Patents: Post-Grant Podcast

In this episode of the Post-Grant Podcast , Andy Zappia, Bryan Smith, and Ted Merkel explore a significant new director memo that changes how ex parte reexaminations are initiated at the Patent Office. They explain what ex parte reexam is, when and why it is used, and how new preorder patent owner submissions shape strategy for both requesters and patent owners. They also discuss how tightening IP...

In this episode of the Post-Grant Podcast , Andy Zappia and Nick Gallo explore how the evolving law on subject matter eligibility under Section 101 intersects with post-grant practice, particularly post-grant review (PGR) proceedings. They explain when and why PGR is available, how its broad estoppel and nine‑month filing window shape strategy, and when it may (or may not) make sense to pursue sub...

In this episode of the Post-Grant Podcast , Andy Zappia and Bryan Smith break down the USPTO's proposed rule for IPR and PGR proceedings designed to limit multiple validity challenges to patents. They discuss how the proposed rule would limit access to those proceedings, including a mandatory stipulation requirement, an automatic denial of institution if another tribunal has rendered a determinati...

In this episode of our Post-Grant Podcast series, Andy Zappia and Ted Merkel delve into the complexities of the least-used proceeding created by the America Invents Act (AIA): namely derivation proceedings. The discussion highlights the first Federal Circuit decision reviewing a derivation proceeding and examines the challenges petitioners face in these cases, particularly the number of elements t...

In this episode of the Post-Grant Podcast , Andy Zappia, Nick Gallo, and Bryan Smith explore the evolving landscape of estoppel in inter partes review (IPR) and post-grant review (PGR) proceedings at the Patent Trial and Appeal Board (PTAB). The discussion centers around the recent Federal Circuit decision in the Ingenico  case, which narrows the scope of IPR estoppel, and its potential tension wi...

In this episode of the Post-Grant Podcast , Troutman Pepper Locke Partner Andy Zappia is joined by Counsels Nick Gallo and Bryan Smith to explore recent shifts in discretionary denial practice at the Patent Trial and Appeal Board (PTAB). They discuss the implications of these changes for patent owners and petitioners, highlighting strategies for navigating the increased unpredictability in discret...

Please join our Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings. In this episode, Troutman Pepper attorneys Andy Zappia, Kim Coghill, and Bryan Smith discuss the new final rule issued for director review in post-grant proceedings before the Patent Trial and Appeal Board (PTAB). Hosted by...

Please join our Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings. In this episode, Troutman Pepper Partners Andy Zappia, Meg O'Gara, and Duke Fitch discuss recent developments in obviousness-type double patenting and original patent requirements, and how they might impact strategies in pos...

Please join our Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings. In this episode, Troutman Pepper Partner Andy Zappia and Counsel Bryan Smith analyze the sanctions order made public on February 6 in the OpenSky v. VLSI IPR proceeding. They explore how sanctions work at the PTAB, the types...

Please join Troutman Pepper’s Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings at the U.S. Patent Office (USPTO). In this episode, Nick Gallo moderates a discussion with firm colleagues Andy Zappia and Bryan Smith on the increasingly active role of the USPTO director in inter partes and po...

Please join Troutman Pepper's Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings. In this episode, Troutman Pepper Partner Andrew Zappia moderates a discussion with fellow firm Partner Gunnar Leinberg and Associate Christina Shifton on patent-eligible subject matter disputes under 35 USC Sec...

Please join Troutman Pepper's Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings. In the final installment of this three-episode series, Troutman Pepper attorney Andy Zappia moderates a discussion with his colleagues Michael Goldman and Megan Thisse O'Gara on the mechanics and strategic cons...

Please join Troutman Pepper’s Intellectual Property and Health Sciences practice groups for our podcast series, which focuses on strategies, trends, and other happenings in post-grant proceedings. In this second installment of a three-episode series, Troutman Pepper Attorney Andy Zappia moderates a discussion with his colleagues Michael Goldman and Megan Thisse O’Gara, on the mechanics and best st...

Please join Troutman Pepper's Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings. In this first of a three-episode series, Troutman Pepper attorney Andy Zappia moderates a discussion with his colleagues Michael Goldman and Megan Thisse O'Gara on the pros and cons of reissue versus reexaminat...

Please join Troutman Pepper’s Intellectual Property and Health Sciences Practice Group for the second season and first installment of our podcast series focused on strategy, trends, and other happenings at the PTAB. In this episode, Troutman Pepper Partner Maia Harris moderates a lively discussion with fellow firm Partner Andrew Zappia and Associate Christina Shifton on discretionary denials under...

Please join Troutman Pepper's Intellectual Property and Health Sciences Practice Group for the sixth installment of the podcast series focused on strategy, trends, and other happenings at the PTAB. In this episode, Maia Harris, a partner in the firm, moderates a lively discussion with fellow firm partners Frank Liu and Dustin Weeks. Our speakers discuss evidence of secondary considerations of non-...

Please join Troutman Pepper’s Intellectual Property and Health Sciences practice groups for the fifth installment of their podcast series on strategy, trends, and other happenings at the PTAB. Moderated by Troutman Pepper Partner Maia Harris, this episode features Troutman Pepper Partners Michael Goldman, Edwin (Ted) Merkel, and Andrew Zappia, who focus on the PTO’s recent announcement to extend i...

Please join Troutman Pepper’s Intellectual Property and Health Sciences practice groups for the fourth installment of their podcast series on strategy, trends, and other happenings at the PTAB. Moderated by Troutman Pepper Partner Maia Harris, this episode features Troutman Pepper Partner Dustin Weeks and Associate Megan O’Gara, who discuss doctrine and practical issues surrounding the the prohibi...

This episode of our Post-Grant podcast series discusses real parties in interest and how time bars come into play. Hosted by Simplecast, an AdsWizz company. See pcm.adswizz.com for information about our collection and use of personal data for advertising.

In this episode Maia Harris talks with Troutman Pepper Partner Michael L. Goldman and Associate Megan Thisse O’Gara who discuss the basics of supplemental examinations and provide insights for patent owners considering this option. Our speakers also cover the use of supplemental examination to dispose of validity challenges or duty of candor concerns, why a patent owner might file a supplemental e...

Moderated by Maia Harris, this episode features Troutman Pepper Partners Dustin Weeks and Andrew Zappia, who discuss IPR institution procedures and strategies, including the importance of defeating a petition early as a patent owner, as well as considerations regarding patent litigation strategies as a whole. During this podcast, our experts also delve into the substantive and technical arguments...