Post-Grant for Practitioners: A bi-monthly series of webinars focusing on developments in post-grant proceedings and related practice tips.
Fish & Richardson is the most active firm in post-grant proceedings at the PTAB. In 2012, we 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.
The Federal Circuit issued two landmark decisions over the past several months that have changed the landscape for determining RPIs and parties in privity to a PTAB petitioner. Applications in Internet Time, LLC v. RPX Corp. (“AIT“) and Worlds Inc. v. Bungie, Inc. (“Worlds“) have reinforced the notion that the burden of persuasion remains on the petitioner to prove that it is not in privity with an estopped party and that there are no unnamed RPIs. In AIT, the Federal Circuit indicated that the Board must look beyond express assertions made by the petitioner and consider the entirety of the evidentiary record in assessing satisfaction of that burden. In Worlds, the Federal Circuit clarified that the burden of persuasion is initially satisfied by petitioner designation of RPI and certification of no estoppel in its petition. However, the petitioner may have to do more to carry its burden if confronted with an evidence-based challenge by the patent owner to its RPI designation. In addition to informing the Board of the proper framework for analyzing the RPI/privity issue, AIT and Worlds have also arguably lowered the bar for what types of relationships might lead to a finding of privity.
In this webinar, Fish attorneys Karl Renner, Rob Devoto, and David Holt explore these developments and what petitioners and patent owners should know with regard to these thorny issues.
Karl Renner, Principal & Post-Grant Practice Co-Chair, Fish & Richardson
Rob Devoto, Principal, Fish & Richardson
David Holt, Principal, Fish & Richardson
In 2017, 239 IPR petitions relating to biopharma patents were filed-making it the most active year for this technology center. In “BioPharma Patents at the PTAB,” Fish’s Dorothy Whelan and Tasha Francis provide an update on biopharma patents at the PTAB. In it, they discuss PTAB statistics, recent decisions, and the implications of these decisions on the industry and the future impact on biopharma patents.
On Wednesday, May 9, we hosted Part II of our webinar, Choosing Whether to Challenge a Patent at the PTAB – Has Shaw Watered Down Petitioner Estoppel? Fish attorneys Karl Renner, Gwilym Attwell, and Dan Smith continued their discussion of estoppel in post-grant proceedings. They reviewed recent district court and PTAB decisions as well as decisions from the Patent Office implicating petitioner and patent owner estoppel, and discussed techniques to mitigate the risks of estoppel.
On April 24th, the Supreme Court of the United States released two much anticipated opinions relating to Oil States Energy Services, LLC v. Greene’s Energy Group, LLC and SAS Institute Inc. v. Iancu. In this webinar, Fish principals Dorothy Whelan, Karl Renner, John Dragseth, and Rob Courtney reviewed the opinions and discussed practical implications for each:
Oil States Energy Services, LLC v. Greene’s Energy Group, LLC
Does the Supreme Court’s blessing of IPR proceedings portend anything for the future of the USPTO?
Is this holding just “business as usual” or can unusual results be pulled out of the opinion?
What are the biggest remaining administrative law issues?
SAS Institute Inc. v. Iancu
The Supreme Court says the PTAB must consider all challenged claims when instituting an IPR.
What does this mean for already-filed IPR proceedings?
How does this holding affect institution strategies for Petitioners and Patent Owners (if it affects them at all)?
Can the PTAB work around this decision?
What does the close 5-4 decision tell us about future PTO appeals?
Since 2015, the Federal Circuit has decided over 290 PTAB appeals from inter partes review and covered business methods proceedings. On Wednesday, March 14, Fish attorneys John Dragseth and Oliver Richards discussed post-grant appeals at the Federal Circuit, including procedural issues that will impact future cases. Additional topics included:
Recent statistics and trends
Case law developments at the PTAB and Federal Circuit
Notable decisions including Aqua Products, Inc. v. Matal, Wi-Fi One, LLC v. Broadcom Corp., EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc.
Best practices and guidance for practicing before the Federal Circuit
The biologics and biosimilars markets evolved rapidly in 2017. Life sciences attorneys John Adkisson, Tasha Francis, and Jenny Shmuel reviewed the U.S. market for biosimilar products and provided insights into:
Holdings and implications of:
This year’s Amgen v. Sandoz opinion from the Supreme Court;
Select District Court cases; and
Recent Federal Circuit cases of note, including:
Amgen v. Hospira
Amgen v. Apotex
Amgen v. Sandoz (remand)
Which biosimilars have been approved and launched.
Recent trends in IPR filings in the biosimilars space.
Statistics regarding the number of biosimilar applications under review by the FDA, and the average time to approval.
This complimentary webinar is designed for individuals who are interested in life sciences, pharmaceutical, and biosimilars legal issues.
To download the PDF slides of this presentation, click here.
Coupled with groundbreaking arguments and precedential opinions, 2017 was the busiest year at the Patent Trial and Appeal Board (PTAB). The PTAB also continues to be the forum of choice for challenging the validity of patent claims. Fish Principals and Post-Grant Practice Co-Chairs Dorothy Whelan and Karl Renner looked back on significant developments from the past year. The discussion included:
PTAB statistics and trends
Decisions and case law developments at the PTAB, Supreme Court of the United States (SCOTUS), and Court of Appeals for the Federal Circuit (CAFC) including:
Oil States Energy Services, LLC v. Greene’s Energy Group, LLC; SAS Institute Inc. v. Lee; Aqua Products, Inc. v. Matal; and General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha