Malikie Innovations Ltd. v. MARA Holdings, Inc. (f/k/a Marathon Digital Holdings, Inc.) — Entry #93
Case: Malikie Innovations Ltd. v. MARA Holdings, Inc. (f/k/a Marathon Digital Holdings, Inc.) txwd · 7:25-cv-00222
filed May 12, 2025
What this document is
Docket entry #93 · filed May 21, 2026
Exhibit A
Who is involved
- MARA Holdings, Inc. (f/k/a Marathon Digital Holdings, Inc.) [tracked: Marathon Digital]
- Key Patent Innovations Ltd.
- Malikie Innovations Ltd.
Why we have it
We follow this case because a company we track is a party: Marathon Digital (listed as “MARA Holdings, Inc. (f/k/a Marathon Digital Holdings, Inc.)”). We checked the full party list on September 13, 2026 and confirmed the match.
A free copy from the RECAP archive of federal court filings (mirrored at the Internet Archive), retrieved September 27, 2026. Federal court filings are public records.
Document text
7 page(s), 18,892 characters, converted from the PDF's text layer · plain text.
Full text
Case 7:25-cv-00222-DC-DTG Document 93-1 Filed 05/21/26 Page 1 of 7
EXHIBIT A
Case 7:25-cv-00222-DC-DTG Document 93-1 Filed 05/21/26 Page 2 of 7
UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/015,827 01/06/2026 10284370 024482-00039 .3 70 1052
184647 7590 05/20/2026
EXAMINER
Reichman Jorgensen Lehman & Feldberg LLP
WOOD, WILLIAM H
100 Marine Parkway
Suite 300
Redwood City, CA 94065 ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/20/2026 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
Case 7:25-cv-00222-DC-DTG Document 93-1 Filed 05/21/26 Page 3 of 7
UNITED STATES PATENT AND TRADEMARK OFFICE
Commissioner for Patents
United States Patents and Trademark Office
P.O.Box 1450
Alexandria, VA22313-1450
www.uspto.gov
May 20, 2026
THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
ANISH R. DESAI PAUL, WEISS, RIFKIND, WHARTON & GARRISON LLP
1285 AVENUE OF THE AMERICAS
NEW YORK, NY 10019
EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
REEXAMINATION CONTROL NO. : 90015827
PATENT NO. : 10284370
ART UNIT : 3992
Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
in the above-identified ex parte reexamination proceeding (37 CFR l.550(f)).
Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a reply
has passed, no submission on behalf of the ex parte reexamination requester will be acknowledged
or considered (37 CFR l.550(g)).
Case 7:25-cv-00222-DC-DTG Document 93-1 Filed 05/21/26 Page 4 of 7
UNITED STATES PATENT AND TRADEMARK OFFICE
Commissioner for Patents
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
www. uspto.g-ov
Reichman Jorgensen Lehman & Feldberg LLP (For Patent Owner)
100 Marine Parkway
Suite 300
Redwood City, CA 94065
Anish R. Desai (For Third Party Requester)
Paul, Weiss, Rifkind, Wharton & Garrison LLP
1285 Avenue of the Americas
New York, NY 10019
In re Struik et al.
U.S. Patent No.: 10,284,370 B2 DECISION
Ex Parte Reexamination Proceeding ON
Control No.: 90/015,827 PETITION
Filed: January 6, 2026
This decision addresses patent owner's April 17, 2026 petition entitled "PATENT OWNER'S PETITION
FOR SUSPENSION OF THE RULES AND FOR SUMMARY TERMINATION OF
REEXAMINATION AS A MATTER OF LAW, PURSUANT TO 37 C.F.R. §§ 1.181, 1.182, AND
1.183." This decision also addresses requester's May 1, 2026 paper entitled "OPPOSITION TO PATENT
OWNER'S PETITION FOR SUSPENSION OF THE RULES AND FOR SUMMARY TERMINATION
OF REEXAMINATION AS A MATTER OF LAW". Patent owner's April 17, 2026 petition, requester's
May 1, 2026 paper, and the record as a whole are before the Office of Patent Legal Administration (OPLA)
for consideration.
