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ATES Pp ATEN "AND TRADEMARK OEICE.
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.
90/015,818 12/22/2025 8788827 024482-00039.827 3414
1 84647 7590 05/20/2026 | EXAMINER
Reichman Jorgensen Lehman & Feldberg LLP
100 Marine Parkway SORRELL, ERON J
Suite 300

Redwood City, CA 94065

Please find below and/or attached an Office communication concern

The time period for reply, if any, 1s set in the attached communication.

PTOL-90A (Rev. 04/07)

| ART UNIT | PAPER NUMBER
3992
| MAIL DATE | DELIVER Y MODE
05/20/2026 PAPER

ing this application or proceeding.


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THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS

ANISH R. DESAI PAUL, WEISS, RIFKIND, WHARTON & GARRISON LLP
1285 AVENUE OF THE AMERICAS
NEW YORK, NY 10019

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Commissioner for Patents

United States Patents and Trademark Office
P.O.Box 1450

Alexandria, VA 22313-1450
www.uspto.gov

May 20, 2026

EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM

REEXAMINATION CONTROL NO. : 90015818
PATENT NO. : 8788827
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 1.550(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 1.550(g)).


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Gommissioner for Patents

United States Patent and Trademark Office
P.O. Box 1450

Alexandria, VA 22313-1450

www.uspto.gov

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

Tn re Struik et al.
US. Patent No.: 8,788,827 B2 - DECISION

Ex Parte Reexamination Proceeding : ON

Control No.: 90/015,818 - PETITION
Filed: December 22, 2025 :

This decision addresses patent owner’s April 3, 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 April 17, 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 3, 2026
petition, requester’s April 17, 2026 paper, and the record as a whole are before the Office of Patent Legal
Administration (OPLA) for consideration.

PERTINENT BACKGROUND

On December 22, 2025, MARA Holdings, Inc. (requester) deposited a request for ex parte reexamination
of claims 1-13 of U.S. Patent No. 8,788,827 B2 (the 827 patent), which proceeding was assigned Control
No. 90/015,818 (the ’818 or present reexamination proceeding). On February 5, 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).' On April 3, 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 April 17, 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).

' See “Order Granting Request for #x Parte Reexamination,” February 5, 2026 (order).


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Ex Parte Reexamination Control No. 90/015,818 -2-
DECISION
I. Patent owner’s petition under 37 CFR 1.183

Patent owner’s April 3, 2026 combined petition includes: (1) a petition under 37 CFR 1.183, which will
be construed? as requesting waiver of any applicable regulations to permit entry and consideration of
patent owner’s April 3, 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).°

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.* 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 u/tra vires action on the part of the Office.? Accordingly,
requester’s April 17, 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 PTAB Workload Management Memorandum” (PTAB Workload Memo) should be applied
in the present reexamination proceeding, and weigh in favor of termination;® and (2) the Office lacks
statutory authority to conduct reexaminations on expired patents.’

Patent owner requests waiver of any requirement of the regulations that would otherwise preclude summary termination of
the reexamination.

3 Petition, p. 29.

4 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.”).

> See, e.g., MPEP § 2246, subsection II.

© Petition, pp. 2-3 and 22-29, referencing the PTAB Interim Director Discretionary Process, § IB, available at
https:/Avww.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

99, 66

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.”

’ Petition, pp. 3-22.


Ex Parte Reexamination Control No. 90/015,818 -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.* Relying on Jn re Etter, 756 F.2d 852, 857 (Fed. Cir. 1985) (en banc), 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 banc Federal Circuit—are ‘discretionary’ should give rise to an equal breadth of
discretionary denial authority in the EPR context.”? The opposition argues that “neither condition [for
exercising discretion under 35 U.S.C. 325(d)] is present here” !° in that there have been no other post grant
challenges to the ’827 patent!’ and the request presents new art and new arguments that have not
previously been considered by the Office.!? 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.” }*

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 ’827 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.'* 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 iter is misplaced. The cited portion of iter simply states that
the determination of whether an SNQ exists “is discretionary with the Commissioner’.!° 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

8 See, generally, petition at pp. 22-29.

” Petition, p. 23.

10 Opposition, p. 17.

'! See opposition, pp. 17 and 20.

!? See opposition, pp. 17 and 21.

'3 Opposition, p. 18.

4 See order, p. 6-8 and 15. See also, order, p. 4 (stating that the references cited in the request are “newly cited with respect to
the *827 Patent”).

'S 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 nght’ 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.”).


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Ex Parte Reexamination Control No. 90/015,818 -4-

will determine whether a [SNQ] is raised by the request”); 35 U.S.C. 304 (If. . .the Director finds that a
[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 ///er.
Thus, the Office must proceed with reexamination if an SNQ 1s 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) 1s dismissed.

B. Arguments related to the expiration of the ’827 patent

Patent owner asserts that Office should terminate this proceeding, because the Office “lacks statutory
authorization to conduct reexamination of an expired patent.”'® However, in the precedential Gesture!’
decision, the USPTO’s reviewing court concluded that the Office “has jurisdiction over ex parte
reexamination concerning expired patents”!* 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.” '? Furthermore, the Federal Circuit subsequently confirmed
its determination that the Office has authority to reexamine expired patents.7? 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.

/Nicole D. Haines/

Nicole D. Haines

Senior Legal Advisor

Office of Patent Legal Administration May 19, 2026

'6 Petition, p. 3. See also, petition pp. 3-22.

" In re Gesture Tech. Partners, LLC, No. 2025-1075, Doc. 56 (Fed. Cir. Dec. 1, 2025).

'8 Td. at 9.

19 Td.

°° 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.’”).