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, and contentious inter and ex parte post-grant and reissue work. In this practice, Mr. Renner has provided 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, he was elected to serve on the Board of Directors for 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. 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.
J.D., George Washington University Law School 1998
B.S., University of Maryland 1992
- U.S. Patent and Trademark Office
- District of Columbia
Recognized in “The World’s Leading Patent Practitioners” by IAM Patent 1000 and recommended for post-grant procedures (2013-2017).
“IP Star” by Managing Intellectual Property (2013-2017).
Selected Speeches and Publications
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 2017 series can be found here.
Replays and materials for the 2016 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.
Panelist, “Apply Best Practices in Oral Arguments Before The PTAB,” World Congress The 14th Annual Patents for Financial Services Summit (July 19, 2017).
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: 2017 IP Counsel Exchange (May 23, 2017).
Moderator, “PTAB Trends and Hot Topics,” PTAB Bar Association Inaugural Conference (March 1, 2017).
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).
Co-Author, “Changes to PTAB’s Interpretation Standard Have Many Uncertain on Post-Grant Filings,” Metropolitan Corporate Counsel (November 28, 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).
“PTAB Trial Conclusion—The Oral Hearing, Final Written Decision, Rehearing, and Appeals to the CAFC,” PLI USPTO Post-Grant Patent Trials 2015 (New York) (March 26, 2015).
Co-Moderator, “APJs and the Evolving Landscape of IPRs, CBMs, and PGR,” 26th Annual All Hands Meeting (November 7, 2014).
“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).
“Q&A With Fish & Richardson’s Karl Renner,” Law360 (April 22, 2013).
Quoted, “Kappos A Tough Act To Follow As USPTO Director,” Law360 (November 27, 2012).
“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).
“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).
“Inter Partes Review: What Practitioners Need to Know About Using and Defending Against This New Tool,” West Legal Education Webinar (June 25, 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?
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).
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?”
“New Options for Challenging Patent Validity in the USPTO,” Boston Breakfast Series (September 9, 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 10, 2012).
“Of Inter Partes Reexamination and Inter Partes Review: Preparing for the Transition,” American Conference Institute (March 27, 2012).
“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).
“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 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 (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).