The patent team at LSC IP recently secured a victory in defense of a client’s patent, reinforcing the strength of its intellectual property rights. In September 2024, MagicMotorSport s.r.l. filed a Request for Ex Parte Reexamination (Serial No. 90/019,652) seeking to invalidate our client Dynocom Industries’ U.S. Patent No. 8,505,374. The request alleged twelve (12) grounds of unpatentability, all of which were ultimately denied by the U.S. Patent Office, thanks to our firm’s aggressive and strategic response. Using nuanced and carefully crafted arguments, LSC IP successfully confirmed the validity of the patent’s claims against all twelve allegations without amendment to the primary claims.
An ex parte reexamination is a legal process at the U.S. Patent and Trademark Office (USPTO) that allows a third party to challenge the validity of an issued patent based on prior art in the form of patents or printed publications. Parties filing such reexaminations hope to invalidate the patent at issue, often as a way to defend against infringement allegations. Other tools for challenging patents include inter partes review (IPR) and post-grant review (PGR)—both trial-like procedures handled by the Patent Trial and Appeal Board (PTAB). Lambert Shortell & Connaughton has extensive experience in all three types of proceedings.
In an ex parte reexamination such as the present case 90/019,652, the requesting party submits grounds of unpatentability, the patent holder must respond successfully, or else the patent will likely be invalidated. These can be high-stakes matters, with only about 15% of patents surviving reexamination without claim amendments—as happened in this case.
One of the critical shortcomings in MagicMotorSport’s arguments was that the proposed modifications to the prior art would have destroyed the primary functionality of the prior art references. In other words, a person skilled in the art could not have arrived at the claimed invention in the ‘374 patent without eliminating the key functional features of the cited prior art. This nuanced argument, supported by carefully selected and analyzed evidence, led to a resounding success for our client.
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