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Is Fintiv Finally Over?

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Morrison Foerster is pleased to participate in the final session of the three-part summer webinar series discussing key factors for strategic decisions involving PTAB proceedings and current trends in the PTAB. This final session is hosted by the Berkeley Center for Law & Technology (BCLT), We hope to see you there!

Morrison Foerster is pleased to participate in the final session of the three-part summer webinar series discussing key factors for strategic decisions involving PTAB proceedings and current trends in the PTAB. This final session is hosted by the Berkeley Center for Law & Technology (BCLT), We hope to see you there!<h5>Session Description</h5>Since 2020, the precedential Fintiv decision has been a controversial issue for patent holders and challengers. To address the issue, on June 21, 2022, USPTO Director Kathi Vidal released an Interim Memorandum on Fintiv and a PTAB study on discretionary denials in AIA Leahy-Smith America Invents Act trials with parallel litigation for fiscal years 2019 through 2022.Join BCLT for a timely webinar where a panel of PTAB judges and Morrison Foerster participants will provide insights on the recently issued memorandum and study.<h5>Speakers</h5><div><ul><li><a href="https://www.uspto.gov/patents/ptab/lead-judge-michael-tierney">Mike Tierney</a>, Acting Deputy Chief Judge</li><li><a href="https://www.linkedin.com/in/mikekimworks/">Mike Kim</a>, Vice Chief Judge</li><li><a href="https://www.linkedin.com/in/justin-busch-084b263/">Justin Busch</a>, Judge</li><li>Alex Yap, Partner, Morrison Foerster</li><li>Mehran Arjomand, Partner, Morrison Foerster</li><li>Rose S. Lee, Associate, Morrison Foerster</li></ul></div>The webinar will be moderated by Mr. Yap, a former PTAB judge.<a href="https://bk.webcredenza.com/program?id=84977" target="_blank">View the recording of the webinar</a>.<hr>

PTAB Summer Webinar Series: Session 3

Is Fintiv Finally Over?

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Alex Yap co-chairs the firm’s Patent Trial and Appeal Board (PTAB) practice and is a member of Morrison Foerster’s IP Litigation practice. Alex is also the Managing Partner of the Los Angeles office. As a former administrative patent law judge at the U.S. Patent and Trademark Office (USPTO), he helps clients navigate post-grant adversarial proceedings before the PTAB. He focuses his practice on America Invents Act trials before the PTAB, as well as IP litigation matters.Prior to rejoining the firm, Alex served as an administrative patent judge at the USPTO in San Jose, California. In that capacity, he presided over more than 200 ex parte appeals, inter partes reviews, and covered business method patent proceedings.Utilizing his electrical and computer engineering degrees and experience from senior engineering roles, Alex spent 11 years at MoFo advising technology clients on patent litigations. During that time, he was involved in more than 30 USPTO reexamination/review proceedings and obtained cancellations of asserted claims in numerous cases.Prior to becoming a lawyer, Alex spent more than four years as a circuit design engineer for Freescale (formerly Motorola, Inc.) and Analog Devices, Inc., designing embedded non-volatile (flash) memories and asymmetric digital subscriber line chipsets. During that time, he developed extensive expertise in computer hardware and software architecture, communication systems, digital and analog circuit design, and digital signal processing. He has published numerous technical articles in trade journals and is an inventor on multiple U.S. patents.Alex received his B.S. and M.S. in electrical and computer engineering from the University of Wisconsin, Madison, in 1993 and 1998, respectively, and his J.D., magna cum laude, from the University of Minnesota Law School in 2005. He was an editor of The Minnesota Law Review and was elected to the Order of the Coif.Alex is a member of the California State Bar and is registered to practice before the USPTO. He is also a member of the American Association of Patent Judges.

Alex Yap

Partner

Mehran Arjomand is chair of the firm's Patent Trial and Appeal Board Practice and heads the firm's technology patent practice. Mr. Arjomand began his legal career as a litigator. After five years, he joined Morrison & Foerster, where he developed a strong foundation in USPTO prosecution and procedure. With his combined litigation and prosecution experience, he is able to counsel clients on end-to-end strategies—from patent creation to patent challenges.In his role as chair of the firm's Inter Partes Review and Post Grant Practice and previously the firm's Patent Reexamination Group, he has overseen hundreds of post-grant proceedings. He not only initiates post-grant proceedings for petitioners but also defends patent owners in such proceedings, from filing to appeal. Mr. Arjomand also regularly provides strategic guidance for and management of post-grant proceedings co-pending with litigation.Representative completed post-grant matters include the following.<ul><li>PGR2017-00009 Successfully represented patent owner PhishMe in PGR. The USPTO denied the petition based on a PGR eligibility argument.</li></ul><ul><li>PGR2017-00001, IPR2017-00123 Defendant settled with petitioner Yuneec shortly after filing of petitions.</li></ul><ul><li>IPR2014-01266, -01313 Defended patent owner HML against two inter partes reviews by different parties, resulting in claim survival or petition denial. </li></ul><ul><li>IPR2013-00593, -00594, -00597, -00598  Represented petitioner Yamaha in a series of inter partes reviews in which all pending claims were found unpatentable in final written decisions by the USPTO.</li></ul><ul><li>IPR2013-00149 Shortly after inter partes reviews became available, filed and led this review for petitioner Wavelock Advanced Technology. All pending claims were subsequently cancelled by patent owner.</li></ul><ul><li>Reexamination Control No. 95/001,734 Prepared and led inter partes reexamination of patent asserted against Yahoo! All pending claims were cancelled.</li></ul><ul><li>Reexamination Control No. 95/001,381 Successfully defended patent owner through appeal. Federal Circuit issued a precedential decision,  805 F.3d 1350, in favor of Netlist.</li></ul><ul><li>Reexamination Control No. 95/000,293 Prepared and oversaw this inter partes reexamination of a patent asserted against EchoStar. All pending claims were cancelled or amended. The matter settled favorably for EchoStar.</li></ul><div>In addition to his practice relating to adversarial PTO proceedings, Mr. Arjomand regularly prosecutes patent applications. He concentrates his prosecution work on consumer electronics, semiconductor processing, and automotive technologies. Mr. Arjomand works closely with clients in these technology sectors to develop and manage their patent portfolios. Additionally, Mr. Arjomand lived in Japan in 2008, where he worked extensively with Japanese technology companies to develop their global patent portfolios.Mr. Arjomand received his B.S. in mechanical engineering from the University of California, Berkeley in 1991, where he graduated with high honors. He obtained his J.D. from Berkeley Law in 1995. Mr. Arjomand is admitted to practice in California and is registered to practice before the USPTO.</div>

Mehran Arjomand

Rose Lee counsels clients on a broad range of complex disputes, with a particular focus on patent, copyright, and trade secret matters. She has litigated a wide range of high-technology cases for U.S. and non-U.S. based clients in U.S. federal courts and before the International Trade Commission. The technologies at issue in her matters have spanned areas such as computer software, video encoding, semiconductors, underwater imaging, electrostatic digital printing, and medical devices. A registered patent attorney, Rose also represents clients in adversarial proceedings before the Patent Trial and Appeal Board. Her experience includes serving as lead associate on litigation matters, drafting briefs, handling all aspects of discovery, and cross-examination.Before joining the firm, Rose served as a judicial extern to the Honorable R. Gary Klausner of the U.S. District Court for the Central District of California.Rose received her B.S. in chemical engineering, with a focus on biomedical engineering, from the University of California, Los Angeles, and her J.D. from New York University School of Law. While in law school, she was an executive articles editor for the New York University Annual Survey of American Law.Rose is admitted to practice in state and federal courts in California. She is also admitted to practice before the U.S. Patent and Trademark Office.

Rose Lee

Patent Trial and Appeal Board (PTAB) Litigation

Is Fintiv Finally Over?

21 Jul 2022 12:00 PM - 1:00 PM PDT

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