Fitch Even News Feedhttps://www.fitcheven.com/?t=39&format=xml&stylesheet=rss&directive=0&records=20en-us23 Sep 2022 00:00:00 -0800firmwisehttp://blogs.law.harvard.edu/tech/rssFitch Even Again Recognized as a Top Firm in IPR Practicehttps://www.fitcheven.com/?t=40&an=129106&format=xml<p>Fitch Even was recently recognized as being among the top 50 most-active law firms representing patent owners in <i>inter partes</i> review (IPR) proceedings and among the top 100 most-active law firms overall in Patexia&rsquo;s 2022 IPR Intelligence Report. In addition, Fitch Even partners <a href="https://www.fitcheven.com/?t=3&amp;A=2611&amp;format=xml&amp;p=5482">Nicholas T. Peters</a> and <a href="https://www.fitcheven.com/?t=3&amp;A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a> were ranked among the top 100 most-active attorneys representing patent owners.</p> <p>Using data from over 7,000 IPR challenges filed from July 2017 through June 2022, Patexia evaluated the performance of more than 900 law firms and over 5,000 attorneys. More information about this annual report and its methodology can be found <a href="https://www.patexia.com/pressrelease/view/id/50">here</a>.</p> <p>Fitch Even has represented both patent owners and petitioners in a wide variety of industries in over 140 AIA trial proceedings to date. The continuing recognition of our extensive experience and strong track record on behalf of our clients reflects the contributions of the firm&rsquo;s entire PTAB Trial practice group and validates our approach of leveraging the skills of both patent litigators and patent prosecution attorneys.</p>Firm News23 Sep 2022 00:00:00 -0800https://www.fitcheven.com/?t=40&an=129106&format=xmlIP Alert: Patent Term Adjustment is Not Available for Unsuccessful Appealshttps://www.fitcheven.com/?t=40&an=129110&format=xml<p>On September 14, in <a href="http://cafc.uscourts.gov/opinions-orders/21-1537.OPINION.9-14-2022_2003622.pdf"><i>SawStop Holding LLC v. Vidal</i></a>, the Federal Circuit held that the owner of two patents was not entitled to patent term adjustment (PTA) based on delays associated with appeals of the USPTO&rsquo;s initial determinations of unpatentability. This case offers guidance on the applicability of so-called &ldquo;C delay&rdquo; term adjustment in determining whether the term of a patent should be increased after appeal from a final rejection.</p> <p>SawStop is the owner of two patents, U.S. 9,522,476 and 9,927,796, that are directed to saws with safety features. During prosecution of the &rsquo;476 patent, SawStop appealed the final rejection of a claim. On appeal, the Patent Trial and Appeal Board (PTAB) found the examiner&rsquo;s basis for rejection was improper, but applied a new ground of rejection and ultimately affirmed the rejection of the claim. After subsequent amendments to the claim, SawStop succeeded in overcoming the new ground of rejection and obtained the &rsquo;476 patent.</p> <p>During prosecution of the &rsquo;796 patent, SawStop appealed the final rejection of a claim that stood rejected on both anticipation and obviousness-type double patenting grounds. SawStop&rsquo;s appeal led to the filing of a complaint in district court, where SawStop challenged the anticipation rejection but did not challenge the double patenting rejection. The district court reversed the anticipation rejection, leaving in place the unchallenged double patenting rejection. In subsequent prosecution, SawStop overcame the double patenting rejection and obtained the &rsquo;796 patent.</p> <p>With patents in hand, SawStop sought PTA under 35 U.S.C. &sect; 154(b)(1)(C) based on the delays associated with the appeals. PTA under subsection C is available for delay due to appellate review where &ldquo;the patent was issued under a decision in the review reversing an adverse determination of patentability.&rdquo; The USPTO denied SawStop&rsquo;s requested PTA for &ldquo;C delay&rdquo; for each patent, and a district court affirmed the denials.</p> <p>On appeal, the Federal Circuit explained that the &ldquo;unambiguous language&rdquo; of subsection C &ldquo;imposes two requirements: that an adverse determination of patentability be reversed, and that the application reviewed in that appeal issue as a patent as a result of that reversal.&rdquo;</p> <p>Regarding the &rsquo;476 patent, the Federal Circuit noted that, even though the PTAB entered a new ground of rejection on appeal, &ldquo;the adverse determination of unpatentability remained before and after the appeal to the Board.&rdquo; The court explained that the reversal of a &ldquo;determination of patentability&rdquo; requires a determination that the claim in question is substantively allowable, not just free of a particular rejection. The court further observed that the &rsquo;476 patent issued &ldquo;only after significant substantive post-appeal prosecution and amendment.&rdquo; Therefore, the &rsquo;476 patent did not &ldquo;issue[] under a decision in the review reversing an adverse determination of patentability,&rdquo; as required by subsection C, and was not entitled to &ldquo;C delay&rdquo; PTA.</p> <p>Regarding the &rsquo;796 patent, the Federal Circuit explained that the claim at issue was &ldquo;unpatentable both before the appeal (because of anticipation and double patenting) and after the appeal (because of double patenting).&rdquo; As with the &rsquo;496 patent, &ldquo;the appellate decision did not reverse an adverse determination of patentability.&rdquo;</p> <p>The <i>SawStop</i> decision provides further guidance regarding the availability of PTA under subsection C to patentees who obtain a patent after appellate review. The decision may also be a cautionary tale for patent applicants during the appeal stage of a patent application. Applicants who may seek to eventually pursue PTA under subsection C may consider taking steps to reverse all grounds of unpatentability on appeal.</p> <p>For more information on this topic, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2618&amp;format=xml&amp;p=5482">Brett J. Smith</a>, author of this alert.&nbsp;<br /> <br /> <b><br /> Fitch Even IP Alert<sup>&reg;<br /> <br type="_moz" /> </sup></b></p>IP Alerts23 Sep 2022 00:00:00 -0800https://www.fitcheven.com/?t=40&an=129110&format=xmlIP Alert: No Standing to Appeal IPR Decision on Claim Canceled in Reexaminationhttps://www.fitcheven.com/?t=40&an=129031&format=xml<p>On August 26, in <i><a href="https://cafc.uscourts.gov/opinions-orders/21-2099.OPINION.8-26-2022_1996028.pdf">Best Medical International, Inc. v. Elekta Inc.</a></i>, the Federal Circuit held that a patent owner lacked standing to appeal an <i>inter partes</i> review (IPR) decision as to a claim the patent owner had previously canceled in a separate <i>ex parte</i> reexamination proceeding. This unusual scenario resulted when petitioner Varian filed both a request for <i>ex parte</i> reexamination and a petition for IPR, each challenging patent owner Best Medical International&rsquo;s 6,393,096 patent.</p> <p>In October 2019, Varian filed IPR petitions at the Patent Trial and Appeal Board (PTAB) for review of claims 1, 18, 43&ndash;44, and 46 of the &rsquo;096 patent. Two months later, in December, Varian filed a separate request for <i>ex parte</i> reexamination that also asserted invalidity of claims 1 and 18.</p> <p>The PTAB instituted trial in Varian&rsquo;s IPR, and, in June 2020, joined Elekta in the instituted IPR proceeding. Later, in August 2020, after ordering reexamination, the examiner rejected claim 1 based on statutory and obviousness-type double patenting. In response to the examiner&rsquo;s rejection, Best Medical opted to cancel Claim 1 &ldquo;without prejudice or disclaimer,&rdquo; rather than argue the merits of the rejection.</p> <p>In the IPRs, the PTAB issued a final written decision in April 2021, finding that Best Medical&rsquo;s cancellation of claim 1 was not final, and further finding that it was obligated by the Supreme Court&rsquo;s precedent in <i>SAS Institute</i> to review claim 1. The PTAB accordingly considered the merits of claim 1 in its final written decision, ultimately finding claim 1 unpatentable along with claims 43&ndash;44 and 46 of Best Medical&rsquo;s &rsquo;096 patent.</p> <p>Later, in the reexamination, Best Medical filed a notice of appeal to the PTAB after receiving a final rejection. But Best Medical&rsquo;s notice of appeal did not challenge the examiner&rsquo;s double-patenting rejection. Claim 1 had therefore been cancelled <i>and</i> declared unpatentable.