In the Law360 article “USPTO Clamping Down Reexam Bids After IPR Denials,” Knobbe Martens partner Jarom Kesler shared how a recent ruling from the U.S. Patent and Trademark Office (USPTO) could bear on patent challengers’ ex parte reexamination (EPR) requests moving forward.
Kesler discussed the USPTO’s novel EPR denial last month in a dispute between Geotab Inc. and Fractus SA, where Geotab had been denied inter partes review (IPR) by the USPTO under 35 U.S.C. § 325(d), finding that it reused arguments from a prior IPR petition that had been discretionarily denied. “I’ve done probably 50 ex parte reexams in the last 15 years, and this is the first time I’ve ever seen this kind of an outcome,” Kesler said. He noted that this ruling could indicate a shifting approach from the USPTO, in which parties that are discretionarily denied an IPR are unlikely to be granted a subsequent EPR. In turn, he surmised, this “bolsters the recommendation to go straight to an EPR.”
As the Geotab ruling prompts more challengers to forego IPRs in favor of reexams, Kesler suggested that the USPTO will likely continue “clamping down on the number of ex parte reexaminations that are going to be allowed.”
Read Kesler’s full comments in Law360 [subscription required].
In their Law360 article “New USPTO Procedure May Be a Boon for Patent Owners,” published last month, Kesler and associate Joshua Martineau explored the USPTO’s latest procedural update to the EPR process, allowing patent owners to submit preorder papers to inform the office’s decision of whether to order reexamination.
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