Webinars 2021

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.

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2021 Webinar Series

November 10, 2021

Post-Grant for Practitioners Webinar | Post-Grant Appeals

While Arthrex largely dominated post-grant headlines this year, numerous other appellate decisions have come out that have also impacted the practice. Attorneys John Dragseth and Nitika Gupta Fiorella discuss hot-button cases touching on the substance and process of PTAB appeals at the Federal Circuit – and provide practical insights for your day-to-day practice.

Topics include:

  • What is the fallout from Arthrex and does it matter for you?
  • How do various estoppels coming into and out of post-grant proceedings affect strategy and tactics in the PTO and district court?
  • What is the latest on challenging denials of institution – are there any options left?
  • Is anything helpful happening in the law of obviousness? What strategies can you use for §103?
John Dragseth
Nitika Gupta Fiorella
June 22, 2021

Post-Grant for Practitioners Webinar | After Arthrex: What the Supreme Court’s Decision Means

On June 21, the Supreme Court issued its long-awaited opinion in U.S. v. Arthrex, holding that the Patent and Trademark Office (PTO) Director needs to have the ability to revise decisions by Administrative Patent Judges (APJs) because they are not nominated and confirmed, and the Director is. The Court reasoned that adjudication of private property rights (i.e., patent validity) is of such a nature that the Appointments Clause requires it to be vested in someone directly accountable to the President and the people. So the Court held that the Patent Act should be read to give the Director such authority and discretion, and remanded the case for the Director to implement the holding.


So what does this ruling mean for post-grant practitioners?

In this webinar, Fish attorneys Lauren DegnanJohn Dragseth, and Dorothy Whelan lead a lively conversation about the possible repercussions of the Arthrex ruling.

Topics that were covered include:

  • What’s going to happen to Arthrex on remand?
  • What sorts of things might the USPTO do to address the opinion?
  • What does it mean for parties who have preserved this issue and for those who have not?
  • What does it mean for someone currently in an IPR?
  • What does it mean for parties to an IPR in the near future?
  • Does it have any effect on parallel litigation?

You can read a summary of the Supreme Court’s decision and about practical considerations and tips that may arise because of Arthrex.

Lauren Degnan
John Dragseth
Dorothy Whelan
June 22, 2021

Post-Grant for Practitioners Webinar | Post-Grant Mid-Year Review

In this webinar, Fish attorneys Rob CourtneyLauren Degnan, and John Dragseth provide a mid-year review of current developments in post-grant practice. Topics that were covered include:

  • A brief update on Section 101
  • What happens post-Arthrex?
  • Issues surrounding review of denials of institution
  • Issues surrounding standing of petitioners to appeal
  • IPR procedure
Lauren Degnan
John Dragseth
Rob Courtney
April 8, 2021

Post-Grant for Practitioners Webinar | Drafting Patent Applications to Survive IPR

The Patent Trial and Appeal Board (PTAB) is the most popular venue nationwide for patent disputes, surpassing even the Eastern District of Texas. With the explosion in popularity of post-grant proceedings, particularly inter partes review (IPR), post-grant considerations are now an integral component any thoughtful patent strategy. For patent owners, that strategy begins at the drafting stage by crafting claims that can survive IPR challenges.


In this webinar, Fish attorneys Kenneth Darby and David Holt discuss tips and tricks for drafting IPR-resistant patents, including:

  • The structural hallmarks of a strong claim set;
  • How to use dependent claims to your advantage;
  • The role of means-plus-function claims;
  • Building support for claim interpretation;
  • Seeding an invention narrative; and
  • The importance of figures

Click the link to download a copy of the webinar slides.

Kenneth Darby
David Holt

January 14, 2021

Post-Grant: 2020 Year in Review

Post-grant proceedings continue to have a significant impact on IP litigation and strategy in 2020. Despite a global pandemic and the closure of the USPTO offices, IPR filings continued at a brisk pace, reaching a total of 1,429 petitions in FY 2020, compared to 1,394 in FY 2019. The courts were also busy, with decisions touching on discretionary denials, standing, and appellate review of PTAB decisions, as well as the looming constitutional challenge to the appointment of PTAB judges that is on the Supreme Court’s docket.

In this webinar, Fish attorneys and Post-Grant Practice Co-Chairs Karl Renner and Dorothy Whelan discuss the most important post-grant developments of 2020, including:

  • Discretionary denials in light of Fintiv, the evolution of 314 jurisprudence, and challenges to the NHK-Fintiv rule
  • Appeals from institution decisions in light of Thryv and Cisco Systems
  • Appeals from Final Written Decisions in light of Argentum 
  • Appeals to the Supreme Court, including SCOTUS’ decision to hear Arthrex and what it could mean for the future of the PTAB
  • The PTAB’s nimble response to the COVID-19 crisis

Click the link to download a copy of the webinar slides.

Read the 2020 Post-Grant Report here.

Speakers: Karl Renner, Dorothy Whelan

Karl Renner
Dorothy Whelan