Post-Grant for Practitioners: A bi-monthly series of webinars focusing on developments in post-grant proceedings and related practice tips.
Fish & Richardson is one of the most active firms handling post-grant matters, and in 2012, kicked-off a webinar series designed to share practice tips, nuances, observations, and strategy. Recordings for previous webinars in this series are included below, with the most recent appearing first.
In October 2017, the Federal Circuit released its much-anticipated Aqua Products decision addressing amendment practice before the PTAB. Unfortunately for practitioners, the Federal Circuit’s decision didn’t resolve many of the big questions surrounding amendments but instead asked the PTO to develop more formal rules for patentees who want to amend claims during IPR. Join Fish attorneys Karl Renner, Josh Griswold, and Oliver Richards, as they discuss what guidance we can glean from the Federal Circuit’s Aqua Products decision and what happens next. The discussion includes the following topics:
What to expect at the Federal Circuit on appeals involving motions to amend
PTAB trends before and after Aqua Products
Best practices for motions to amend for both petitioners and patent owners
Recent Supreme Court decisions on intellectual property law have changed the world for intellectual property holders, and the evolving post-grant landscape continues to be shaped by the Federal Circuit. Fish attorneys Lauren Degnan and John Dragseth discussed the possible consequences of recent IP cases including:
TC Heartland – how is this critical venue decision affecting where patent cases are filed, and how are parties and courts working around it?
Halo – one year later, what has been the practical effect of loosening the standard for damage enhancement?
Matal v. Tam – Is this a one-hit wonder, or will it have broader impact at the PTO and in the market?
Lexmark – what does this international exhaustion case mean in the real-world marketplace for patentees and their competitors?
Sandoz v. Amgen – what does the future look like for biologics disputes?
Post-Grant Due Process – we will discuss the various Federal Circuit decisions that impose limits and requirements for post-grant proceedings, and the practical results of those decisions and strategies that can take advantage of the decisions.
Section 101 – without beating a tired horse, we will fit the last year of decisions into the “framework” already created by the courts.
We also previewed the pending cases relating to constitutionality of post-grant proceedings (Oil States), reviewability of post-grant institution decisions (Wi-Fi One), and procedures for amending claims in an IPR (In re Aqua).
On Wednesday, August 9, we hosted a Post-Grant webinar: Choosing Whether to Challenge a Patent at the PTAB — Has Shaw Watered Down Petitioner Estoppel? In this webinar, Fish principals Karl Renner and Gwilym Attwell explored the implications of the Federal Circuit Shaw decision by looking at recent district court and PTAB decisions addressing petitioner estoppel, while also discussing techniques to mitigate the risks of potential estoppel as well as implications for parties considering a Post-Grant Review challenge.
To download the PDF slides of this presentation, click here.
At the Patent Trial and Appeal Board (PTAB) there are a number of ethical obligations for both parties and counsel in post-grant proceedings. In our webinar, Ethical Issues at the PTAB, Dorothy Whelan and Stuart Nelson provided an overview of the requirements, including:
The PTAB’s rules of conduct
Recent cases assessing allegations of misconduct and sanctions
They also discussed recent PTAB and Federal Circuit decisions of interest to practitioners.
More than 150 PTAB appeals have been decided by the Federal Circuit since 2012. Fish Principals John Dragseth and Rob Courtney discussed recent PTAB cases on appeal at the Federal Circuit and the impact of those decisions on post-grant practice. Additional topics included:
Recent statistics and trends
Case law developments at the PTAB and Federal Circuit
Notable decisions, including Shaw
Best practices and guidance for practicing before the Federal Circuit
To download the PDF presentation, please click here.
In 2016, the Patent Trial and Appeal Board (PTAB) was again a forum of choice for challenging patentability of claims. In fact, it currently tops the Eastern District of Texas as the #1 venue for patent disputes in 2016. Fish Principals and Post-Grant Practice Co-Chairs, Karl Renner and Dorothy Whelan, took a look back on significant developments from the past year. The discussion included:
PTAB statistics and trends
New rules for post-grant proceedings
Developments in biopharma IPRs
Decisions and case law developments at the PTAB and Federal Circuit