Jennifer Bush

Jennifer Bush focuses her practice on prosecuting patent applications 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. Her practice also involves intellectual property strategy and counseling, as well as inter partes reviews, patent appeals and reexaminations. Jennifer has analyzed intellectual property 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 Practicing 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.

View Jennifer's bio on Fenwick.com

Firm/Organization: Fenwick & West LLP

Blogs: Between the Parties

Latest Articles

Between the Parties

Patent Owners Get Final Say in Updated Trial Practice Guide: Sur-replies to Petitioner’s Reply Now a Matter of Right

By Jennifer Bush on September 4, 2018

With the U.S. Patent and Trademark Office Trial Practice Guide update released last month, a significant change was made to the substantive filings. In the revised section II.I. (Sur-replies), the following language changes the rules: “Sur-replies to principal briefs (i.e., to a reply to a patent owner response or to a reply to an opposition to a motion to amend) normally will be authorized by the scheduling order entered at institution.” TPG, p. 14. The…

Between the Parties

Changes in PTAB Trial Practice May Lead to Increase in District Court Stays

By Jennifer Bush on July 20, 2018

The recent decision in SAS Institute v. Iancu — in combination with the proposed shift from a broadest reasonable interpretation (BRI) standard to the Phillips standard for claim construction used in district court — moves trials at the U.S. Patent Trial and Appeal Board toward being the most likely forum for first consideration of claim construction and patent validity, and perhaps a shift toward becoming a truer “alternative” to litigation, as Congress envisioned under the America…

Between the Parties

Supreme Court Upholds IPR Patent Challenges

By Jennifer Bush on April 26, 2018

In a much-anticipated decision, the U.S. Supreme Court held Tuesday in Oil States Energy Services v. Greene’s Energy Group, that inter partes review does not violate Article III or the Seventh Amendment. Justice Clarence Thomas wrote for the seven-justice majority, and Justice Stephen Breyer wrote a concurrence, joined by Justices Ruth Bader Ginsburg and Sonia Sotomayor. Justice Neil Gorsuch penned the dissent, in which he was joined by Chief Justice John Roberts, whose dissent was…

Between the Parties

A Rare Binding PTAB Decision: Guidance On Multiple Petitions

By Jennifer Bush on November 9, 2017

The recent decision in General Plastic Industrial Co. v. Canon Kabushiki Kaisha denying the petitioner’s requests for a rehearing provided a “baseline” of factors to be considered as to the limited circumstances when second — or “follow-on” — petitions are likely to be successful in Patent Trial and Appeal Board trials. The petitioner in General Plastic filed two inter partes review petitions, each challenging one patent. The PTAB denied institution on the merits. The petitioner then sought rehearing, which was denied.…

Between the Parties

PTAB Hints at How Follow-on Petitions Might Succeed

By Jennifer Bush on September 25, 2017

The recent Patent Trial and Appeal Board decision in General Plastic Industrial v. Canon Kabushiki Kaisha (PTAB September 6, 2017; Paper 19) has caused many commentators to note that patent owners should be pleased with the decision as favorable to them. Indeed, the PTAB articulated that “multiple, staggered petition filings, such as those here, are an inefficient use of the inter partes review process and the Board’s resources.” However, historically less than 50% of follow-on…

Between the Parties

Lessons from Five Years of PTAB Trials

By Jennifer Bush on September 14, 2017

As we mark the fifth anniversary of the effective date of Patent Trial and Appeal Board trials on September 16, we find that the early years of the practice have been a learning experience both for the PTAB and for PTAB practitioners. The PTAB had some initial growing pains when the new procedures began, with the number of petitions received far exceeding the number expected. The U.S. Patent and Trademark Office requested and received much…

Between the Parties

What Petitioners and Patent Owners Need to Know About the Scope of IPR Estoppel

By Jennifer Bush on March 2, 2017

Judge Sue L. Robinson of the U.S. District Court for the District of Delaware recently identified a logical fallacy in the “statutory estoppel” jurisprudence with respect to 35 U.S.C. § 315(e)(1). According to the statute, a petitioner of an IPR that results in a final decision will be estopped from asserting invalidity in a civil action based on “any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. §…

Between the Parties

Judicial Estoppel Does Not Bar Assertion of Invalidity Defenses Raised But Not Instituted in IPR

By Jennifer Bush on December 5, 2016

In the most recent action in Depomed, Inc. v. Purdue Pharma LP, a patent infringement case involving pain reliever OxyContin, Purdue Pharma asked the U.S. District Court for the District of New Jersey to confirm that certain of the defenses it raised under 35 U.S.C. §§ 102 and 103 remained after a decision in the inter partes review (IPR) proceedings pertaining to the same patent. Depomed offered several theories to prevent Purdue from pursuing…

Between the Parties

Cuozzo Court Concludes “Hybrid” Inter Partes Review a Specialized Procedure within Patent Office Agency Proceedings

By Jennifer Bush on September 26, 2016

The “hybrid” procedure of inter partes review has been considered since its inception by some to be litigation at occurs at the patent office, rather than in district court. The designation of IPRs and other procedures as “patent office trials” by the America Invents Act (AIA), as well as adherence to the Federal Rules of Evidence (FRE) in many instances helped contribute to this sentiment. However, in Cuozzo Speed Technologies, LLC v. Lee, No. 15-446…

Between the Parties

The Problem of Non-instituted Grounds, Part II – Lessons from Liberty Mutual

By Jennifer Bush on September 7, 2016

For the issues raised for petitioner and patent owner like by non-instituted grounds, a possible model emerges based on the Board’s actions in Liberty Mutual, and in consideration of a near analogue in patent prosecution practice. In Liberty Mutual (although very infrequently thereafter), the Board identified from within the “redundant” grounds raised, various groupings of grounds, and issued a pre-institution decision order that gave the petitioner in that case seven days to select which sets…

Jennifer Bush

Patent Owners Get Final Say in Updated Trial Practice Guide: Sur-replies to Petitioner’s Reply Now a Matter of Right

Changes in PTAB Trial Practice May Lead to Increase in District Court Stays

Supreme Court Upholds IPR Patent Challenges

A Rare Binding PTAB Decision: Guidance On Multiple Petitions

PTAB Hints at How Follow-on Petitions Might Succeed

Lessons from Five Years of PTAB Trials

What Petitioners and Patent Owners Need to Know About the Scope of IPR Estoppel

Judicial Estoppel Does Not Bar Assertion of Invalidity Defenses Raised But Not Instituted in IPR

Cuozzo Court Concludes “Hybrid” Inter Partes Review a Specialized Procedure within Patent Office Agency Proceedings

The Problem of Non-instituted Grounds, Part II – Lessons from Liberty Mutual

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