banner-webinars-text

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.


2014 WEBINAR SERIES:


Top 10 Issues from the PTAB Currently on Appeal

December 10, 2014

Fish principals John Dragseth and Craig Countryman have over 60 Supreme Court and Federal Circuit appeals between them, and are watching the coming tsunami of PTAB appeals with great interest. To that end, they have tracked interesting cases working their way through the PTAB and explained them in this presentation while analyzing what effect those cases may have on future PTAB and litigation practice.

Speakers:
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
John Draseth, Principal, Twin Cities
Craig Countryman, Principal, Southern California
Download Presentation Slides
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 >

Stays, Finality, and Estoppel – Timing a Post-Grant Attack to Maximize Litigation Benefit

November 12, 2014

PTAB proceedings almost always involve concurrent litigation. The interplay between PTAB proceedings and district court litigation can be complex, and various strategic objectives can be achieved through a PTAB challenge. In this session we discussed how timing of a PTAB proceeding impacts concurrent litigation.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
Jeremy Monaldo, Principal, Washington, DC
Download Presentation Slides
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.

Challenging and Defending BioPharma Patents at the PTAB – What Practitioners Need to Know

August 13, 2014

IPR and CBM petitions present unique opportunities and issues in the biopharma area for both branded and generic companies. The number of petitions being filed in this area is growing steadily. Listen in as we explored strategic issues related to post-grant practice, Hatch-Waxman litigation, and biosimilars.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Gwilym Attwell, Principal, Delaware
Download Presentation Slides
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.

More from the PTAB: Prosecution Bars, CBM, and Motions to Exclude

July 9, 2014

In keeping with our goal of discussing topics of interest to practitioners, this month we discussed recent developments related to prosecution bars and CBM proceedings. We also explored the PTAB’s treatment of motions to exclude evidence.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
Andrew Patrick, Associate, Washington, DC
Ron Vogel, Associate, New York
Download Presentation Slides
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 >

Amendments, Live Testimony, and Disclaiming to Avoid the Broadest Reasonable Interpretation Standard – the PTAB has Spoken…

June 11, 2014

The PTAB recently issued several decisions of interest to practitioners. These decisions relate to a number of diverse topics, including claim amendments, live testimony during the oral hearing, and the use of terminal disclaimers to avoid the broadest reasonable interpretation standard. Join us as we discuss these decisions and their strategic implications.

Speakers:
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Stuart Nelson, Associate, Twin Cities
Download Presentation Slides
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.

Post-Grant for Practitioners: Trends, Topics, and Viewpoints from the PTAB AIA Trial Roundtable

May 14, 2014

The PTAB recently conducted a series of road shows throughout the country. The judges shared statistics and insights, and practitioners provided input. Fish’s Post-Grant Practice co-chairs participated in two of these road shows. In this webinar they shared their thoughts, takeaways, and practice tips from the road shows. In addition, they discussed recent noteworthy developments in CBM and IPR practice.

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

Dramatic changes in district court litigation as a consequence of PTAB proceedings

April 9, 2014

In this session, heard how changes in district court litigation due to PTAB proceedings have impacted our audience of practitioners. We shared experiences and lessons learned by those attending the webinar, and enabled attendees to pose questions and provide comments during the session. Talking points included:

  • Sweeping reform regarding judicial and legislative proposals.
  • Day-to-day changes, including the treatment of stays, choice of forum, number of claims asserted, selection of experts, and percentage and timing of settlements.
  • The emergence of a new breed of patent litigators.

Speakers:
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Christopher Marchese, Principal , Southern California
Download Presentation Slides
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.

Covered Business Method (CBM) Eligibility and Reviewability

March 12, 2014

In our March webinar, we continued our examination of CBM practice, including CBM eligibility, and reviewability of PTAB decisions related to the same. The webinar covered the definition of covered business method patent under the AIA, as construed by the PTAB, including the exclusion of “patents for technological inventions” and the requirement that, to be eligible for CBM review, the target patent must claim activities that are “financial in nature, incidental to a financial activity or complementary to a financial activity.” We also discussed recent noteworthy developments relating to stays and final written decisions.

Speakers:
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
John Phillips, Principal, Southern California
Andrew Patrick, Associate, Washington, DC
Download Presentation Slides
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.

Joinder and CBM Eligibility

February 12, 2014

In this webinar, the co-chairs of Fish & Richardson’s post-grant practice considered two topics of interest to practitioners: joinder of multiple proceedings and CBM eligibility. The discussion included a review of significant PTAB rulings, including the PTAB’s recently issued final written decision in Liberty Mutual v. Progressive Casualty, as well as practice tips and pointers.

Speakers:
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Andrew Patrick, Associate, Washington, DC
Download Presentation Slides
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: The Year in Review

January 8, 2014

In this webinar, the co-chairs of Fish & Richardson’s post-grant practice discussed significant developments in IPR practice that took place during 2013. They addressed questions such as: What have we learned about this tool? What can we expect going forward?

The discussion included a review of significant PTAB rulings, as well as practice tips and pointers.

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