Inter Partes Reexamination

Inter Partes Reexamination

Inter partes reexamination procedures permit a third party to request reexamination of a patent.  The requestor may participate in the reexamination process, including appeals to the Board of Patent Appeals and Interferences and appeals to the Court of Appeals for the Federal Circuit.

Basics

Basic characteristics of inter partes reexamination

The basic characteristics of inter partes reexamination are as follows:

(A) Any third party requester can request inter partes reexamination at any time during the period of enforceability of the patent (for a patent issued from an original application filed on or after November 29, 1999)

(B) Prior art considered during reexamination is limited to prior patents or printed publications applied under the appropriate parts of 35 U.S.C. §102 and §103;

(C) A substantial new question of patentability must be present for reexamination to be ordered;

(D) If ordered, the actual reexamination proceeding is essentially inter partes in nature;

(E) Decision on the request must be made not later than three months from its filing date, and the remainder of proceedings must proceed with "special dispatch" within the Office;

(F) If ordered, a reexamination proceeding will normally be conducted to its conclusion and the issuance of an inter partes reexamination certificate;

(G) The scope of the patent claims cannot be enlarged by amendment;

(H) Reexamination and patent files are open to the public, but see paragraph (I) below;

(I) The reexamination file is scanned to provide an electronic copy of the file. All public access to and copying of reexamination proceedings may be had from the electronic copy. The paper file is not available to the public.

[MPEP 2609 (July 2008)]

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Statistics

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Statutes

35 U.S.C. §311 - Request for inter partes reexamination

(a) IN GENERAL.— Any third-party requester at any time may file a request for inter partes reexamination by the Office of a patent on the basis of any prior art cited under the provisions of section 301.

(b) REQUIREMENTS.— The request shall—

(1 )be in writing, include the identity of the real party in interest, and be accompanied by payment of an inter partes reexamination fee established by the Director under section 41; and

(2) set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.

(c)COPY.— The Director promptly shall send a copy of the request to the owner of record of the patent.

35 U.S.C. §312 - Determination of issue by Director

(a) REEXAMINATION.— Not later than 3 months after the filing of a request for inter partes reexamination under section 311, the Director shall determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.

(b) RECORD.— A record of the Director’s determination under subsection (a) shall be placed in the official file of the patent, and a copy shall be promptly given or mailed to the owner of record of the patent and to the third-party requester.

(c) FINAL DECISION.— A determination by the Director under subsection (a) shall be final and non-appealable. Upon a determination that no substantial new question of patentability has been raised, the Director may refund a portion of the inter partes reexamination fee required under section 311.

35 U.S.C. §313 - Inter partes reexamination order by Director

If, in a determination made under section 312(a), the Director finds that a substantial new question of patentability affecting a claim of a patent is raised, the determination shall include an order for inter partes reexamination of the patent for resolution of the ques­tion. The order may be accompanied by the initial action of the Patent and Trademark Office on the mer­its of the inter partes reexamination conducted in accordance with section 314.

35 U.S.C. §314 - Conduct of inter partes reexamination proceedings

(a) IN GENERAL.— Except as otherwise pro­vided in this section, reexamination shall be con­ducted according to the procedures established for initial examination under the provisions of sections 132 and 133. In any inter partes reexamination pro­ceeding under this chapter, the patent owner shall be permitted to propose any amendment to the patent and a new claim or claims, except that no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted.

(b) RESPONSE.—

(1) With the exception of the inter partes reexamination request, any document filed by either the patent owner or the third-party requester shall be served on the other party. In addition, the Office shall send to the third-party requester a copy of any com­munication sent by the Office to the patent owner con­cerning the patent subject to the inter partes reexamination proceeding.

(2) Each time that the patent owner files a response to an action on the merits from the Patent and Trademark Office, the third-party requester shall have one opportunity to file written comments addressing issues raised by the action of the Office or the patent owner’s response thereto, if those written comments are received by the Office within 30 days after the date of service of the patent owner’s response.

