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Focusing on Inter Partes Reexamination

As a service to our clients and the IP community at large, Sunstein makes available valuable data on the emerging practice of inter partes reexamination.  Inter partes reexamination is a relatively new form of patent reexamination in the United States Patent and Trademark Office (PTO).  A reexamination is a proceeding in the PTO in which a requester can challenge the patentability of issued patent claims with respect to relevant prior art patents or publications.  There are two types of reexamination: ex parte reexamination, where only the patent owner participates in the proceeding once it is under way, and inter partes reexamination, where both the patent owner and the requester participate. A reexamination may be commenced at any time while a patent remains in force.

In view of the magnificent results we have documented, it is not surprising that the use of  inter partes reexamination has been exploding. At Sunstein, we believe inter partes reexamination strategy should be coordinated with a company's overall approach to patents and to the specific patent in question.

In our study of the first 250 inter partes reexaminations filed, as of January 2010, 55 of the 106 inter partes reexaminations that have gone through to issuance of a reexamination certificate (or are pending issuance) have resulted in cancellation of all the claims challenged in the request and 26 have survived with only amended claims. Of the 106 that have issued or are about to issue, only 12 have resulted in a confirmation of all the claims challenged in the request and 13 of the 106 have resulted in some other mixed outcome. Upon review of the 68 inter partes reexamination proceedings currently on appeal, we note that the patent owner filed 50 of the appeals and the requesters filed 18. While statistically, the inter partes reexamination proceeding has favored the requester by a large margin, patent owners are beginning to see some success, as they learn how better to defend their patents in these challenging proceedings. The procedure will continue its rise to prevalence as an eliminator of invalid patents.

Inter Partes Reexamination Table

Any questions regarding reexaminations or requests for a complete chart of inter partes reexaminations listing the patents and parties involved can be sent to Attorney Robert M. Asher at rasher@sunsteinlaw.com.

Reexamination
No.		 Patent
Owner		 Reexamination Results
Status Requested
Claims		 Added
Claims		 Rejected/
Objected		 Original
Confirmed		 Amendment
Patentable		 Disclaimed/
Cancelled
1 Teknor Apex Co. Certificate Issued 36 0 N/A 0 0 36
2 Andrx Pharmeceuticals Inc. Certificate Issued 20 0 N/A 0 0 20
3 "Land O'Lakes, Inc." Pending 113 50 124 0 0 39
4 SRAM Corp. Certificate Issued 7 0 N/A 0 0 7
5 " Enpat, Inc " Appeal by Patent Owner Pending 14 0 14 0 0 0
6 NEC Corp. Appeal by Patent Owner Pending 15 1 12 0 0 4
