Companies of all sizes continue to turn to Fish for these important proceedings because of the close integration of our #1 ranked patent and our #1 ranked litigation practices. Successfully challenging patent validity at the USPTO requires a solid foundation of prosecution and litigation skills, and our internal commitment to knowledge sharing allows us to capture the lessons we learn in the courtroom and build them into our post-grant approaches.
Recent News
Avoiding Waiver with Thorough Explanation of Anticipated Motion
Friday, May 17, 2013
Written by: Adam Shartzer, Timothy Riffe, Karl Renner, and Dorothy Whelan
In ChiMei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd., IPR2013-00038, Notice 18, Order, Conduct of the Proceeding (April 26, 2013), the PTAB held that a party’s failure to adequately describe an anticipated motion may be grounds for dismissal or exclusion of the motion(s) from the motion list. By adequately describing the purpose and reasons for a motion, the anticipated moving party can provide sufficient notice to the PTAB and non-moving party.
Read Avoiding Waiver with Thorough Explanation of Anticipated Motion for more analysis of Notice 18.
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Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
Tuesday, April 16, 2013
Written by: David Holt, Karl Renner, and Dorothy Whelan
In Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., the PTAB set forth a framework by which it would limit the number of “redundant” grounds of rejection that may be sustained in patent trials. The decision is important because the PTAB forecasts that it will only sustain more than one ground of rejection per claim if the Petition provides a particular type of description for why multiple grounds are not redundant.
Follow the link to read more about the PTAB’s decision.
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New PTO Fees Effective March 19, 2013, for Ex Parte Reexamination, Inter Partes Review, Post-Grant Review, and Covered Business Method Review
Wednesday, March 20, 2013
Written by: Dorothy Whelan, Karl Renner, and David Holt
On March 19, 2013, new fees for a variety of PTO procedures went into effect. In ex parte reexamination (EPRx), inter partes review (IPR), post-grant review (PGR), and covered business method review (CBM), the fees generally are lower than the fees previously associated with each of these procedures. Our alert, which can be found here, summarizes the new PTO fees and, in the case of IPR, illustrates their application with several hypotheticals.
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Garmin International Inc. v. Cuozzo Speed Technologies LLC, slip op. IPR2012-00001 (PTAB Mar. 5, 2013)
Monday, March 18, 2013
Written by: Dorothy Whelan and Karl Renner
In Garmin International Inc. v. Cuozzo Speed Technologies LLC, the PTAB clarified the metes and bounds of “routine discovery” permitted in patent trials before the PTAB and set forth standards for determining when a party’s request for additional discovery would be granted. The decision is important because it illustrates the limited nature of discovery available in patent trials and highlights the differences between PTAB and district court proceedings.
Read more about the USPTO's clarification.
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Macauto U.S.A. v. BOS GmbH & KG, slip op. IPR2012-00004 (PTAB Jan. 24, 2013)
Monday, March 11, 2013
Written by: Dorothy Whelan and Karl Renner
The PTAB’s decision in Macauto U.S.A. v. BOS GmbH & KG is significant for at least two reasons. First, the PTAB clarified the eligibility requirements for inter partes review set forth in 35 U.S.C. § 315(b), holding that a suit filed by a patent owner against a petitioner and then dismissed voluntarily without prejudice did not trigger the one year time period for filing an inter partesreview petition. Second, the PTAB clarified the standards for satisfying the reasonable likelihood of success standard required for instituting an inter partes review.
Read more about the PTAB's decision.
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Synopsys, Inc. v. Mentor Graphics Corp., slip op. IPR2012-00041 (PTAB Feb. 2, 2013)
Thursday, March 7, 2013
Written by: Dorothy Whelan and Karl Renner
The PTAB’s decision in Synopsys, Inc. v. Mentor Graphics Corp. marks the first time that the PTAB has declined to adopt any of the grounds set forth in a petition for inter partes review. The decision underscores the importance of preparing a robust petition that prospectively addresses key claim construction issues, provides a thorough analysis of the grounds for patentability, and includes the petitioner’s best available evidence supporting its positions.
Read more about the PTAB's decision.
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Fish launches a new post-grant webinar series for 2013: Post-Grant for Practitioners
Fish & Richardson’s post-grant practice chairs are back with a new monthly series of webinars devoted to topics of interest in the emerging area of post-grant proceedings. Join them as they share their experiences, insights, and practice tips.
To learn more and visit the webinar series page, click here.
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Federal circuit and USPTO seek to clarify business method patents
February 8, 2013
John C. Phillips quoted
Fish's John Phillips met with Managing Intellectual Property and provided his insight on the first covered business method (CBM) case handled by the USPTO - SAP v. Versata - and the inspiration behind the USPTO introducing CBM review.
To read more about the first CBM review and how a rehearing of CLS v. Alicemight clarify uncertainty surrounding business method patents, read Federal circuit and USPTO seek to clarify business method patents.
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Preliminary Responses in Inter Partes Review and Post-Grant Review
Monday, January 28, 2013
Written by: Tracy Hitt, Karl Renner, Dorothy Whelan
Preliminary Responses in Inter Partes Review and Post-Grant Review The January 9, 2013, decision issued by the Patent Trials and Appeals Board ("PTAB") in SAP America, Inc. v. Versata Development Group, Inc., slip op. CBM2012-00001, provides insight into the reasons that the PTAB will consider in a patent owner's preliminary response for purposes of determining whether to institute inter partes review ("IPR"), post-grant review ("PGR"), or covered business method ("CBM") proceedings.
To read more about Preliminary Responses in Inter Partes Review and Post-Grant Review.
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SAP America, Inc. v. Versata Development Group, Inc., slip op. CBM2012-00001 (PTAB Jan. 9, 2013)
Written by: John C. Phillips
In the very first case brought under the U.S Patent and Trademark Office's Covered Business Method ("CBM") review procedure, the Patent Trial and Appeal Board ("PTAB") provided invaluable guidance in its decision holding that a petition seeking CBM review of a patent[1] warranted institution of a CBM review proceeding. Among other things, the PTAB signaled that it would interpret the requirements for instituting CBM review liberally, thereby enhancing the procedure's potential value to defendants charged with infringing business method patents.
Read more about the USPTO's first case under the Covered Business Method review procedure.
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The links below contain practical information compiled by our post-grant experts. The content has been identified and created based on questions that we are most frequently asked by our clients. If you have specific questions, please directly.
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Tools & Resources
Frequently asked questions, brief tutorials, and links to additional resources
Recently Filed Reexaminations
A comprehensive listing of the previous week's reexamination filings, pulled directly from USPTO data and updated every Monday
Seminars, Events & Webinars
Details on past and future Fish-hosted seminars and webinars, and information about third-party events and meetings of interest
Post-Grant Proceedings
Information about new post-grant proceeding options following from the America Invents Act, and their interplay with patent reexamination |