is a partner in the Supreme Court & Appellate practice in the Washington DC office of Mayer Brown. He focuses his practice on briefing and arguing cases in appellate courts, as well as developing legal strategy for trial litigation. Paul has argued twice before the U.S. Supreme Court, in December 2014 and March 2016. He has argued before the en banc Ninth Circuit, as well as eight other federal arguments. He has worked on over 150 appellate matters, more than 80 of which were in the US Supreme Court. Paul has particular experience handling intellectual property appeals, including more than 30 cases in the Federal Circuit. For more information, or to contact Paul, please visit his firm profile page.
Pactiv, LLC v. Lee presents a question fundamental to all ex parte reexaminations: whether, after the PTO initiates an ex parte reexamination, that proceeding is limited in scope to the question determined to qualify as the “substantial new question of patentability.” The “substantial new question of patentability” identified by the Director included certain prior art references. But the examiner subsequently rejected several of Pactiv’s claims due to wholly different prior art references. There was never any determination under 35 U.S.C. § 303 that these other references raised a “substantial new question of patentability,” nor did the Director issue the order required under Section 304 identifying a “substantial new question of patentability” based on these wholly different prior art references.