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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.


2016 WEBINAR SERIES:


Biologics Litigation and IPRs

October 13, 2016

Thursday October 13, 2016
1:00 PM EDT
Via the web.

As the popularity of biosimilars continues to grow in the United States, biosimilar and biologics manufacturers have begun testing the bounds of the BPCIA statute in district court litigation. In addition, biosimilar manufacturers have also turned to IPR proceedings to challenge patents covering biologic drugs.

Join Fish attorneys Chad Shear and Gwilym Attwell for our next installment of our biologics webinar series. This presentation will focus on recent developments, including:

  • Recent district court cases and their impact on the biosimilars industry
  • IPRs challenging biologic patents
  • Strategies for biologics litigation

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If you have an interest in biosimilars, life sciences, or Hatch-Waxman litigation, this complimentary webinar is for you. Fish & Richardson will apply for 1.0 hour of general CLE credit in most states. If you would like to receive CLE credit, register with your state bar information.

Speakers:
Chad Shear, Principal
Gwilym Attwell, Principal



Post-Grant for Practitioners: Inter Partes Review (IPR) of Design Patents

September 14, 2016

While inter partes review (IPR) petitions of design patents are rare (less than 1%), it is expected that the numbers will steadily increase with the growing popularity of design patents generally. Fish attorneys Jim Babineau (Austin) and Craig Deutsch (Twin Cities) discussed issues in the inter partes review (IPR) of design patents and the Patent Trial and Appeal Board’s (PTAB) procedures for challenging design patents. Jim and Craig reviewed:

  • Statistics and recent trends at the PTAB
  • Claim construction
  • Obviousness analysis applied to design patents

Speakers:
Jim Babineau, Principal
Craig Deutsch, Associate
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Post-Grant for Practitioners: Post-Grant Review (PGR) Proceedings are Gaining Momentum

August 10, 2016

Recent statistics from the USPTO show that still more post-grant review (PGR) proceedings have been filed. As more patents issue under the America Invents Act (AIA), are PGR proceedings a favorable option as a counterpart to inter partes review?

Post-grant review is available immediately after patent issuance and it is designed to allow proceedings to conclude quickly. Fish & Richardson attorneys Joshua Griswold and Dan Smith discussed the requirements for PGR and estoppel, and took a closer look at how practitioners are using PGR proceedings as part of their patent strategy. They also took a closer look at recent PGR filings and the first PGR decisions from the Patent Trial and Appeal Board, providing best practices and strategic considerations.

Speakers:
Joshua Griswold, Principal
Dan Smith, Associate
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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.

Post-Grant for Practitioners Webinar: Midyear Review of Decisions and Developments at the PTAB

July 13, 2016

On July 13th, we had a midyear review and discussion of the latest Patent Trial and Appeal Board decisions in 2016. Fish attorneys Dorothy Whelan and Stuart Nelson offered insights and best practices based on their experience, and projected what’s ahead for the second half of 2016. Topics included:

  • Recent cases the PTAB identified as precedential
  • Latest developments in biopharma IPRs

Speakers:
Dorothy Whelan, Principal, Co-Chair
Stuart Nelson, Associate
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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.

Post-Grant for Practitioners – Evidentiary Trends at the PTAB Part II: “Paper” Witness Testimony

June 8, 2016

Fish Principals John Adkisson (District Court trial lawyer experienced in PTAB Trials), Stephen Schaefer (PTAB practitioner), and Thomas Rozylowicz (PTAB practitioner), continued our recent discussion of evidentiary trends at the Patent Trial and Appeal Board (PTAB), focusing on “paper” witness testimony. Witness testimony in a PTAB trial is presented on the papers instead of through live witness testimony. Our speakers provided best practices and practical tips for post-grant practitioners to consider in light of this. Topics included:

  • How the PTAB treats issues of bias and credibility
  • Expert witness competence, and Daubert Standards in PTAB trials
  • Strategy considerations given witness testimony is on the papers
  • Exceptions when live testimony may be permitted

Speakers:
John Adkisson, Principal
Steve Schaefer, Principal
Thomas Rozylowicz, Principal
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 – Evidentiary Trends at the PTAB (Part 1)

May 11, 2016

Fish attorneys Thomas Rozylowicz, Stephen Schaefer, and David Holt discussed evidentiary trends at the Patent Trial and Appeal Board (PTAB) and provided practical insights for practitioners on how to prepare and submit evidence to support either a petitioner or patent owner position. Topics included:

  • Evidentiary objections – evidence weight and admissibility
  • Evidence strategy and PTAB evidence procedures
  • Timing of evidence submitted and limitations for both petitioners and patent owners

Speakers:
Thomas Rozylowicz, Principal
Steve Schaefer, Principal
David Holt, Associate
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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.