</p> <p>Best Medical appealed to the Federal Circuit from the IPR decisions. This is where the case took an interesting turn. The Federal Circuit first considered whether its cancellation of claim 1 mooted patentability before the PTAB&rsquo;s final written decision. The court held that Best Medical&rsquo;s cancellation &ldquo;without prejudice or disclaimer&rdquo; was not a &ldquo;final&rdquo; cancellation of claim&nbsp;1, leaving the PTAB with authority to review claim 1 at the time of its final written decision. The Federal Circuit also considered whether Best Medical&mdash;the patent owner&mdash;had standing to appeal the PTAB&rsquo;s final written decision. Evaluating Best Medical&rsquo;s standing under the &ldquo;case or controversy&rdquo; requirement imposed by Article III of the constitution, the court concluded that Best Medical&rsquo;s failure to appeal the examiner&rsquo;s double-patenting rejection rendered claim 1&rsquo;s cancellation &ldquo;final&rdquo; before it appealed. Best Medical&acute;s cancellation of claim 1 in the reexamination therefore effectively forfeited their right to appellate review.</p> <p>Best Medical argued, alternatively, that it had suffered an actual injury sufficient to confer standing&mdash;because of collateral estoppel effects of the PTAB&rsquo;s unpatentability decision on claim&nbsp;1. In a separate reexamination proceeding involving another of Best Medical&rsquo;s patents, the examiner had cited the PTAB&rsquo;s claim 1 unpatentability decision and stated that they were bound by the PTAB&rsquo;s reasoning. The Federal Circuit rejected Best Medical&rsquo;s collateral estoppel argument, characterizing the PTAB&rsquo;s decision against claim 1 as &ldquo;non-appealable&rdquo; and therefore without preclusive effect. Citing prior cases where IPR estoppel or collateral estoppel had been insufficient to confer standing on appeal, the Federal Circuit reasoned that the <b><i>potential</i></b> for collateral consequences, on its own, was insufficient to confer standing.</p> <p>This case highlights the importance for parties engaged in multiple agency proceedings to consider how a decision made in one proceeding may have unanticipated effects in other proceedings. Preclusionary outcomes such as the one described above have become more common as IPRs, <i>ex parte</i> reexaminations, and district court proceedings operate in parallel.</p> <p>For more information on this holding, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a>, author of this alert.</p> <p><i>Fitch Even law clerk Alvaro Cure Dominguez contributed to this alert. </i></p> <p><b>Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts14 Sep 2022 00:00:00 -0800https://www.fitcheven.com/?t=40&an=129031&format=xmlIP Alert: Federal Circuit Rejects Patentee's Attempt to Skirt Local Patent Rules in Duplicative Litigationhttps://www.fitcheven.com/?t=40&an=129008&format=xml<p>On September 7, in <a href="https://cafc.uscourts.gov/opinions-orders/21-1967.OPINION.9-7-2022_2000513.pdf"><i>Arendi S.A.R.L. v. LG Electronics Inc.</i></a>, a Federal Circuit panel affirmed the District of Delaware&rsquo;s decision dismissing a patent infringement action as duplicative of a co-pending, earlier-filed action.</p> <p>The patent owner, Arendi, filed a first suit against LG in the District of Delaware alleging that hundreds of LG products infringed certain claims of an Arendi patent. Under the district&rsquo;s local rules governing patent cases, Arendi was required to &ldquo;specifically identify the accused products&rdquo; and to produce claim charts showing how &ldquo;<b><i>each</i></b> accused product&rdquo; infringes each asserted claim. The local rules permit supplementation of these initial disclosures.</p> <p>Arendi served initial disclosures identifying hundreds of LG products, but only providing a single claim chart mapping one so-called exemplary accused product, the &ldquo;Rebel 4&rdquo; phone, to the asserted claims. LG complained that the single claim chart was insufficient to satisfy the local rules&rsquo; requirements and invited Arendi to provide additional claim charts or otherwise explain how the Rebel 4 claim chart was representative of all other accused products. Arendi did not do so.