Fitch Even News Feed Sep 2018 00:00:00 -0800firmwise Even Partner Amanda Lowerre O'Donnell to Present at PLI Advanced Patent Prosecution Workshop<p>Fitch Even partner <a href=";A=2599&amp;format=xml&amp;p=5482">Amanda Lowerre O&rsquo;Donnell</a> will be a featured presenter during five sessions of the Practising Law Institute&rsquo;s Advanced Patent Prosecution Workshop 2018: Claim Drafting &amp; Amendment Writing, taking place on September 27&ndash;28, 2018, at the University of Chicago Gleacher Center. The program is designed for corporate practitioners or outside counsel with patent experience who seek to improve their patent preparation and prosecution skills, including claim drafting and amendment writing, conducting examiner interviews, and drafting effective office action responses.</p> <p>On September 27, Amanda will be one of three instructors facilitating an interactive workshop on Advanced Claim Drafting related to the electromechanical field. During this session, attendees will receive individualized feedback from the faculty on claim-drafting exercises.</p> <p>On September 28, Amanda will present a session on Advanced Patent Prosecution Issues, covering topics specific to the electromechanical arts, including the use of means-plus-function claims, how to decide whether and when to amend or not amend claims, and how to structure patentability arguments to gain allowance while minimizing estoppel.</p> <p>Later that day, Amanda will co-facilitate an interactive workshop on &ldquo;Advanced Amendment Drafting,&rdquo; guiding participants as they draft amendments and apply substantive patent law to practical patent prosecution problems. Afterward, she will be among the faculty presenting a session on Examiner Interviews, during which they will discuss the legal requirements for examiner interviews. They will also perform a hypothetical interview, critique it, and provide strategies for achieving a productive examiner interview.</p> <p>In the closing session of the conference, Amanda will participate in a roundtable discussion of USPTO trends and available resources across all technology areas and will provide tips and recommend strategies for effectively prosecuting applications in view of these trends.</p> <p>For more information on the workshop, please visit the <a href="">PLI website</a>.</p> <p>This is the fifth consecutive year that Amanda has served on the faculty of this annual PLI patent prosecution workshop. Amanda focuses her practice primarily on patent prosecution, patent licensing, and commercial clearance assessments. She counsels clients in the U.S. and abroad working in a variety of technical fields and product applications, including electronic components, energy and renewable energy applications, food processing, packaging technology, and medical devices. In addition, Amanda regularly advises clients on business method protections as well as open-source software issues.<br /> <br /> &nbsp;</p>Professional Activities14 Sep 2018 00:00:00 -0800 Alert: PTAB Decision Vacated for Failure to Consider Arguments Raised in Petitioner's Reply<p>On August 27, in <i><a href="">Ericsson, Inc. v. Intellectual Ventures I LLC</a></i>, the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) abused its discretion in refusing to consider part of Ericsson&rsquo;s reply brief, when the PTAB had altered its claim construction after Ericsson filed its institution petition. The court therefore vacated and remanded the PTAB&rsquo;s decision.</p> <p>Intellectual Ventures (&ldquo;IV&rdquo;) owns U.S. Patent No. 5,602,831, which is directed to wireless communications systems. The &rsquo;831 patent generally claims a signaling method with multiple features, including an &ldquo;interleaving&rdquo; step and a &ldquo;varying data packet size&rdquo; step. Ericsson challenged the patent in an <i>inter partes</i> review (IPR) proceeding and asserted two prior art references, the Reed and Mahany patents. Ericsson asserted that Reed disclosed &ldquo;interleaving&rdquo; and that Mahany taught &ldquo;varying data packet size.&rdquo;</p> <p>In its petition, Ericsson argued that the claims should be construed under the &ldquo;broadest reasonable interpretation&rdquo; standard. The PTAB agreed and, construing the claims under this standard, instituted the IPR proceedings.</p> <p>IV then filed its patent owner&rsquo;s response, arguing for the first time that the claims should be construed under the narrower standard clarified in <i>Phillips v. AWH Corp.