Post-Grant Archives - Fish & Richardson’s Post-Grant Practice

Fish & Richardson’s Post-Grant PracticePosts tagged Post-Grant

October 31, 2018 In Uncategorized By James Cosgrove

Supreme Court Grants Return Mail’s Petition for Certiorari in Return Mail, Inc. v. United States Postal Serv.

Supreme Court Docket No. 17-1594 Appeal of Return Mail, Inc. v. United States Postal Serv., 868 F.3d 1350 (Fed. Cir. Aug. 28, 2017) by Rick Bisenius The Supreme Court has granted, in part, Return Mail’s Petition for Writ of Certiorari requesting review of the Federal Circuit’s affirmance of...

October 30, 2018 In Uncategorized By James Cosgrove

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...

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...

September 24, 2018 In Uncategorized By James Cosgrove

The Center for American and International Law (CAIL) 56th Annual Conference on Intellectual Property Law

Monday, November 12th, 2018 Dorothy Whelan, a principal in Fish’s Twin Cities office and the co-chair of the firm’s Post-Grant practice, will be a panelist at The Center for American and International Law’s (CAIL) 56th Annual Conference on Intellectual Property Law, November 12-13, in Plano, TX. The two-day CLE...

September 14, 2018 In Uncategorized By James Cosgrove

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....

September 14, 2018 In Uncategorized By James Cosgrove

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...

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....

August 10, 2018 In Uncategorized By James Cosgrove

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...

August 10, 2018 In Uncategorized By James Cosgrove

Fish & Richardson Ranked Top Firm for Petitioners at the PTAB by Managing Intellectual Property

Fish & Richardson is pleased to announce that we have been ranked as the most active firm for petitioners at the PTAB for the first half of 2018 by Managing Intellectual Property. Between January 1 and June 30, 2018, Fish handled 79 petitions at the...

June 13, 2018 In Uncategorized By James Cosgrove

Fish Obtains First PGR Reversal at Federal Circuit in Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc.

Fish & Richardson has obtained the first appellate reversal of a Post-Grant Review (PGR) proceeding at the United States Court of Appeals for the Federal Circuit since the proceedings were first implemented in 2012. Fish’s client, Altaire Pharmaceuticals, appealed a decision of the Patent Trial and...

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. ...

June 20, 2016 In Uncategorized By Aaron Kobilis

Fish Post-Grant Radio: Episode #3: Tom Rozylowicz

This episode of Fish Post-Grant Radio features Tom Rozylowicz, Fish Principal and a member of our Post-Grant Practice, who talks about the Patent Trial and Appeal Board’s recent “Motion to Amend” Study. ...

May 10, 2016 In Uncategorized By Aaron Kobilis

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. ...