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.

WEBINAR ARCHIVES:   2018  |  2017  |  2016  |  2015  |  2014  |  2013  |  2012

2019 Webinar Series

May 8, 2019

Post-Grant for Practitioners – SAS and Oil States: One Year Later

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
Dorothy Whelan
Karl Renner
Rob Courtney
March 27, 2019

Hatch-Waxman and IPR Strategy

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
Dorothy Whelan
Chad Shear
January 17, 2019

2018 Biosimilars – A Year in Review

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
  • What to look forward to in 2019
John Adkisson
Tasha Francis
Jenny Shmuel
January 9, 2019

Post-Grant for Practitioners: 2018 Year in Review

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)
    • GoPro, Inc. v. Contour IP Holding, LLC
  • What to Watch For in 2019
Karl Renner
Dorothy Whelan

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