Merchant & Gould attorneys have experience in handling post grant review procedures for patents in diverse industries and technologies including:

Mechanical Engineering (e.g., underground storage tanks, construction and telecommunication equipment, air and liquid filter technology, lawn care and maintenance products, high security locks, window frames, and power tools)
Software and telecommunications systems (e.g., e-commerce, messaging systems, and security encryption products)
Biotechnology/Pharmaceutical and Therapeutic Products and Applications (e.g. protein engineering, molecular diagnostics and assays, antibodies, gene therapy, vaccines and immunomodulators)
Chemistry and Chemical Engineering (photo-resists to pesticides and numerous other commercial processes)
Consumer products, such as food products and home organizers, and
Medical devices such as telehealth systems

 

M&G Reexam Successes

 

Merchant & Gould has successfully challenged many patents at the PTO in recent years. Examples of specific post-grant review procedures we have successfully invoked for clients can be found in the table below.

Patent Number Title Reexamination Number Result
6,412,628 Apparatus and Method for Preventing the Formation of Metal Tarnish 90/006411;
90/006881
We represented the accused infringer and brought two ex parte reexams.  We succeeded in cancelling all asserted claims.  The patent owner’s infringement claim was dismissed with prejudice.  We settled the case with a payment form the patent owner to our client of $4.3 million.
6,055,516 Electronic Sourcing System 90/009636 We represented the accused infringer and brought this ex parte reexam.  Final rejection affirmed on appeal to POBA, appealed to CAFC (Lawson).  Meanwhile, underlying lawsuit was decided with a finding of no infringement of any claims of the patent.
6,505,172 Electronic Sourcing System 95/000487 We represented the accused infringer and brought this ex parte reexam.  Final rejection of claims issued. On appeal awaiting decision.   Meanwhile, the lone asserted claim found to infringe at the trial level was found invalid on appeal.
6,023,683 Electronic Sourcing System and Method 90/008104;
90/011066
We represented the accused infringer and brought this ex parte reexam.  Final rejection of all claims.  On appeal awaiting decision.  Trial court precluded award of any damages, Federal Circuit affirmed award of $0 damages.
7,501,357 Vapor Permeable, Liquid Impermeable Composite Fabric and Fabrication Process 95/001258 We brought this reexam on behalf of a client whose customer was notified of infringement by a competitor.  We successfully canceled all asserted claims.
5,533,325;
5,715,664
All Wheel Hydraulic Drive System 90/008,583;
90/008,575
We, with co-counsel, put our own client’s patents into ex parte reexamination to overcome litigation defendant’s prior art arguments.  Both patents were confirmed.  The reexaminations lead to favorable case settlement for our client.
6,047,530; 6,336,311; 6,336,312; Gang-Type Rotary Lawn Mower 90/000,245; 95/000,244; 90/009,308 We, with co-counsel, filed ex parte and inter partes reexaminations against patents asserted against our client in litigation.  After all claims were initially canceled, the case settled favorably and we stopped participating in the reexams.
6,935,093;
7,439,931
Power Lawn Mower Including Shortened Control Arms for Use in Deck Lift System 95/001,742; 95/001,741 We, with co-counsel, filed reexaminations against patents asserted against our client in litigation.  All claims were canceled, the case is on appeal.
6,488,034;
6,694,988
File, Particularly Nail File 90/011,944;
90/011,945
We represented the Patent Owner. Unidentified party brought ex parte reexaminations against the patents asserted by our client/ Patent Owner in litigation.  All claims were initially rejected but we successfully overcame the rejections and obtained confirmation of all but one claim.
5,504,072;
5,438,042
Enteral Nutritional Composition Having Balanced Amino Acid Profile 90/004,226; 90/004,227 Reexaminations on behalf of Patent Owner during litigation. Litigation stayed for reexamination after which, both patents received Reexamination Certificates. As a result of reexamination, summary judgment no inequitable conduct granted and defendant’s litigation prior art invalidity defense viewed as not providing a basis for obviousness by the Patent Office. The reexamination led to a highly favorable case settlement for our client/patent owner.
6,999,938 Automated Reply Generation Direct Marketing System 90/012501 Filed on behalf of accused infringer.  Patent asserted against dozens of companies.  Pending – reexamination ordered November 26, 2012.
6,990,660 Non-Invasive Automatic Offsite Patch Fingerprinting and Updating System and Method 95/001190 Relevant claims either canceled or amended, eliminating threat of damages for past infringement.  Case settled favorably.
8,015,025 Method and Apparatus for Remote Health Monitoring and Providing Health Related Information 95/002276 Client sued for infringing these six patents by a large competitor.  After initiating reexaminations on all asserted patents, the court granted our motion to stay the lawsuit.  The reexams have been granted with rejections of hundreds of claims, and all are pending.
6,968,375 Networked System for Interactive Communication and Remote Monitoring of Individuals 95/002237 See above.
8,140,663 Networked System for Interactive Communication and Remote Monitoring of Individuals 95/002221 See above.
7,941,327 User Monitoring 95/002199 See above.
7,252,636 Networked System for Interactive Communication and Remote Monitoring of Individuals 95/002234 See above.
6,368,273 Networked System for Interactive Communication and Remote Monitoring of Individuals 90/012474 See above.
7,729,528 Automated Wafer Defect Inspection System and a Process of Performing Such Inspection 95/001874 We represent a patent owner in an inter partes reexam.  Accused infringer initiated reexamination.  We avoided reexamination of several claims.   Matter is reaching appeal stage.