</p> <p>As the case progressed, the parties agreed on a discovery protocol in which eight products would be considered representative of all accused products; seven of those products were non-Rebel 4 products. LG thereafter provided discovery on those products. Still, however, LG reiterated its position in an interrogatory response that Arendi had only provided sufficient infringement contentions for the Rebel 4 product, but no others. Arendi again did not update its initial disclosures.</p> <p>After fact discovery closed, Arendi provided an expert report on infringement that, according to LG, for the first time disclosed infringement contentions for non-Rebel 4 products. The district court agreed with LG, finding that Arendi did not timely disclose any infringement contentions for non-Rebel 4 products, and struck those portions of Arendi&rsquo;s expert report.</p> <p>Rather than move to supplement its disclosures at that time, however, Arendi filed a second lawsuit in the District of Delaware in which it alleged that the non-Rebel 4 products excluded from the first case infringed the same Arendi patent. On LG&rsquo;s motion, the district court dismissed the second case, finding that it was improper under the duplicative litigation doctrine. That doctrine precludes a plaintiff from &ldquo;maintaining two separate actions involving the same subject matter at the same time in the same court . .&nbsp;. against the same defendant.&rdquo; The &ldquo;same subject matter&rdquo; inquiry looks at any overlap in the products accused between the two actions and any overlap of patents. Since the same patent was asserted in both cases, the Federal Circuit focused upon whether the same products were &ldquo;accused&rdquo; in both cases.</p> <p>The Federal Circuit agreed with the district court that identical products were accused in each action, rejecting Arendi&rsquo;s arguments that non-Rebel 4 products were not &ldquo;accused&rdquo; in the first case and that the district court struck Arendi&rsquo;s expert opinions on this basis. Instead, the Federal Circuit found it clear that the district court struck the opinions as a sanction for Arendi&rsquo;s failure to follow the court&rsquo;s disclosure requirements. The Federal Circuit also found it notable that both parties took discovery relating to the non-Rebel 4 products throughout the first case, and that Arendi thereafter provided expert opinions on those products, further undermining any claim by Arendi that it never accused them.</p> <p>This decision reemphasizes the importance of following disclosure requirements mandated by district courts and of updating them as the case progresses. The Federal Circuit seemed to have little sympathy for Arendi, highlighting the points in the case where Arendi could have moved to supplement its disclosures, but chose not to do so. And while Arendi did eventually move for leave to supplement its disclosures after the district court dismissed its second action, the district court deferred ruling on that motion pending Arendi&rsquo;s appeal of the dismissal of its second case. Thus, it remains unclear whether Arendi will be limited to the Rebel 4 products or be permitted to present its larger scope of accused products at trial.</p> <p>For more information on this holding, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2598&amp;format=xml&amp;p=5482">Nikki Little</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert</b><sup><b>&reg;<br type="_moz" /> </b></sup></p> <sup><b> </b></sup>IP Alerts12 Sep 2022 00:00:00 -0800https://www.fitcheven.com/?t=40&an=129008&format=xmlFitch Even Partners with Patent Pathwayshttps://www.fitcheven.com/?t=40&an=127787&format=xml<p>Fitch Even is thrilled to be a partner to Patent Pathways in its inaugural year. The program is dedicated to building a more diverse and inclusive patent law community by increasing the number of patent attorneys and agents, and improving awareness of patent career opportunities for engineers and scientists, in historically underrepresented demographics.</p> <p>This year, Patent Pathways is focused upon assisting 20 Black women with the process of preparing for and passing the patent bar, and thereafter securing a one year paid internship as a patent agent at a law firm. As a law firm partner in this year&rsquo;s program, Fitch Even is committed to interviewing and hiring at least one Patent Pathways participant.