(c) SPECIAL DISPATCH.— Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dis­patch within the Office.

35 U.S.C. §315 - Appeal

(a) PATENT OWNER.— The patent owner involved in an inter partes reexamination proceeding under this chapter—

(1) may appeal under the provisions of sec­tion 134 and may appeal under the provisions of sec­tions 141 through 144, with respect to any decision adverse to the patentability of any original or pro­posed amended or new claim of the patent; and

(2) may be a party to any appeal taken by a third-party requester under subsection (b).

(b) THIRD-PARTY REQUESTER.— A third-party requester—

(1) may appeal under the provisions of sec­tion 134, and may appeal under the provisions of sec­tions 141 through 144, with respect to any final decision favorable to the patentability of any original or proposed amended or new claim of the patent; and

(2) may, subject to subsection (c), be a party to any appeal taken by the patent owner under the pro­visions of section 134 or sections 141 through 144.

(c) CIVIL ACTION.— A third-party requester whose request for an inter partes reexamination results in an order under section 313 is estopped from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceed­ings.

35 U.S.C. §316 - Certificate of patentability, unpatentability and claim cancellation

(a) IN GENERAL.— In an inter partes reexam­ination proceeding under this chapter, when the time for appeal has expired or any appeal proceeding has terminated, the Director shall issue and publish a cer­tificate canceling any claim of the patent finally deter­mined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable.

(b) AMENDED OR NEW CLAIM.— Any pro­posed amended or new claim determined to be patent­able and incorporated into a patent following an inter partes reexamination proceeding shall have the same effect as that specified in section 252 of this title for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation therefor, prior to issuance of a certificate under the provisions of subsection (a) of this section.

35 U.S.C. §317 - Inter partes reexamination prohibited

(a) ORDER FOR REEXAMINATION.— Not­withstanding any provision of this chapter, once an order for inter partes reexamination of a patent has been issued under section 313, neither the third-party requester nor its privies may file a subsequent request for inter partes reexamination of the patent until an inter partes reexamination certificate is issued and published under section 316, unless authorized by the Director.

(b) FINAL DECISION.— Once a final deci­sion has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28, that the party has not sustained its burden of prov­ing the invalidity of any patent claim in suit or if a final decision in an inter partes reexamination pro­ceeding instituted by a third-party requester is favor­able to the patentability of any original or proposed amended or new claim of the patent, then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action or inter partes reexamination proceeding, and an inter partes reex­amination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.

35 U.S.C. §318 - Stay of litigation

Once an order for inter partes reexamination of a patent has been issued under section 313, the patent owner may obtain a stay of any pending litigation which involves an issue of patentability of any claims of the patent which are the subject of the inter partes reexamination order, unless the court before which such litigation is pending determines that a stay would not serve the interests of justice.

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Inter Partes Reexamination Rules

Subpart H - Inter Partes Reexamination of Patents that Issued From an Original Application Filed in the United States on or After November 29, 1999 (37 C.F.R. §§ 1.902-1.1.907, 1.913, 1.915, 1.919, 1.923, 1.925, 1.927, 1.931, 1.933, 1.935, 1.937, 1.939, 1.941, 1.943, 1.945, 1.947-1.949, 1.951, 1.953, 1.955-1.959, 1.979, 1.981, 1.983, 1.985, 1.987, 1.989, 1.991, 1.993, 1.995, and 1.997)

Part 41 - Subpart A - General Provisions (37 C.F.R. §§ 41.1-41.12 and 41.20)

Part 41 - Subpart C - Inter Partes Appeals (37 C.F.R. §§ 41.60-61, 41.63-41.64, 41.66-41.69, 41.71, 41.73, 41.77, 41.79, and 41.81)

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Recently Reported Requests for Inter Partes Reexamination

 

 

7,718,132

  • Reexam. C.N.: 95/002,215
  • Requested Date: Sep. 13, 2012
  • Title: FRAGRANCE PRODUCT, DISPENSER, AND DISPENSER ASSEMBLY
  • Owners of Record: MeadWestvaco Corp., Richmond, VA
  • Third Party Requester: AptarGroup, Inc.

