The America Invents Act (AIA) introduced new procedures for challenging the validity of a patent. Since its inception, these procedures have drastically altered the patent litigation landscape and are becoming increasingly common in high-value disputes.
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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. -
12.14.2021IPR Evolution: Decisions and Developments Shaping Inter Partes Review PracticeLawyer PublicationsChange has propelled inter partes reviews (IPRs) since the process launched at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) in 2012. In the period since March 2020, when we first published this practice guide, the IPR process has continued to mature and evolve.
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12.02.2021The Impact of Prior Claim Constructions Since The PTAB Adopted The Same Claim Construction Standard As Other CourtsLawyer PublicationsIn 2018, the Patent Trial and Appeal Board aligned its claim construction standard in post-grant proceedings with the standard applied by the federal courts and the International Trade Commission.
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11.05.2021Real Parties-In-Interest: Guidance On Who Is An RPI—And Who Is Not—In Post-Grant ProceedingsLawyer PublicationsIn post-grant review proceedings before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board, practitioners who omit any of the parties with an interest in the matter could face consequences as severe as dismissal of the proceeding.
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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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03.12.2021IPR Practice: “Good Causes” and Responding to Patent Owners’ Preliminary ResponsesLawyer PublicationsWhen the patent owner files a patent owner’s preliminary response (POPR) to an inter partes review petition, the petitioner can request leave to reply before the Board issues its institution decision. Such requests must include “a showing of good cause.”
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02.23.2021What Increased Success Rates for Amending Claims During Post-Grant Proceedings Means for Patent LitigationArticlesAs reported by the Patent Trial and Appeal Board (PTAB), the motion to amend pilot program (see 84 Fed. Reg. 9497), which took effect in March 2019, has increased patent owners’ success in obtaining claim amendments during post-grant proceedings, including inter partes reviews (IPRs).
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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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04.17.202010 Ways In-House IP Counsel Can Get Ahead Amid QuarantineArticles
Law360
With travel restrictions in place, most of the country subject to stay-at-home orders, courthouses closed and some cases stayed or delayed, in-house intellectual property lawyers may find their existing projects relating to ongoing litigation and licensing stalled. -
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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05.28.2019When the USPTO Takes Another LookArticlesPerkins Coie attorneys address the basics of the process when challenging issued patent claims in this 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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06.19.2024 – 06.22.20242024 FCBA Bench & Bar ConferenceSpeaking EngagementsSponsorship
Federal Circuit Bar Association (FCBA) / Isle of Palms, SC -
05.30.2024 – 05.31.202422nd Annual Rocky Mountain Intellectual Property & Technology Law InstituteSpeaking EngagementsSponsorship
Colorado Bar Association / Denver, COPerkins Coie is proud to be a presenting sponsor of the 22nd Annual Rocky Mountain Intellectual Property & Technology Law Institute from May 30-31, 2024, at the Westin Westminster Hotel in Denver, Colorado. -
05.30.2024 – 05.31.2024AI Year in Review: Copyrights and TrademarksSpeaking Engagements22nd Annual Rocky Mountain Intellectual Property & Technology Law Institute
Colorado Bar Association / Denver, CO -
05.30.2024 – 05.31.2024PTAB UpdateSpeaking Engagements22nd Annual Rocky Mountain Intellectual Property & Technology Law Institute
Colorado Bar Association / Denver, CO -
05.30.2024 – 05.31.2024The Risks of AISpeaking Engagements22nd Annual Rocky Mountain Intellectual Property & Technology Law Institute
Colorado Bar Association / Denver, CO
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03.22.2024NYIPLA 102nd Annual Dinner in Honor of the Federal JudiciarySpeaking Engagements
Sponsorship
NYIPLA / New York City, NYPerkins Coie is proud to sponsor the 102nd Annual Dinner in Honor of the Federal Judiciary. -
02.28.2024Judicial Wisdom in Action: The Journey From Administrative Patent Judge to Optimized AdvocateSpeaking EngagementsVirtual Panel Gateway / Virtual