</p> <p>Fitch Even values the way in which diversity enables us to serve our clients more effectively, while providing a more vibrant, supportive, and productive professional environment for our team. We have worked hard to increase and maintain our diversity but recognize that there is more we can do as a firm both internally and for the IP community as a whole. The Patent Pathways program provides us with the opportunity to help increase the representation of Black women in the area of patent law, and we are proud to be a partner of the program.</p> <p>For more information, please visit <a href="http://www.patentpathways.org/">www.patentpathways.org</a>.</p>Firm News17 Aug 2022 00:00:00 -0800https://www.fitcheven.com/?t=40&an=127787&format=xmlFitch Even Welcomes New Attorneys to Chicago Officehttps://www.fitcheven.com/?t=40&an=127768&format=xml<p>Fitch, Even, Tabin &amp; Flannery is pleased to announce that Michael R. Anderson, Andrew J. Doyle, Mary F. Fetsco, and Brian P. Herrmann have joined the firm&rsquo;s Chicago office as associates.</p> <p>A registered patent attorney, <a href="https://www.fitcheven.com/?t=3&amp;A=28223&amp;format=xml&amp;p=5482">Michael R. Anderson</a> assists clients with patent preparation and prosecution. He has worked with clients ranging from smaller technology enterprises to large corporations, many in the medical device, aviation, and manufacturing industries. Before joining Fitch Even, Michael was an associate at a national law firm, where he advised clients and drafted opinions on invalidity and non-infringement issues relating to patent clearance and diligence matters and assisted in patent litigation and USPTO post grant review proceedings.</p> <p><a href="https://www.fitcheven.com/?t=3&amp;A=28217&amp;format=xml&amp;p=5482">Andrew J. Doyle</a> focuses his practice on patent preparation and prosecution, analyzing competitor&rsquo;s patent portfolios, advising clients on product design-arounds, and preparing freedom-to-operate, right-to-use, patentability, non-infringement, infringement, and validity opinions. Andrew relies on his extensive experience preparing and prosecuting patents, an undergraduate and master&rsquo;s degree in Electrical Engineering, and years of real-world engineering experience at an international aerospace conglomerate, to provide clients with meaningful advice from the moment they conceive of their inventive concept up until their product launch date and beyond.</p> <p><a href="https://www.fitcheven.com/?t=3&amp;A=28222&amp;format=xml&amp;p=5482">Mary F. Fetsco</a> has a diverse IP practice with a particular focus on litigation. Her experience includes brand enforcement and trademark infringement litigation, as well as patent licensing and infringement litigation. She is similarly well-versed in developing and implementing anti-cybersquatting strategies, preparing Digital Millennium Copyright Act (DMCA) takedown notices, and conducting patent and trademark infringement analyses. Prior to joining Fitch Even, Mary was an associate at a Chicago-based IP firm, where she protected and enforced clients&rsquo; luxury brand trademarks against China-based counterfeiting operations.</p> <p><a href="https://www.fitcheven.com/?t=3&amp;A=28219&amp;format=xml&amp;p=5482">Brian P. Herrmann</a> is a registered patent attorney who has centered his career on complex litigation. He has practiced at numerous venues including the Patent Trial and Appeal Board (PTAB), the International Trade Commission (ITC), and many district courts across the country. Brian has represented clients in telecommunications, computer infrastructure, networks (LTE, WiFi), electronic devices and their parts such as LCD televisions, Bluetooth, and video technology. His prior litigation experience in Texas has made him knowledgeable with the evolving and crucial issue of venue.</p> <p>We are delighted to welcome Michael, Andrew, Mary, and Brian to the Fitch Even team!</p>Firm News16 Aug 2022 00:00:00 -0800https://www.fitcheven.com/?t=40&an=127768&format=xmlIP Alert: Stock Ownership Leads to Vacatur of $2.75B District Court Judgmenthttps://www.fitcheven.com/?t=40&an=127668&format=xml<p>On June 23, in <i><a href="https://cafc.uscourts.gov/opinions-orders/21-1888.OPINION.6-23-2022_1968538.pdf">Centripetal Networks, Inc. v. Cisco Systems Inc.