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...
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...
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...
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...
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...
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....
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...
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....
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...
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...
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...
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....
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)....
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. ...
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. ...
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. ...
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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