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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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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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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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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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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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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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09.2017Apple v Qualcomm: FRAND or FoeArticles
Ryan McBrayer, Andrew Culbert and Tyler Bowen explore the licensing battle that may serve as a harbinger of things to come in this second article in a four-part series relating to a recent shift in the smartphone industry from traditional patent infringement litigation to antitrust and fair, reasonable, and non-discriminatory (FRAND) disputes.
Presentations
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04.28.2016Inter Partes Review of Patents: Congress Strikes BackSpeaking EngagementsAssociation of Corporate Counsel, Arizona Chapter