7,722,819

  • Reexam. C.N.: 95/002,212
  • Requested Date: Sep. 13, 2012
  • Title: FRAGRANCE PRODUCT, DISPENSER, AND DISPENSER ASSEMBLY
  • Owners of Record: MeadWestvaco Corp., Richmond, VA
  • Third Party Requester: AptarGroup, Inc.

7,838,221

  • Reexam. C.N.: 95/002,216
  • Requested Date: Sep. 13, 2012
  • Title: SEQUENCES FOR DETECTION AND IDENTIFICATION OF METHICILLIN-RESISTANT STAPHYLOCOCCUS AUREUS (MRSA)
  • Owners of Record: Geneohm Sciences, Inc., San Diego, CA
  • Third Party Requester: Beckman Coulter, Inc.

8,011,632

  • Reexam. C.N.: 95/002,218
  • Requested Date: Sep. 13, 2012
  • Title: SUPPORT STAND FOR FLAT-PANEL DISPLAY MONITOR
  • Owners of Record: Hong Fu Jin Precision Industry (ShenZhen) Co., LTD., China; Hon Hai Precision Industry Co., LTD., Taiwan
  • Third Party Requester: Ergotron, Inc.

8,067,215

  • Reexam. C.N.: 95/002,219
  • Requested Date: Sep. 13, 2012
  • Title: PROCESS OF PRODUCING POLYMERS
  • Owners of Record: CIBA Specialty Chemicals Water Treatment LTD., Great Britain
  • Third Party Requester: SNF Holding Company

8,073,111

  • Reexam. C.N.: 95/002,210
  • Requested Date: Sep. 13, 2012
  • Title: SYSTEMS AND METHODS FOR PROVIDING 9-1-1 SERVICES TO NOMADIC INTERNET TELEPHONY CALLERS
  • Owners of Record: Intellectual Ventures II, LLC., Wilmington, DE
  • Third Party Requester: Xilinx, Inc.

8,127,266

  • Reexam. C.N.: 95/002,207
  • Requested Date: Sep. 13, 2012
  • Title: GATE-LENGTH BIASING FOR DIGITAL CIRCUIT OPTIMIZATION
  • Owners of Record: Tela Innovations, Inc., Campbell, CA
  • Third Party Requester: Taiwan Semiconductor Manufacturing Co., LTD.

8,140,663

  • Reexam. C.N.: 95/002,221
  • Requested Date: Sep. 13, 2012
  • Title: NETWORKED SYSTEM FOR INTERACTIVE COMMUNICATION AND REMOTE MONITORING OF INDIVIDUALS
  • Owners of Record: Health Hero Network, Inc., Mountain View, CA
  • Third Party Requester: Cardiocom, LLC.

8,142,747

  • Reexam. C.N.: 95/002,217
  • Requested Date: Sep. 13, 2012
  • Title: CATALYTIC REDUCTION OF NOx
  • Owners of Record: Daimler AG, Germany
  • Third Party Requester: BASF Corp.

8,150,518

  • Reexam. C.N.: 95/002,209
  • Requested Date: Sep. 14, 2012
  • Title: RENAL NERVE STIMULATION METHOD AND APPARATUS FOR TREATMENT OF PATIENTS
  • Owners of Record: Ardian, Inc., Palo Alto, CA
  • Third Party Requester: St. Jude Medical, Inc.

8,185,865

  • Reexam. C.N.: 95/002,214
  • Requested Date: Sep. 13, 2012
  • Title: METHODS FOR GATE-LENGTH BIASING USING ANNOTATION DATA
  • Owners of Record: Tela Innovations, Inc., Los Gatos, CA
  • Third Party Requester: Taiwan Semiconductor Manufacturing Co., LTD.

