Ex Parte Patent Appeals: Determining Whether to Appeal, Trends and Lessons From Recent Cases

Mr. Stephenson is Chair of the Ex Parte Appeals Subcommittee of the Patent Law Committee of AIPLA, a member of the Appeals to the PTAB Committee of the PTAB Bar Association, and a member of the Patent Office Practice Committee of IPO. His interest in ex parte appeals led him to co-found a company that developed the first commercial database of ex parte appeals decisions and reflects an interest that began in law school about the use of examiner statistics to aid patent prosecution work. Mr. Stephenson has written and been involved in the prosecution of hundreds of patents across the entire spectrum of technology.

Mr. Bejin concentrates his practice on intellectual property litigation, strategic counseling and freedom to operate studies. He has handled patent, trademark and trade secret cases in state and federal courts throughout the country. Mr. Bejin has significant trial experience and has appeared in well over 100 cases in more than 20 different states. He has served clients in diverse fields such as automotive technology, wireless communication, lasers, robotics and medical devices. More recently, Mr. Bejin has represented clients in IPR proceedings. His representation has regularly involved providing strategic advice related to directing innovation and maximizing shareholder value.

Ms. Gaudry focuses her practice on data-driven and strategic patent prosecution. She has authored over 60 publications sharing results of generally applicable analyses, and her work was also pivotal in the shutting down of the USPTO’s SAWS program, which secretly subjected select patent applications to increased examination scrutiny. Ms. Gaudry’s research and data focus was recognized when she was one of five attorneys across all practice areas to be selected for LexMachina’s and Law360’s Data-Driven Lawyer award in its inaugural year of 2018. Most of her clients are in the software, computers, and quantitative-biology technical areas. Ms. Gaudry particularly enjoys patent-prosecution relating to artificial-intelligence and computational-biology technologies.

Judge Guest was appointed as an Administrative Patent Judge in April 2011. She first joined the Board in February 2008 as a Patent Attorney. Prior to joining the Board, she served as an associate attorney with Sterne Kessler Goldstein & Fox and as a patent attorney with the Office of Naval Research.