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Publications
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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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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. -
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. -
2016AIA Trial Proceedings Before Patent OfficeChapter 15
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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.
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11.2016Anatomy of a Patent Case, Bloomberg BNA and the Federal Judicial CenterLawyer PublicationsContributing author for a new chapter on America Invents Act proceedings in the third edition of Anatomy of a Patent Case, a book prepared by the Complex Litigation Committee of the American College of Trial Lawyers and published by the Federal Judicial Center and Bloomberg BNA. The FJC makes the book available to all sitting district court judges, and Bloomberg BNA makes the book available to the public.
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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. -
07.01.2015Perkins Coie Attorneys Publish Article on the Strategic Use of Inter Partes Review (IPR) Proceedings Against Patents Asserted at the U.S. International Trade Commission (ITC)Lawyer PublicationsBing Ai, Kevin Patariu, and John Schnurer published an article in the June/July 2015 issue of Today’s General Counsel on the strategic use of inter partes review (IPR) proceedings against patents asserted at the U.S. International Trade Commission (ITC).
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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.
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06.14.2013USPTO Patent Trial and Appeal Board Completes the First Patent Invalidity Trial Under the America Invents ActUpdatesIn its first “final” decision under the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO)’s Patent Trial and Appeal Board (PTAB) has invalidated and cancelled all five challenged claims of U.S. Patent No. 6,553,350, finding that the claims recited unpatentably abstract ideas and did not recite a “useful” invention as required by 35 U.S.C. § 101. A jury in a Texas federal district court had previously found that the petitioner, SAP America, Inc., infringed three of the claims at issue in the petition, awarding patent owner Versata Software, Inc. $345 million in damages. A Federal Circuit panel affirmed that award last month, although SAP has petitioned for rehearing (on grounds relating to infringement and damages rather than validity).
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06.27.2012Comparing the New Inter Partes Challenge Procedures of the America Invents ActUpdates
The America Invents Act (AIA) changed the landscape in the United States for those seeking to challenge the validity of an issued patent outside of litigation. On September 16, 2012 Inter Partes review (IPR) will replace the current Inter Partes reexamination (IPX) procedures.
Final Rules relating to these and other AIA procedures will be issued by the USPTO by August 16, 2012 and thus although planning should start now, flexibility will be important during the transition.
A comparison of each procedure and a detailed comparison of the impending changes is included in this update.
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09.16.2011President Obama Signs the America Invents ActUpdatesToday, after years of contentious debate over what should constitute “patent reform,” President Obama signed into law the America Invents Act, regarded by some to be the most significant change to the U.S. patent system since the Patent Act of 1952.
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1996Degenerate Four-Wave Mixing in Two-Level Saturable AbsorbersArticles
Journal of Optical Society of America, B13(11), Page 2408
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1995Alkali-Metal Vapors for Optical Information ProcessingArticlesAdvanced Materials 7, Page 319
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1994“A Thin Atomic Vapor as a Nonlinear Optical Medium”ArticlesApplied Physics Letters 64, Page 951
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1994“Low-intensity Degenerate Four-wave Mixing at the Cesium D1 Resonance in Thin Cells”ArticlesOptics Letters, Volume 19, Issue 24, Page 2071
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1994“Optical Correlator That Uses Cesium Vapor”ArticlesOptics Letters, Volume 19, Issue 21, Page 1765
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1994Optical Image Processing by an Atomic VaporArticlesNature 371, Page 318
Presentations
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11.21.2019A Workshop for Chinese Hi-tech Emerging and Startup Companies: Getting Your Patent Portfolios Ready for Competitive Chinese and International MarketplacesSeminarsPerkins Coie / Shenzhen, ChinaPlease join Perkins Coie LLP and Liu Shen & Associates for an informative and in-depth discussion of key legal issues companies face in doing business in the U.S.
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04.2015Patent Litigation Seminar in Beijing, ChinaPatent Litigation Seminar sponsored by Tsinghua University School of Law; Beijing, China. Speakers include ITC Commissioner Johanson and U.S. Patent Office and Trade Officials discussing U.S. District Court and administrative proceedings before the U.S. International Trade Commission (ITC) and USPTO Patent Trial and Appeal Board (PTAB). The seminar was moderated by Di Zhang in both English and Chinese.
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04.2015Patent Litigation Seminar in Shenzhen, ChinaPatent Litigation Seminar Sponsored by the Shenzhen Patent Law Association; Shenzhen, China. Speakers include ITC Commissioner Johanson and U.S. Patent Office Officials discussing U.S. District Court and administrative proceedings before the U.S. International Trade Commission (ITC) and USPTO Patent Trial and Appeal Board. The seminar was moderated by Di Zhang in both English and Chinese.
