W. Karl Renner is a Principal in the Washington, D.C. office of Fish & Richardson P.C. Mr. Renner co-chairs the firm’s Reexamination Practice Group, and he serves on the firm's Management Committee. His practice emphasizes client counseling, strategic patent prosecution, contentious inter and ex parte reexamination and reissue work, due diligence and freedom-to-operate investigations, and patent-related opinion work.
Mr. Renner manages the patent portfolios of clients ranging from emerging companies to Fortune 50 corporations. Mr. Renner also regularly advises on effective commercialization/enforcement of company IP, and on defensive tactics to address competitor IP. In this regard, Mr. Renner specializes in reexamination, representing both patent owners and challengers.
Mr. Renner is technically focused on the electrical, computer-related, physics and mechanical arts. As such, he has extensive experience in the following technologies: Internet-driven solutions, network systems and protocols, data storage and retrieval standards and media, microprocessor and computer architecture, mobile and other communications equipment and processes, display technologies, semiconductor devices and fabrication processes, signal and image processing techniques, complex optical and mechanical devices, error detection and correction techniques, cryptography, telecommunications, financial processes, acoustics and video standards and equipment, and thermodynamic processes and systems.
Mr. Renner has prior engineering experience with the Instrumentation Branch of the U.S. Department of Energy, where he worked on the development and implementation of control systems, high-frequency optical imaging of particles during combustion processes, computer programming in machine and object oriented languages, and computer design and breadboard testing of analog circuits. Mr. Renner is now a frequent lecturer and author on intellectual property matters, regularly speaking at University of Maryland events, in conjunction with their Engineering Schools and Hinman CEO program.
Admissions
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District of Columbia
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Virginia
- United States Patent and Trademark Office
Other Distinctions
Selected Speeches and Publications
"A Conversation with the United States Patent and Trademark Office," panel speaker as part of a continuing series of CLE Programs co-sponsored by the U.S. District Court for the District of Delaware and the Federal Bar Association (May 24, 2010).
"Strategic Use of Reexamination" forum co-chair, moderator of panel addressing “Strategic Options – Which One is Right for You?," Texas Lawyer, Dallas (April 22, 2010).
"Strategic Use of Reexamination" forum co-chair, moderator of panel addressing “Strategic Options – Which One is Right for You?," Daily Journal, Silicon Valley (September 24, 2009).
"Positioning You Reexamination for Success by Incorporating Procedural Requirements and Other Tactical Considerations into Your Advanced Strategy," moderated panel and co-chaired ACI’s In-House Counsel Forum on Patent Reexamination, New York (May 28, 2009).
"Inter Partes and Ex Parte Reexamination: Recent Trends and Tactics," presentation to the Minnesota Intellectual Property Law Association (March 18, 2009).
"To Reexamine or not to reexamine – A look beyond statistics to answer this question when facing a hostile patent," paper published in IP Law 360 (2009).
Presented on various topics surrounding the basics of intellectual property protection at The University of Maryland’s Technology Start-up Bootcamp, each year from 2002 – 2009.
"Developing a Practical Multi-Country Approach for Patent Enforcement, Litigation Management, and Execution," ACI, Global Patent Litigation Congress, New York, (November, 2008).
"Current Developments in Patent Applications, Appeals, Oppositions and Reexaminations," presentation at Fish & Richardson sponsored seminar in Japan (October, 2008).
"The Convergence of IP Law and Business," panel presenter at SIGGRAPH Conference (August 13, 2008).
"Be strategic with your IP: Maximize its Value - An Opportunity and an Obligation," presented at AeANET retreat, Dallas (2008).
"Strategic Prosecution – Building a Litigation-worthy Patent Portfolio," presented at Fish & Richardson seminar: United States Patent Law and Litigation – Important issues professionals in South Korea need to know, Seoul , South Korea (December 5, 2006).
"Reexamination: Knowing When and How to Use This Strategic Defensive Weapon," panel presenter at IP Law & Business Presents Innovations in IP Litigation, Washington DC (December 1, 2006).
"Equipping business leaders to manage intellectual property issues," presented at Executive MBA Annual Meeting at the University of North Carolina (June 12, 2006).
"What VCs Need to Know About the Changing Patent Process & IP Protection," presented at National Venture Capital Association (June 15, 2005).
Education
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BS,
University of Maryland
1992
Electrical Engineering
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JD,
George Washington University Law School
1998