7 Allan Certificate Issued 22 7 7 0 0 22
8 Dietrich Appeal by Patent Owner Pending 5 5 10 0 0 0
9 Congoleum Corp. Certificate Issued 17 0 0 0 0 17
10 Hickory Springs Manufacturing Co. Certificate Issued 21 0 N/A 21 0 0
11 "NTP, Inc." Reexam Vacated N/A N/A N/A N/A N/A N/A
12 Sram Deutschland GmbH Certificate Issued 7 0 0 0 7 0
13 "Bongard's, Creameries, Inc." Certificate Issued 4 13 N/A 0 4 4
14 "Bascus Research Laboratories, Inc." Certificate Issued 15 27 11 0 16 15
15 Safaco Inc. Appeal to CAFC by Requester Pending 3 0 0 3 0 0
16 "Xoma Technology, Ltd. " Certificate Issued 15 0 0 0 0 15
17 "Safoco, Inc." Appeal to CAFC by Requester Pending 3 0 0 3 0 0
18 Haye Intl. Appeal by Patent Owner Pending 28 0 28 0 0 0
19 "Theory 3, Inc." Reexam Vacated N/A N/A N/A N/A N/A N/A
20 NTP Incorporated Board of Appeal Decision 665 99 764 0 0 0
21 Technology Creations Inc. Certificate Issued 6 0 0 0 0 6
22 "Technology Creations, Inc." Certificate Issued 18 0 0 0 0 18
23 "Kiss Products, Inc." Certificate Issued 6 4 0 2 0 8
24 "WRB Company, Inc. " Certificate Issued 14 6 0 0 14 6
25 "U View Ultraviolet Systems, Inc." Appeal by Requester Pending 5 0 0 5 0 0
26 Sram Deutschland GmbH Certificate Issued 7 N/A N/A 0 0 9
27 Defibtech LLC Certificate Issued 25 14 0 0 0 39
28 Ersa Gmbh Appeal by Patent Owner Pending 28 1 29 0 0 0
29 Carnegie-Mellon University Certificate Issued 42 0 0 0 1 41
30 Watson Chalin Manufacturing Certificate Issued 15 33 0 0 0 48
31 "Tofasco Of America, Inc." Appeal by Requester Pending 24 35 1 0 40 18
32 "Impulse Dynamics, N.V." Certificate Issued 53 387 N/A 19 392 29
33 Man Roland Druckmaschinen Ag Pending 9 0 0 0 9 0
34 Bank Of America Corp. Request for Rehearing of Board Decision by Requester Pending 1 0 0 1 0 0
35 Bank Of America Corp. Certificate Issued 51 0 N/A 1 0 50
36 "Tomy Company, Ltd. " Certificate Issued 12 38 20 2 18 10
37 "Board Of Regents, The University Of Texas System " Certificate Issued 23 0 0 0 0 23
38 Kerr-Mcgee Chemical LLC Pending 13 10 16 0 0 7
39 "Kioritz Corp," Certificate Issued 10 0 0 0 6 4
40 "Taylor Made Golf Company, Inc." Certificate Issued 12 0 0 0 0 12
41 SRAM Corp. Certificate Issued 16 0 N/A 0 0 16
42 Acrymed Certificate Issued 7 0 0 0 6 1
43 AD. Ken Corp. Appeal by Patent Owner Pending 10 11 19 0 0 2
44 Campagnolo SRL Certificate Issued 45 28 0 0 27 46
45 SRAM Deutschland GMBH Certificate Issuance Pending 11 4 4 0 8 3
46 "Dupaco, Inc." Appeal by Patent Owner Pending 1 17 18 0 0 0
47 "Sermatech International, Inc." Certificate Issued 24 0 0 24 0 0
48 Schuluter-Systems KG Vacated 8 1 0 0 0 0
49 Caterpillar Inc. Certificate Issued 17 0 N/A 0 0 17
50 Caterpillar Inc. Certificate Issued 33 0 0 4 0 29
51 Linear Technology Corp. Certificate Issued 30 0 0 0 30 0
52 Linear Technology Corp. Certificate Issued 23 2 0 0 24 1
53 Delaware Capital Formation Inc. Certificate Issued 36 0 N/A 0 0 36
54 Freescale Semiconductor Certificate Issued 29 7 N/A 0 7 29
55 Robert Grosz Certificate Issued 32 0 0 0 0 32