</i> because the patent had expired prior to institution. (See our earlier <a href=";an=76328&amp;anc=180&amp;format=xml&amp;p=5486">IP alert</a> discussing this issue). Ericsson filed a reply acknowledging the narrower construction standard and presenting additional arguments based on this narrowed standard.</p> <p>In its institution decision, based on its construction of two &ldquo;interleaving&rdquo; terms, the PTAB found that Ericsson had not established a reasonable likelihood of success in showing certain claims to be unpatentable over the combination of Reed and Mahany, noting that Reed did not show a certain aspect of the interleaving step. Ericsson argued to the contrary in its reply, contending there was &ldquo;no substantial difference&rdquo; between Reed&rsquo;s technique and the technique claimed under the revised construction, and therefore Reed did contain such disclosure. The PTAB declined to consider this portion of Ericsson&rsquo;s argument, stating that the reply is &ldquo;not an opportunity for Petitioner to identify, for the first time, new and different prior art elements that are alleged to satisfy the claim requirements.&rdquo; Ultimately, the PTAB ruled against Ericsson, and Ericsson appealed.</p> <p>Applying the abuse of discretion standard of review, the Federal Circuit vacated the PTAB&rsquo;s decision and remanded it for consideration of Ericsson&rsquo;s arguments. The Federal Circuit noted that the PTAB does have discretion to strike arguments improperly raised for the first time in a reply. But the court found that Ericsson&rsquo;s petition had generally raised the argument concerning Reed, such that the reply brief did not in fact raise new arguments. Additionally, the PTAB had revised its claim construction after instituting the IPR. The court determined that Ericsson should have been given an opportunity to respond to the altered claim construction. Notwithstanding the outcome of this case, the court cautioned that it was not altering the PTAB&rsquo;s general practice of limiting the content of replies.</p> <p>Under this decision, petitioners may have greater freedom to develop the grounds asserted in the petition through their reply brief. Patent owners have another reason to exert every effort to convince the PTAB not to institute post-grant proceedings, because once trial is instituted, petitioners may be allowed to expand the arguments in the petition.</p> <p>For more information on this decision, please contact Fitch Even partner <a href=";A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a>, author of this alert.</p> <p><i>Fitch Even law clerk Vincent R. Meyer contributed to this alert.</i></p> <p>&nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts14 Sep 2018 00:00:00 -0800 Even Partner Joe Marinelli to Speak on IP Licensing<p>Fitch Even partner <a href=";A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a> will copresent two educational modules of &ldquo;IP Licensing for Business Development,&rdquo; an advanced CLE course offered by the Licensing Executives Society (LES) on September 25&ndash;28 in Chicago.</p> <p>During a session on &ldquo;Legal Issues in Patenting, Due Diligence, and Licensing,&rdquo; Joe and his copresenters will discuss legal issues related to intellectual property procurement, enforcement, and licensing transactions. Participants will learn about various types of IP protection and different forms of license agreements, as well as the strategic implications of recent IP developments, among other topics.</p> <p>In a separate session focusing on ethics, Joe and other faculty will lead course participants in an interactive workshop exploring the various ethics questions that can arise during the negotiation of an intellectual property transaction. Topics covered will include conflicts of interest, attorneys&rsquo; confidentiality obligations to clients, conflicts arising from an attorney&rsquo;s representation of an organization, truthfulness in statements to others, and conduct during litigation.<br /> <br /> Attorneys and business professionals are invited to attend. For more information and to register, please visit the <a href="">LES University website</a>.<br /> <br /> &nbsp;</p>Professional Activities13 Sep 2018 00:00:00 -0800 Alert: Petitioner in IPR Proceeding Must Always Prove It Is the Real Party in Interest<p>On September 7, the Federal Circuit issued its opinion in <i><a href="">Worlds Inc. v. Bungie, Inc.