IN RE GARRIDO (Fed. Cir. 2016) (NP) – Newly added claims during reexamination may be rejected for failing to comply with § 112

by Steve Driskill | Apr 26, 2016 | [sub] reexamination, PTO Procedure

While rejections of original patent claims are limited to prior art grounds during reexamination, newly added claims may be rejected for failing to comply with § 112. Here, for example, the rejection of certain claims as being indefinite under 35 U.S.C. § 112, second...

CONVOLVE, INC. v. COMPAQ COMPUTER CORP. (Fed. Cir. 2016) (P) – Closing the gap between PTO and court claim construction standards does not substantially alter claim scope

by Steve Driskill | Feb 10, 2016 | [sub] reexamination, PTO Procedure

Amendments bridging the gap between the PTO’s broadest reasonable interpretation standard and the court’s narrower Phillips claim construction standard do not represent a substantial alteration of claim scope. Here, for example, amendments during reexamination...

DOME PATENT L.P. v. LEE (Fed. Cir. 2015) (P) – Preponderance of the evidence standard is the appropriate one for assessing invalidity during reexamination

by Steve Driskill | Sep 3, 2015 | [sub] reexamination, PTO Procedure

The preponderance of the evidence standard is the appropriate one for assessing invalidity during reexamination. Here, for example, the PTO found the claimed method at issue to be obvious and therefore unpatentable under a preponderance of the evidence standard even...

AIRBUS S.A.S. v. FIREPASS CORPORATION (Fed. Cir. 2015) (P) – The substantial new question of patentability requirement for reexamination does not extend to new claims

by Steve Driskill | Jul 17, 2015 | [sub] reexamination, PTO Procedure

The substantial new question of patentability requirement to institute reexamination proceedings does not extend to claims added after commencement of the reexamination. Here, for example, newly added claims during reexamination were found to be exempt from the...

TEMPO LIGHTING, INC. v. TIVOLI, LLC (Fed. Cir. 2014) (P) – Prosecution history in claim interpretation at the PTO & third-party requester cross-appeals

by Steve Driskill | Feb 10, 2014 | [sub] broadest reasonable interpretation, [sub] reexamination, Claim Interpretation, PTO Procedure

(1) Prosecution history serves as intrinsic evidence for purposes of claim construction even “in construing patent claims before the PTO,” such that an “examiner err[s] by resorting to extrinsic evidence that [is] inconsistent with the more reliable intrinsic...

ABBOTT LABORATORIES v. CORDIS CORPORATION (Fed. Cir. 2013) (P) – Inter partes reexamination

by Steve Driskill | Mar 20, 2013 | [sub] reexamination, PTO Procedure

Although somewhat of a moot point going forward in view of the new statutory provisions for inter partes review in the AIA, for the old inter partes reexamination proceedings a district court may not issue a subpoena pursuant to 35 U.S.C. § 24 to compel discovery...