Board Declines to Terminate Reexamination

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In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00419 and IPR2013-00424m Paper 48 (December 12, 2014), the patent owner sought permission from the Board to file a motion to terminate an ex parte reexamination filed by the petitioner, complaining that it gave petitioner as second bite of the apple.  Because the reexamination had not yet been declared, and because nothing in the reexamination could possibly affect the outcome of the inter partes review, the Board denied the request.

IT DOES APPEAR FROM THIS DECISION THAT A LATE-FILED REQUEST FOR REEXAMINATION IS ANOTHER BITE AT THE APPLE FOR THE PETITIONER; HOWEVER IT ALSO MAY BE AN ESCAPE HATCH FOR A PATENT OWNER TO GET NEW CLAIMS THAT WOULD NEVER BE AVAILABLE IN A MOTION TO AMEND.

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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.