Patent Reexaminations

Morrison & Foerster has a deep and experienced group of attorneys with expertise in patent reexaminations. In the past three years alone, we have filed or prosecuted over 80 reexaminations. In these reexaminations, our attorneys have represented third-party requesters seeking to initiate reexamination, as well as patent owners defending patents in reexamination.

Our experience in reexaminations is not limited to ex parte reexamination. Our IP lawyers are currently working on over a dozen inter partes reexaminations for clients.

Reexaminations require a unique combination of scientific, patent, and litigation expertise. Our full-service, collaborative IP practice provides our reexamination teams with the expertise needed to handle matters in fields such as biotechnology, chemistry, communications, electronics, and software. Each reexamination team draws from our pool of world-class scientists, engineers, patent prosecutors, and trial lawyers to create a sound strategy for every matter.

Our clients include DexCom, Echostar, The Motion Picture Association of America, Mitsubishi, Novartis, Scantibodies, and Yamaha. Two notable reexamination victories are In re Swanson and In re Amado.

DexCom, Inc.
The U.S. PTO granted our reexamination requests of two patents asserted against our client DexCom by a competitor. The asserted patents could have led to an injunction keeping DexCom's FDA-approved diabetes control product off the market. Our team of patent prosecutors filed requests for reexamination of each asserted patent, all of which were granted. We persuaded the court to strike an amended complaint adding more patents, and then to stay litigation pending the outcome of the four reexaminations. By getting the patents into reexamination quickly, we helped win a stay of litigation for our client, keeping their product in the marketplace. DexCom is a San Diego developer and manufacturer of a device for the continuous monitoring of glucose in people with diabetes.
Ricoh Corporation
We represented Ricoh in the filing of several reexamination requests on its own patents. All of the patent claims survived reexamination over the submitted prior art references.

IP Practice Group of the Year 2015, 2013

The Recorder
Three IP Litigators named 2012 Attorney of the Year by The Recorder.

Chambers USA 2016
National: Intellectual Property
National: International Trade: Intellectual Property (Section 337)
California: Intellectual Property
California: Intellectual Property (Patent Prosecution)
New York: Technology & Outsourcing
Washington D.C.: Intellectual Property (Litigation)
Washington D.C.: Technology & Outsourcing

Chambers Global 2016
Global: Intellectual Property
Asia-Pacific Region: Intellectual Property
China: Intellectual Property: International Firms
Japan: Intellectual Property: International Firms
United States: Intellectual Property (Patent)
United States: Intellectual Property (Section 337)

Chambers Asia-Pacific 2017
2011 Asia Pacific Awards: Japan – International Firm of the Year
Japan: Intellectual Property: International Firms
Asia-Pacific Region: Intellectual Property
China: Intellectual Property: International Firms

Legal 500 US 2016
Patent Litigation: ITC
Patent Litigation: Full Coverage
Patents: Portfolio Management and Licensing
Patent: Prosecution (Including re-examination and post-grant proceedings)
Trade Secrets
Trademarks: Litigation

Legal 500 Asia-Pacific 2015
China: Foreign Firms
Hong Kong
Japan: International Firms and Joint Ventures

U.S. News – Best Lawyers® Best Law Firms 2015
National: IP Litigation (Tier 1)
National: Patent Litigation (Tier 1)
National: Patent Law (Tier 1)
Los Angeles: IP Litigation (Tier 1)
Los Angeles: Patent Litigation (Tier 1)
San Diego: IP Litigation (Tier 1)
San Diego: Patent Litigation (Tier 1)
San Diego: Patent Law (Tier 1)
San Francisco: IP Litigation (Tier 1)
San Francisco: Patent Litigation (Tier 1)
San Francisco: Patent Law (Tier 1)
Washington D.C.: IP Litigation (Tier 1)
Washington D.C.: Patent Litigation (Tier 1)

The National Law Journal 2015
IP Hot List

Benchmark Litigation Awards 2014
Intellectual Property Firm of the Year
California Firm of the Year
National Impact Case Award

IAM Patent 1000 2016
California: Litigation (Gold)
California: Transactions(Highly Recommended)
California: Prosecution
Hong Kong: Litigation & Transactions
Japan: Litigation and Licensing (Highly Recommended)
National: Transactions
National: Litigation
Washington D.C.: Litigation

Mehran Arjomand
Los Angeles
(213) 892-5630

Michael R. Ward
San Francisco
(415) 268-6237

National Law Journal - 2016 IP Hot List

Law 360 - IP Practice Group of the Year
IP Practice Group of the Year 2015, 2013

Chambers USA Winner 2013 - IP Firm of the Year
IP Firm of the Year

BTI Litigation Outlook
BTI Litigation Outlook
“IP VIP” (2015)
“IP Litigation Powerhouse” (2014)

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