PERTINENT BACKGROUND
On January 6, 2026, 1 MARA Holdings, Inc. (requester) deposited a request for ex parte reexamination of
claims 1-11 of U.S. Patent No. 10,284,370 B2 (the '370 patent), which proceeding was assigned Control
No. 90/015,827 (the '827 or present reexamination proceeding). On February 18, 2026, the Central
Reexamination Unit (CRU) examiner ordered reexamination. The examiner analyzed the prosecution
history and found that each of the proposed grounds in the request raises a substantial new question of
patentability (SNQ). 2 On April 17, 2026, patent owner filed a petition entitled "PATENT OWNER'S
PETITION FOR SUSPENSION OF THE RULES AND FOR SUMMARY TERMINATION OF
REEXAMINATION AS A MATTER OF LAW, PURSUANT TO 37 C.F.R. §§ 1.181, 1.182, AND
1.183" (patent owner's combined petition). On May 1, 2026, requester filed a paper entitled
"OPPOSITION TO PATENT OWNER'S PETITION FOR SUSPENSION OF THE RULES AND FOR
SUMMARY TERMINATION OF REEXAMINATION AS A MATTER OF LAW" (opposition).
1
Requester deposited an incomplete request on December 23, 2025.
2
See "Order Granting Request for Ex Parte Reexamination," February 18, 2026 (order).
Case 7:25-cv-00222-DC-DTG Document 93-1 Filed 05/21/26 Page 5 of 7
Ex Parte Reexamination Control No. 90/015,827 -2-
DECISION
I. Patent owner's petition under 37 CFR 1.183
Patent owner's April 17, 2026 combined petition includes: (i) a petition under 37 CFR 1.183, which will
be construed 3 as requesting waiver of any applicable regulations to permit entry and consideration of
patent owner's April 17, 2026 combined petition prior to examination, and (ii) a petition under 37 CFR
1.181 to vacate the order granting reexamination and to terminate the present reexamination proceeding
under 35 U.S.C. 325(d). 4
37 CFR 1.540, in pertinent part, provides:
No submissions other than the statement pursuant to § 1.530 and the reply by the ex parte
reexamination requester pursuant to§ 1.535 will be considered prior to examination.
Office guidance emphasizes the importance of evaluating issues involving 35 U.S.C. 325(d) when making
a determination on a request for ex parte reexamination. 5 Permitting patent owner to call attention to
potential issues involving§ 325(d) serves an important purpose in ensuring that proper consideration was
given on whether to exercise discretion to move forward with an otherwise meritorious request for
reexamination. In view of the specific facts and circumstances of the present reexamination proceeding,
patent owner's petition under 37 CFR 1.183 for waiver of 37 CFR 1.540 to permit entry and consideration
of patent owner's§ 325(d) petition is granted. The provisions of the necessary rules are hereby waived.
Patent owner's§ 325(d) petition has been entered and considered as set forth below.
Furthermore, requester is permitted to file a paper in opposition to a patent owner petition requesting
termination of the present reexamination proceeding, just as the requester is permitted to file a paper in
opposition to a patent owner petition to vacate a reexamination order under 35 U.S.C. 304 (and deny
reexamination) on the basis that the order is an ultra vires action on the part of the Office. 6 Accordingly,
requester's May 1, 2026 opposition has been entered and considered to the extent it addresses patent
owner's arguments regarding 35 U.S.C. 325(d).
II. Patent owner's petition to vacate the reexamination
Patent owner argues that the Office should terminate the present reexamination proceeding pursuant to 35
U.S.C. 325(d), because: (1) discretionary factors such as those cited in the March 26, 2025 "Interim
Processes for PT AB Workload Management Memorandum" (PT AB Workload Memo) should be applied
in the present reexamination proceeding, and weigh in favor of termination; 7 and (2) the Office lacks
statutory authority to conduct reexaminations on expired patents. 8
3
Patent owner requests waiver of any requirement of the regulations that would otherwise preclude summary termination of
the reexamination.