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10.05.2023PTAB Bar Association Thought Leadership Summit 2023Speaking EngagementsSponsorship
Patent Trial and Appeal Board (PTAB) Bar Association / Alexandria, VAPerkins Coie sponsored this year’s PTAB Bar Association Thought Leadership Summit at the U.S. Patent and Trademark Office (USPTO) in Alexandria, Virginia. -
06.28.2023 – 07.01.20232023 FCBA Bench & Bar Conference – Fireside Chat with Federal Circuit Judge Tiffany P. CunninghamSpeaking EngagementsSponsorship
Federal Circuit Bar Association (FCBA) / Colorado Springs, COPerkins Coie sponsored the annual Federal Circuit Bar Association Bench & Bar® Conference held June 28 – July 1, 2023 in Colorado Springs, CO. -
06.01.2023 – 06.02.202321st Annual Rocky Mountain Intellectual Property & Technology Law Institute
Sponsorship
Colorado Bar Association / Denver, COPerkins Coie was proud to be a presenting sponsor of the 21st Annual Rocky Mountain Intellectual Property & Technology Law Institute on June 1-2, 2023, at the Westin Westminster Hotel in Denver, Colorado. -
01.24.2023PTAB Bar Association Young Lawyers and Agents Committee, Nuts and Bolts SeriesSpeaking EngagementsPTAB Bar Association / VirtualCounsel Maria Stubbings presented to the PTAB Bar Association Young Lawyers and Agents Committee in their Nuts and Bolts Series designed to share information among less experienced practitioners.
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06.02.2022 - 06.03.202220th Annual Rocky Mountain Intellectual Property & Technology Law ConferenceColorado Bar Association / Denver, CO
Perkins Coie was the presenting sponsor for the 20th Annual Rocky Mountain Intellectual Property & Technology Law Conference.
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03.25.2022NYIPLA 100th Annual Dinner in Honor of the Federal JudiciarySeminarsSponsorship
NYIPLA / New YorkThe Annual Dinner in Honor of the Federal Judiciary is one of the premier events in the legal industry. -
12.02.20212021 The American Lawyer Industry Awards (TALIA)Speaking EngagementsSponsorship
The American Lawyer / New York, NY -
11.04.2020 – 11.06.2020
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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 -
10.23.2019 - 10.25.2019Latest Developments of IPR and Recent Patent Invalidation CasesSpeaking EngagementsSponsorship
4th China Pharma IP Summit (CPIPS) / Shanghai, China -
09.25.2019 - 09.27.2019
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09.24.2019 - 09.26.2019
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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 -
09.10.2019Patent Attacks: Pros, Cons, Advantages, Disadvantages and Lessons Learned at the District Court, ITC and PTABSpeaking EngagementsACC / San Diego, CA
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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 -
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
Blog
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USPTO Requests Comments on PTAB-Decision Review by October 18, 2022
On July 22, 2022, the USPTO released a Request for Comments (RFC) seeking public input on Director review, Precedential Opinion Panel (POP) review, and internal circulation and review of Patent Trial and Appeal Board (PTAB) decisions. As set out in the RFC, “[t]he USPTO has implemented a number of processes that promote the accuracy, consistency,... Continue Reading…
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On February 28, 2022, the Patent Trial and Appeal Board (“PTAB”) issued a decision on priority in an interference proceeding between the Broad Institute, Inc., Massachusetts Institute of Technology, and President and Fellows of Harvard College (collectively, “Broad”) and the Regents of the University of California, University of Vienna, and Emmanuelle Charpentier (collectively, “CVC”), and... Continue Reading…
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Federal Circuit Confirms the Broad Reach of IPR Estoppel
Under 35 U.S.C. § 315(e), inter partes review (IPR) estoppel applies to “any ground that the petitioner raised or reasonably could have raised during that inter partes review.” In 2018, the Federal Circuit held in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016), that IPR estoppel does not apply... Continue Reading…
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Real Parties-In-Interest: Guidance On Who Is An RPI-And Who Is Not-In Post-Grant Proceedings
In a recent article, Real Parties In Interest Guidance On Who Is An RPI-And Who Is Not-In Post Grant Proceedings, linked here, Emily Greb and Maria Stubbing offer practical guidance and examine caselaw to clear some of the confusion and frustration practitioners encounter when real parties-in-interest in post-grant review proceedings before the U.S. Patent and Trademark... Continue Reading…
