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Publications
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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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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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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.
Presentations
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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. -
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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06.25.2020
Life Science Legal Report
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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…
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Federal Circuit Applies § 325(d) to Reexamination Requests
Section 325(d) gives the Patent Trial and Appeal Board (“PTAB”) discretion to deny a post-grant petition when “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). Both the PTAB and the Federal Circuit have opined on the discretionary denial provisions in 35 U.S.C. § 325(d) in... Continue Reading…
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Federal Circuit emphasizes high bar for enablement of functional claims
In two recent decisions in Amgen Inc. v. Sanofi, Aventisub LLC, the Federal Circuit has made clear that broad functional patent claims must be fully enabled and underscored the high bar for enablement of broad biological compound claims including functional limitations. Amgen v. Sanofi, Aventisub LLC, 987 F.3d 1080 (Fed. Cir. 2021). On June 21, the... Continue Reading…
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We have previously written about the Patent Trial and Appeal Board’s (“PTAB”) precedential decision in Apple Inc. v. Fintiv, Inc., which set forth six factors the PTAB will consider when assessing whether to discretionarily deny an IPR petition in light of co-pending district court litigation. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20,... Continue Reading…
