Articles

  • 1 month ago | jdsupra.com | Jason Eisenberg |Jessica Harrison

    Takeaways Estoppel certification in reexamination prevents relitigation of resolved issues. Estoppel’s “reasonably could have raised” standard requires exhaustive prior art searching and strategic planning. As we discussed in our March article, with the recent changes to Patent Trial and Appeal Board (PTAB) procedures for institution of post-grant trials, it is likely that reexamination requests will factor more heavily in post-grant challenge considerations.

  • 2 months ago | jdsupra.com | Jason Eisenberg |Jessica Harrison

    Takeaways Expired patents may be eligible for reexamination. Owner’s options during reexamination of an expired patent are severely limited. Similar to reexamination practice, which has long allowed reexamination of expired patents through the end of patent enforceability, the Federal Circuit has precedentially held that PTAB post-grant proceedings could be granted and conducted upon expired patents.

  • 2 months ago | jdsupra.com | Jason Eisenberg |Jessica Harrison

    Takeaways Pre-AIA patents may be able to “swear behind” prior art applied in reissue and reexamination. “Swearing behind” has limits and obtaining sufficient evidence to establish prior invention may be difficult to obtain. The need for patent reissue or reexamination often occurs late in the enforceable life of the patent or for a newer member of a patent family.

  • Feb 26, 2025 | jdsupra.com | Jason Eisenberg |Jessica Harrison

    In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the USPTO formed the Central Reexamination Unit (CRU) and staffed it with 15 year+ Examiners and legal experts. Later, after the loss of Inter Partes Reexamination in 2012, the USPTO added all newly filed reissue applications to the CRU Examiner’s regime.

  • Feb 14, 2025 | jdsupra.com | Jason Eisenberg |Jessica Harrison

    Takeaways Intra-patent claim inconsistencies are errors correctible via reissue. Subtle legal distinctions in reissue may require PTAB appeals. Patent prosecution errors occur. One such error that occurs is intra-patent claim inconsistencies that render claims indefinite and unenforceable. Precisely this situation occurred in TVnGO Ltd. v. LG Elecs., Inc., 861 F. App’x 453 (Fed. Cir. 2021) (nonprecedential); TVnGO Ltd. v. LG Elecs., Inc., No. 18-10238, 2020 WL 1899781 (D.N.J. Apr. 17, 2020).

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