James M. Oehler
Subscribe to James M. Oehler's PostsJames M. Oehler focuses his practice on patent prosecution and litigation. He has handled a wide range of patent applications related to medical devices, selective catalyst reduction systems, fiber optic coupling systems, automotive transmissions and accessories, paper products, heat exchanger systems, and commercial restaurant equipment. James has experience litigating in federal district courts, inter partes review proceedings before the US Patent Trial and Appeal Board of the US Patent and Trademark Office, and the International Trade Commission. He regularly advises clients across diverse technologies, including health care, e-commerce, consumer products, and energy industries. Read James Oehler's full bio.
No Mulligans Here: PTO Rewinds Reexamination Based on Estoppel
By James M. Oehler on Dec 8, 2022
Posted In Patents
The US Patent & Trademark Office (PTO) terminated a pending ex parte reexamination after finding that the challenger was estopped because the prior art references could have been raised in a prior inter partes review (IPR). In re Tyler, Reexam. No. 90/014,950 (PTO Nov. 15, 2022). In 2017, GITS Manufacturing filed two IPR petitions against...
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Only under Rare Circumstances Can the Patent Trial & Appeal Board Find Proposed Substitute Claims Unpatentable on Its Own
By James M. Oehler on Mar 31, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit addressed, for the first time, the issue of when the Patent Trial & Appeal Board (Board) may raise a ground of unpatentability that was not advanced by a petitioner in relation to proposed substitute claims. The Court upheld the standard defining the “rare circumstances” in which...
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Lights Out for Light-Up Shoe Patent, Thanks to Non-Limiting Preamble
By James M. Oehler on Jul 9, 2020
Posted In Patents
Finding that a patent’s preamble was not limiting and the patent owner’s secondary considerations of non-obviousness were weak, the US Court of Appeals for the Federal Circuit upheld a finding of obviousness by the Patent Trial and Appeal Board (PTAB). Shoes By Firebug LLC v. Stride Rite Children’s Grp., LLC, Case Nos. 19-1622, -1623 (Fed....
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Claimed Process Not Anticipated by Third-Party’s Prior Secret Use
By James M. Oehler on Apr 23, 2020
Posted In Patents
Declining to extend the public-use bar to third-party commercial uses of secret processes, the US Court of Appeals for the Federal Circuit reversed a summary judgment ruling that found a patent invalid under the “known or used by others,” “on-sale” and “public-use” bars of 35 U.S.C. § 102. BASF Corp. v. SNF Holding Co. et...
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