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, we launched a monthly webinar series designed to share practice tips, nuances, observations, and strategy.
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
Josh Pond, Principal, 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
March 13, 2013
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Click here to download the presentation
Find information about our upcoming webinars or download materials from the previous webinars in this series at the Post-Grant for Practitioners webinar series page.
Part I: Inter Partes Review and Covered Business Method Patents — the First Five Months.
February 13, 2013
Click here to listen to the audio
Click here to download the presentation
Find information about our upcoming webinars or download materials from the previous webinars in this series at the Post-Grant for Practitioners webinar series page.
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Challenging Patent Validity in the USPTO: Strategic Considerations in View of the USPTO's Final Rules - Inter Partes Review: In this 7th webinar, Karl Renner and Dorothy Whelan walk through several hypotheticals, to help listeners understand how these apply to common situations.
View the presentation | Listen to the webinar
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Federal Bar Association Annual Meeting and Convention
September 19, 2012
Michael Rosen (Southern California) will speak on a panel "Patent Litigation Under the AIA-Strategic Use of New USPTO Post-Grant Oppositions" at the FBA 2012 Annual Meeting and Convention. The meeting will be held at the Manchester Grand Hyatt in San Diego, CA. Fish & Richardson is also a sponsor of the event, stop by our booth and say hello. For more information or to register, click here.
Friday, September 21, 2012
10:00am - 11:00am
Session 7B: Patent Litigation Under the AIA-Strategic Use of New USPTO Post-Grant Oppositions.
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USPTO Releases Final Rules for the Citation of Prior Art and Written Statements
August 6, 2012
Today, August 6, the USPTO published Federal Register notices for the final rules for the Citation of Prior Art and Written Statements, which go into effect on September 16, 2012.
The PTO also indicated that the final rules for the remaining provisions that go into effect on September 16, 2012 under the America Invents Act will be published on August 14, 2012.
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USPTO Releases Proposed Rules and Examination Guidelines on First Inventor to File
July 26, 2012
Today, July 26, the USPTO published Federal Register notices regarding its proposed rules and examination guidelines relating to the first inventor to file (FITF) provisions under the America Invents Act (AIA), which will take effect for filings on or after March 16, 2013.
To determine if an application should be subject to the FITF requirements, the proposed rules require a statement from the applicant that identifies whether the application has at least one claim with an effective filing date on or after March 16, 2013. Comments on these proposed rules are due by October 5.
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The America Invents Act: Do you need to rethink your strategy?
June 14, 2012
The America Invents Act is the most extensive revision of US patent law in over 50 years. What really changed? How will it impact your company? This practical discussion will address the new law, including how it may affect your IP procurement and enforcement strategies. View the presentation.
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Webinar - The New Inter Partes Proceedings at the USPTO
February 21, 2012
Karl Renner, Co-chair of Fish's reexam practice, spoke on a panel "The Preliminary Phase: Deciding to File, Filing a Petition, the Preliminary Response, and Institution of Review." The webinar focused on the two new proceedings that experts anticipate will be the most widely used: post-grant review and inter partes review.
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New, Revised, and Now-Extinct Post-Issuance Proceedings
October 17, 2011
Dorothy Whelan, Co-chair of Fish's reexam practice, co-presented with Tim Bianchi of Schwegman, Lundberg, & Woessner at MIPLA's AIA forum.
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Strategic Use of Post-Grant Proceedings in Light of Patent Reform, Seattle, Washington
October 11, 2011
Fish co-hosted the Strategic Use of Post-Grant Proceedings in Light of Patent Reform seminar with the University of Washington School of Law. The day consisted of a number of panel presentations, including the keynote address by Irem Yucel, Director of the Central Reexamination Unit of the USPTO; a lunchtime discussion with Chief Judge Rader; a judges' panel that included Chief Judge Rader and Former Judges Everingham and Ward; and two separate presentations on the implications of the America Invents Act on patent prosecution and litigation.
To view the presentation materials for this event, click here.
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Strategic Use of Patent Reexamination Seminar, Dallas, Texas
April 22, 2010
This half-day in-house counsel event provided strategic insight and practice pointers regarding effective use of patent reexamination, including an analysis of defensive and offensive strategies for navigating the interplay between reexamination and litigation. Greg Morse, Former Director of the CRU at the USPTO, was the keynote speaker.
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Tuesday, May 8, 2012
1:00 pm EDT
Putting It All Together--Which Tools Are Right for You? - The sixth in a six-part series
Karl Renner, Principal and Co-chair of Fish & Richardson's Post-Grant Practice
Dorothy Whelan, Principal and Co-chair of Fish & Richardson's Post-Grant Practice
Click here to listen to the audio
CLE Reference Materials
Click here to download the presentation
The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. One of these procedures is inter partes review (IPR), which, on September 16, 2012, will replace the current inter partes reexamination. Other procedures include post-grant review (PGR) and supplemental examination.
Our five previous webinars explored these tools in view of the USPTO's newly proposed rules. In this webinar, we will examine these tools in the context of a series of hypothetical situations, with the goal of enabling you to make informed strategic decisions on whether and when to invoke the choices that are made available under the AIA.