</a></i>, holding that the burden of persuasion to establish compliance with the real party in interest requirement of 35 U.S.C. &sect; 315(b) remains with the petitioner throughout an <i>inter partes</i> review (IPR) proceeding. Interestingly, the court also suggested that collateral estoppel might apply when the same issue is raised in multiple IPR proceedings.</p> <p>Bungie is a video game developer that creates games for Activision. In 2012, Worlds Inc. asserted six patents against Activision. Over a year later, in 2014, Worlds notified Activision that it intended to add Bungie&rsquo;s video game <i>Destiny</i> to the lawsuit as well. Bungie promptly filed six separate IPR petitions against the asserted patents.</p> <p>In its IPR petitions, Bungie identified itself as the real party in interest. Worlds sought additional discovery regarding whether Activision should have been named as a real party in interest as well. If Activision were a real party in interest, the IPR petitions would be time-barred under 35 U.S.C. &sect; 315(b) because Worlds had sued Activision more than one year before the filing of the petitions. In support of its request, Worlds submitted evidence of a software publishing and development agreement between Bungie and Activision demonstrating that Bungie was to perform &ldquo;legal reviews&rdquo; of software products subject to review and approval by Activision.</p> <p>The Patent Trial and Appeal Board (PTAB) denied Worlds&rsquo;s request for discovery, concluding that &ldquo;Worlds had not shown more than a &lsquo;mere allegation&rsquo; that something useful would have been found through the requested discovery.&rdquo; Ultimately, the PTAB invalidated all six of Worlds&rsquo;s patents. Worlds appealed only three of the six IPR decisions.</p> <p>On appeal, the Federal Circuit held that the PTAB erred in its analysis of the real party in interest issue by not specifically identifying which party bore the burden of persuasion. The court reasoned that the &ldquo;petitioner&rsquo;s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner.&rdquo; But this presumption merely shifts the burden of production to the patent owner&mdash;not the burden of persuasion. Thereafter, the patent owner need only produce &ldquo;some evidence&rdquo; that &ldquo;reasonably brings into question the accuracy of a petitioner&rsquo;s identification of the real parties in interest.&rdquo; In this case, the court observed that Worlds had introduced evidence of the agreement between Bungie and Activision. From this the court concluded that the agreement was &ldquo;sufficient to put Bungie&rsquo;s identification of itself as the sole real party in interest into dispute.&rdquo; As a result, the court remanded the case to the PTAB to reconsider the real party in interest issue while placing the ultimate burden of persuasion on Bungie, the petitioner.</p> <p>Bungie further contended that Worlds should be estopped from contesting the PTAB&rsquo;s real party in interest determination under the doctrine of collateral estoppel, arguing that Worlds had declined to appeal three of the six adverse IPR decisions. The court dismissed this argument based on the lack of factual development of the issue on appeal, reasoning that &ldquo;the determination of whether a party is a real party in interest may differ from one IPR to the next, even among a set of seemingly related IPRs.&rdquo; Lacking a comprehensive understanding of the underlying facts, the court instructed the PTAB to consider the collateral estoppel issue on remand. Notably, collateral estoppel <i>might</i> apparently result from these circumstances, depending on a factual record yet to be developed.</p> <p>Finally, the court declined to address the merits of the invalidity arguments, holding that the parties could raise these issues later depending on the outcome of the remanded decision.</p> <p>This case is relevant to PTAB practice because of both the time-bar issue and the potential for collateral estoppel if appeals are not taken from each of multiple related proceedings.</p> <p>For more information on this decision, please contact Fitch Even partner <a href=";A=2589&amp;format=xml&amp;p=5482">Allen E. Hoover</a>, author of this alert.</p> <p><i>Fitch Even law clerk Evan Kline-Wedeen contributed to this alert.</i>&nbsp;</p> <p>&nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b>&nbsp;</p>IP Alerts11 Sep 2018 00:00:00 -0800 Even Partner Jon Birmingham Quoted in Law360 Article on Federal Circuit Design Patent Ruling<p>Fitch Even partner <a href=";A=2574&amp;format=xml&amp;p=5482">Jon A. Birmingham</a> was quoted in today&rsquo;s issue of <i>Law360</i> in an article discussing the possible ramifications of the Federal Circuit&rsquo;s recent ruling in <i>In re Maatita </i>that a two-dimensional drawing of a three-dimensional object can, in certain circumstances, meet the enablement and definiteness requirements for a design patent.