56 Anchor Wall Systems Certificate Issued 31 0 0 0 0 31
57 Delaware Capital Formation Certificate Issued 33 0 N/A 0 0 33
58 Delaware Capital Formation Certificate Issued 34 0 N/A 0 0 34
59 Anchor Wall Systems Certificate Issued 53 0 0 0 0 53
60 Sartec LLC Appeal by Patent Owner Pending 11 0 9 0 0 2
61 Joseph Roger Bourget Certificate Issued 15 0 0 4 9 2
62 "Immunomedics, Inc." Pending 140 32 172 0 0 0
63 Andrew Corporation Appeal by Patent Owner Pending 55 0 50 3 0 2
64 Cinpres Gas Injection Limited Appeal by Patent Owner Pending 16 2 14 0 2 2
65 Amanda May Appeal by Patent Owner Pending 14 21 21 3 0 11
66 C. Brown Lingamfelter Appeal by Patent Owner Pending 29 0 24 5 0 0
67 "Tivoli, LLC" Pending 13 0 13 0 0 0
68 Rohm and Haas Co. Certificate Issued 50 0 50 0 0 0
69 C. Brown Lingamfelter "Merged with 95/000,066 pursuant to 37 CFR 1.989(a)" N/A N/A N/A N/A N/A N/A
70 White Consolidated Limited Pending 2 27 27 0 0 2
71 "Habasit, AG" Appeal by Patent Owner Pending 25 0 25 0 0 0
72 "Habasit, AG" Appeal by Patent Owner Pending 14 0 14 0 0 0
73 "Stote of Oregon, Oregon State Univ." Certificate Issued 38 15 53 0 0 0
74 "Glycogenesys, Inc." Pending 23 35 24 0 0 34
75 "Radware, Ltd." Appeal by Patent Owner Pending 4 0 4 0 0 0
76 Riberwood International Corp. Appeal by Patent Owner Pending 52 0 18 10 17 7
77 Riberwood International Corp. Appeal by Requester Pending 41 0 25 16 0 0
78 Westerngeco L.L.C. Certificate Issued 29 38 0 0 64 3
79 Eastman Chemical Co. Certificate Issued 17 21 0 0 32 6
80 "Maico, L.L.C." Certificate Issued 21 4 14 0 0 11
81 "Cooperstown Bears, Ltd." Certificate Issued 30 62 75 0 0 17
82 "Euro Expo 3000, Inc." Reexam Request Denied 1 0 0 1 0 0
83 "Euro Expo 3000, Inc." Reexam Request Denied 1 0 0 1 0 0
84 Koch Equipment LLC Appeal by Requester Pending 10 23 0 0 32 1
85 "Taylor Made Golf Company, Inc." Certificate Issued 7 0 0 0 0 7
86 Lou Baltus (Inventor) Certificate Issued 1 0 1 0 0 0
87 Hovione Limited Appeal by Requester Pending 18 0 0 18 0 0
88 Stargames Corporation Pty Ltd. Certificate Issued 4 4 4 4 0 0
89 "Microunity Systems Engineering, Inc." Appeal by Patent Owner Pending 30 0 30 0 0 0
90 Suss Microtech Test Systems Gmbh Certificate Issued 23 9 0 0 1 31
91 Suss Microtec Test Systems GmbH Certificate Issued 33 0 0 0 0 33
92 David E. Gruber Pending 38 83 17 36 31 37
93 Immersion Corporation Terminated in view of court decision pending 6 0 N/A N/A N/A 1
94 Immersion Corporation Terminated in view of court decision pending 12 0 N/A N/A N/A 1
95 "Mitsubishi Gas Chemical Company, Inc." Certificate Issued 20 0 N/A 0 0 20
96 FieldTurf (IP) Inc. Pending 28 0 0 0 28 0
97 "Leviton Manufacturing Co., Inc." Certificate Issued 22 0 0 22 0 0
98 "Hasbro, Inc." Appeal by Requester Pending 41 14 44 8 0 3
99 "Ho, et al." Pending 10 16 9 0 0 17
100 "Microunity Systems Engineering, Inc." Pending 48 56 0 2 100 2
101 Laitram LLC Reexam Vacated 32 0 N/A N/A N/A N/A
102 Cellport Systems Inc Pending 17 14 16 24 10 10
103 Johnson Safety Inc Certificate Issued 9 0 0 9 0 0