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Tuesday, April 24, 2012
1:00 pm EDT
Post-Grant Review and Derivation Proceedings - The fifth in a six-part series
Samuel S. Woodley, PhD, Principal
Irene Hudson, Principal
Click here to listen to the audioClick here to download the presentationThe America Invents Act (AIA) establishes a number of new trial proceedings to be conducted by a new Patent Trial and Appeal Board in the USPTO. Previous webinars in this series have focused on the new
inter partes review (IPR) proceeding. In this webinar, we will consider the other two
inter partes proceedings established under the AIA - post-grant review (PGR) and derivation proceedings. We will cover differences between these proceedings and IPR, and explore tactical and strategic implications following therefrom.
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Tuesday, April 17, 2012
Supplemental Examination - The fourth in a six-part series
Samuel S. Woodley, PhD, Principal
Irene Hudson, Principal
Click here to listen to the audio
Click here to download the presentation
The America Invents Act (AIA) creates a number of USPTO-based procedures for reviewing issued patents. Among these is the new Supplemental Examination procedure. The procedure allows a patent owner to request Supplemental Examination of its issued patent by the USPTO "to consider, reconsider or correct information believed to be relevant to the patent." In return, the AIA mandates that "a patent may not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of that patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent." Hence, the Supplemental Examination procedure offers patentees limited amnesty against accusations of inequitable conduct.
The USPTO recently circulated proposed rules governing Supplemental Examination. We will explore these rules and their impact on both the patent owner and challenger, including the following questions and topics:
- Is Supplemental Examination right for you and your patent? When and why might Supplemental Examination be appropriate?
- Items of information
- What's included? Publications? Transcripts? Declarations and affidavits? Summaries? Handling of confidential/protected materials?
- Page limitations? The rules propose strict page limits for each item of information. When/how to request additional pages?
- How many items of information to include? The rules propose strict limits.
- Content of the request
- Who may file, and when?
- Issues of patentability
- What to include? Claim construction? Claim charts? Explanation?
- Handling by the PTO
- Time limits
- Scope of review
- Actions by the PTO: Supplemental Examination certificate or order reexamination
- Deciding to institute Supplemental Examination
- Relevance post - Therasense
- Negative consequences
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April 10, 2012
Inter Partes Review Part III: Post-Trial
John Phillips, Principal
Karl Renner, Principal and Co-chair of Fish & Richardson's Post-Grant Practice
Dorothy Whelan, Principal and Co-chair of Fish & Richardson's Post-Grant Practice
Click here to listen to the audio.
Click here to download the presentation.
The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. One of these procedures is inter partes review (IPR), which, on September 16, 2012, will replace the current inter partes reexamination. The USPTO recently circulated proposed rules governing IPR. In this webinar, we will explore the implications of these rules as they relate to the post-trial phase of IPR, from the standpoints of both the challenger and the patent owner.
Topics will include:
- "Final" Patent Trial and Appeal Board (PTAB) decision
- Estoppel
- Scope
- Pending proceedings
- New proceedings
- Implications for patent owner
- Implications for challenger
- Hypotheticals exploring strategic options following PTAB decision
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April 3, 2012
Inter Partes Review Part II: Trial
Karl Renner, Principal and Co-chair of Fish & Richardson's Post-Grant Practice
Dorothy Whelan, Principal and Co-chair of Fish & Richardson's Post-Grant Practice
Webinar audio archive
Webinar presentation (PDF)
The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. One of these procedures is inter partes review (IPR), which, on September 16, 2012, will replace the current inter partes reexamination. The USPTO recently circulated proposed rules governing IPR. In this webinar, we will explore the implications of these rules as they relate to the trial phase of IPR, from the standpoints of both the challenger and the patent owner.
Topics will include:
- Discovery
- Timing and sequence
- Types of discovery contemplated
- Motion practice
- What is the role of the Patent Trial and Appeal Board (PTAB)?
- Types of motions available
- Claim amendments
- Oral hearing
- Who participates?
- Structure
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March 27, 2012
Inter Partes Review Part I: Pretrial
Webinar audio archive
Webinar presentation (PDF)
The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. One of these procedures is inter partes review (IPR), which, on September 16, 2012, will replace the current inter partes reexamination. The USPTO recently circulated proposed rules governing IPR. In this webinar, we will explore the implications of these rules as they relate to the pretrial phase of IPR, from the standpoints of both the challenger and the patent owner.
Topics will include:
- Is IPR right for you? When and why might litigation or ex parte reexamination be better options?
- Preparing the petition
- Page count. The rules propose strict page limits for the petition.
- What's in? Exhibits? Claim charts? Declarations?
- When/how to request more pages? Motions and standards?
- How many separate grounds should be raised in the petition?
- Which patent claims should be included in the petition? All or a subset? How do you choose?
- Claim constructions. The rules require the petitioner to set forth claim constructions.
- Which terms do you select?
- Detail and disclaimer?
- Alternative constructions?
- Patent owner preliminary response
- Decisions to institute IPR
- Consequences
- Rehearing? Appeal?
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Duty of Disclosure in Reexamination Proceedings
November 10, 2010
Karl Renner, Chad Shear, Dorothy Whelan
Please click here to view the PowerPoint presentation from the webinar.
To listen to the audio for the Duty of Disclosure in Reexamination Proceedings webinar, please click here.
To learn more about Fish's monthly patent webinar series, click here.
To learn more about Fish's post-grant webinar series, click here.