</p> <p>In the article, &ldquo;Fed. Circ. Ruling May Allow Some Designers Broad Patents,&rdquo; Jon notes, in part, that because designers are already using broken lines in patent drawings to show parts of the product that are not being claimed, the <i>Maatita</i> ruling &ldquo;gives another avenue to be creative with what people are doing as far as trying to claim broadly.&rdquo;</p> <p>The article can be read in its entirety on the <a href=";utm_source=newsletter&amp;utm_medium=email&amp;utm_campaign=ip"><i>Law360</i> website</a> (sub. req.).</p> <p>For more information on the <i>Maatita</i> case, please see the recent <a href=";an=79854&amp;format=xml&amp;p=5486">IP alert</a> written by Jon.</p>Professional Activities10 Sep 2018 00:00:00 -0800 Even Partners Mark Hetzler and Amanda O'Donnell to Speak at CBA Program<p>Fitch Even partners <a href=";A=2588&amp;format=xml&amp;p=5482">Mark W. Hetzler</a> and <a href=";A=2599&amp;format=xml&amp;p=5482">Amanda Lowerre O&rsquo;Donnell</a> will be featured panelists at a Chicago Bar Association CLE seminar on &ldquo;Going Paperless: No Time Like the Present,&rdquo; at 12:00&ndash;1:30 pm on September 12 in Chicago.</p> <p>During the program, Mark and Amanda will discuss Fitch Even&rsquo;s journey to a paperless law firm, sharing information on the technology used and the processes involved in making the transition. Ethical considerations including client confidentiality will also be covered, among other topics. Catherine Sanders Reach, CBA Director of Law Practice Management &amp; Technology, will serve as moderator.</p> <p>1.5 hours of Illinois Professional Responsibility CLE credit will be available, pending approval. To learn more about the seminar and to register, please visit the&nbsp;<a href="">CBA website</a>. The program is also accessible via <a href="">webcast</a>.<br /> <br /> <br /> &nbsp;</p>Professional Activities04 Sep 2018 00:00:00 -0800 Alert: Federal Circuit Gives Guidance on Design Patent Application Enablement and Indefiniteness<p>On August 20, in <i><a href="">In re Maatita</a></i>, a Federal Circuit panel clarified how to assess enablement and indefiniteness with respect to design patents and applications, particularly regarding multi-dimensional articles. The court reversed the decision of the Patent Trial and Appeal Board (PTAB) that affirmed the examiner&rsquo;s rejection of an application for a patent on the design of a shoe bottom, concluding that &ldquo;the level of detail required should be a function of whether the claimed design for the article is capable of being defined by a two-dimensional, plan- or planar-view illustration.&rdquo;</p> <p>Inventor Ron Maatita filed a design patent application with two figures and a single claim. The application was titled &ldquo;Shoe Bottom.&rdquo; Figure 1 is reproduced below:<br /> <br /> <img src=" 4 - Fig 1.jpg" alt="" width="378" vspace="0" hspace="0" height="158" border="0" align="absmiddle" /></p> <p>During prosecution, the examiner rejected the claim under 35 U.S.C. &sect; 112, paragraphs one and two, alleging that the &ldquo;claim is indefinite because the scope of protection sought is not disclosed in the specification or understandable as depicted in the drawings.&rdquo; The examiner noted that the claim was not enabled &ldquo;because the disclosed is not understandable to a designer of ordinary skill in the art without resorting to conjecture.&rdquo; The examiner further stated that there &ldquo;is no understanding of the shape, contour, relative placement, and orientation of the elements of the design to one other. The drawing is subject to multiple interpretations as it could be understood to be configured in a number of ways.&rdquo;</p> <p>By way of example, the examiner provided several examples that &ldquo;could match applicant&rsquo;s design when seen from a single viewpoint&rdquo;:</p> <p>The PTAB affirmed the examiner&rsquo;s rejection, and Maatita appealed that decision to the Federal Circuit.</p> <p>The Federal Circuit stated the purpose of section 112&rsquo;s definiteness requirement as follows: &ldquo;to ensure that the disclosure is clear enough to give potential competitors (who are skilled in the art) notice of what design is claimed&mdash;and therefore what would infringe.