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IP Updates

Post-Grant for Practitioners

February 13, 2013

IP Updates

Post-Grant for Practitioners

February 13, 2013

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A monthly series of webinars focusing on developments in post-grant proceedings and related practice tips.

Post-Grant for Practitioners: A monthly series of webinars focusing on developments in post-grant proceedings and related practice tips.

Since September 16, 2012, patent practitioners have been paying close attention to post-grant proceedings – methods of challenging patent validity at the United States Patent and Trademark Office. Fish & Richardson is one of the most active firms in filing and advising on post-grant matters, and on February 13, 2013, kicked-off a monthly webinar series designed to share practice tips, nuances, observations, and strategy.

 

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Part VI: Inter Partes Review- Claim Construction and Patent Owner Preliminary Response
Wednesday, July 10, 2013

In Part VI of our series, the co-chairs of Fish & Richardson’s post-grant practice focused on the topics of claim construction in IPR petitions and the content of the patent owner’s preliminary response. They reviewed recent PTAB decisions related to both of these topics and proposed practice tips based upon these decisions and their own recent experiences.

Speakers:
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities

 

Click here to view a replay of the webinar
Click here to download the webinar slides

 

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Part V: How the Use of Discovery is Evolving in Inter Partes Review Proceedings
Wednesday, June 12, 2013

During this seminar, we will provide an overview of the discovery rules governing Inter Partes Review (IPR) proceedings, and discuss recent PTAB decisions and how those decisions are shaping the use of discovery during IPR.

Speakers:
Tim Riffe, Principal, Washington, DC
Adam Shartzer, Associate, Washington, DC

 

Click here to view a replay of the webinar
Click here to download the webinar slides

 

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Part IV: Conducting Trials in the PTAB
Wednesday, May 8, 2013

In Part IV of our series, the co-chairs of Fish & Richardson’s post-grant practice focused on the conduct of trials in the PTAB. They shared their experiences and practice tips in areas that include motion practice, teleconferences with the PTAB judges, and discovery requests. They also discussed the oral hearing that the PTAB recently conducted in SAP v. Versata, which represents the first oral hearing held to date by the PTAB.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC

Click here to view a replay of the webinar
Click here to download the webinar slides

 

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Part III: Inter Partes Review and Covered Business Method Review – Recent Developments
Wednesday, April 10, 2013

In Part III of our series, the co-chairs of Fish & Richardson’s Post-Grant Practice Group discussed the Patent Trial and Appeal Board’s (PTAB) recent decision in Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co. The PTAB declined to grant a CBM petition on grounds it deemed redundant, setting forth a framework for its analysis that we’ll review while also exploring the implications for petition drafting.

We also discussed the lawsuit that Versata recently filed against the USPTO, challenging the PTAB’s interpretation of “covered business method patent” and its recent initiation of a trial under the Transitional Program for Covered Business Method Patents. In addition, we surveyed the reception given to early Motions for Stay that follow from parallel post-grant proceedings, while finally touching on discovery-related issues.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC

Click here to view a replay of the webinar

Click here to download the webinar slides

 

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Part II: Inter Partes Review and Supplemental Examination—Recent Developments
Wednesday, March 13, 2013

In Part II of our series, the co-chairs of Fish & Richardson’s Post-Grant Practice Group will discuss the Patent Trial and Appeal Board’s (PTAB’s) recent decision in Synopsys v. Mentor Graphics. This decision marks the first time the PTAB rejected in full an IPR petition. We will review what caused this rejection and offer insights and tips for preparing petitions. Also on the agenda is a review of supplemental examination in the first six months after it took effect.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC

Click here to listen to the audio
Click here to download the presentation

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Part I: Inter Partes Review and Covered Business Method Patents – the First Five Months.

On Wednesday, February 13, 2013 Karl Renner and Dorothy Whelan presented the first presentation in the series, titled Inter Partes Review and Covered Business Method Patents – the First Five Months. During the presentation, Fish’s post-grant practice co-chairs shared their experiences, insights and practice tips from the first five months of IPR and CBM.

Dorothy Whelan, Principal and Co-chair of Fish & Richardson’s Post-Grant Practice
Karl Renner, Principal and Co-chair of Fish & Richardson’s Post-Grant Practice

Click here to listen to the audio
Click here to download the presentation

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