104 World Factory Inc Pending 5 60 20 7 18 29
105 Senji Metal Industry Co. Appeal by Patent Owner Pending 9 0 4 3 0 2
106 Forecast Consoles Inc Reexam Vacated 15 0 0 0 0 0
107 Eduardo Ramirez de Arellano Reexam Vacated 8 0 N/A N/A N/A N/A
108 Simoniz USA Inc Reexam Vacated 23 0 N/A N/A N/A N/A
109 TV Interactive Data Corp Certificate Issued 6 0 0 0 6 0
110 Touchstone Research Lab Ltd Certificate Issued 17 0 0 0 0 17
111 Bank of America N.A. Certificate Issued 7 2 0 4 0 5
112 "Thomas & Betts International, Inc" Appeal by Patent Owner Pending 22 0 15 7 0 0
113 Hsueh-Yu Lu Certificate Issued 4 0 4 0 0 0
114 "Mars, Inc." Appeal by Patent Owner Pending 11 18 41 6 14 2
115 Metzger Pending 9 18 27 0 0 0
116 "Acco Brands, Inc." Certificate Issued 14 0 0 14 0 0
117 Baltic Latvian Universal Electronics LLC Certificate Issued 1 0 0 0 0 1
118 "Microchip Technology, Inc." Pending 14 2 16 0 0 0
119 "Thomas & Betts International, Inc" Appeal by Requester Pending 10 1 4 7 0 0
120 Callaway Golf Co. Appeal by Patent Owner Pending 8 8 16 0 0 0
121 Callaway Golf Co. Appeal by Patent Owner Pending 11 11 22 0 0 0
122 Top-Flite Golf Co. Appeal by Patent Owner Pending 6 0 6 0 0 0
123 Top-Flite Golf Co. Appeal by Patent Owner Pending 0.6 0 6 0 0 0
124 "Progress Lighting, Inc." Appeal by Requester Pending 16 1 17 0 18 0
125 "Illinois Tool Works, Inc." Certificate Issuance Pending 26 33 6 0 52 7
126 "KingPak Technology, Inc." Appeal by Patent Owner Pending 6 0 6 0 0 0
127 "Selecto, Inc." Pending 15 2 15 0 0 2
128 Valkyrie Commissioning Services Inc Pending 8 7 4 3 2 4
129 John Fulton Pending 3 0 0 0 0 3
130 Honeywell Int'l Inc Certificate Issued 17 1 0 0 0 18
131 Instant Live LLC Certificate Issued 5 0 0 0 0 5
132 Primagen Holding B.V. Certificate Issued 23 34 0 6 0 51
133 Adidas Int'l B.V. Certificate Issued 8 21 0 0 21 8
134 Richard C. Horian Pending 12 3 0 0 13 2
135 Entec Engine Corporation Certificate Issuance Pending 27 4 0 0 3 28
136 "Sears Ecological Applications Co., LLC" Appeal by Patent Owner Pending 8 0 4 4 0 0
137 "Holiday Creations, Inc." Appeal by Patent Owner Pending 24 46 42 0 0 28
138 Chemi S.p.A. Appeal by Patent Owner Pending 32 0 30 0 0 2
139 "Kwik Products, Inc." Appeal by Patent Owner Pending 6 0 6 0 0 0
140 "Extreme Dimension Wildlife Calls, LLC" Certificate Issued 56 26 0 0 0 82
141 Graham-White Mfg. Co. Reexam Vacated 5 0 0 5 0 0
142 "Align Technology, Inc." Reexam Vacated 3 28 3 0 0 0
143 "Stiefel Laboratories, Inc." Certificate Issued 60 0 0 0 0 60
144 "DuPont Dow Elastimers, L.L.C." Appeal by Owner Pending 9 5 6 0 5 3
145 "Nuance Communications, Inc." Certificate Issued 6 0 6 0 0 6
146 Vitrolife AB Appeal by Patent Owner Pending 19 5 21 0 0 3
147 "Dusa Pharmaceuticals, Inc" Reexam Vacated 16 38 0 16 0 0
148 "Alford Safety Services, Inc" Certificate Issued 18 0 0 0 3 15
149 Amberwave systems Corporation Certificate Issued 24 3 0 0 0 27
150 Amberwave systems Corporation Certificate Issued 12 41 30 0 53 0