&rdquo; The Federal Circuit explained that the standard for indefiniteness is connected to the standard for infringement, concluding that &ldquo;a design patent is indefinite under &sect; 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.&rdquo;</p> <p>Applying this standard to the facts, the Federal Circuit stated that the level of detail required is a function of whether the claimed design for the article is capable of being defined by a two-dimensional plan- or planar-view illustration. Giving the examples of an entire shoe or a teapot, the court stated that they are inherently three-dimensional and could not be adequately disclosed with a single plan- or planar-view drawing because infringement would depend on the perspective chosen to view the article. This is in contrast to a rug or placemat, which could be viewed and understood in two dimensions.</p> <p>The court recognized that a shoe sole is typically three-dimensional, but that &ldquo;their ornamental design is capable of being disclosed and judged from a two-dimensional, plan- or planar-view perspective&mdash;and that Maatita&rsquo;s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should be viewed. A potential infringer is not left in doubt as to how to determine infringement.&rdquo;</p> <p>The <i>In re Maatita </i>decision is relevant for design patent prosecution because it provides guidance on how many views of an article are needed to fully disclose the scope of the design. The decision is also relevant for design patent litigation because it provides guidance on the standards and application of enablement and indefiniteness as related to the sufficiency of the drawings.</p> <p>For more information on this ruling, please contact Fitch Even partner <a href=";A=2574&amp;format=xml&amp;p=5482">Jon A. Birmingham</a>, author of this alert.</p> <p><i>For more information on recent cases involving design patents, access a recording </i><b><a href="">here</a></b><i> of the August 2018 Fitch Even webinar</i>,<b> <a href=";an=79006&amp;format=xml">Design Patent Enforcement: Recent U.S. Court and PTAB Decisions</a>.</b> </p> <p>&nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;<br /> </sup></b></p>IP Alerts24 Aug 2018 00:00:00 -0800 Alert: Voluntary Dismissal of Infringement Complaint Doesn't Stop 1-Year Time Limit to File IPR Petition<p>35 U.S.C. &sect; 315(b) precludes institution of an <i>inter partes</i> review (IPR) if the petition is filed more than one year after the petitioner is served with a complaint alleging infringement of the patent at issue. On August 16, in <i><a href="">Click-to-Call Technologies, LP v. Ingenio, Inc.</a>,</i> the Federal Circuit, in an unusual en banc footnote, held that the voluntary dismissal of an infringement complaint without prejudice does not stop section 315(b)&rsquo;s time bar.</p> <p>In 2001 Ingenio&rsquo;s predecessor entity was served with a complaint for patent infringement, and the suit was subsequently dismissed voluntarily without prejudice. Ingenio subsequently requested <i>ex parte</i> reexamination of the subject patent, which resulted in a reexamination certificate cancelling some claims, amending others, and adding nine new claims. Click-to-Call Technologies (&ldquo;CTC&rdquo;) subsequently acquired the patent and sued multiple parties, including Ingenio. In 2013 Ingenio, along with three other petitioners, filed an IPR petition challenging the patent. In its preliminary response, CTC argued that section 315(b) barred institution of trial. The Patent Trial and Appeal Board (PTAB) found that Ingenio was not barred because the 2001 suit was dismissed without prejudice, thereby leaving the parties in the same legal position as if the complaint had never been served. The PTAB instituted trial based on Ingenio&rsquo;s petition and found numerous claims unpatentable. CTC appealed.</p> <p>On appeal, CTC argued that section 315(b)&rsquo;s time bar precluded institution of the IPR. The Federal Circuit reviewed the PTAB&rsquo;s interpretation of section 315(b) in light of <i>Chevron, U.S.A., Inc v. Natural Resources Defense Council, Inc.</i> Under the first step of <i>Chevron</i>, the court noted that &ldquo;[t]he statute [(35 U.S.C. &sect; 315(b)] does not contain any exceptions or exemptions for complaints served in civil actions that are subsequently dismissed, with or without prejudice.&rdquo; The court concluded that the language of section 315(b) was plain and unambiguous and therefore did not consider whether the PTAB&rsquo;s interpretation of section 315(b) was a permissible construction of the statute under the second step of <i>Chevron.