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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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. -
07.01.2019Strategic 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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12.15.2017Obviousness In The Wake Of ArendiArticles
Intellectual Property Watch
Since the U.S. Court of Appeals for the Federal Circuit issued its opinion in Arendi S.A.R.L. v. Apple Inc. last August, many patent commentators have asserted that the decision marked a significant change in the analysis of obviousness under 35 U.S.C. § 103, especially as a weakening of single-reference obviousness grounds.
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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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11.2015Strategy Considerations for Inter Partes Review PetitionersArticlesSince inter partes review (IPR) proceedings were implemented in September 2012, they have become an attractive supplement to district court litigation for contesting the validity of a patent.
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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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02.16.2024PTAB Panel: Ex Parte Appeals and AIA TrialSpeaking EngagementsUtah State Bar 26th Annual IP Summit / Salt Lake City, UT
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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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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 -
01.31.2019Centerforce Women in Law and IPSpeaking Engagements
Panelist
Seattle , WA
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10.18.2018 - 10.19.2018ChIPs Annual Global SummitSpeaking EngagementsSponsorship
Washington D.C. -
09.23.2018 - 09.25.2018IPO Annual MeetingSponsorship
Chicago, IL -
06.05.2018Centerforce IP Strategy SummitSpeaking EngagementsChicago, IL
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05.31.2018 - 06.02.2018Rocky Mountain IP InstituteSpeaking EngagementsDenver, CO
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03.23.2018NYIPLA Annual Dinner in Honor of the Federal JudiciarySponsorship
New York, NY -
03.22.2018 - 03.23.2018PTAB Bar Association Annual MeetingSpeaking Engagements
Panelist
Washington D.C. -
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