Post-Grant Practice Overview

Post-grant proceedings, often referred to as “patent office litigation”, involve trials before the Patent Trial and Appeal Board (PTAB) governed by USPTO rules. As such, these proceedings sit squarely at the intersection of Fish & Richardson’s #1 ranked patent litigation and #1 ranked patent prosecution...

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USPTO Proposes New Amendment Procedure for America Invents Act

by Andrew Dommer Director Iancu proposed a new amendment procedure on Thursday, October 25. The Director indicates that his proposed changes to the existing amendment practice were intended to avail patent owners of a more viable option for amending claims in Inter Partes Reviews and other...

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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...

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Karl Renner Quoted in Managing Intellectual Property Article “Ruschke Leaves ‘Big Shoes to Fill’ for Next PTAB Chief Judge”

Karl Renner, Principal and Post-Grant Practice Co-Chair, was quoted in Managing Intellectual Property's article “Ruschke Leaves 'Big Shoes to Fill' for Next PTAB Chief Judge" on September 10, 2018. Karl Renner, principal at Fish & Richardson, states: "David's successor is going to have big shoes to fill....

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Fed. Circ. Redefines “Real Party in Interest” in USPTO Reviews

By Craig Countryman. This article originally appeared at Law360. The Federal Circuit’s decision in Applications in Internet Time LLC v. RPX Corporation[1] creates new hurdles for companies that ask the U.S. Patent and Trademark Office to institute an inter partes or post-grant review. The decision expansively interprets the term “real party...

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PTAB Publishes Update to AIA Trial Practice Guide

From the USPTO: The PTAB has published an update to the AIA Trial Practice Guide (TPG) containing additional guidance about trial practice before the Board. The USPTO published the original TPG in August 2012, concurrent with the promulgation of the AIA Trial Rules. The TPG was intended...

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Fish Post-Grant Report 2017

Fish’s 2017 Post-Grant Report examines significant case law and decisions before the PTAB and Federal Circuit, as well as trends and statistics from the past year....

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Fish Post-Grant Report 2016

Fish & Richardson’s 2016 Post-Grant Practice Report takes a closer look at the key issues from the past year in post-grant practice, with particular focus on inter partes review (IPR)....

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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.   ...

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Fish Post-Grant Radio: Episode #2: Kevin Jakel

This episode of Fish Post-Grant Radio features Kevin Jakel, Founder and CEO of UnifiedPatents, who talks about his experience with post-grant proceedings and IPRs. Kevin has more than 12 years of intellectual property experience, and most recently served as Intuit’s Head of IP Litigation.   ...

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Fish Post-Grant Report 2015

Fish & Richardson’s 2015 Post-Grant Practice Report takes a closer look at the key issues from the past year in post-grant practice, with particular focus on inter partes review (IPR)....

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