close

For more than four decades, Fenwick & West LLP has helped some of the world’s most recognized companies become, and remain, market leaders. From emerging enterprises to large public corporations, our clients are leaders in the technology, life sciences and cleantech sectors and are fundamentally changing the world through rapid innovation.  MORE >

Fenwick & West was founded in 1972 in the heart of Silicon Valley—before “Silicon Valley” existed—by four visionary lawyers who left a top-tier New York law firm to pursue their shared belief that technology would revolutionize the business world and to pioneer the legal work for those technological innovations. In order to be most effective, they decided they needed to move to a location close to primary research and technology development. These four attorneys opened their first office in downtown Palo Alto, and Fenwick became one of the first technology law firms in the world.  MORE >

From our founding in 1972, Fenwick has been committed to promoting diversity and inclusion both within our firm and throughout the legal profession. For almost four decades, the firm has actively promoted an open and inclusive work environment and committed significant resources towards improving our diversity efforts at every level.  MORE >

At Fenwick, we are proud of our commitment to the community and to our culture of making a difference in the lives of individuals and organizations in the communities where we live and work. We recognize that providing legal services is not only an essential part of our professional responsibility, but also an excellent opportunity for our attorneys to gain valuable practical experience, learn new areas of the law and contribute to the community.  MORE >

Year after year, Fenwick & West is honored for excellence in the legal profession. Many of our attorneys are recognized as leaders in their respective fields, and our Corporate, Tax, Litigation and Intellectual Property Practice Groups consistently receive top national and international rankings, including:

  • Named Technology Group of the Year by Law360
  • Ranked #1 in the Americas for number of technology deals in 2015 by Mergermarket
  • Nearly 20 percent of Fenwick partners are ranked by Chambers
  • Consistently ranked among the top 10 law firms in the U.S. for diversity
  • Recognized as having top mentoring and pro bono programs by Euromoney

MORE >

We take sustainability very seriously at Fenwick. Like many of our clients, we are adopting policies that reduce consumption and waste, and improve efficiency. By using technologies developed by a number of our cleantech clients, we are at the forefront of implementing sustainable policies and practices that minimize environmental impact. In fact, Fenwick has earned recognition in several areas as one of the top US law firms for implementing sustainable business practices.  MORE >

At Fenwick, we have a passion for excellence and innovation that mirrors our client base. Our firm is making revolutionary changes to the practice of law through substantial investments in proprietary technology tools and processes—allowing us to deliver best-in-class legal services more effectively.   MORE >

Mountain View Office
Silicon Valley Center
801 California Street
Mountain View, CA 94041
650.988.8500

San Francisco Office
555 California Street
13th Floor
San Francisco, CA 94104
415.875.2300

Seattle Office
1191 Second Avenue
10th Floor
Seattle, WA 98101
206.389.4510

New York Office
1211 Avenue of the Americas
32nd Floor
New York, NY 10036
212.921.2001

Shanghai Office
Unit 908, 9/F, Kerry Parkside Office
No. 1155 Fang Dian Road
Pudong New Area, Shanghai 201204
P.R. China
+86 21 8017 1200


America Invents Act Post-Grant Oppositions After Two Years

September 23, 2014

Stuart Meyer, Fenwick & West patent partner, was featured in a Bloomberg BNA Patent, Trademark & Copyright Journal article assessing the Patent Trial and Appeal Board’s (PTAB) handling of post-grant opposition proceedings two years after it was enabled by the America Invents Act.

In regards to the filing of petitions, ‘‘The most important takeaway from the first two years of PTAB proceedings is that these actions are extraordinarily front-loaded,” Meyer said. “It is quite difficult, if not impossible, to bring up new factual issues or propound newly thought-up legal arguments late in the proceedings.”

That holds true for oral arguments as well, Meyer asserted, because the proceedings not only ‘‘preclude new arguments, but even preclude presenting prior arguments in markedly different ways than they were previously presented.’’ He added that ‘‘this is being enforced much more strictly than is typical in court trial practice.’’

While the timing and coordination of filing petitions remains tricky, a no less important question is how many petitions to file against the same patent. Meyer advised against filing more than one petition with multiple grounds alleging unpatentability, because the PTAB tends to focus on one argument and declare the rest redundant. ‘‘Including more than two grounds presents risks that the Patent and Trademark Office will cull the grounds for you,” Meyer said.

For a patent owner in a PTAB trial, discovery remains the biggest hurdle to overcome. ‘‘The PTAB has been true to the notion that as a streamlined alternative to litigation, these proceedings will entertain only very limited, highly focused discovery,” said Meyer, adding ‘‘Virtually every attempt to bend the rules in order to enjoy discovery freedoms similar to those available under the Federal Rules of Civil Procedure has failed.’’

The full article, analyzing the full petition process, is available through the Bloomberg BNA Patent, Trademark & Copyright Journal (subscription required).