Resources

Webinars

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

Fish & Richardson is one of the most active firms handling post-grant matters, and in 2012, kicked-off a webinar series designed to share practice tips, nuances, observations, and strategy. Recordings for previous webinars in this series are included below, with the most recent appearing first.

WEBINAR ARCHIVES:   2017  |  2016  |  2015  |  2014  |  2013  |  2012

2018 Webinar Series

July 11, 2018

Post-Grant for Practitioners: BioPharma Patents at the PTAB

July 11, 2018, 1:00-2:00PM ET

In 2017, 239 IPR petitions relating to biopharma patents were filed-making it the most active year for this technology center. Join us on July 11 as Fish’s Dorothy Whelan and Tasha Francis provide an update on biopharma patents at the PTAB. They will discuss PTAB statistics, recent decisions, and the implications of these decisions on the industry and the future impact on biopharma patents.

To register, click here.

Speakers:
Dorothy Whelan, Principal, Post-Grant Practice Co-Chair
Tasha Francis, Associate



May 9, 2018

The Two Sides of the Coin in Post-Grant Practice: Petitioner and Patent Owner Estoppel

On Wednesday, May 9, we hosted Part II of our webinar, Choosing Whether to Challenge a Patent at the PTAB – Has Shaw Watered Down Petitioner Estoppel? Fish attorneys Karl Renner, Gwilym Attwell, and Dan Smith continued their discussion of estoppel in post-grant proceedings. They reviewed recent district court and PTAB decisions as well as decisions from the Patent Office implicating petitioner and patent owner estoppel, and discussed techniques to mitigate the risks of estoppel.

Speakers:
Karl Renner, Principal, Post-Grant Practice Co-Chair
Gwilym Attwell, Principal
Dan Smith, Associate
April 26, 2018

Looking Ahead: Practical Implications of Oil States Energy Services and SAS Institute

On April 24th, the Supreme Court of the United States released two much anticipated opinions relating to Oil States Energy Services, LLC v. Greene’s Energy Group, LLC and SAS Institute Inc. v. Iancu. In this webinar, Fish principals Dorothy WhelanKarl Renner, John Dragseth, and Rob Courtney reviewed the opinions and discussed practical implications for each:

Oil States Energy Services, LLC v. Greene’s Energy Group, LLC

  • Does the Supreme Court’s blessing of IPR proceedings portend anything for the future of the USPTO?
  • Is this holding just “business as usual” or can unusual results be pulled out of the opinion?
  • What are the biggest remaining administrative law issues?

SAS Institute Inc. v. Iancu

  • The Supreme Court says the PTAB must consider all challenged claims when instituting an IPR.
  • What does this mean for already-filed IPR proceedings?
  • How does this holding affect institution strategies for Petitioners and Patent Owners (if it affects them at all)?
  • Can the PTAB work around this decision?
  • What does the close 5-4 decision tell us about future PTO appeals?

Speakers:
Dorothy Whelan, Principal & Post-Grant Practice Co-Chair
Karl Renner, Principal & Post-Grant Practice Co-Chair
John Dragseth, Senior Principal
Rob Courtney, Principal
February 28, 2018

Post-Grant Appeals at the Federal Circuit

Since 2015, the Federal Circuit has decided over 290 PTAB appeals from inter partes review and covered business methods proceedings. On Wednesday, March 14, Fish attorneys John Dragseth and Oliver Richards discussed post-grant appeals at the Federal Circuit, including procedural issues that will impact future cases. Additional topics included:

  • Recent statistics and trends
  • Case law developments at the PTAB and Federal Circuit
  • Notable decisions including Aqua Products, Inc. v. Matal, Wi-Fi One, LLC v. Broadcom Corp., EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc.
  • Best practices and guidance for practicing before the Federal Circuit

Speakers:
John Dragseth, Principal
Oliver Richards, Associate
January 10, 2018

2017 Post-Grant Year in Review

Coupled with groundbreaking arguments and precedential opinions, 2017 was the busiest year at the Patent Trial and Appeal Board (PTAB). The PTAB also continues to be the forum of choice for challenging the validity of patent claims. Fish Principals and Post-Grant Practice Co-Chairs Dorothy Whelan and Karl Renner looked back on significant developments from the past year. The discussion included:

  • PTAB statistics and trends
  • Decisions and case law developments at the PTAB, Supreme Court of the United States (SCOTUS), and Court of Appeals for the Federal Circuit (CAFC) including:
    • Oil States Energy Services, LLC v. Greene’s Energy Group, LLC; SAS Institute Inc. v. Lee; Aqua Products, Inc. v. Matal; and General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha
    • Tribal and State Sovereign Immunity
  • Procedures for dealing with remands from the CAFC
  • Developments in biopharma IPRs
  • What to watch for in 2018

Speakers:
Karl Renner, Principal, Co-Chair
Dorothy Whelan, Principal, Co-Chair

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