Principal, Co-Chair / Washington, DC / 202-626-6447
renner@fr.com

Karl Renner

Karl Renner is a principal in the Washington, D.C. and Dallas offices 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, and contentious inter and ex parte post-grant and reissue work before the Patent Trial and Appeal Board (PTAB). In this practice, Mr. Renner has provided direction for well over 500 AIA post-grant matters, challenging and defending patents, most commonly in coordination with litigation counsel amidst co-pending disputes. Recently, he was elected to serve as president of the PTAB Bar Association, complementing his service as a founding director of the association, the first national bar association of its kind in more than 30 years. The PTAB Bar Association intends to establish best practices for the unique practice and skills required before the PTAB.

Mr. Renner manages the patent portfolios of clients ranging from emerging companies to Fortune 50 corporations. He also regularly advises on effective commercialization/enforcement of company IP, and on defensive tactics to address competitor IP. In this regard, he specializes in post-grant matters, representing both patent owners and challengers.

His technical focus is on the electrical, computer-related, physics and mechanical arts. As such, Mr. Renner 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.

Education

J.D., George Washington University Law School 1998


B.S., University of Maryland 1992
Electrical Engineering

Admissions

  • U.S. Patent and Trademark Office
  • District of Columbia
  • Virginia

Recognitions

Publications

  • “IPR and PGR: A Complex and Shifting Landscape,” Managing Intellectual Property (July 29, 2019)
  • “Changes to PTAB’s Interpretation Standard Have Many Uncertain on Post-Grant Filings,” Metropolitan Corporate Counsel (November 2015)
  • “To Reexamine or not to reexamine – A look beyond statistics to answer this question when facing a hostile patent,” IP Law 360 (2009)

Media Mentions

  • Quoted, “Reviewing ‘A Tremendous Year of Change’ for the PTAB,” Managing Intellectual Property, (January 2019)
  • Quoted, “PTAB Unveils AIA Review Plans After High Court Shakeup,” Law360 (April 2018)
  • Quoted, “Tough Questions Await As PTAB Partial Reviews Get Boot,” Law360 (April 2018)
  • Interviewed, “Leading PTAB Atty Says Changes at Board Create Opportunity,” Law360 (February 2018)
  • Interviewed, “Q&A With Fish & Richardson’s Karl Renner,” Law360 (April 2013)
  • Quoted, “Kappos A Tough Act To Follow As USPTO Director,” Law360 (November 2012)