151 "Forgent Networks, Inc" Certificate Issued 5 22 0 0 0 27
152 "Genvec, Inc" Certificate Issued 5 7 0 0 0 12
153 Leo Pharmaceutical Products Ltd Pending 23 67 66 1 0 23
154 Wisconsin Alumni Research Foundation Appeal by Requester Pending 3 0 0 0 3 0
155 There Certificate Issued 38 5 0 0 0 43
156 Cryostar-France SA Certificate Issuance Pending 3 1 3 0 1 3
157 "DBC, LLC" Pending 81 0 N/A N/A N/A N/A
158 Amberwave systems Corporation Certificate Issued 30 2 0 0 0 32
159 "First Act, Inc" Reexam Vacated 1 0 0 0 0 0
160 CIMA Labs Inc Appeal by Patent Owner Pending 1 46 30 0 0 1
161 John A Pacey Appeal by Requester Pending 44 393 14 0 0 103
162 Varco Inc Pending 19 9 19 0 0 0
163 "Bombardiar Recreational Products, Inc" Reexam Terminated 65 0 N/A N/A N/A N/A
164 Christiana Industies LLC Certificate Issued 11 0 0 0 0 11
165 "Michilin Prosperity Co., Ltd." Appeal by Requester Pending 3 0 0 0 3 0
166 Rambus Inc Appeal by Patent Owner Pending 41 0 3 28 0 0
167 Alcatel Reexam Vacated N/A N/A N/A N/A N/A N/A
168 Anchor Wall Systems Certificate Issued 50 0 0 0 0 50
169 Veritas Operating Corp. Pending 14 17 31 0 0 0
170 Amberwave systems Corporation Certificate Issued 9 18 27 0 0 27
171 Intermotive Inc Pending 22 0 2 1 15 4
172 "Align Technology, Inc." Certificate Issued 35 8 0 0 43 0
173 Echostar Communication Corp. Appeal by Patent Owner Pending 15 68 34 0 0 49
174 Amberwave systems Corporation Certificate Issued 8 8 0 0 14 2
175 Amberwave systems Corporation Certificate Issued 13 9 0 0 0 22
176 Glcogenesys Certificate Issued 26 0 0 0 0 26
177 Amberwave systems Corporation Certificate Issued 20 19 0 0 0 39
178 Rambus Inc Pending 39 0 39 0 0 0
179 BRP US Inc Certificate Issued 53 0 0 38 0 15
180 Amberwave systems Corporation Certificate Issued 39 0 0 33 6 0
181 Epicenter Inc Pending 8 13 19 0 0 0
182 Keybank National Association Pending 29 8 22 0 2 13
183 Rambus Inc Pending 29 0 29 0 0 0
184 Varco I/P Inc Appeal by Patent Owner Pending 10 0 10 0 0 0
185 Diversi-Plast Products Inc Pending 12 17 26 0 0 3
186 Polycom Inc Reexam Vacated 57 0 0 57 0 0
187 Hewlett-Packard Development Company Certificate Issued 24 3 12 12 3 12
188 Tinkers & Chance Certificate Issued 29 0 25 4 0 0
189 Tinkers & Chance Certificate Issued 3 0 0 3 0 0
190 "Polycom, Israel, LTD" Terminated (court decision) 32 0 32 0 0 0
191 Tinkers & Chance Certificate Issued 20 0 0 20 0 0
192 "Polycom, Israel, LTD" Terminated (court decision) 39 0 16 6 0 0
193 Octave Communications Inc Terminated (court decision) 16 0 N/A N/A N/A N/A
194 Amberwave systems Corporation Certificate Issued 21 6 0 0 27 0
195 Ultimate Standard Tooling International Appeal by Requester Pending 21 0 0 21 0 0
196 Arlington Industries Inc Appeal by patent owner pending 6 0 6 0 0 0
197 Sigmatel Inc Pending 18 0 15 3 0 0
198 Sigmatel Inc Appeal by Patent Owner Pending 12 0 1 11 0 0
199 Blackboard Inc Pending 44 13 57 0 0 0
200 Pass and Seymour Inc Pending 51 15 66 0 0 0
201 Premier International Associates Certificate Issued 96 11 2 0 0 105
