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Background

Rick Bisenius is a Principal in the patent group at Fish & Richardson’s Twin Cities office. His practice emphasizes patent post-grant proceedings (IPR and CBM), patent reexamination proceedings, US and foreign patent portfolio strategy and management, and due diligence investigations.

Mr. Bisenius has represented both petitioners and patent owners in over 60 inter partes review, CBM review, and reexamination proceedings in the areas of telecommunications, telephony, software, communications systems and hardware, navigation systems, electro-mechanical devices, bio-medical devices, and consumer products.

Mr. Bisenius has counseled clients for patent prosecution, patentability analysis, and freedom-to-operate investigations, in the areas of end user software (including user interface, improved user experience, and digital mapping technology), mobile/Internet technologies (including data communication, data security, and wireless access protocols), business development software, medical devices, medical information storage and communications systems, computer hardware, network communication systems, consumer products, internal combustion engines, electrical component manufacturing, and business methods. In addition, Mr. Bisenius frequently practices in patent reexamination/post-grant proceedings. He has represented both challengers/third party requesters and patent owners in proceedings for patents related to circuit design, end user software, medical devices, mobile/Internet technologies, and consumer products. This experience includes advising clients on patent reexamination strategies/post-grant proceedings during concurrent patent litigation.

Prior to attending law school, Mr. Bisenius worked as a Technology Specialist/Patent Agent for the firm, assisting with domestic and foreign litigation cases, preparing ex parte reexamination requests, conducting both ex parte and inter partes reexamination proceedings, and drafting, filing and prosecuting patent applications before the U.S. Patent and Trademark Office. Mr. Bisenius previously held engineering positions at Booz Allen Hamilton’s Network Design and Analysis Center (providing telecommunications and telephony system analysis and design services for the National Communications System (NCS), the Navy, and the Pentagon) and IBM (including work in hardware design, database programming, and object oriented language programming).

Education

University of Chicago Law School 2013
J.D.
with honors


University of Wisconsin 2001
Electrical and Computer Engineering, Computer Science, B.S.
Secretary Eta Kappa Nu Electrical Engineering Honor Society

Admissions

  • U.S. Patent and Trademark Office 2009
  • Illinois 2013
  • Minnesota 2014

Other Distinctions

Publications

Mr. Bisenius is a contributing author to Fish’s IP Law Essentials.
Depositions for Inter Partes Review: How Do They Work?” co-author, Fish’s IP Law Essentials Blog (August 24, 2020).
What is the PTAB and Who are the Judges?” co-author, Fish’s IP Law Essentials Blog (July 13, 2020).
Oral Hearings at the PTAB: What to Expect,” co-author, Fish’s IP Law Essentials Blog (June 24, 2020).
What Discovery is Available during Inter Partes Review?” co-author, Fish’s IP Law Essentials Blog (May 26, 2020).
When Should I File an IPR during Litigation?” co-author, Fish’s IP Law Essentials Blog (April 30, 2020).
Challenging Patents through Post-Grant Proceedings: What Are Your Options?” co-author, Fish’s IP Law Essentials Blog (April 22, 2020).
Navigating Uncertainty—Addressing Purely Functional Claim Limitations in a Post-Williamson World with Ongoing PTAB Climate Change, author, 18 Chi.-Kent J. Intell. Prop. | PTAB Bar Assoc. L.J. 117 (2019).
Supreme Court Grants Return Mail’s Petition for Certiorari in Return Mail, Inc. v. United States Postal Serv., author, Fish Post-Grant News, October 31, 2018.

Selected Mentions
Interviewed for Law.com, “Skilled in the Art: How PTAB is Boosting the Next Generation of IP Lawyers + Should the Law Discriminate Between AI and Human Inventors?” (May 1, 2020).
Named in Law360, “IP Firms Cheer PTAB Program Giving New Attys Opportunities” (April 29, 2020).
Named in Law360, “PTAB Axes Part Of Deep Sea Fiber-Optic Tech Patent” (November 25, 2019).
Named in Law360, “Google Gets PTAB To Nix Claims Of Traffic Forecasting Patent” (August 10, 2018).
Named in Law360, “Apple, Google, Samsung Get Mapping Patent Win At PTAB” (September 21, 2016).
Named in Law360, “Google, Samsung Get Graphics Patents Axed in AIA Review” (June 17, 2015).

Speaking Engagements
Post Grant for Practitioners: Post-Grant 101,” co-speaker, Fish Post-Grant Webinar (September 29, 2020).

Experience

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