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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2022 Webinar Series

March 9, 2022

Webinar | POPR & Non-Institutions

IPR Institution: Petition Pitfalls and Prevailing POPRs: An Empirical Investigation

Institution decisions, which are not subject to appellate review, have emerged as one of the most contentious issues in post-grant practice.  A review of decisions denying institution, both on the merits and based on discretion, offer practitioners a glimpse into the inner workings of the PTAB and an opportunity to learn from past mistakes.

On Wednesday, March 9, please join Fish attorneys Steven Katz and Ryan O’Connor for “IPR Institution: Petition Pitfalls and Prevailing POPRs: An Empirical Investigation.” This presentation will examine proceedings where IPR petitions were not instituted and provide guidance on how petitioners can avoid non-institution and patent owners can maximize their chances of success when drafting their preliminary responses. They will cover:

  • Statistics on IPR institution decisions
  • Common pitfalls that petitioners should avoid and that patent owners may exploit
  • Practice tips for practitioners
Steven Katz
Ryan O'Connor
January 31, 2022

Webinar | Post-Grant for Practitioners 2021 Year in Review

The Patent Trial and Appeal Board in 2021 continues to hold its place among the busiest and most important forums for patent disputes nationwide even with a slight decline in filings from 2020. There were a total of 1,403 filings in FY 2021, compared to 1,514 in FY 2020. The larger story this year, however, was Arthrex when the Supreme Court ruled in June that the PTAB would survive its constitutional challenge. With a major constitutional defect now cured, attention has returned to other long-standing issues at the PTAB, particularly discretionary denials.

Fish principals and post-grant practice co-chairs Karl Renner and Dorothy Whelan look back on a banner year for post-grant practice, including:

  • The Arthrex decision and related changes in PTAB procedures, including petitions for Director review
  • Discretionary denials (the evolution of § 314 jurisprudence, including stipulations and ITC proceedings)
  • Notable PTAB decisions and appeals
  • Legislative developments
Karl Renner
Dorothy Whelan