202 "Illinois Tool Works, Inc." Appeal by Patent Owner Pending 36 0 36 0 0 0
203 "Illinois Tool Works, Inc." Appeal by Patent Owner Pending 59 0 59 0 0 0
204 "Illinois Tool Works, Inc." Appeal by Patent Owner Pending 33 0 33 0 0 0
205 "Illinois Tool Works, Inc." Appeal by Requester Pending 47 0 0 4 43 0
206 Board of Control of Michigan Technological Universtity Pending 18 36 54 0 0 0
207 Delta Frangible Ammunition LLC Appeal by Patent Owner Pending 6 0 6 0 0 0
208 Pro-Fit Holdings Limited Certificate Issued 2 0 0 0 0 2
209 Cooper Technologies Company Appeal by Patent Owner Pending 30 0 30 0 0 0
210 Vacated (ineligible for ip reexam) N/A N/A N/A N/A N/A N/A
211 Esoft Inc Pending 8 0 8 0 0 0
212 Registrar Systems LLC Certificate Issued 78 0 0 0 0 78
213 Archer Daniels Midland Company Certificate Issued 40 0 0 0 0 40
214 Anascape LTD Certificate Issued 6 0 1 0 0 5
215 Dalkins Industries Ltd Certificate Issued 10 0 0 0 0 10
216 "Illinois Tool Works, Inc." Appeal by Patent Owner Pending 35 0 35 0 0 0
217 Anascape LTD Pending 66 0 38 0 0 28
218 Richard E Swan Appeal by Patent Owner Pending 20 0 2 18 0 0
219 The Proctor and Gamble Company Certificate Issued 55 0 0 55 0 0
220 Anascape LTD Pending 23 0 16 0 7 0
221 Anascape LTD Vacated (improper request) 33 0 N/A N/A N/A N/A
222 Anascape LTD Pending 66 0 38 0 0 28
223 Anascape LTD Certificate Issued 74 0 58 16 0 0
224 Anascape LTD Appeal by Patent Owner Pending 24 0 22 0 0 2
225 Anascape LTD Appeal by Patent Owner Pending 9 0 2 0 0 7
226 Anascape LTD Merged with 95/000225 9 0 9 0 0 0
227 Tesserra Inc Appeal by Owner Pending 23 0 23 0 0 0
228 K-Tec Inc Pending 36 0 15 21 0 0
229 Tesserra Inc Appeal by Patent Owner Pending 26 0 24 2 0 0
230 Anascape LTD Appeal by Patent Owner Pending 24 0 22 0 0 2
231 Larson Manfacturing Company Certificate Issued 15 5 0 15 5 0
232 Twin Rivers Engineering Inc Appeal by Requester Pending 8 22 25 4 1 0
233 Twin Rivers Engineering Inc Pending 14 12 26 0 0 0
234 Ben Huang Terminated (court decision) 11 0 11 0 0 0
235 Intevac Inc Pending 28 0 4 24 0 0
236 Prince Lionheart inc Terminated (court decision) 49 0 49 0 0 0
237 Advanced Treatment Sciences Inc Appeal by Patent Owner Pending 27 6 33 0 0 0
238 Nature's First Inc Appeal by Requester Pending 29 1 0 0 19 11
239 Cheetah Omni LLC Pending 20 13 13 20 0 0
240 Cheetah Omni LLC Pending 46 0 46 0 0 0
241 Wila B.V. Certificate Issued 13 0 0 0 13 0
242 Sanofi Aventis Vacated (ineligible for ip reexam) 15 0 15 0 0 0
243 Transmeta Corporation Certificate Issued 59 9 0 6 51 11
244 Textron Innovations Inc Pending 16 9 25 0 0 0
245 Textron Innovations Inc Appeal by Patent Owner Pending 10 11 21 0 0 0
246 Semiconductor Energy Laboratory CO. LTD Certificate Issued 26 0 18 8 0 0
247 Advanced Cardiovascular Systems Inc Terminated (court decision) 10 0 N/A N/A N/A N/A
248 Biochemical Pharmalogical Laboratories Inc Certificate Issued 28 0 28 0 0 28
249 NA NA NA NA NA NA NA NA
250 Rambus Inc Pending 35 0 35 0 0 0