Jennifer R. Bush
650-335-7213
jbush@fenwick.com
Associate
Litigation
Jennifer R.
Bush
Jennifer R.
Bush
Associate
Litigation
Jennifer represents clients in a variety of post-grant proceedings and patent litigation matters. She has substantial experience before the Patent Trial and Appeal Board, including inter partes reviews, post-grant reviews, patent appeals, and reexaminations, leading to her being named among the Top 50 Women in PTAB Trials. To date, Jennifer has served as lead or back up counsel in 35 PGRs, making her the most experienced PGR lawyer in the country, and has served as lead and backup counsel in many IPRs. Jennifer has achieved favorable results for clients in patent suits, including obtaining multiple decisions of patent ineligibility under Section 101 from both the PTAB and the Court of Appeals for the Federal Circuit.
Jennifer also has over 15 years of patent prosecution experience across a wide range of technical fields, including computer software, internet technologies, RFID, and life sciences and medical devices.
- IPR counsel for CSafe Global, a global cold chain shipping provider, before the U.S. Patent Trial & Appeal Board and part of the team involved in related patent litigation in the Northern District of Georgia, whereby CSafe seeks to enforce its patents against its competitor, Envirotainer AB. These matters remain on-going.
- Counsel for DocuSign for a series of IPRs against a former expert who filed multiple suits against the company; also was part of the team working on the co-pending litigation. These matters remain on-going.
- Represented Supercell Oy at the PTAB as part of a longstanding patent dispute with rival video game company GREE, Inc., including a series of PGR victories including meaningful institutions and claim cancellations, and invalidation of several key patents for claims asserted against Supercell Oy in litigation.
- IPR counsel representing a genealogy company in cases related to collection vials for DNA samples. Part of the team that pursued the IPRs through the oral hearing, however, the overall dispute settled before a final written decision.
- Represented a multinational information technology company in the firm’s first ever IPR, against a notorious non-practicing entity who was targeting small businesses using print-to-email technology. Successfully invalidated nearly all claims.
- IPR counsel for CSafe Global, a global cold chain shipping provider, before the U.S. Patent Trial & Appeal Board and part of the team involved in related patent litigation in the Northern District of Georgia, whereby CSafe seeks to enforce its patents against its competitor, Envirotainer AB. These matters remain on-going.
- Counsel for DocuSign for a series of IPRs against a former expert who filed multiple suits against the company; also was part of the team working on the co-pending litigation. These matters remain on-going.
- Represented Supercell Oy at the PTAB as part of a longstanding patent dispute with rival video game company GREE, Inc., including a series of PGR victories including meaningful institutions and claim cancellations, and invalidation of several key patents for claims asserted against Supercell Oy in litigation.
- IPR counsel representing a genealogy company in cases related to collection vials for DNA samples. Part of the team that pursued the IPRs through the oral hearing, however, the overall dispute settled before a final written decision.
- Represented a multinational information technology company in the firm’s first ever IPR, against a notorious non-practicing entity who was targeting small businesses using print-to-email technology. Successfully invalidated nearly all claims.
- CSafe Global
- Digital Turbine
- DocuSign
- Intuit
- Meta
- Supercell Oy
- CSafe Global
- Digital Turbine
- DocuSign
- Intuit
- Meta
- Supercell Oy
- Jennifer founded Fenwick’s Between the Parties Blog, and regularly shared commentary on IPRs and related issues
- “Patent Fundamentals Bootcamp 2018: An Introduction to Patent Drafting, Prosecution, and Litigation,” Practising Law Institute, May 2018 (co-author)
- “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
- Jennifer founded Fenwick’s Between the Parties Blog, and regularly shared commentary on IPRs and related issues
- “Patent Fundamentals Bootcamp 2018: An Introduction to Patent Drafting, Prosecution, and Litigation,” Practising Law Institute, May 2018 (co-author)
- “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
- PTAB Bar Association, member
- PTAB Bar Association PTAB Trials Committee, member
- PTAB Bar Association, member
- PTAB Bar Association PTAB Trials Committee, member
Recognition Recognition Recognition
Recognition Recognition Recognition
Recognition
Patexia
2023
Recognized among the Most Active IPR Attorneys
Managing IP
2020 - 2021, 2023
Recognized Jennifer as a Rising Star
PTAB Bar Association
2021
Named Jennifer to its 2021 Top 50 Women in PTAB Trials list
Recognition
Patexia
2023
Recognized among the Most Active IPR Attorneys
Managing IP
2020 - 2021, 2023
Recognized Jennifer as a Rising Star
PTAB Bar Association
2021
Named Jennifer to its 2021 Top 50 Women in PTAB Trials list