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.
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?
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:
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