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Post-Grant for Practitioners: A monthly series of webinars focusing on developments in post-grant proceedings and related practice tips.

Since September 16, 2012, patent practitioners have been paying close attention to post-grant proceedings – methods of challenging patent validity at the United States Patent and Trademark Office. Fish & Richardson is one of the most active firms in filing and advising on post-grant matters, and on February 13, 2013, kicked-off a monthly webinar series designed to share practice tips, nuances, observations, and strategy. Information on previous webinars in this series is included below, with the most recent appearing first.


2013 WEBINAR SERIES:


Standing Before the Panel: Strategies for Post-Grant Oral Hearings

December 11, 2013

All of the written submissions in your post-grant proceeding have been filed and served. Now it’s time to stand up in front of your panel of PTAB judges to present your case at the oral hearing. What should you expect and how best can you prepare?

In Part XI of our series, Karl Renner, one of the co-chairs of Fish & Richardson’s post-grant practice, Tom Rozylowicz, and David Holt discussed their recent experiences in oral hearings in both inter partes review and covered business method cases. They discussed strategic considerations and proposed practice tips based on their personal experiences and their observations from other oral hearings.

Speakers:
Karl Renner, Principal & Post-Grant Practice Co-Chair, Washington, DC
Thomas Rozylowicz, Principal, Washington, DC
David Holt, Associate, Washington, DC
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Additional Webinar Materials >

Basics and Strategies for Appeals from PTO Post-Grant Decisions

November 13, 2013

The Federal Circuit is facing a coming explosion of appeals from the Patent Office next year – possibly a 300 percent (or more) increase from the 400-plus inter partes reviews that were started in the last year, to a back-log of reexaminations that was already very large. But Federal Circuit appeals are very different creatures than Patent Office proceedings, and they need to be looked at in a special way – “prosecution think” most definitely does not apply.

In this presentation, a member of Fish’s Appellate Practice group discussed the basics of Patent Office appeals, and strategies for winning those appeals. John Dragseth has led the briefing on or assisted others with over 100 patent appeals to the Federal Circuit and Supreme Court, and he will share what he has learned from their experiences.

Speakers:
John Dragseth, Principal, Twin Cities
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Additional Webinar Materials >

Inter Partes Review and the Life Sciences

October 9, 2013

In Part IX of our series, we explored the use of inter partes review in the context of life sciences patents, including pharmaceuticals and diagnostics. We examined selected petitions filed to date involving life sciences patents. We also discussed strategic considerations and practice tips for both patent owners and challengers in this growing area.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Gwilym Attwell, Principal, Delaware
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Additional Webinar Materials >

Claim Amendments in Inter Partes Review: How? When? Why?

September 11, 2013

This webinar focused on claim amendments during IPR proceedings. We explored the mechanism for amending claims and the limitations that the rules place on claim amendments. We also discussed strategic considerations and offered practice tips relating to claim amendments based upon PTAB decisions and our own experiences.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
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For audio-only (MP3 format), click here to launch in a new window, or right-click and choose “Save link/target as” to download to your computer.

Additional Webinar Materials >

Inter Partes Review from the Patent Owner’s Perspective

August 14, 2013

You’ve just learned that your patent is the subject of an IPR petition. What should you do? In this session Dorothy Whelan and Karl Renner, the co-chairs of Fish & Richardson’s post-grant practice, focused on IPR from the patent owner’s perspective. They discussed strategic considerations and proposed practice tips based on PTAB decisions and their own experiences.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
Josh Pond, Principal, Washington, DC

Inter Partes Review – Claim Construction and Patent Owner Preliminary Response

July 10, 2013

In this webinar, the co-chairs of Fish & Richardson’s post-grant practice focused on the topics of claim construction in IPR petitions and the content of the patent owner’s preliminary response. They reviewed recent PTAB decisions related to both of these topics and proposed practice tips based upon these decisions and their own recent experiences.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
Josh Pond, Principal, Washington, DC
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For audio-only (MP3 format), click here to launch in a new window, or right-click and choose “Save link/target as” to download to your computer.

Additional Webinar Materials >

How the Use of Discovery is Evolving in Inter Partes Review Proceedings

June 12, 2013

During this webinar, we provided an overview of the discovery rules governing Inter Partes Review (IPR) proceedings, and discussed recent PTAB decisions and how those decisions are shaping the use of discovery during IPR.

Speakers:
Tim Riffe, Principal, Washington, DC
Adam Shartzer, Associate, Washington, DC
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For audio-only (MP3 format), click here to launch in a new window, or right-click and choose “Save link/target as” to download to your computer.

Conducting Trials in the PTAB

May 8, 2013

In this webinar, the co-chairs of Fish & Richardson’s post-grant practice focused on the conduct of trials in the PTAB. They shared their experiences and practice tips in areas that include motion practice, teleconferences with the PTAB judges, and discovery requests. They also discussed the oral hearing that the PTAB recently conducted in SAP v. Versata, which represents the first oral hearing held to date by the PTAB.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC

Part III: Inter Partes Review and Covered Business Method Review – Recent Developments

April 10, 2013

In Part III of our series, the co-chairs of Fish & Richardson’s Post-Grant Practice Group discussed the Patent Trial and Appeal Board’s (PTAB) recent decision in Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co. The PTAB declined to grant a CBM petition on grounds it deemed redundant, setting forth a framework for its analysis that we’ll review while also exploring the implications for petition drafting. We also discussed the lawsuit that Versata recently filed against the USPTO, challenging the PTAB’s interpretation of “covered business method patent” and its recent initiation of a trial under the Transitional Program for Covered Business Method Patents. In addition, we surveyed the reception given to early Motions for Stay that follow from parallel post-grant proceedings, while finally touching on discovery-related issues.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
Josh Pond, Principal, Washington, DC

Part II: Inter Partes Review and Supplemental Examination—Recent Developments

March 13, 2013

In Part II of our series, the co-chairs of Fish & Richardson’s Post-Grant Practice Group will discuss the Patent Trial and Appeal Board’s (PTAB’s) recent decision in Synopsys v. Mentor Graphics. This decision marks the first time the PTAB rejected in full an IPR petition. We will review what caused this rejection and offer insights and tips for preparing petitions. Also on the agenda is a review of supplemental examination in the first six months after it took effect.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC

Part I: Inter Partes Review and Covered Business Method Patents – the First Five Months

February 13, 2013

On Wednesday, February 13, 2013 Karl Renner and Dorothy Whelan presented the first presentation in the series, titled Inter Partes Review and Covered Business Method Patents – the First Five Months. During the presentation, Fish’s post-grant practice co-chairs shared their experiences, insights and practice tips from the first five months of IPR and CBM.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC