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.
A three-judge panel of the Federal Circuit held last week in Arthrex v. Smith & Nephew that PTAB administrative patent judges (APJs) are “principal officers” who must be nominated by the President with the advice and consent of the Senate under the Appointments Clause. The decision effectively renders all prior PTAB panels unconstitutional and throws their rulings into doubt. However, the court remedied this constitutional defect by severing the federal protections in 35 U.S.C. 3(c) from APJs, establishing them as “inferior officers” not subject to the Appointments Clause. It remains to be seen how the Director of the USPTO will implement the court’s decision.
In this Post-Grant for Practitioners webinar, Fish Senior Principal John Dragseth, Principals and Post-Grant Practice Group Co-Chairs Karl Renner and Dorothy Whelan, and Principal Rob Courtney discuss the case’s potential impact on post-grant practice, including:
• What the Federal Circuit did
• What to expect from the USPTO
• What companies should do now
• What companies should do going forward
The Arthrex decision likely will affect a large number of pending post-grant cases and could potentially reshape the future of post-grant practice.
John Dragseth Karl Renner Dorothy Whelan Rob Courtney
Post-grant practitioners and their clients must abide by a multitude of ethical rules at the Patent Trial and Appeal Board (PTAB). In our latest Post-Grant for Practitioners webinar, “USPTO Ethics Rules at the PTAB,” Fish Principal Stuart Nelson and Associate Kim Leung discussed ethical requirements in general, ethical issues that are frequently on practitioners’ minds, and a few others that aren’t considered as often.
Recent Supreme Court decisions regarding intellectual property (IP) law have had a significant impact on IP holders, and the Federal Circuit continues to shape the evolving legal landscape. In this Fish Litigation Webinar, Principals John Dragseth, Lauren Degnan, and Rob Courtney discuss the impacts and implications of recent Federal Circuit and Supreme Court IP cases and notable anticipated opinions, including:
New Supreme Court precedent in Helsinn, Return Mail, and Brunetti
The Federal Circuit post-SAS
Celgene and its interaction with Oil States
Patent eligibility in view of Berkheimer/Aatrix, Athena, and more
Copyright and fair use in Google v. Oracle
Written description in Nalpropion
Agency discretion in Laerdal and BioDelivery
Anticipated opinions in Lucky Brand and Click-to-Call
The Federal Circuit has been busy in 2019. As of July 31 of the current fiscal year, the court docketed 570 appeals from the USPTO, an increase of 13.8% over the same period in 2018. Cases originating from the USPTO continue to make up the largest share of the court’s caseload, accounting for almost half of its docketed cases this year. The court has also recently issued several opinions that directly affect post-grant practice at the PTAB.
In this Post-Grant for Practitioners webinar, Fish Senior Principal John Dragseth and Associate Nitika Gupta Fiorella discuss recent PTAB cases from the Federal Circuit on hot-button issues and their impact on post-grant practice, including:
This webinar also includes a discussion of recent statistics and trends, procedural tips, and pending cases at both the Federal Circuit and Supreme Court.
On July 15, 2019, the USPTO published its second update to the AIA Trial Practice Guide. This update primarily incorporates decisions that the PTAB has designated as precedential since the first update in August 2018, and it covers a wide variety of topics ranging from the filing of a petition to the reopening of proceedings following remand from the Federal Circuit.
In this webinar, Fish Principal David Holt and Associate Kenneth Darby take a deep dive into these topics and more, including:
The PTAB recently designated two decisions as precedential that expanded the factors upon which it may rely when exercising its discretion to deny IPR petitions under §§ 314(a) and 325(d). In NHK Spring v. Intri-Plex, the PTAB held that the Board may consider the status of co-pending district court litigation when evaluating whether to institute IPR proceedings. In Valve Corp. v. Electronic Scripting Products, the PTAB held that the General Plastic factors permit the Board to deny follow-on petitions even when filed by different petitioners where the petitioners are closely related or similarly situated.
In this Post-Grant for Practitioners Webinar, Principal and Post-Grant Practice Co-Chair Karl Renner, Principal Joshua Griswold, and Associate Kenneth Darby discuss these cases and their implications, including:
In-depth analysis of the NHK and Valve decisions
Trends and takeaways from other recent § 314(a) discretionary denials
Strategic and tactical considerations for petitioners and patent owners
In April of 2018, the Supreme Court issued its much-anticipated decisions in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC and SAS Institute, Inc. v. Iancu, both of which have had significant impacts on post-grant practice. In Oil States, the Court upheld the constitutionality of IPR proceedings under the public rights doctrine. In SAS Institute, the Court ended the PTAB’s practice of partial institution, holding that it must institute IPR proceedings either on all of the challenged claims or none of the challenged claims.
At the one year anniversary of these decisions, Fish Principals Dorothy Whelan, Karl Renner, and Rob Courtney look back over the previous year and discuss how these cases have changed post-grant practice. Topics of discussion include:
The implications of SAS for post-grant estoppel (and beyond)
Lingering questions left unanswered by the “narrow” holding of Oil States
Strategic considerations for petitioners and patent owners
Inter partes review (IPR) proceedings have become an attractive option for generic drug manufacturers wishing to utilize the PTAB’s streamlined patent validity decision process while also reaping the benefits of the Hatch-Waxman Act. However, many believe that allowing generics to apply both of these strategies disrupts the balance between encouraging pharmaceutical innovation and lowering drug prices that the Hatch-Waxman Act intended to preserve. This debate has escalated since the Hatch-Waxman Integrity Act of 2018, which seeks to force generics to choose between the Hatch-Waxman framework and IPR.
In this webinar, Principal and Post-Grant Practice Co-Chair Dorothy Whelan and Principal Chad Shear address these complex issues and more, including:
IPR basics and how they apply to Hatch-Waxman cases
The “who, when, and where” of IPR filings and the decisions that go into filing
Recent decisions and arguments impacting Hatch-Waxman and IPR strategy
The U.S. biologics and biosimilars markets evolved rapidly in 2018. In this webinar, life sciences attorneys John Adkisson, Tasha Francis, and Jenny Shmuel review the U.S. market for biosimilar products and provide insights into:
Which biosimilars have been approved and launched
Recent regulatory and legislative actions impacting the biosimilars market
Select court cases and settlements
Recent trends in IPR filings in the biosimilars space
2018 was a watershed year for PTAB practitioners. The Supreme Court of the United States (SCOTUS) and the Court of Appeals for the Federal Circuit (CAFC) issued several important decisions relating to the constitutionality of post-grant practice itself, RPI/privity, partial institution decisions, and printed publications. In addition, the PTAB adopted new claim construction rules replacing BRI with the Philips standard, and proposed a new pilot procedure for claim amendments. Changes to the trial practice guide included patent owner surreplies as a matter of right and institution standards governing multiple petitions/petitioners.
In this webinar, Fish Principals and Post-Grant Practice Co-Chairs Dorothy Whelan and Karl Renner took a closer look at these significant developments and examined their impact on practitioners. Dorothy and Karl discussed:
PTAB Statistics and Trends
Decisions and Case Law Developments at the PTAB, CAFC, and SCOTUS, including:
Oil States Energy Services, LLC v. Greene’s Energy Group, LLC
SAS Institute, Inc. v. Iancu
Applications in Internet Time, LLC v. RPX Corp.
Click-to-Call Technologies, LP v. Ingenio, Inc.
General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha (Board Discretion: 314, 325)