Ex Parte Reexamination
Reexamination counsel for patent owners and third-party requesters
Ex parte reexamination is rarely just a Patent Office proceeding. It can affect claim scope, infringement positions, litigation strategy, settlement leverage, intervening-rights exposure, and the value of the patent and related portfolio.
AddyHart represents patent owners and third-party requesters in ex parte reexamination matters. We combine patent prosecution, technical analysis, evidentiary development, litigation coordination, and appellate experience to guide matters from initial assessment and request preparation through examination, amendment strategy, and any available PTAB or Federal Circuit review.
Representation for
Patent Owners
A patent owner’s defense should begin as soon as a possible petition becomes apparent. Early preparation creates time to evaluate the prior art, prosecution history, claim-construction issues, potential witnesses, related litigation, and the commercial importance of each challenged claim.
Immediate Request Assessment
We assess:
✓ Each asserted substantial new question of patentability
✓ The cited patents and printed publications
✓ The requester’s claim mappings and technical assumptions
✓ The original prosecution history
✓ Related litigation and licensing activity
✓ The importance of each challenged claim
✓ Related patents and pending applications
This initial assessment identifies immediate response opportunities and establishes a broader prosecution and portfolio strategy.
Pre-Order Submissions
In eligible ex parte reexamination matters, a patent owner may submit a pre-order paper addressing whether the request raises a substantial new question of patentability. We prepare focused submissions that identify weaknesses in the requester’s asserted teachings, claim mappings, and characterization of the prior art.
Because the pre-order stage is limited in scope, each submission must be carefully tailored to the governing procedure. We develop the paper as part of a broader strategy that anticipates potential reexamination, related litigation, and any later response on the merits.
Patent Owner Statements & Office Action Responses
If reexamination is ordered, we develop a coordinated prosecution strategy before the Central Reexamination Unit.
Our work may include:
✓ Patent owner statements
✓ Responses to non-final and final Office Actions
✓ Examiner interviews
✓ Technical distinctions
✓ Expert declarations and supporting evidence
✓ Objective evidence of nonobviousness
✓ Claim amendments
✓ Petitions and procedural submissions
✓ Preservation of issues for appeal
Expert Evidence
Complex reexaminations often turn on factual assumptions about what a reference teaches, how systems operate, what a skilled artisan would understand, or whether a proposed combination is technically supported.
We work with qualified experts to develop declarations grounded in the technology, relevant literature, testing, and the perspective of a person of ordinary skill in the art.
Amendments & Portfolio Strategy
An amendment may preserve patentability while creating consequences for infringement, damages, intervening rights, licensing, and related patent assets.
Before recommending an amendment, we consider:
✓ Existing and anticipated infringement positions
✓ Potential intervening-rights issues
✓ Pending litigation
✓ Continuation and reissue options
✓ Related patents and applications
✓ Commercially important product coverage
PTAB & Federal Circuit Appeals
A patent owner may appeal a final rejection in ex parte reexamination to the PTAB. A dissatisfied patent owner may subsequently seek review at the Federal Circuit; third-party requesters do not possess the same appeal rights.
We develop the prosecution record with those potential appellate stages in view.
Services for Third-Party Requesters
For a third-party requester, the initial filing must do the heavy lifting. Because participation becomes limited after reexamination is ordered, the request should identify the strongest prior art, frame each substantial new question of patentability, and clearly map the references to the challenged claims.
We develop focused, evidence-driven requests designed to give the USPTO a clear basis to order reexamination and scrutinize the challenged claims.
We assist requesters with:
✓ Evaluating reexamination against IPR or litigation alternatives
✓ Reviewing the patent and prosecution history
✓ Evaluating patents and printed publications
✓ Identifying proposed substantial new questions
✓ Preparing detailed claim mappings
✓ Developing supporting technical evidence
✓ Drafting and filing the request
✓ Preparing any permitted early-stage reply
We also assess how the request may affect related litigation, settlement positions, public statements, and broader business objectives.
