PTAB Ex Parte Patent Proceedings

Given our extensive experience and track record of proven success, we are uniquely qualified to assist clients in various ex parte proceedings before the U.S. Patent and Trademark Office (USPTO).

By applying our diverse legal and technical backgrounds, we provide strategic counseling and aggressive litigation services that advance both our clients’ offensive and defensive goals—always with a keen understanding of how ex parte proceedings are intertwined with various litigation, enforcement, and licensing strategies. We have successfully assisted a wide variety of clients in numerous industries in reexamination, reissue, and supplemental examination proceedings to strengthen a patent’s validity prior to litigation or to preempt an attack on a patent.

Defensively, we use ex parte reexaminations to defer litigation costs, challenging a patent’s validity, and/or gain leverage during licensing negotiations. We wisely use ex parte proceedings to quickly and cost-effectively advance our clients’ strategic interests.

Successes

Romer, Inc.

The firm successfully defended Romer in an ex parte reexamination proceeding in front of the PTO. Romer, a Hexagon Metrology Company, manufactures innovative portable metrology solutions to customers worldwide. Faro Technologies requested an ex parte reexamination of a Romer patent on a spatial coordinate measuring device. The firm’s successful representation in the reexamination resulted in the USPTO’s confirmation that all claims in the patent are valid.

DexCom, Inc.

DexCom, a leader in continuous glucose monitoring systems, was successfully defended by the firm in numerous ex parte reexamination proceedings before the USPTO. Abbott Diabetes Care requested ex parte reexaminations of DexCom patents directed to membranes for use in implantable sensors, devices and methods for determining analyte levels in vivo, and systems and methods for processing analyte sensor data. The ex parte reexaminations were successfully concluded with the USPTO’s confirmation of the patentability of claims.

Partner Kerry Taylor and Nathanael Luman authored "What You Need to Know About the USPTO’s Proposed Rule Changes to PTAB Trials," which was published in The Intellectual Property Strategist. Excerpt:...
USPTO Guidance Cannot Modify or Supplant the Alice/Mayo Framework
En Banc Federal Circuit Denies Rehearing of Holding That Severance of an Unconstitutional Restriction in the America Invents Act Is Consistent With Congressional Intent and Is the Least Disruptive Solution