Principal, Co-Chair | Washington, DC | 202-626-6447 | email@example.com
W. Karl Renner is a Principal in the Washington, D.C. office of Fish & Richardson P.C. Mr. Renner co-chairs the firm’s Post-Grant Practice Group, and he serves on the firm’s Management Committee. His practice emphasizes client counseling, strategic patent prosecution, contentious inter and ex parte post-grant and reissue work, due diligence and freedom-to-operate investigations, and patent-related opinion work. In this practice, Mr. Renner has provided the strategic direction for well over 300 AIA post-grant matters, challenging and defending patents, most commonly in coordination with litigation counsel amidst co-pending disputes. Recently, Mr. Renner was elected to serve as an interim director of the PTAB Bar Association, the first national bar association of its kind to form in more than 30 years. The PTAB Bar Association intends to establish best practices for the unique practice and skills required before the Patent Trial and Appeal Board.
Mr. Renner manages the patent portfolios of clients ranging from emerging companies to Fortune 50 corporations. Mr. Renner also regularly advises on effective commercialization/enforcement of company IP, and on defensive tactics to address competitor IP. In this regard, Mr. Renner specializes in post-grant matters, representing both patent owners and challengers.
Mr. Renner is technically focused on the electrical, computer-related, physics and mechanical arts. As such, he has extensive experience in the following technologies: Internet-driven solutions, network systems and protocols, data storage and retrieval standards and media, microprocessor and computer architecture, mobile and other communications equipment and processes, display technologies, semiconductor devices and fabrication processes, signal and image processing techniques, complex optical and mechanical devices, error detection and correction techniques, cryptography, telecommunications, financial processes, acoustics and video standards and equipment, and thermodynamic processes and systems.
Mr. Renner has prior engineering experience with the Instrumentation Branch of the U.S. Department of Energy, where he worked on the development and implementation of control systems, high-frequency optical imaging of particles during combustion processes, computer programming in machine and object oriented languages, and computer design and breadboard testing of analog circuits. Mr. Renner is now a frequent lecturer and author on intellectual property matters, regularly speaking at University of Maryland events, in conjunction with their Engineering Schools and Hinman CEO program.
- District of Columbia
- United States Patent and Trademark Office
Selected Speeches and Publications
- Co-Host of Fish & Richardson's monthly Post-Grant for Practitioners Webinar Series, which takes place on the 2nd Wednesday of every month.
- Moderator, “PTAB Litigation Hot Topics: Estoppel, Privy, Real Party in Interest (RPI) and Joint Defense Groups (JDG): An Analysis of the Issues;” and “Cross-Jurisdictional IP Litigation Interplay – Pet Peeves from the Bench on Timing, Discovery, Evidence, Claim Construction and the Management of Joint Proceedings,” Momentum: 2016 IP Counsel Exchange (December 1, 2016).
- Panelist, 2016 Association of Corporate Patent Counsel (ACPC) Summer Meeting (June 21, 2016).
- Moderator, "KnowledgeBridge™: A View From The Trenches Of The Most-Active Forum For Patent Validity Challenges—The PTAB" at the Consero IP Management Forum 2016 (June 6, 2016).
- Moderator, "Focus on the PTAB – District Court Interplay: Timing, Discovery, Evidence, Claim Construction and the Management of Joint Patent Proceedings" at the Momentum: IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB: San Jose (May 10, 2016).
- Panelist, "The Art of War: PTAB Trial Mechanics – Discovery, Motion Practice, Amendment" at the PLI USPTO Post-Grant Patent Trials 2016 (March 14, 2016).
- Authored "Changes to PTAB’s Interpretation Standard Have Many Uncertain on Post-Grant Filings," article published in The Metropolitan Corporate Counsel on November 28, 2015.
- Chaired Consero Group’s 2015 Global IP Management Forum, Moderator, "A View from the Trenches of the Most-Active Forum for Patent Validity Challenges—the PTAB" (June 7, 2015).
- "PTAB Trial Conclusion—The Oral Hearing, Final Written Decision, Rehearing, and Appeals to the CAFC," PLI USPTO Post-Grant Patent Trials 2015 (San Francisco) (April 17, 2015).
- "Designing Your Patent Strategy to Promote Cost Savings," Mid-Atlantic Forum: Innovating IP Management (April 2, 2015).
- Moderator, "Discovery, Evidence, Claim Construction and Addressing Key Evidentiary Issues That Arise During the Co-Pendency of Counterpart Patent Proceedings," 2nd IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB (March 30, 2015).
- "Post-Grant Patent Trials," UT Law 19th Annual Advanced Patent Law Institute Austin (November 6, 2014).
- Co-Chaired Consero Group’s "Post-Grant Executive Roundtable" (September, 2014).
- Panel presenter at "PTAB AIA Trial Roundtable," hosted by USPTO (May 22, 2014).
- Chaired Consero Group's 2014 Global IP Management Forum (May 4, 2014).
- "AIA and Inter Partes Review," CPA Global Webinar (April 24, 2014).
- "Inter Partes Review: Patent Owner's Perspective," West Legal Education (March 27, 2014).
- "Patent Owner Responses to PTAB Challenges: Strategies for Protecting Your Patent and Defending Against Parallel Proceedings," The IP Counsel Exchange on Post-Grant Patent Challenges (February 27-28, 2014).
- Authored "Settlement Doesn’t Guarantee End Of Post-Grant Proceeding", article published in Law360 on February 14, 2014.