4
Petition, p. 29.
5
See, e.g., Manual of Patent Examining Procedure (MPEP) § 2242, subsection II ("[a]ny issues involving 35 U.S.C. 325(d)
raised in the request must be referred to the examiner's SPRS or the director of the CRU.").
6
See, e.g., MPEP § 2246, subsection II.
7
Petition, pp. 2-3 and 22-29, referencing the PTAB Interim Director Discretionary Process, § I.B, available at
https://www.uspto.gov/patents/ptab/interim-director-discretionary-process, which relies on considerations set forth in the
PTAB Workload Memo. The PTAB Workload Memo enumerates§ 314(a) and 324(a) considerations such as: "[w]hether the
PTAB or another forum has already adjudicated the validity or patentability of the challenged patent claims"; "[w]hether there
have been changes in the law or new judicial precedent issued since issuance of the claims that may affect patentability"; "[t]he
strength of the unpatentability challenge; "[t]he extent of the petition's reliance on expert testimony"; "[s]ettled expectations
of the parties, such as the length of time the claims have been in force"; "[c]ompelling economic, public health, or national
security interests"; and "[a]ny other considerations bearing on the Director's discretion."
8
Petition, pp. 3-22.
Case 7:25-cv-00222-DC-DTG Document 93-1 Filed 05/21/26 Page 6 of 7
Ex Parte Reexamination Control No. 90/015,827 -3-
A. Arguments related to 35 U.S.C. 325(d)
35 U.S.C. 325(d) states, in pertinent part (emphasis added):
In determining whether to ... order a proceeding under ... chapter 30, ... the Director may
take into account whether, and reject the ... request because, the same or substantially the same
prior art or arguments previously were presented to the Office.
In support of termination under 35 U.S.C. 325(d), patent owner asserts that discretionary factors, such as
settled expectations and limited Office resources, weigh in favor of termination of the present
reexamination proceeding. 9 Relying on In re Etter, 756 F.2d 852, 857 (Fed. Cir. 1985) (en bane), patent
owner argues that "just as 35 USC§ 314(a) provides statutory authority for the Office's broad latitude to
discretionarily deny [inter partes review] petitions, the fact that determinations under 35 USC § 303-as
interpreted by the en bane Federal Circuit-are 'discretionary' should give rise to an equal breadth of
discretionary denial authority in the EPR context." 10 The opposition argues that "neither condition [for
exercising discretion under 35 U.S.C. 325(d)] is present here", 11 because there have been no other post
grant challenges to the '370 patent 12 and the request presents new art and new arguments that have not
previously been considered by the Office. 13 The opposition further argues "the § 325(d) analysis [] is
limited to whether the same or substantially the same prior art or arguments previously were presented." 14
The parties' arguments have been fully considered. As an initial matter, a predicate to the Office
exercising its discretion under 35 U.S.C. 325(d) is that the same or substantially the same prior art or
arguments previously were presented to the Office. The present reexamination proceeding is the first
challenge to the '370 patent before the Office. In the order, the examiner reviewed the prosecution history
and the post grant history for the underlying patent, and determined that a discretionary denial of
reexamination pursuant to § 325(d) "is not applicable" in this instance. 15 Additionally, patent owner's
petition does not assert that the same or substantially the same prior art or arguments previously were
presented to the Office, a threshold that must be met in order for the Office to even consider whether to
exercise discretion under§ 325(d). Because patent owner has not established that the same or substantially
the same prior art or arguments are presented here, discretionary considerations do not come into play.
