A Panel Discussion: Ex Parte Reexam As An Alternative to Inter Partes Review

Legal Disclaimer: The content of our discussion is for educational purposes and does not constitute legal advice. The views and opinions expressed by the panelists are their own and do not necessarily reflect the view of the firms, companies, or organizations with which they are associated or represent. ERRATA: Page 7 of presentation - [email protected]; Page 24 of presentation (~42:37 of video - “[E]stoppel applies not just to claims and grounds asserted in the petition and instituted for consideration by the Board, but to all grounds not stated in the petition but which reasonably could have been asserted against the claims included in the petition.” California Inst. of Tech. v. Broadcom Ltd. Ltd., 25 F.4th 976, 991 (Fed. Cir. 2022)** **Quote from the majority opinion modified in view of errata issued on Feb. 22, 2022. Virtual Patent Gateway (VPG) has put together a panel of PTAB practitioners, including both experienced CRU practitioners and rising young stars, to shed light on some of these issues. The panel will also address recent changes to the USPTO’s electronic filing system (“Patent Center”), as well as the Federal Circuit’s recent decision in In re Vivint, Inc., 14 F.4th 1342 (Fed. Cir. 2021), in which the court ordered termination of EPX proceedings under 35 U.S.C. § 325(d) following an IPR petition that was previously denied under the same statute. This panel is sponsored by Unified Patents, LLC and Unified Networks. Though ex parte reexamination (“EPX”) has been available to the public for about four decades, its popularity has increased dramatically over the past few years. However, EPX has procedural and substantive differences with other post-grant proceedings, such as inter partes review (“IPR”), that raise interesting strategic considerations for patent owners and patent challengers alike. For example, considerations of cost, statutory grounds, estoppel, availability, and timing that differ between these proceedings are some of the issues that parties often weigh when formulating litigation strategies. Moderator: David Seastrunk, Senior Patent Counsel, Unified Patents, LLC David Seastrunk is a Senior Patent Counsel at Unified Patents, LLC. His practice focuses on post-grant proceedings before the U.S. Patent and Trademark Office (USPTO) and appeals before the U.S. Court of Appeals for the Federal Circuit. Prior to joining Unified, David was an associate at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, where his practice included patent litigation (including AIA proceedings, cases in district courts, the U.S. International Trade Commission (ITC), and the U.S. Court of Federal Claims), patent prosecution (in electrical and mechanical arts), and client counseling. Ellyar Barazesh, Senior Patent Counsel, Unified Patents, LLC Ellyar Barazesh is a Senior Patent Counsel at Unified Patents, LLC. His practice focuses on post-grant proceedings before the U.S. Patent and Trademark Office (USPTO) and in international jurisdictions. Prior to joining Unified, Ellyar was an associate at Stoel Rives, LLP, and WilmerHale, where his practice included post-grant proceedings, patent litigation, and patent prosecution in the electrical and software arts. He previously served as a patent examiner at the USPTO, examining patent applications directed to video coding and 3D imaging. Philip Eklem, Associate, Reichman Jorgensen Lehman & Feldberg, LLP Philip Eklem is an associate in Reichman Jorgensen Lehman & Feldberg LLP’s Washington, D.C. office. His practice includes patent litigation in U.S. district courts and the U.S. International Trade Commission (ITC), as well as AIA review and reexamination proceedings before the USPTO. Prior to joining RJLF, Phil was an associate at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. He previously served as a patent examiner at the U.S. Patent and Trademark Office (USPTO) in a mechanical art unit. Lissi Mojica, Managing Director, Answers IP, LLC Lissi Mojica’s practice focuses on all aspects of preparing, analyzing and prosecuting post-grant proceedings, including inter partes review (IPR) and covered business method (CBM) proceedings. Lissi’s practice also includes appeals to the Patent Trial and Appeal Board, reissue applications, Interference proceedings, patent quality, and patent examination matters. Prior to entering a law firm setting, I served as a Director at the United States Patent and Trademark Office (USPTO), where I started the Central Reexam Unit (CRU). As Director, I oversaw policies, standards and procedures and developed inter partes and ex parte reexamination training for CRU examiners.