Reexamination

The passage of the America Invents Act in 2011 and the introduction of inter partes review at the Patent Trial and Appeal Board (PTAB) diminished the emphasis placed on reexamination in the years that followed. However, there has been a renewed interest in ex parte reexamination practice in recent years, and Sterne Kessler is at the forefront of this resurgence. We are a leading law firm for reexamination at the U.S. Patent and Trademark Office, handling more than 500 reexaminations over the last several decades.

Sterne Kessler frequently develops creative strategies to address parallel litigation objectives for both patent owners and third party requesters. We craft strategies that leverage reexamination and optimize the interplay between district court litigation, U.S. International Trade Commission (ITC) investigations, and PTAB proceedings. Our success flows directly from the depth and breadth of our extraordinarily talented team handling these cases. Further, Sterne Kessler has been involved in several precedential decisions on reexamination procedures at the United States Court of Appeals for the Federal Circuit.

Reexamination rules of practice are nuanced, and the timelines for the proceedings to play out are sometimes unpredictable. We have extensive experience guiding clients through the reexamination process, and our experience includes:

Federal Circuit Appeal No. 20-1992: In re: Vivint, Inc. – Precedential decision establishing a minimum level of due process by the U.S. Patent and Trademark Office to determine whether a request for reexamination meets 35 U.S.C. 325(d) requirements to avoid presenting a substantially similar argument using substantially similar prior art teachings, which is a separate analysis from substantial new question of patentability. Reexamination successfully vacated.
Federal Circuit Appeal No. 13-1549: K/S HIMPP Hear-Wear Technologies, LLC – Split CAFC precedential decision establishing what evidence is required in a request for reexamination to establish a substantial new question of patentability.