Unified Patents and RPX filing petitions challenging a patent. This practice has recently been called into question by the USPTO through an Advance Notice of Proposed Rulemaking (ANPRM) published in the Federal Register. The ANPRM, among many other things, raises the question whether the Office should discretionarily deny post grant proceedings filed by for-profit, non-competitive entities that in essence seek to shield actual real-parties-in-interest (RPIs) and privies from the statutory estoppel provisions contained within the America Invents Act (AIA). And two recent decisions from the Office of Patent Legal Administration (OPLA) provide even more hope that the USPTO will take a reasonable approach going forward when it comes to RPIs.

Given the various ways the Patent Trial and Appeal Board (PTAB) can exercise discretion to deny institution of an inter partes review (IPR) petition (and the corresponding non?appealability of those decisions), ex parte reexamination is becoming an attractive option to challenge patent validity following a decision not to institute. Because a later filed ex parte reexamination is often viewed as a “second bite at the apple,” there were questions as to how the U.S. Patent and Trademark Office (USPTO) should treat these second attempts at invalidating a patent. For IPRs, the PTAB has used several bases for discretionary denial of a later-filed IPR, but those bases were not being applied to follow-on ex parte reexamination requests. However, in In re Vivint, the Federal Circuit held that the USPTO has the authority to discretionarily deny an ex parte reexamination request under 35 U.S.C. § 325(d), i.e., if “the same or substantially the same prior art or arguments previously were presented to the Office.”

The issue of who is the real party in interest in an inter partes review (IPR) filed at the Patent Trial and Appeal Board (PTAB) is a particularly thorny matter. When IPRs were introduced, patent owners were assured that there would be a meaningful estoppel provision, which would prevent those who lost IPRs from challenging the same patents in later proceedings. There was also a statute of limitations, another thorny matter, that would prevent challengers from filing an IPR more than one year after they were sued. The long and short of it is this—real party in interest law and statute of limitations law, which apply in every other legal setting, are interpreted vastly differently at the PTAB. For example, with the statute of limitations, if you are barred from bringing a challenge and someone else brings a challenge, then suddenly you are able to join the challenge, despite being barred. But wait—there is more. If that first party that was not barred settles and leaves the case and the barred party is the only challenger remaining, well the case must go on. A legal absurdity.

Reexaminations continue to gain favor, seeing a 47% increase over last year; the Patent Trial and Appeal Board (PTAB) sees fewer filings; and filings by non-practicing entities (NPEs) rose by 4%, according to Unified Patents’ 2021 Patent Dispute Report: Year in Review, published earlier this week. The PTAB saw a nearly 12% decline in filings from the previous year, whereas district court proceedings remained unchanged, said the report. It added: “Operating companies filed 5.5% less cases in district court and over 10% less filings at the PTAB.”

On April 21, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a modified, precedential order reversing the Patent Trial and Appeal Board’s (PTAB’s or Board’s) decision to deny U.S.A. Dawgs and Mojave’s motion to substitute, holding that “the Board erred in not substituting Mojave for U.S.A. Dawgs as the third-party requester during the inter partes reexamination.” The original order was issued in February. Judge O’Malley dissented to the latest order.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday upheld an Arkansas district court’s decision to grant Morris & Associate Inc.’s motion for summary judgment against John Bean Technologies Corporation’s infringement claims, based on the doctrine of equitable intervening rights. The opinion marked the first time the court has addressed the “boundaries of the phrase ‘protection of investments’ in [35 U.S.C.] § 252”, which outlines the effect of reissued patents.  

On May 13, patent owner Opticurrent, LLC, filed an emergency motion for leave to file a supplemental motion for judgment  in a patent infringement case being fought out in the Northern District of California against high-performance semiconductor supplier Power Integrations, Inc. The motion, which ultimately asks the district court to render judgment on Power Integrations’ patent invalidity claims, alleges that the defendant has engaged in “gamesmanship” meant “to derail the Article III court system in the event of an adverse outcome on infringement by… manufacturing a race to an administrative outcome intended to circumvent the authority of this Court.” The case goes back to April 2016, when Opticurrent first filed charges against Power Integrations, alleging infringement of U.S. Patent No. 6958623, titled Three Terminal Noninverting Transistor Switch. Power Integrations followed with a counterclaim in which it asserted invalidity of the ‘623 patent, submitted expert discovery, and filed a motion for summary judgment of invalidity based on one of its alleged prior designs, but not based on any other reference contained within its invalidity contentions or expert report.

Cobra Products filed a lawsuit for patent infringement. G.T. Water then filed for a re-examination of my patent at the U.S. Patent and Trademark Office to invalidate my patent claims. My licensing agreement with Cobra and BrassCraft was to share equally in the cost of defending my patent. However, Cobra Products elected not to help me in the defense of my patent at the USPTO. I was forced to bear the total cost of that alone. After seven years of validity proceedings, which have cost more than $250,000, the Patent Trial and Appeal Board (PTAB) has invalidated all 12 of my claims covering the Zip-It. How can the USPTO issue a patent with 12 claims and then use the PTAB to neuter my patent? Since this has been going back and forth with the court system, there are now numerous other entities which have engaged in copying and infringing my patented invention.

The United States Patent and Trademark Office (USPTO) provides invalidity tools via inter partes review (IPR) and post-grant review (PGR), but which route is better? …  PGRs are estimated to cost more because of their broader discovery rules.  If cost is a major factor, IPRs are a less-expensive option due to restricted allowance of discovery, the most expensive aspect of patent litigation… If the invalidating arguments or art are not strong, an IPR may be a better option due to its lower threshold for institution.  The same prior art arguments that failed in a petition for a PGR may have succeeded in an IPR petition due to the lower standard.

InvestPic filed a combined petition for panel rehearing and rehearing en banc on June 19, 2018, making two arguments. First, that the original decision must be vacated and remanded because the claims considered by the district court and the panel were surrendered as the result of two reexaminations that ultimately resulted in the original claims being lost, with new claims awarded in their place. Second, that the panel’s decision is alleged to be inconsistent with decisions of prior panels, which found claims lacking improvements in the physical-realm could still be patent eligible improvements. This second argument goes on to assert that the ruling of the panel would effectively preclude groundbreaking innovations in the field of data science to be considered patent eligible moving forward.