</i></p> <p>The court dismissed as unpersuasive the PTAB&rsquo;s contrary reasoning that a dismissal without prejudice has the effect of leaving parties as though the action had never been brought, noting that &ldquo;the text of &sect; 315(b) is agnostic as to the &lsquo;effect&rsquo; of the service.&rdquo; Thus, section 315(b)&rsquo;s time bar is triggered upon service of the complaint and a subsequent dismissal thereof does not alter the fact that the complaint had been served.</p> <p>The court rejected Ingenio&rsquo;s alternative contention that because the &rsquo;836 patent was reexamined after service of the complaint and resulted in claims of different scope, the reexamined &rsquo;836 patent should be treated as a new patent for purposes of section 315(b). The court explained that &ldquo;unlike reissue, reexamination does not result in the surrender of the original patent and the issuance of a new patent,&rdquo; and therefore the original complaint alleging infringement of the &rsquo;836 patent was the same patent challenged in the IPR petition.</p> <p>The court also rejected Ingenio&rsquo;s argument that the time bar should not apply to the three other petitioners named in the petition because they were not a party, in privity with, or otherwise a real party in interest with respect to the earlier litigation, and they would not be barred had they filed a petition separate from Ingenio. The court explained that section 315(b) and the implementing regulation are properly read to treat a &ldquo;collection of petitioners on a single petition as a unit indistinguishable from each member of that collection.&rdquo; Because &ldquo;[t]hese four entities declared themselves as &lsquo;the Petitioner&rsquo; in their sole IPR petition, and certified that Ingenio . . . is a &lsquo;real party in interest,&rsquo;. . . [p]etitioners are properly treated as an undifferentiated unit that filed an untimely petition.&rdquo; The court noted that the Director of the USPTO could amend the pertinent regulation to allow separate treatment of co-petitioners for purposes of section 315(b)&rsquo;s time bar.</p> <p>This case is of interest to parties involved in patent disputes. In particular, parties considering filing an IPR petition should be careful not to co-file a petition with another party that could be time-barred. Conversely, patent owners served with a petition should investigate whether any petitioner or related party might be time-barred early in the proceedings.</p> <p>For more information on this decision, please contact Fitch Even partner <a href=";A=2587&amp;format=xml&amp;p=5482">Paul B. Henkelmann</a>, co-author of this alert.</p> <p><i>Fitch Even associate <a href=";A=8536&amp;format=xml&amp;p=5482">George N. Dandalides</a> contributed to this alert.</i></p> <p>&nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;<br /> <br type="_moz" /> </sup></b></p>IP Alerts22 Aug 2018 00:00:00 -0800 Even Partner Ken Colton Quoted in ACS <i>Chemical & Engineering News</i><p>Fitch Even partner <a href=";A=2568&amp;format=xml&amp;p=3131">Kendrew H. Colton</a> is quoted in an article published in the August 19, 2018 issue of <i>Chemical &amp; Engineering News</i>, a weekly publication of the American Chemical Society.</p> <p>The article, titled &quot;<a href="">Firms Feud Over Niagen, A Purported Age-Fighting Molecule</a>,&quot; discusses the ongoing patent dispute between ChromaDex and Elysium Health over rights to nicotinamide riboside or NR, a molecule with promising vitamin-like qualities.</p> <p>Ken has been practicing intellectual property law for over 30 years. His primary practice focus is counseling clients on a wide range of IP matters involving established and emerging chemical and biochemical technologies. Ken has been a member of the <i>Chemical &amp; Engineering News</i> Advisory Board since 2012.</p>Professional Activities21 Aug 2018 00:00:00 -0800 Alert: USPTO's Revised Trial Practice Guide Updates Guidance on AIA Post-Grant Proceedings<p>The USPTO has released an update to its <a href="">Trial Practice Guide</a>. The update replaces portions of an earlier version published in 2012 when America Invents Act (AIA) post-grant proceedings were first instituted and reflects continuously evolving trial practices at the Patent Trial and Appeal Board (PTAB) since that time. The current update addresses topics that include use of expert testimony, briefing and other procedures relating to motion practice, factors the PTAB will consider when deciding whether to institute trials, pre-hearing conferences and oral hearings before the PTAB, and the submission of sur-reply briefs. The update also offers a new sample scheduling order, consistent with the current changes.