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.
2015 WEBINAR SERIES:
The use of IPR challenges in the bio-pharma space continues to grow. Fish speakers Dorothy Whelan and Tasha Francis discussed the latest noteworthy developments. Topics included the Bass hedge fund filings and the PTAB’s decision not to prohibit such filings as an abuse of process. Additional topics reviewed were: recent institutions and final written decisions, including presenting pointers for both petitioners and patent owners.
As inter partes review (IPR) has become more firmly established as an alternative to litigation, some patent holders, in particular in the biotechnology sector, have sought to change, or even scrap, the IPR framework through legislation. Fish Principals Michael Rosen and Tom Rozylowicz discussed the changes under consideration and how they may affect patent and post-grant practice, including:
- The STRONG Patents Act, introduced in the Senate by Sen. Chris Coons (D-Del.), which would alter the “broadest reasonable construction” standard and the burden of proof in IPR;
- The revised version of the Innovation Act, approved in April by the House Judiciary Committee, which includes certain provisions from the Patents Act; and
- A proposal to exempt the biotech sector entirely from IPR, and a recent Congressional Budget Office analysis of that proposal.
Discussion on recent developments at the USPTO with the release of the new proposed rules governing PTAB trial proceedings. Fish speakers Dorothy Whelan, Karl Renner, Stuart Nelson and Tasha Francis discussed practical tips, insights from the recent AIPLA/USPTO Road Show Series, and the implications of the rules on pending patent review proceedings.
Discussion on recent developments in the PTAB and Congress relating to a number of topics of interest, including nonpracticing entities (“NPEs”), sanctions, motions to amend, and “real party in interest.” Fish speakers Dorothy Whelan and Tasha Francis discussed PTAB decisions and pending legislation, offered insights and practice tips based on their experience, and projected what’s ahead for the second half of 2015.
The PTAB’s application of the redundancy doctrine has evolved over time, including its latest position on the doctrine’s effect on estoppel. In this webinar, Josh Griswold and Stuart Nelson examine the redundancy doctrine and how strategies might be effected in the future. This webinar also addresses other recent developments at the PTAB, including the encouragement of alternative dispute resolution and the challenge of sealing confidential documents.
The number of inter partes review petitions in the Bio-Pharma space is rapidly increasing. In this session, Fish principals Dorothy Whelan and Gwilym Attwell discuss who is filing, timing issues, and offer tips for patent owners and challengers.
This webinar takes a look at two topics. First, continuing from last month’s webinar, this webinar details situations in which the broadest reasonable interpretation does not apply during a post-grant proceeding and considers whether that does or should have an impact on strategies for the Petitioner or Patent Owner. Second, this webinar looks at the potential repercussions of failing to name all of the real parties-in-interest on a petition, review various circumstances that raise the issue, and considers how to potentially handle situations in which it is unclear whether a non-party is a real party-in-interest.
This webinar discusses a recent district court decision addressing the scope of estoppel under 35 U.S.C. § 315 as well as the first Federal Circuit ruling on an appeal from a final written decision in an inter partes review. Of note, the Federal Circuit ruling (In re Cuozzo Speed Technologies, LLC., 2014-1301) addresses the appealability of institution decisions and the PTAB’s use of the broadest reasonable interpretation standard.
Under 35 U.S.C. § 325(d), the PTAB can take into account whether, and reject a petition for inter partes review because, the same or substantially the same prior art or arguments previously were presented to the Office. This webinar looks at various circumstances in which the PTAB has exercised that discretion.