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Publications
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01.09.2023Fed. Circ. Patent Decisions in 2022: An Empirical ReviewArticlesThis article provides an empirical review of the U.S. Court of Appeals for the Federal Circuit's decisions in patent cases during calendar year 2022.
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01.06.2022Fed. Circ. Patent Decisions In 2021: An Empirical ReviewArticles
Law360
This fifth annual article provides an empirical review of the U.S. Court of Appeals for the Federal Circuit's decisions in patent cases during calendar year 2021. -
April 2021IPR>>IRL: A brief guide to the essentials of inter partes reviews in real lifeLawyer PublicationsBecause IPR proceedings provide a faster and cheaper alternative to district court litigation, the process has become a popular means for challenging issued patent claims. This summary breaks down the IPR process and identifies some basic strategic considerations for challengers and patent owners. Read the full IPR>>IRL
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01.11.2021Fed. Circ. Patent Decisions In 2020: An Empirical ReviewArticles
Law360
This fourth annual article provides an empirical review of the U.S. Court of Appeals for the Federal Circuit's decisions in patent cases during calendar year 2020.
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12.21.2020The Impact of The PTAB’s Motion to Amend Pilot ProgramLawyer PublicationsMotions to amend have been part of America Invents Act trials since their inception. The U.S. Patent and Trademark Office solicited public input on the motion to amend process, which was followed by a study by the Patent Trial and Appeal Board. The study led to changes implemented in a Pilot Program that began in March 2019.
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2020The Supreme Court’s SAS Decision: Has All-or-Nothing Institution Created a Wave of Change?Lawyer PublicationsDid the SAS Institute Inc. v. Iancu ruling change the PTAB's approach to institution of IPRs? Our original research examines the aftereffect of the Court's decision.
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2020Proving Up Publications as Prior Art in IPR Proceedings After HuluLawyer PublicationsOur follow-up prior art article considers the PTAB’s precedential opinion in Hulu and its implications for practitioners.
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2020Challenges in Proving Up Publications as Prior ArtLawyer PublicationsProving up prior art when working with publications has been complicated and unpredictable. In this two-part series, we look at varying opinions from Patent Trial and Appeal Board panels and issues triggered by Hulu, LLC v. Sound View Innovations, LLC.
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2020Fewer Bites at the IPR Apple? Impact of Recent Decisions and Guidance on Multiple PetitionsLawyer Publications
When multiple inter partes review petitions are filed against the same patent, what result can you expect? We analyze recent developments on serial and parallel IPR petitions and offer practical tips.
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01.09.2020Fed. Circ. Patent Decisions in 2019: An Empirical ReviewArticles
Law360
This article provides an empirical review of the U.S. Court of Appeals for the Federal Circuit’s decisions in patent cases during calendar year 2019. -
07.18.2019The Ripple Effect of SAS Institute v. Iancu on IPR PracticeArticles
Law360
In April 2018, the U.S. Supreme Court held in SAS Institute Inc. v. Iancu that the Patent Trial and Appeal Board must institute inter partes review either on all claims raised in a petition or none of them. -
07.01.2019Strategic ThinkingArticles
Perkins Coie attorneys explore tactical considerations when challenging issued patent claims in IPRs in the final half of a two-part series.
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12.05.2017Taming the Uncertainty of Ad Hoc Procedures In PTAB Remand ProceedingsArticlesThe U.S. Court of Appeals for the Federal Circuit hears your appeal of an inter partes review but does not affirm the decision.
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12.2017/01.2018Patent HurdlesArticles
Intellectual Property Magazine
James Coughlan and Kevin Patariu look at some of the benefits and disadvantages of running concurrent challenges with the PTAB and the ITC. -
10.2017Inter Partes Review Proceedings: A Fifth Anniversary Report
IPR@5
An In-Depth Look at Factors Affecting Your IPR Strategy
Fifth anniversaries are milestone occasions. Following our prior reports marking the passage of three and four years of inter partes review practice, we proudly offer this year’s report, Inter Partes Review Proceedings: A Fifth Anniversary Report. -
02.2017Selecting The Best Invalidity Ground in an Inter Partes ReviewArticlesA successful petition for inter partes review (IPR) reflects a variety of considerations, including claim construction, selection of prior art and whether to use an expert declaration.
