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News & Events

News

April 11, 2014

Fish’s Post-Grant Co-Chairs to Speak at USPTO’s PTAB AIA Trial Roundtables

Fish post-grant practice co-chairs, Dorothy Whelan and Karl Renner, will speak at 2 of the upcoming PTAB AIA Trial Roundtables over the coming months. These sessions are described by the USPTO as:

The Patent Trial and Appeal Board of the United States Patent and Trademark Office is hosting roundtables to share information about the new AIA trials (i.e., inter partes reviews, post grant reviews, covered business method reviews, and derivations) including statistics, lessons learned, and techniques for successful motions practice. The Board is interested in receiving feedback about the trials and will feature a panel discussion to elicit public input. At each roundtable, at least five administrative patent judges will participate and be available for questions and conversation.

Dorothy Whelan will participate in the Chicago roundtable on April 22, and Karl Renner will participate in the Detroit roundtable on April 24.

Click “Read more” for more information on each of the scheduled roundtables, or visit the USPTO’s website by clicking here.

March 17, 2014

Fish & Richardson Achieves Three Inter Partes Review Victories for Micron Technology Against the University of Illinois’ Semiconductor Patents

PTAB finds all three University patents unpatentable and cancels all claims

FOR IMMEDIATE RELEASE

Washington, D.C., March 17, 2014 – Fish & Richardson announced today that it has achieved complete victories in three inter partes reviews (IPRs) filed against three University of Illinois patents on behalf of Micron Technology, Inc.  The Patent Trial and Appeal Board (PTAB) held each claim of the University of Illinois’ semiconductor patents unpatentable, and as a result ordered each claim cancelled.  The PTAB also found in Micron’s favor on every instituted ground of rejection, including a four-way obviousness rejection of one of the claims in a challenged patent.

The case dates back to December 2011, when the University of Illinois—at the time, an academic partner with Micron—sued its partner in the U.S. District Court for the Central District of Illinois.  The complaint alleged patent infringement of three patents—naming Drs. Joseph Lyding and Karl Hess as inventors—that pertain to the use of deuterium in the fabrication of semiconductor devices.  In August 2012, the court granted Micron’s request for a stay of litigation in anticipation of filing IPR petitions under the new America Invents Act law, which went into effect in September 2012.

Fish filed Micron’s three IPRs against the University patents on October 2, 2012, which were among the first petitions filed under the new post-grant review procedures—and the first filed by Fish on behalf of a client.

February 18, 2014

Settlement Doesn’t Guarantee End Of Post-Grant Proceeding

This article first appeared in Law360 on December 18th, 2013, and is available for download in full.
Written by David Holt and Karl Renner.

Recent Patent Trial and Appeal Board rulings should lead patent owners involved in a post-grant proceeding to be even more careful when considering settlement offers.

Unlike previous re-examination proceedings before the U.S. Patent and Trademark Office, the America Invents Act allows for termination in the event of settlement of newly created post-grant proceedings. See 35 U.S.C. §§ 317(a), 327(a). As a consequence, just 16 months since these proceedings started, the PTAB is encountering an increasing number of joint motions to terminate the proceedings.

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