Coordination With
Litigation & Licensing
The strategic implications of an ex parte reexamination often extend well beyond the USPTO. Prosecution arguments, claim amendments, and the resulting record may influence claim construction, infringement analyses, damages, intervening rights, settlement leverage, and the value of related patents and pending applications.
We coordinate with litigation and licensing counsel throughout the proceeding to maintain consistent positions across forums and to evaluate the downstream effects of each prosecution decision. By integrating the reexamination into a broader dispute and portfolio strategy, we help clients protect both the challenged patent and the long-term value of their intellectual property assets.
Facing a Unified Patents Reexamination Request?
AddyHart’s Unified Defense Program offers qualifying patent owners success-based representation in ex parte reexaminations initiated by Unified Patents.
The AddyHart Unified Defense Program offers qualifying patent owners success-based representation in ex parte reexamination proceedings initiated by Unified Patents.
For accepted matters, the program offers a $20,000 success-based professional fee, payable only if the representation is successful and at least one challenged claim is confirmed as patentable, as defined in the written engagement agreement.
Program eligibility is subject to conflicts clearance, case evaluation, and a written engagement agreement. USPTO fees, experts, vendors, litigation, Federal Circuit proceedings, and other expenses are excluded unless expressly included. Prior results do not guarantee a similar outcome.
Why AddyHart for
Ex Parte Reexamination
Deep Patent Prosecution Experience
Ex parte reexamination is fundamentally a specialized prosecution proceeding. We combine extensive patent prosecution experience with technical analysis to develop persuasive responses, examiner strategies, and claim amendment approaches designed to preserve valuable patent rights or present well-supported challenges.
Technical & Evidentiary Analysis
Successful reexaminations depend on more than identifying prior art. We work closely with inventors, technical experts, and industry specialists to analyze complex technologies, evaluate prosecution history, and develop evidence that supports our clients' positions before the USPTO.
Litigation-Aware Strategy
Reexamination decisions can influence parallel litigation, licensing negotiations, and future enforcement efforts. We coordinate with litigation counsel to ensure that prosecution arguments, amendments, and supporting evidence align with broader dispute and business objectives.
Portfolio-Focused Counsel
Every decision during reexamination can affect related patents, pending applications, continuation strategy, and the long-term value of an intellectual property portfolio. We evaluate each strategic choice in light of its potential impact on both the challenged patent and the broader patent family.
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Relevant Team
The professionals below combine IPR, reexamination, appellate, litigation, prosecution, and technical experience relevant to challenges involving issued patents.
Meredith Martin Addy
President & Co-Founder · Registered Patent Attorney · Electrical Engineer
An electrical engineer and registered patent attorney, Mimi draws on more than 100 district-court patent cases and more than 100 Federal Circuit appeals to advise on prosecution strategy, PTAB proceedings, licensing, and portfolio durability.
Gregory B. Gulliver
Partner · Registered Patent Attorney · Former Software Engineer
A former software engineer with nine years of industry experience, Gregory has prepared and prosecuted hundreds of applications involving wireless communications, software, computer hardware, semiconductors, and network technologies.
Brandon R. Theiss
Partner · Registered Patent Attorney · Licensed Professional Engineer
A licensed professional engineer and former industrial-control and medical-device engineer, Brandon advises on patent prosecution, § 101 strategy, portfolio development, and post-grant proceedings involving AI, software, cloud systems, medical devices, and automation.
Craig McLaughlin
Senior Counsel · Registered Patent Attorney · Biology Background
A registered patent attorney with a biology background and nearly 30 years of experience, Craig handles utility and design-patent matters involving medical devices, mechanical systems, consumer products, computer hardware, and related post-grant and appellate issues.
Get In Touch
Whether you are developing a new patent portfolio, transferring existing prosecution work, preparing for a product launch, or responding to a challenge against an issued patent, we would welcome the opportunity to discuss your objectives.
Please do not include confidential information in an initial inquiry. An attorney-client relationship is formed only through a written engagement agreement.