Patent Reexamination: Effective Strategy for Litigating Infringement Claims
Best Practices for Pursuing and Defending Parallel Proceedings
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will prepare patent litigators to respond to common challenges that arise when using parallel patent reexaminations as a litigation tool. The panel will provide best practices for pursuing or defending patent litigation claims involving reexaminations.
Outline
- Overview — PTO reexamination process
- Ex parte reexaminations
- Inter partes reexaminations
- Reexamination trends
- Common issues arising with use of patent reexaminations during litigation
- Collateral estoppel and intervening rights
- Conflict between reexamination and court findings
- Admissibility of reexamination proceedings at trial
- Motions for stay based on reexamination proceedings
- Effective litigation strategies and tactics
- When and in what circumstances should reexaminations be filed?
- Separate reexamination counsel?
- Race to judgment
Benefits
The panel will review these and other key questions:
- What are the current trends surrounding the use of patent reexaminations during patent litigation?
- At what point in the litigation proceeding should reexaminations be filed?
- How have the doctrines of collateral estoppel and intervening rights created challenges for attorneys using patent reexaminations as a strategy during patent litigation?
Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.
Faculty
Jessica J. Harrison
Supervisory Patent Examiner
U.S. Patent and Trademark Office
She joined the USPTO in 1987 working in electronic games, education devices, electrical exercising devices and... | Read More
She joined the USPTO in 1987 working in electronic games, education devices, electrical exercising devices and electrical medical instrumentation. She served on detail to the Office of the Commissioner for Patents and joined the Central Reexamination Unit as a Supervisory Patent Examiner in 2008. She has received AIPLA’s Examiner of the Year award and an Exceptional Career award.
CloseGreg H. Gardella
Partner, Moderator
Irell & Manella
He practices in the areas of patent prosecution, reexamination, reissue proceedings, strategic counseling, due... | Read More
He practices in the areas of patent prosecution, reexamination, reissue proceedings, strategic counseling, due diligence investigations, pre-suit investigations, licensing, preparation of infringement and validity opinions, and trade secret enforcement. Reexamination is one of his specialties — he has represented both patent owners and challengers in well over 20 reexamination proceedings.
CloseFrank J. Nuzzi
Senior IP Counsel - IP Litigation
Siemens
He manages complex, multi-defendant U.S. patent litigation for Siemens and has experience in all aspects of IP law. ... | Read More
He manages complex, multi-defendant U.S. patent litigation for Siemens and has experience in all aspects of IP law. Prior to joining Siemens, he was in the litigation department of Clifford Chance where he specialized in patent litigation.
CloseRoderick McConnell
Licensing Manager
Infineon Technologies AG
He handles the patent licensing topics in Infineon Technologies' patent department. His prior experience includes... | Read More
He handles the patent licensing topics in Infineon Technologies' patent department. His prior experience includes designing microcontroller-based semiconductor products and developing multiprocessor networks.
Close