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Jennifer R. Bush

Associate, Intellectual Property  

Mountain View 650.335.7213

Overview

Jennifer Bush’s practice focuses on representing clients in prosecuting patent applications and in post-grant proceedings.

Follow Jennifer’s commentary on IPR and related issues on Between the Parties Blog.

Jennifer has experience in a wide range of technical fields, including computer software, Internet technologies, RFID, and business methods. Jennifer also has patent prosecution experience with life sciences and medical devices. She also has substantial experience with post-grant proceedings before the Patent Trial and Appeal Board (PTAB), such as inter partes reviews (IPRs), post-grant reviews (PRGs), patent appeals, and reexaminations. To date, Jennifer has served as lead counsel in 12 PGRs, making her one of the most experienced lawyers in these types of proceedings.

Jennifer’s practice also includes intellectual property strategy and counseling and she has analyzed IP issues for numerous due diligence and litigation matters. In addition to providing legal services for her clients, Jennifer is a Lecturer-in-Law at the University of California, Davis School of Law, where she teaches patent prosecution and practice. She is also a member of the faculty at the Practising Law Institute, and co-chair of the annual Fundamentals of Patent Prosecution boot camp. She has lectured on topics related to patent law at the University of California, Hastings College of the Law and Santa Clara University School of Law.

During law school Jennifer was awarded the faculty-selected Mabie Award for Outstanding Graduate, peer-selected Graduating Student of the Year, and served as Editor-in-Chief of the Santa Clara Law Review.

Prior to rejoining Fenwick & West, Jennifer was General Counsel with Apercen Partners LLC, serving as sole counsel for seven entities spanning a breadth of legal issues, including IP, employment, contract, securities, tax and general compliance matters.

Selected Publications

  • “Supreme Court Upholds IPR Patent Challenges,” Between the Parties blog, April 2018
  • “A Rare Binding PTAB Decision: Guidance On Multiple Petitions,” Between the Parties blog, November 2017
  • “Lessons from Five Years of PTAB Trials,” IPWatchdog.com, September 2017
  • “PTAB Hints at How Follow-on Petitions Might Succeed,” Between the Parties blog, September 2017
  • “What Petitioners and Patent Owners Need to Know About the Scope of IPR Estoppel,” Between the Parties blog, March 2017
  • “Judicial Estoppel Does Not Bar Assertion of Invalidity Defenses Raised But Not Instituted in IPR,” Between the Parties blog, December 2016
  • “Cuozzo Court Concludes “Hybrid” Inter Partes Review a Specialized Procedure within Patent Office Agency Proceedings,” Between the Parties blog, September 2016
  • “The Problem of Non-instituted Grounds, Part II – Lessons from Liberty Mutual,” Between the Parties blog, September 2016
  • “The Problem of Non-instituted Grounds, Part I – “Could Have,” Would Have, Should Have,” Between the Parties blog, August 2016
  • “Review Proposed USPTO Rules,” Daily Journal, September 2015
  • “Claim Construction and Amendment Procedure During PTAB Trials: Up for Comment,” Daily Journal, September 2015
  • “Administrative Patent Judges: Not Your Typical Federal Judge,” Daily Journal, July 2014
  • “Prometheus Unbound,” SciTech Lawyer, October 2013 (co-author)
  • “Prometheus Unbound II: Does Prometheus’ Claim Recite a Law of Nature?,” Bilski Blog, July 2013 (co-author)
  • “Prometheus Unbound: The Untethering of Laws of Nature and Patent Eligibility from Scientific Reality,” Bilski Blog, July 2013 (co-author)
  • “Section 102 and the MPEP, in Prior Art & Obviousness 2010: Current Trends In Section 102 & 103,” Practising Law Institute, June 2011 (co-author)
  • “The Tortoise, the Hare, and the Status Quo,” Fenwick & West IP Bulletin, Fall 2010 (co-author)
  • “An Introduction to U.S. Patent Prosecution, in Fundamentals Of Patent Prosecution 2010: A Boot Camp For Claim Drafting & Amendment Writing,” Practising Law Institute, July 2010 (co-author)
  • “Traveling Together Along the Patent Prosecution Highway,” IP Review Online, March 19, 2010
  • “The Patent Prosecution Highway: An Expanding Option for Multinational Patent Filings,” Fenwick & West IP Bulletin, Summer 2009
  • “Giving Another Look to Patent Reexaminations,” Fenwick & West IP Bulletin, Spring 2008 (co-author)
  • “Patent Possibilities,” Los Angeles Daily Journal, March 6, 2008 (co-author)
  • “The Patent Prosecution Highway: A First Step for International Patent Harmonization?,” Fenwick & West IP Bulletin, Fall 2006
  • “Closer View Sees Bumps in the Patent Prosecution Highway,” Los Angeles Daily Journal, September 19, 2006
  • “‘Phillips’ May Decide Conflict in Patent Claim Construction,” Los Angeles Daily Journal, December 20, 2004
  • “Out of Context: Texas Digital, the Uncertainty of Language, and the Search for Ordinary Meaning,” IDEA, 2004
  • “It’s a Small World After All: Proposed Solutions for Global Antitrust in a System of National Laws,” Santa Clara Journal of Int’l Law, 2003
  • “Employers Take Note,” State Bar of California Diversity Newsletter, Fall 2003
  • “Book Review: The World Court in Action: Judging Among the Nations,” Santa Clara Law Review, 2002, reprinted in UN Newsletter, October 2003 (co-author)

Sample Patents

Microelectromechanical Systems

Radio-frequency Identification

Polarizing Light Filters

Predictive Modeling

Object-oriented Processing

Database Management and Data Analytics

Data Security

Image Recognition

Information Retrieval

Media Streaming

User Interface/Graphics

Immunological Assays

Medical Device

 
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