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

Conducted on Tuesday, May 3, 2011

Recorded event now available

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Course Materials

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.


Patent reexamination filings are soaring. Companies accused of patent infringement are now fighting back by routinely asking the U.S. Patent and Trademark Office (PTO) to reexamine the validity of the accuser’s original patent.

Reexaminations can be a driving factor in determining how a patent infringement case is ultimately resolved. When patent reexaminations are sought in the context of pending litigation, patent litigators must have an effective strategy in place to confront the unique issues associated with them.

Listen as our authoritative panel of patent attorneys identifies common challenges confronting patent litigators when using reexaminations as a litigation tactic. The panel will offer strategies for pursuing or defending patent litigation claims involving patent reexaminations.



  1. Overview — PTO reexamination process
    1. Ex parte reexaminations
    2. Inter partes reexaminations
    3. Reexamination trends
  2. Common issues arising with use of patent reexaminations during litigation
    1. Collateral estoppel and intervening rights
    2. Conflict between reexamination and court findings
    3. Admissibility of reexamination proceedings at trial
    4. Motions for stay based on reexamination proceedings
  3. Effective litigation strategies and tactics
    1. When and in what circumstances should reexaminations be filed?
    2. Separate reexamination counsel?
    3. Race to judgment


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.


Jessica J. Harrison
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

Greg H. Gardella
Greg H. Gardella

Partner, Moderator
Irell & Manella

He practices in the areas of patent prosecution, reexamination, reissue proceedings, strategic counseling, due...  |  Read More

Frank J. Nuzzi
Frank J. Nuzzi
Senior IP Counsel - IP Litigation

He manages complex, multi-defendant U.S. patent litigation for Siemens and has experience in all aspects of IP law. ...  |  Read More

Roderick McConnell
Roderick McConnell
Licensing Manager
Infineon Technologies AG

He handles the patent licensing topics in Infineon Technologies' patent department. His prior experience includes...  |  Read More

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