</p> <p>The updated guide emphasizes that the PTAB has discretion when deciding whether to institute trials. With respect to discretionary denial of institution, the guide codifies factors that were collected in the precedential PTAB decision in <i>General Plastic Co., Ltd. v. Canon Kabushiki Kaisha</i>. Likewise, with respect to situations where the same prior art or arguments were previously presented to the USPTO, the updated guide codifies factors that the PTAB collected in <i>Becton Dickinson &amp; Co. v. B. Braun Melsungen AG</i>.</p> <p>The update describes modified procedures regarding sur-replies and motions to strike or exclude, which seek to remedy issues associated with new evidence or argument appearing in the first instance in a petitioner&rsquo;s reply. Sur-replies are now expressly permitted as necessary to respond to arguments a patent owner could not address prior to the reply. Prior versions of the trial practice guide did not provide patent owners with a sur-reply as a matter of right, instead restricting patent owners to observations on cross-examination of the petitioner&rsquo;s witness. Sur-replies may also address the institution decision if necessary to respond to an argument in the petitioner&rsquo;s reply, may comment or argue upon any expert report or testimony offered with the reply, and may include the deposition transcript of a petitioner&rsquo;s expert as new evidence. With these procedures, patent owners should be better able to address new evidence and arguments.</p> <p>In addition, the updated guide codifies practice relating to the submission of new evidence in reply briefs. It states that a &ldquo;petitioner may submit directly responsive rebuttal evidence in support of its reply.&rdquo; It distinguishes between allowable evidence that rebuts the patent owner&rsquo;s response and improper new evidence or arguments that could have been presented earlier. The update provides specific examples of improper evidence for replies, including &ldquo;a newly raised rationale to combine the prior art references that was not expressed in the petition&rdquo; and &ldquo;newly cited prior art references intended to &lsquo;gap-fill&rsquo; by teaching a claim element that was not present in the prior art presented with the petition.&rdquo;</p> <p>Other updated guidance involves remedies to address reply and sur-reply briefs that include new evidence, including motions to exclude and motions to strike. Motions to exclude should not &ldquo;address arguments or evidence that a party believes exceeds the proper scope of reply or sur-reply.&rdquo; Such issues should instead be addressed through a motion to strike all or part of the brief. Specifically, &ldquo;where a reply clearly relies on a new theory not included in prior briefing, and where addressing this new theory during oral hearing would prejudice the opposing party, striking the portion of the brief containing that theory may be appropriate.&rdquo; This remedy is tempered, however, because the guide notes that &ldquo;striking the entirety or a portion of a party&rsquo;s brief is an exceptional remedy that the Board expects will be granted rarely.&rdquo; Thus, the alternative approach of requesting sur-reply appears to be favored.</p> <p>The update also codifies procedures for oral hearings. It establishes one hour of argument per side as the ordinary amount of time, gives petitioner the right to reserve up to half of its time for rebuttal, and gives the patent owner the opportunity to seek PTAB permission to present a brief sur-rebuttal. The guide also describes procedures for pre-hearing conferences and provides additional guidance on the use and labeling of demonstrative exhibits and on considerations related to live testimony. This information should help standardize oral hearings, making the proceedings more consistent across individual panels.</p> <p>For more information on revisions to the PTAB&rsquo;s Trial Practice Guide, please contact Fitch Even partner <a href=";A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a>, author of this alert.</p> <p><i>Fitch Even associate <a href=";A=13120&amp;format=xml&amp;p=5482">Andrew C. Wood</a> contributed to this alert.</i></p> <p>&nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts15 Aug 2018 00:00:00 -0800