Further, patent owner's interpretation of Etter is misplaced. The cited portion of Etter simply states that
the determination of whether an SNQ exists "is discretionary with the Commissioner". 16 The
determination of the existence of an SNQ is "discretionary" only in the sense that there is no recourse by
way of appeal. See 35 U.S.C. 303(c). However, upon determining that an SNQ does exist, there is no
discretion within§§ 303-305 not to order and conduct reexamination. See 35 U.S.C. 303 ("the Director
will determine whether a [SNQ] is raised by the request"); 35 U.S.C. 304 ("If .. the Director finds that a
9
See, generally, petition at pp. 22-29.
10
Petition, p. 23.
11
Opposition, p. 17.
12
See opposition, pp. 17 and 20.
13
See opposition, pp. 17 and 21.
14
Opposition, p. 18.
15
See order, p. 4-8 and 14.
16
See Etter, 756 F.2d at 857 ("The intent that reexamination proceedings and court actions involving challenges to validity be
distinct and independent is reflected in the legislative history of§ 303, which notes that denial of a request for reexamination
does not deprive the requestor (if not the patent owner) 'of any legal right' to contest validity in subsequent court proceedings.
House Report at 6466. That 'legal right' may be exercised as a matter of right, but determination of whether a 'substantial new
question of patentability' exists, and therefore whether reexamination may be had, is discretionary with the Commissioner,
and, as § 303 provides, that determination is final, i.e., not subject to appeal."
Case 7:25-cv-00222-DC-DTG Document 93-1 Filed 05/21/26 Page 7 of 7
Ex Parte Reexamination Control No. 90/015,827 -4-
[SNQ] is raised, the determination will include an order for reexamination"); and 35 U.S.C. 305 ("After
the times for filing the statement and reply ... reexamination will be conducted") (emphasis added). Unlike
the broad discretion afforded under 35 U.S.C. 314(a) with respect to inter partes review proceedings, the
Office's discretion not to order reexamination is limited to § 325(d), a provision introduced after Etter.
Thus, the Office must proceed with reexamination if an SNQ is raised in the request, unless it exercises
discretion under§ 325(d) to reject the request.
The preceding review of the patent owner's arguments and of the particular facts and circumstances of the
present reexamination proceeding demonstrates that there was no abuse of discretion when the Office
declined to exercise its discretion to reject the request in the present reexamination proceeding pursuant
to§ 325(d). Accordingly, patent owner's petition to terminate the present reexamination proceeding on
the basis of 35 U.S.C. 325(d) is dismissed.
B. Arguments related to the expiration of the '370 patent
Patent owner asserts that Office should terminate this proceeding, because the Office "lacks statutory
authorization to conduct reexamination of an expired patent." 17 However, in the precedential Gesture 18
decision, the USPTO's reviewing court concluded that the Office "has jurisdiction over ex parte
reexamination concerning expired patents" 19 and that "[a] patent owner maintains some rights after the
patent expires, including the right to sue for past damages, which can create a live case or controversy that
can be resolved by an ex parte reexamination." 2° Furthermore, the Federal Circuit subsequently confirmed
its determination that the Office has authority to reexamine expired patents. 21 Thus, patent owner's
request for termination on the basis that the patent is expired cannot be granted, because it is contrary to
controlling law.
Inquiries concerning this decision should be directed to Andrea S. Grossman, Senior Legal Advisor, Office
of Patent Legal Administration, at (571) 270-3314, or the undersigned at (571) 272-7717.
IN u:oie., V. f l ~ !
Nicole D. Haines
Senior Legal Advisor
Office of Patent Legal Administration May 19, 2026
17
Petition, p. 3. See also, petition, pp. 3-22.
18
In re Gesture Tech. Partners, LLC, No. 2025-1075, Doc. 56 (Fed. Cir. Dec. 1, 2025).
19
Id. at 9.
20 Id.
21
In re: Estech Systems IP, LLC, No. 2024-1935, Doc. 41 (Fed. Cir. Dec. 23, 2025) at 8 (non-precedential) ("We recently
'confirm[ed] that the Board has jurisdiction over ex parte reexaminations concerning expired patents."').