Post-Grant for Practitioners Webinar: 2018 Post-Grant Year in Review


2018 was a watershed year for PTAB practitioners. The Supreme Court of the United States (SCOTUS) and the Court of Appeals for the Federal Circuit (CAFC) issued several important decisions relating to the constitutionality of post-grant practice itself, RPI/privity, partial institution decisions, and printed publications. In addition, the PTAB adopted new claim construction rules replacing BRI with the Philips standard, and proposed a new pilot procedure for claim amendments. Changes to the trial practice guide included patent owner surreplies as a matter of right and institution standards governing multiple petitions/petitioners.

Fish Principals and Post-Grant Practice Co-Chairs Dorothy Whelan and Karl Rennertake a closer look at these significant developments and examine their impact on practitioners. Dorothy and Karl discuss:

  • PTAB Statistics and Trends
  • Decisions and Case Law Developments at the PTAB, CAFC, and SCOTUS, including:
    • Oil States Energy Services, LLC v. Greene’s Energy Group, LLC
    • SAS Institute, Inc. v. Iancu
    • Applications in Internet Time, LLC v. RPX Corp.
    • Click-to-Call Technologies, LP v. Ingenio, Inc.
    • General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha (Board Discretion: 314, 325)
    • GoPro, Inc. v. Contour IP Holding, LLC
    • What to Watch For in 2019


Dorothy Whelan, Principal & Post-Grant Practice Co-Chair, Fish & Richardson
Karl Renner, Principal & Post-Grant Practice Co-Chair, Fish & Richardson

To download the PDF slides of this presentation,click here.

If you have any questions regarding this webinar, please contact Lauren McGovern at mcgovern@fr.com