Post-Grant Resources

Welcome to Perkins Coie’s post-grant resource library. Explore in-depth analysis, original research, and guides on the developing procedures for challenging the validity of a patent granted by the U.S. Patent and Trademark Office.  

• IPR Evolution: Decisions and Developments Shaping Inter Partes Review Practice
  In this edition of the IPR Evolution guide, we offer two in-depth analyses based on IPR statistics, and a third analysis focused on a persistent and thorny issue relevant to every post-grant proceeding. Read our Analysis and Practice Tips
• The Impact of Prior Claim Constructions Since The PTAB Adopted The Same Claim Construction Standard As Other Courts
  In 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. Greater consistency was the goal, but since the realignment, questions have surfaced about how to deal with terms previously construed by other courts under the same standard. Read The Impact of Prior Claim Constructions Since The PTAB Adopted The Same Claim Construction Standard As Other Courts
• Real Parties-In-Interest: Guidance On Who Is An RPI—And Who Is Not—In Post-Grant Proceedings
  In 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. To consider a post-grant proceeding, the Patent Trial and Appeal Board insists all real parties-in-interest be identified. But the rules determining if a party is a real party-in-interest are far from clear. In this article, we examine caselaw to clear some of the confusion and frustration practitioners encounter when assessing who is—and who is not—a real party-in-interest, and offer practical guidance. Read Real Parties-In-Interest: Guidance On Who Is An RPI—And Who Is Not—In Post-Grant Proceedings
• IPR Practice: “Good Causes” and Responding to Patent Owners’ Preliminary Responses
  We wondered if some “good causes” were more effective than others when seeking leave to reply to a patent owner’s preliminary response (POPR) before institution of an inter partes review proceeding. Our analysis looks at the top 10 “good cause” arguments and their connection to institution decisions. Read What Qualifies as a Good “Good Cause” When Responding to a Patent Owner’s Preliminary Response?
• IPR >> IRL
  How do inter partes reviews work in real life? Our brief guide breaks down the IPR process and suggests basic strategies for challengers and patent owners. View our IPR >> IRL Guide
• IPR Evolution
  A one-stop collection of insights and research on noteworthy decisions and practical effects for parties and attorneys involved with inter partes reviews. Volume 1, March 2020. Review our IPR Evolution Publication
• IPRs + Prior Art
  Proving up prior art when working with publications has been complicated and unpredictable. In this article, we look at varying opinions from Patent Trial and Appeal Board panels and issues triggered by Hulu, LLC v. Sound View Innovations, LLC. Read Proving Up Publications as Prior Art in Inter Partes Review Proceedings After Hulu
• IPRs + Multiple Petitions
  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. Read Fewer Bites at the IPR Apple? Impact of Recent Decisions and Guidance on Multiple Petitions 
• U.S. Supreme Court’s SAS Decision 
  Did 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. Read The Supreme Court’s SAS Decision: Has All-or-Nothing Institution Created a Wave of Change?
• The Impact of The PTAB’s Motion to Amend Pilot Program
  Motions 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. Read The Impact of The PTAB’s Motion to Amend Pilot Program