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ARTICLE · 07 DECEMBER 2022

Ex Parte Reexamination Barred Based On Earlier IPR

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On November 16, 2022, the United States Patent and Trademark Office ("PTO") vacated a reexamination proceeding because the patent challenger relied on unpatentability grounds that reasonably...

United StatesIntellectual Property
Joshua Nightingale
Joshua Nightingale
Dhohyung Kim
Dhohyung Kim
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On November 16, 2022, the United States Patent and Trademark Office (“PTO”) vacated a reexamination proceeding because the patent challenger relied on unpatentability grounds that reasonably could have been raised in an earlier inter partes review.  Ex parte Reexamination of U.S. Patent No. 6,601,821, 90/014,950, Decision on Petition to Vacate Reexamination Order (USPTO, Nov. 16, 2022).

The case at issue involves a dispute between GITS Manufacturing Co. (“GITS”), a manufacturer of diesel engines, and G.W. Lisk Co. (“G.W. Lisk”), the owner of U.S. Patent No. 6,601,821 (“the '821 patent”) directed to a valve assembly for an exhaust gas recirculation system.  In 2016, G.W. Lisk filed suit against GITS in the U.S. District Court for the Southern District of Iowa, alleging that GITS' diesel engines and related products infringe the '821 patent.  G.W. Lisk Company, Inc. v. Power Packer North America, Inc., No. 4:17-cv-00273 (S.D. Iowa).

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