Patrick Colsher Featured in Law360 on RJLF's USPTO Reexam Win for Malikie Innovations

Partner Patrick Colsher was featured in Law360's article, "Reexam Denial On Ex-BlackBerry Patent Cites Pre-Order Filing," discussing a USPTO decision that appears to be one of the first to cite a patent owner's pre-order paper in denying a reexamination request. The win came in the firm's defense of a Malikie Innovations Ltd. video coding patent.

The USPTO denied Unified Patents LLC's request to reexamine U.S. Patent No. 10,778,989, originally issued to BlackBerry. Examiner Eron J. Sorrell found that Unified Patents failed to raise a "substantial new question of patentability," the standard for instituting an ex parte reexamination, and concluded that Malikie's arguments were persuasive.

The result turned on a new USPTO process. In April 2026, Director John Squires authorized patent owners to file "pre-order" papers for the first time, allowing them to weigh in before a reexamination is instituted rather than only after. RJLF filed Malikie's pre-order paper opposing institution, and the examiner agreed with the firm's arguments.

Colsher told Law360 that he and his client are "optimistic that this new process is going to give stakeholders on both sides an opportunity to weigh in pre-grant," as is done in inter partes reviews. That will "hopefully result in a more fulsome and better analysis and a more weighted analysis when the patent office issues these initial decisions on whether to grant the EPR," he said.

He added that "I think it's too early to tell whether this is an exception to the rule of everything largely being granted, but it's a useful data point. We take it as another testament to the strength of Malikie's portfolio, and we're certainly looking forward to demonstrating the value of this one in the ongoing litigations."

The '989 patent is at issue in ongoing infringement litigation in the Eastern District of Texas, where Malikie has asserted it against Hisense and TCL over televisions made by the two companies.

Read the full Law360 article here (subscriber access required).

Patrick Colsher