Speaking Engagements

  • Discussion with Acting Director,” 2021 PTAB Bar Annual Conference (September 23, 2021)
  • “PTAB Developments: Intersection of Post Grant and Litigation,” Summit on Protecting Innovations in the Financial Services Industry (July 2019)
  • “Claim Construction Final Rule: A New Complexity at the PTAB?” PTAB Bar Association Annual Conference (March 2019)
  • “Apply Best Practices in Oral Arguments Before The PTAB,” World Congress The 14th Annual Patents for Financial Services Summit (July 2017)
  • “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: 2017 IP Counsel Exchange (May 2017)
  • “PTAB Trends and Hot Topics,” PTAB Bar Association Inaugural Conference (March 2017)
  • “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 2016)
  • “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 2016)
  • 2016 Association of Corporate Patent Counsel (ACPC) Summer Meeting (June 2016)
  • “KnowledgeBridge™: A View From The Trenches Of The Most-Active Forum For Patent Validity Challenges—The PTAB,” Consero IP Management Forum (June 2016)
  • “Focus on the PTAB – District Court Interplay: Timing, Discovery, Evidence, Claim Construction and the Management of Joint Patent Proceedings,” Momentum: IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB: San Jose (May 2016)
  • “The Art of War: PTAB Trial Mechanics – Discovery, Motion Practice, Amendment,” PLI USPTO Post-Grant Patent Trials (March 2016)
  • “PTAB Trial Conclusion—The Oral Hearing, Final Written Decision, Rehearing, and Appeals to the CAFC,” PLI USPTO Post-Grant Patent Trials (April 2015)
  • “Designing Your Patent Strategy to Promote Cost Savings,” Mid-Atlantic Forum: Innovating IP Management (April 2015)
  • “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 2015)
  • “PTAB Trial Conclusion—The Oral Hearing, Final Written Decision, Rehearing, and Appeals to the CAFC,” PLI USPTO Post-Grant Patent Trials 2015 (March 2015)
  • “APJs and the Evolving Landscape of IPRs, CBMs, and PGR,” 26th Annual All Hands Meeting (November 2014)
  • “Post-Grant Patent Trials,” UT Law 19th Annual Advanced Patent Law Institute Austin (November 2014)
  • Co-Chaired Consero Group’s “Post-Grant Executive Roundtable” (September, 2014)
  • “PTAB AIA Trial Roundtable,” USPTO (May 2014)
  • Chaired Consero Group’s “2014 Global IP Management Forum” (May 2014)
  • “AIA and Inter Partes Review,” CPA Global Webinar (April 2014)
  • “Inter Partes Review: Patent Owner’s Perspective,” West Legal Education (March 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 2014)
  • “Innovative Practice Resources for Meeting with Success during Inter Partes Review,” ACI Patent Reform (January 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 (November 2013)
  • “Understanding New Proceedings for Challenging Patent Validity (IPR, PGR, CBM),” Thomson Reuters Patent Disputes (November 2013)
  • “Inter Partes Review: What Practitioners Need to Know About Using and Defending Against This New Tool,” West Legal Education Webinar (June 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?”
  • “Infringer Defenses When Enforcing Your IP: Moves and Counter-Moves,” The IP Strategy Summit: Enforcement (May 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 (May 2013)
  • “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?,” 2012 Intellectual Property Forum (2012)
  • “New Options for Challenging Patent Validity in the USPTO,” Boston Breakfast Series (September 2012)
  • “AIA: Post-Grant Proceedings in Comparison With German Post-Grant Proceedings,” What European Companies Need to Know About the Extraordinary Changes in U.S. Patent Law: The AIA & New Legal Standards from the Supreme Court & CAFC (May 2012)
  • “Of Inter Partes Reexamination and Inter Partes Review: Preparing for the Transition,” American Conference Institute (March 2012)
  • “U.S. Patent Law Developments 2011,” Seminar hosted in cooperation with the Kansai Economic Federation and the law office of Oh-Ebashi LPC & Partners (October 2011)
  • “Protecting & Monetizing Intellectual Property in Emerging Markets,” Consero Corporate Counsel Forum (May 2011)
  • “Strategies a Chinese Company Can Employ to Maximize the Value of a U.S. Patent Portfolio,” Selling to the U.S. Market: What Chinese Companies Need to Know About U.S. Patent Law (April 2011)
  • “A Conversation with the United States Patent and Trademark Office,” CLE Series hosted by U.S. District Court for the District of Delaware and the Federal Bar Association (May 2010)
  • “Strategic Options – Which One is Right for You?,” “Strategic Use of Reexamination,” Texas Lawyer (April 2010)
  • “Strategic Options – Which One is Right for You?,” “Strategic Use of Reexamination,” Daily Journal (September 2009)
  • “Positioning You Reexamination for Success by Incorporating Procedural Requirements and Other Tactical Considerations into Your Advanced Strategy,” ACI’s In-House Counsel Forum on Patent Reexamination (May 2009)
  • “Inter Partes and Ex Parte Reexamination: Recent Trends and Tactics,” Minnesota Intellectual Property Law Association (March 2009)
  • Presented on various topics surrounding the basics of intellectual property protection, The University of Maryland’s Technology Start-up Bootcamp (2002-2009)
  • “Developing a Practical Multi-Country Approach for Patent Enforcement, Litigation Management, and Execution,” ACI, Global Patent Litigation Congress (November 2008)
  • “Current Developments in Patent Applications, Appeals, Oppositions and Reexaminations,” Fish & Richardson Seminar (October 2008)
  • “The Convergence of IP Law and Business,” SIGGRAPH Conference (August 2008)
  • “Be strategic with your IP: Maximize its Value – An Opportunity and an Obligation,” AeANET Retreat (2008)
  • “Strategic Prosecution – Building a Litigation-worthy Patent Portfolio,” Fish & Richardson Seminar: United States Patent Law and Litigation – Important Issues Professionals in South Korea Need to Know (December 2006)
  • “Reexamination: Knowing When and How to Use This Strategic Defensive Weapon,” IP Law & Business Presents Innovations in IP Litigation (December 2006)
  • “Equipping business leaders to manage intellectual property issues,” Executive MBA Annual Meeting (June 2006)
  • “What VCs Need to Know About the Changing Patent Process & IP Protection,” National Venture Capital Association (June 2005)

Mr. Renner regularly speaks at the Post-Grant for Practitioners Webinar Series covering issues, statistics, strategy, and practice tips for those looking to learn the basics of these new proceedings, or gain an advanced understanding of the post-grant landscape. The following comprises the topics to date of the 2017 series:

  • Replays and materials for the 2016-2020 series can be found here.
  • Replays and materials for the 2015 series can be found here.
  • Replays and materials for the 2014 series can be found here.
  • Replays and materials for the 2013 series can be found here.
  • Replays and materials for the 2012 series can be found here.
No Comments

Sorry, the comment form is closed at this time.