A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Re-exam

"A Patentee Cannot Have His Claim and Eat It, Too"

Andrew E. Russell, July 29, 2024
Re-exam Ex Parte Reexamination

Exploding Cake
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On Friday, visiting Judge Wolson granted summary judgment of non-infringement in PACT XPP Schweiz Ag v. Intel Corp., C.A. No. 19-1006-JDW (D. Del. July 26, 2024), after the patentee shot themselves in the foot while opposing invalidity before the PTO in an ex parte reexamination.

Basically, the patent relates to a connection within a microprocessor. The asserted claims require a "dedicated connection" between two things.

During re-exam (co-pending with the district court case), the PTO rejected the claims based on a prior art reference that could be configured to connect multiple different things on either side. The patentee pushed back, arguing that a "dedicated connection" requires connecting the two things and nothing else …

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Judge Bryson Issues 22-Page Opinion in Two Days, Stays Case Pending Re-Exam Just 11 Weeks Before Trial

Andrew E. Russell, Sept. 18, 2020
Re-exam Stay

Judge Bryon issued an interesting stay opinion last Friday.

The plaintiff had initially asserted six patents. Of those, four were dismissed under § 101, and the claims as to one of the remaining patents were severed and stayed pending IPR.

The case was set to go to trial on the last remaining patent on November 30, just over 11 weeks from the date of the order. But, last month, the PTO granted a request for ex parte reexamination of the sole asserted claim of that patent.

Shortly after that, Judge Bryson issued his opinion granting a motion to stay pending re-exam. A couple of interesting points:

  • What a turnaround! Defendant first indicated it intended to request a stay …
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