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12.06.2016Best Practices for IPR Proceedings and Real Party in InterestArticles
World IP Review
As set forth in part 1 of this article, the question of how a real party in interest (RPI) to an inter partes review (IPR) is determined has presented challenges and uncertainties for litigants. -
11.08.2016Real Parties in Interest: Proceed with CautionArticles
World IP Review
Since the adoption of the America Invents Act and the institution of the inter partes review (IPR) proceeding, the question of how a real party in interest to an IPR is defined has presented challenges for petitioners and opportunities for patent owners. -
09.2016Inter Partes Review Proceedings: A Fourth Anniversary Report
IPR@4
An In-Depth Look at Factors Affecting Your IPR Strategy
Perkins Coie is marking the fourth anniversary of inter partes review (IPR) with a report focused on the changes and progress of IPR proceedings, particularly since September 2015. As IPR proceedings have become more familiar during the past four years, growing clarity on many issues has resulted from decisions by the U.S. Court of Appeals for the Federal Circuit and U.S. Supreme Court. Click here to read the full report.
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09.2015Inter Partes Review Proceedings: A Third Anniversary Report
IPR@3
A Look Into IPR Statistics and Their Impact on IPR StrategyWhen inter partes review (IPR) proceedings became effective in September 2012, few people would have predicted the transformative effect it would have on patents and the litigation landscape. Three years in, IPR has become the preferred procedure for challenging the validity of a patent. Read the full report. -
09.15.2015PTAB Kill Rates: How IPRs Are Affecting PatentsArticlesWhile the America Invents Act’s introduction of inter partes review proceedings was intended to strengthen the quality of issued patents, no one could have predicted how quickly IPRs would become a mainstay defensive tactic in U.S. patent litigation.
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06.19.2015Change in How PTAB Interprets a Crucial Requirement for Initial Petitions for IPRs and CBMsArticlesThe U.S. Patent Office’s Patent Trial and Appeals Board (PTAB) has recently changed the way it interprets a crucial requirement for initial petitions for Inter Partes and Covered Business Method Reviews.
Presentations
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09.24.2020 - 09.25.20202020 PTAB Bar Association Annual Conference
Sponsorships
Washington, D.C. -
07.16.2020Cloud Atlas: Red Flags, Offramps and Indemnification in Contracting18th Annual Rocky Mountain Intellectual Property & Technology Institute Virtual Conference
Colorado Bar Association -
09.11.2019PTAB Endgame: The Final Written Decision, Rehearing and Appeals to the CAFCSpeaking EngagementsCo-presenter
USPTO Post-Grant Patent Trials 2019: New Challenges & Tactics / New York, NY -
03.23.2018NYIPLA Annual Dinner in Honor of the Federal JudiciarySponsorship
New York, NY -
03.15.2016Data Analysis: PTAB by the NumbersSpeaking Engagements
Moderator
Managing IP U.S. PTAB Forum / Palo Alto, CA
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02.23.2016The New 2015 PTABSpeaking EngagementsLexMachina Webcast
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10.05.2015Proven Strategies for Asserting or Defending a Patent Challenge at the PTAB – Key Lessons Learned From the First Two Years of PTAB FilingsSpeaking EngagementsPanelist
Momentum’s 3rd IP Counsel Exchange On Post‐Grant Patent Challenges at the PTAB: A Strategic Guide to Effectively Challenging or Defending Patent Validity at the Patent Trial and Appeal Board / San Jose, CA
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03.30.2015Perspectives on the Treatment of PTAB Proceedings By Way of AppealSpeaking EngagementsPanelist
Momentum’s 2nd IP Counsel Exchange on Post-Grant Patent Challenges: A Strategic Guide to Effectively Challenging or Defending Patent Validity at the Patent Trial and Appeal Board / San Jose, CA