8,215,709

  • Reexam. C.N.: 95/002,206
  • Requested Date: Sep. 12, 2012
  • Title: VEHICLE SEAT HAVING ACTIVE HEAD RESTRAINT SYSTEM
  • Owners of Record: Lear Corporation, Southfield, MI
  • Third Party Requester: TS Tech North America, Inc.

6,638,739

  • Reexam. C.N.: 95/002,224
  • Requested Date: September 13, 2012
  • Title: METHOD AND COMPOSITION FOR AN EARLY VACCINE TO PROTECT AGAINST BOTH COMMON INFECTIOUS DISEASES AND CHRONIC IMMUNE MEDIATED DISORDERS OR THEIR SEQUELAE
  • Owners of Record: Classen Immunotherapies, Inc., Baltimore, MD
  • Third Party Requester: Andrea G. Reister, Covington & Burling, LLP., Washington, DC
  • Real Party in Interest: GlaxoSmithKline, LLC.; GlaxoSmithKline Biologicals SA.

6,935,465

  • Reexam. C.N.: 95/002,228
  • Requested Date: September 13, 2012
  • Title: METHOD FOR MODERNIZATION OF AN ELEVATOR INSTALLATION
  • Owners of Record: Inventio AG., Switzerland
  • Third Party Requester: Otis Elevator Co.

6,968,375

  • Reexam. C.N.: 95/002,237
  • Requested Date: September 13, 2012
  • Title: NETWORKED SYSTEM FOR INTERACTIVE COMMUNICATION AND REMOTE MONITORNG OF INDIVIDUALS
  • Owners of Record: Health Hero Network, Inc., Mountain View, CA
  • Third Party Requester: Cardiocom, LLC.

7,167,864

  • Reexam. C.N.: 95/000,700
  • Requested Date: September 14, 2012
  • Title: MULTIMEDIA INSPECTION DATABASE SYSTEM (MIDAS) FOR DYNAMIC RUN-TIME DATA EVALUATION
  • Owners of Record: Vasudevan Software, Inc., Winston-Salem, NC
  • Third Party Requester: MicroStrategy Inc.

7,252,636

  • Reexam. C.N.: 95/002,234
  • Requested Date: September 13, 2012
  • Title: NETWORKED SYSTEM FOR INTERACTIVE COMMUNICATION AND REMOTE MONITORING OF INDIVIDUALS
  • Owners of Record: Health Hero Network, Inc., Redwood City, CA
  • Third Party Requester: Cardiocom, LLC.

7,292,685

  • Reexam. C.N.: 95/002,229
  • Requested Date: September 13, 2012
  • Title: PRO-ACTIVE FEATURES FOR TELEPHONY
  • Owners of Record: Mitel Networks, Corp., Canada
  • Third Party Requester: Facebook, Inc.

7,482,143

  • Reexam. C.N.: 95/002,232
  • Requested Date: September 14, 2012
  • Title: AUTOMATED PROCESS FOR DETECTING THE PRESENCE OF A TARGET NUCLEIC ACID IN A SAMPLE
  • Owners of Record: Gen-Probe, Inc., San Diego, CA
  • Third Party Requester: Beckman Coulter, Inc.

7,526,784

  • Reexam. C.N.: 95/002,226
  • Requested Date: September 13, 2012
  • Title: DELIVERY OF NAVIGATION DATA FOR PLAYBACK OF AUDIO AND VIDEO CONTENT
  • Owners of Record: Clearplay, Inc., Salt Lake City, UT
  • Third Party Requester: CustomPlay, LLC.

7,543,318

  • Reexam. C.N.: 95/002,230
  • Requested Date: September 13, 2012
  • Title: DELIVERY OF NAVIGATION DATA FOR PLAYBACK OF AUDIO AND VIDEO CONTENT
  • Owners of Record: Clearplay, Inc., Salt Lake City, UT
  • Third Party Requester: CustomPLay, LLC.

