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Eugene Goryunov
Partner and Chicago IPR Team Lead
Haynes Boone, LLP
Eugene Goryunov is the IPR Team Lead and Administrative Partner of the Chicago office of Haynes Boone, LLP and an experienced trial lawyer that represents clients in complex patent matters involving diverse technologies.
He has extensive experience and regularly serves as first-chair trial counsel in post-grant review trials (IPR and PGR) on behalf of both Petitioners and Patent Owners at the USPTO. Eugene is also deeply involved as trial counsel in all aspects of cases in Federal courts around the country (including the Eastern and Southern Districts of Texas, Northern District of Illinois, District of Delaware, District of Minnesota, Northern District of Alabama, Northern and Southern Districts of California, Northern District of George, Western District of Missouri, and Southern District of New York), Section 337 investigations at the USITC, and in appeals at the Federal Circuit.
Eugene has authored a treatise titled the Trial Lawyer’s Guide to Post Grant Patent Proceedings (published by LexisNexis), chapters in books discussing U.S. patent law and litigation (published by Chambers and Global Legal Group), and is a regular contributor to various IP publications. Eugene also serves on the Editorial Board of The Patent Lawyer, as the Editor-in-Chief of the PTAB Bar Association’s Round-up of Round-ups, and lead editor of Westlaw’s “Tips and Tricks at the PTAB.”
Prior to joining Haynes and Boone, Eugene was a partner in the Chicago office of Kirkland & Ellis LLP where he was instrumental to the firm’s post-grant review practice. He filed some of the first-ever IPR petitions, served as the firm’s post-grant review trial practice knowledge manager, and co-founded the PTAB Bar Association. Before law school, Eugene worked as a software engineer for more than five years at Cardinal Health.
Recent Articles by Eugene Goryunov
In March 2023, the Patent Trial and Appeal Board (Board) addressed in Penumbra, Inc. v. Rapidpulse, Inc., IPR2021-01466, Paper 34 (Mar. 10, 2023), a key issue in inter partes reviews: how to establish a reference patent as prior art based on the filing date of an earlier-filed application, such as a provisional. The Board held that the requirements of the Federal Circuit’s decision in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), do not apply for post-America Invents Act (AIA) patents. Penumbra, IPR2021-01466, Paper 34 at 29-35. On November 15, 2023, U.S Patent and Trademark Office (USPTO) Director Kathi Vidal designated the Penumbra decision precedential. This article explores the evolution of the law on this issue.
The Patent Trial and Appeal Board (PTAB) has the discretion to deny institution of an inter partes review (IPR) proceeding under 35 U.S.C. § 325(d) if “the same or substantially the same prior art or arguments previously were presented to the Office.” In Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH (“Advanced Bionics”), the PTAB established a two-part framework for determining whether a PTAB panel should exercise discretion under Section 325(d). This article surveys recent PTAB decisions having the common fact that the IPR challenges rely upon prior art that is the same or substantially the same as prior art submitted in an IDS during prosecution to glean insights as to how parties and the Board are addressing Advanced Bionics in this scenario.
