inter partes review Archives - Fish & Richardson’s Post-Grant Practice

March 29, 2019 In Uncategorized By James Cosgrove

Now More than Ever, Petitioners and Patent Owners Must Consider the Impact of Amendments in IPR

by Steven R. Katz A patent does not ordinarily change claim scope right before trial. The patent claims at the start of case are the claims that must be proven invalid or shown not to be infringed. However, if a defendant places the patent into inter...

September 24, 2018 In Uncategorized By James Cosgrove

Class Action Suit Argues that IPR is an Unconstitutional Taking

by Kenneth Darby In declaring that the inter partes review (IPR) process did not violate Article III and the Seventh Amendment, Justice Thomas’ majority opinion in Oil States emphasized the narrowness of its holding, stating expressly that “[the] decision should not be misconstrued as suggesting that...

August 17, 2018 In Uncategorized By James Cosgrove

En Banc Federal Circuit: Patentee’s Service of Complaint, Followed by Voluntary Dismissal, Triggers IPR Clock

Yesterday the en banc Federal Circuit held that a patentee’s initial service of a complaint triggers the one-year period for filing of an IPR petition—even if the complaint was voluntarily dismissed without prejudice to refiling. Click-to-Call Technologies, LP v. Ingenio, Inc., __ F.3d __, 2018 WL 3893119 (Fed. Cir....

October 26, 2016 In Uncategorized By Aaron Kobilis

Post-Grant for Practitioners: Significant PTAB Decisions in BioPharma

The number of IPR petitions filed against biopharma patents at the Patent Trial and Appeal Board continues to steadily increase. Join us for a discussion on Significant PTAB Decisions in BioPharma on November 9, 2016. Fish's Dorothy Whelan and Tasha Francis provided an update on the...

August 5, 2016 In Uncategorized By Aaron Kobilis

Fish Post-Grant Radio: Episode #4: Mike Jay

Host Stuart Nelson interviews Mike Jay, a partner with Boies, Schiller, and Flexner, on how litigators view IPR proceedings and the challenges and benefits of working with post-grant counsel from a different firm. ...

April 19, 2016 In Uncategorized By Aaron Kobilis

Fish Post-Grant Radio: Episode #1: Dorothy Whelan

This episode of Fish Post-Grant Radio features Dorothy Whelan, Principal and Co-Chair of Fish’s Post-Grant practice group. As the co-chair of one of the most active post-grant practices in the United States, Dorothy discusses emerging trends in challenging and defending life sciences, pharmaceutical, and biosimilar...

January 7, 2015 In Uncategorized By Aaron Kobilis

1st-Ever AIA Post-Grant Review Ends In Settlement

Written by Thomas Rozylowicz and Gwilym Attwell. The recent settlement of the Rainbow Loom Post Grant Review proceeding(PGR2014-00008) represents an interesting opportunity to consider whether PGR represents a viable opportunity under limited circumstances. To date, the widespread comfort of the bar with PTAB proceedings has led to...