7,557,301

  • Reexam. C.N.: 95/000,696
  • Requested Date: September 14, 2012
  • Title: METHOD OF MANUFACTURING ELECTRICAL CABLE HAVING REDUCED REQUIRED FORCE FOR INSTALLATION
  • Owners of Record: Southwire Company, Carrollton, GA
  • Third Party Requester: Cerro Wire, LLC.

7,599,679

  • Reexam. C.N.: 95/002,238
  • Requested Date: September 13, 2012
  • Title: REMOTELY CONFIGURABLE WIRELESS INTERCOM SYSTEM FOR AN ESTABLISHMENT
  • Owners of Record: 3M Innovative Properties Company, St. Paul, MN
  • Third Party Requester: HM Electronics, Inc.

7,672,198

  • Reexam. C.N.: 95/002,236
  • Requested Date: September 13, 2012
  • Title: OPTICAL PICKUP HEAD AND ELECTROMAGNETIC ACTUATING DEVICE THEREOF
  • Owners of Record: Industrial Technology Research Institute, Taiwan
  • Third Party Requester: Nichols J. Kim, Morgan Lewis & Bockius, LLP., Washington, DC
  • Real Party in Interest: LG Electronics, Inc.; LG Electronics USA, Inc.

8,005,455

  • Reexam. C.N.: 95/002,239
  • Requested Date: September 13, 2012
  • Title: REMOTELY CONFIGURABLE WIRELESS INTERCOM SYSTEM FOR AN ESTABLISHMENT
  • Owners of Record: 3M Innovative Properties Company, St. Paul, MN
  • Third Party Requester: HM Electronics, Inc.

8,030,351

  • Reexam. C.N.: 95/002,223
  • Requested Date: September 13, 2012
  • Title: TREATMENT OF ANIMAL CARCASSES
  • Owners of Record: Ecolab USA, Inc., St. Paul, MN
  • Third Party Requester: FMC Corporation

8,082,268

  • Reexam. C.N.: 95/000,699
  • Requested Date: September 14, 2012
  • Title: MULTIMEDIA INSPECTION DATABASE SYSTEM (MIDAS) FOR DYNAMIC RUN-TIME DATA EVALUATION
  • Owners of Record: Vasudevan Software, Inc., Winston-Salem, NC
  • Third Party Requester: MicroStrategy Inc.

8,131,372

  • Reexam. C.N.: 95/002,233
  • Requested Date: September 13, 2012
  • Title: RENAL NERVE STIMULATION METHOD FOR TREATMENT OF PATIENTS
  • Owners of Record: Ardian, Inc., Palo Alto, CA
  • Third Party Requester: St. Jude Medical, Inc.

8,147,625

  • Reexam. C.N.: 95/002,225
  • Requested Date: September 13, 2012
  • Title: AL-MG-SI ALLOY SUITED FOR EXTRUSION
  • Owners of Record: Norsk Hydro ASA, Norway
  • Third Party Requester: Rio Tinto Alcan International Limited

8,156,944

  • Reexam. C.N.: 95/002,235
  • Requested Date: September 13, 2012
  • Title: AEROSOL ELECTRONIC CIGARETTE
  • Owners of Record: Ruyan Investment (Holdings) Limited, Hong Kong
  • Third Party Requester: Fin Branding Group, LLC..

8,232,089

  • Reexam. C.N.: 95/002,227
  • Requested Date: September 14, 2012
  • Title: CYTOSOLIC ISOBUTANOL PATHWAY LOCALIZATION FOR THE PRODUCTION OF ISOBUTANOL
  • Owners of Record: Gevo, Inc., Englewood, CO
  • Third Party Requester: Butamax (TM) Advanced Biofuels, LLC.

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