- Authored "New Procedures for Challenging Patent Validity" chapter of "Inside the Minds: Recent Trends in Patent Infringement Lawsuits, 2014 ed.", published by Aspatore/Thomson Reuters (February, 2014).
- "Innovative Practice Resources for Meeting with Success during Inter Partes Review," ACI Patent Reform (January 22-23, 2014).
- "Challenging Validity in the Patent Office: A Look Back at the First Year, and a Look Ahead to Post-Grant Review and Potential Statutory Changes," SFIPLA Luncheon, San Francisco, CA (November 7, 2013).
- "Understanding New Proceedings for Challenging Patent Validity (IPR, PGR, CBM)," co-presenter for Thomson Reuters Patent Disputes 2013 in Santa Clara, CA (November 5, 2013).
- Chaired Consero Group’s 2013 Intellectual Property Management Forum, moderated “KnowledgeBridge™: The First Nine Months of Trials at the USPTO – What have we learned about Inter Partes Review and the Patent Trial and Appeal Board?
- "Inter Partes Review: What Practitioners Need to Know About Using and Defending Against This New Tool," West Legal Education Webinar (June 25, 2013).
- Moderator, "Infringer Defenses When Enforcing Your IP: Moves and Counter-Moves," The IP Strategy Summit: Enforcement, Washington, DC. (May 29, 2013).
- "How Post-Grant Challenges Have Evolved From Proposed Rules to Practice," What European Companies Need to Know About the Extraordinary Changes in U.S. & European Patent Law, Munich, Germany (May 8, 2013).
- "Innovative Practice Resources for Meeting with Success during Inter Partes Review," ACI Patent Reform (January 22-23, 2013).
- Quoted, "Kappos A Tough Act To Follow As USPTO Director," Law360 (November 27, 2012).
- Chaired Consero Group’s 2012 Intellectual Property Forum, moderated “The America Invents Act: How Patent Reform Will Impact Your IP Strategy” panel presentation, and presented workshop “When/Whether/Why Defend Using Inter Partes Review? And What Should You Do To Galvanize Your Patents Against It?”
- “U.S. Patent Law Developments 2011.” Presented at a seminar hosted in cooperation with the Kansai Economic Federation and the law office of Oh-Ebashi LPC & Partners, Osaka, Japan. (October 24, 2011).
- “Protecting & Monetizing Intellectual Property in Emerging Markets.” Presented and moderated panel of speakers at Consero Corporate Counsel Forum, Palm Springs, CA. (May 16, 2011).
- Selling to the U.S. Market: What Chinese Companies Need to Know About U.S. Patent Law (April 13, 2011).
- “A Conversation with the United States Patent and Trademark Office,” panel speaker as part of a continuing series of CLE Programs co-sponsored by the U.S. District Court for the District of Delaware and the Federal Bar Association (May 24, 2010).
- “Strategic Use of Reexamination” forum co-chair, moderator of panel addressing “Strategic Options – Which One is Right for You?,” Texas Lawyer, Dallas (April 22, 2010).
- “Strategic Use of Reexamination” forum co-chair, moderator of panel addressing “Strategic Options – Which One is Right for You?,” Daily Journal, Silicon Valley (September 24, 2009).
- “Positioning You Reexamination for Success by Incorporating Procedural Requirements and Other Tactical Considerations into Your Advanced Strategy,” moderated panel and co-chaired ACI’s In-House Counsel Forum on Patent Reexamination, New York (May 28, 2009).
- “Inter Partes and Ex Parte Reexamination: Recent Trends and Tactics,” presentation to the Minnesota Intellectual Property Law Association (March 18, 2009).
- “To Reexamine or not to reexamine – A look beyond statistics to answer this question when facing a hostile patent,” paper published in IP Law 360 (2009).
- Presented on various topics surrounding the basics of intellectual property protection at The University of Maryland’s Technology Start-up Bootcamp, each year from 2002 – 2009.
- “Developing a Practical Multi-Country Approach for Patent Enforcement, Litigation Management, and Execution,” ACI, Global Patent Litigation Congress, New York, (November, 2008).
- “Current Developments in Patent Applications, Appeals, Oppositions and Reexaminations,” presentation at Fish & Richardson sponsored seminar in Japan (October, 2008).
- “The Convergence of IP Law and Business,” panel presenter at SIGGRAPH Conference (August 13, 2008).
- “Be strategic with your IP: Maximize its Value – An Opportunity and an Obligation,” presented at AeANET retreat, Dallas (2008).
- “Strategic Prosecution – Building a Litigation-worthy Patent Portfolio,” presented at Fish & Richardson seminar: United States Patent Law and Litigation – Important issues professionals in South Korea need to know, Seoul , South Korea (December 5, 2006).
- “Reexamination: Knowing When and How to Use This Strategic Defensive Weapon,” panel presenter at IP Law & Business Presents Innovations in IP Litigation, Washington DC (December 1, 2006).
- “Equipping business leaders to manage intellectual property issues,” presented at Executive MBA Annual Meeting at the University of North Carolina (June 12, 2006).
- “What VCs Need to Know About the Changing Patent Process & IP Protection,” presented at National Venture Capital Association (June 15, 2005).
Awards and Honors
- Recognized as "Leading Individual" in IAM Patent 1000 ranking for Counsel for Post-Grant Procedures
- "IP Star" by Managing Intellectual Property (2013-2016).
- BS, University of Maryland 1992
- JD, George Washington University Law School 1998