Post-Grant for Practitioners – Multiple Parties, Multiple Petitions Part II

April 13, 2016

We continued our discussion from March on multiple parties and multiple petitioners. Our speakers took a closer look at redundancy and 325(d) and how they influence strategy in post-grant proceedings. They addressed a number of hypothetical situations involving filings at the PTAB and address the issues that petitioners and patent owners face.

Speakers:
Karl Renner, Principal, Co-Chair
Thomas Rozylowicz, Principal
David Holt, Associate
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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.

Biosimilars & IPR

March 24, 2016

Last year, the FDA approved the first biosimilar drug under the Biologics Price Competition and Innovation Act of 2009 (BPCIA), and the courts have recently rendered some important statutory interpretations. This represents the dawn of a new era in the approval and marketing of biologic products. As the popularity of biosimilars grows, biosimilars manufacturers have turned to IPR proceedings to challenge patents covering biologic drugs.

Fish attorneys Dorothy Whelan and Brian Coggio presented for our third presentation in this series. (Replays of the first and second webinars are available here.) This presentation discussed recent developments, including:

  • A review of biosimilars IPR filings and PTAB decisions to date
  • Multiple filer/multiple petitions issues and related timing considerations
  • Tips for both challengers and patent owners

Download PDF version of the slides here.

Speakers:
Dorothy Whelan, Principal
Brian Coggio, Of Counsel



Post-Grant for Practitioners: Multiple Parties, Multiple Petitions – Multiple Practice Tips

March 9, 2016

Fish Principals Dorothy Whelan and Karl Renner discussed multiple parties and multiple petitions in post-grant proceedings, and offered practical tips for both patent owners and petitioners. To date, these issues have arisen primarily in the tech area. However, they will become increasingly important in the life sciences, particularly in biosimilars. Topics included:

  • Multiple parties filing a single petition vs. individual petitions
  • Real party in interest and privity issues
  • Joinder and consolidation issues
  • Timing issues where there are multiple potential filers
  • Redundancy when filing multiple petitions

Speakers:
Dorothy Whelan, Principal
Karl Renner, Principal
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.

Lessons from the First Wave of Post-Grant Appeals

February 10, 2016

2015 brought the first wave of Federal Circuit decisions in appeals from final written decisions in inter partes review and covered business method proceedings.  In its first 55 post-grant appeals, the Federal Circuit affirmed or dismissed 89%, with most being summary affirmances without opinion.

Fish Principals John Dragseth and Craig Countryman, discussed the Federal Circuit’s record on PTAB post-grant appeals and the fundamental legal issues that will impact post-grant cases in the future. Topics included:

  • Challenges to the PTAB’s decision to institute
  • Claim construction
  • Obviousness
  • Procedural issues

 

Speakers:
John Dragseth, Principal
Craig Countryman, Principal
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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 >

Post-Grant Year in Review

January 13, 2016

2015 was a busy year for Post-Grant proceedings at the PTO. Fish Principals and Post-Grant Co-Chairs, Karl Renner and Dorothy Whelan, discussed significant developments in IPR practice during the year, including:

  • AIA Patent Trials: The New Proposed Rules
  • Bass and Bio-Pharma Developments
  • Estoppel, Broadest Reasonable Interpretation, and Appeals of Institution Decisions
  • NPEs, Strong Patents Act & the Revised Innovation Act

Additional topics discussed were: the implications that these issues may have on your business and patent strategy and the issues to watch for in 2016.

Speakers:
Karl Renner, Principal
Dorothy Whelan, Principal
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.


CLICK HERE FOR THE 2015 WEBINAR SERIES


CLICK HERE FOR THE 2014 WEBINAR SERIES


CLICK HERE FOR THE 2013 WEBINAR SERIES


CLICK HERE FOR THE 2012 WEBINAR SERIES