</a></i>, the Federal Circuit vacated judgment of the district court because stock held by the judge&rsquo;s wife violated the recusal statute and was not harmless error. The Federal Circuit held that placing Cisco stock owned by the wife of the district court judge into a blind trust was not divestment of the stock under 28 U.S.C. &sect; 455(f), and therefore the judge was required to recuse himself under &sect;&nbsp;455(b)(4). But the judge did not recuse himself, and instead, continued to hear the action over objection by Cisco, and entered judgment against Cisco amounting to more than $2.75 billion.&nbsp;</p> <p>Judge Henry C. Morgan, Jr. heard the case through a bench trial, post-trial proceedings, and had already completed a 130-page draft of his final judgment when he learned that his wife owned Cisco stock valued at $4,687.99. He immediately notified both parties that he had discovered his wife&rsquo;s ownership of Cisco stock. Cisco then filed a motion for recusal under &sect; 455(b)(4), which disqualifies a judge from hearing a matter where the judge or his spouse has a &ldquo;financial interest &hellip; in a party.&rdquo; Judge Morgan then placed his wife&rsquo;s Cisco stock in a blind trust and denied the motion for recusal. He reasoned that &sect; 455(b)(4) &ldquo;did not apply in this case because he had not discovered his wife&rsquo;s interest in Cisco until he had decided &ldquo;&lsquo;virtually&rsquo; every issue and &lsquo;mostly drafted [the] opinion.&rsquo;&rdquo; He also reasoned that even if &sect; 455(b)(4) did apply, placing the stock in a blind trust was divesture under &sect; 455(f). Judge Morgan subsequently entered a 167-page final opinion holding that Cisco willfully infringed the patents and awarding damages, interest, and a running royalty that totaled in excess of $2.75 billion. Cisco appealed.</p> <p>On appeal, the Federal Circuit held that placement of stock into a blind trust does not satisfy the divesture requirement of &sect; 455(f). Because the statute does not define &ldquo;divest,&rdquo; the court referred to adictionary definition defining the term as &ldquo;dispossess or deprive&rdquo; of ownership which the court concluded is &ldquo;possible only if the interest is sold or given away.&rdquo; The Federal Circuit noted that the Judicial Conference&rsquo;s Committee on Codes of Conduct has ruled that &ldquo;[a] judge&rsquo;s use of a blind trust does not obviate the judge&rsquo;s recusal obligation.&rdquo; The court thus concluded that &ldquo;placing the stock in a blind trust removed [Judge Morgan&rsquo;s wife&rsquo;s] control over the stock, [but] it did not eliminate her beneficial interest in Cisco.&rdquo; Placing the stock into the blind trust therefore did not satisfy the divesture requirement.&nbsp;</p> <p>The Federal Circuit then analyzed the three factors for determining harmless error as set forth in the Supreme Court&rsquo;s <i>Liljeberg </i>decision, namely: (1) &ldquo;the risk of injustice to the parties in the particular case&rdquo;; (2) &ldquo;the risk that the denial of relief will produce injustice in other cases&rdquo;; and (3) &ldquo;the risk of undermining the public&rsquo;s confidence in the judicial process.&rdquo; The Federal Circuit concluded that all three factors weighed against a finding of harmless error and therefore vacatur was the proper remedy for the &sect; 455(b) violation. The court reversed the district court&rsquo;s denial of Cisco&rsquo;s motion for recusal, vacated the judgment and all rulings made after Judge Morgan discovered that his wife owned Cisco stock, and remanded the case for further proceedings.</p> <p>The <i>Centripetal </i>decision is significant because it clarifies that a blind trust does not constitute divestment of a judge&rsquo;s financial interest under &sect; 455, for example stock ownership in one of the parties. Further, the decision makes clear that a judge&rsquo;s violation of &sect;455 is reversible error and requires vacatur of all decisions rendered after the judge learns of his or her financial interest in one of the parties. &nbsp;&nbsp;</p> <p>For more information on this ruling, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2581&amp;format=xml&amp;p=5482">Karl R. Fink</a>, author of this alert.<br /> &nbsp;</p> <b>Fitch Even IP Alert<sup>&reg;</sup><br /> <br type="_moz" /> </b>IP Alerts08 Aug 2022 00:00:00 -0800https://www.fitcheven.com/?t=40&an=127668&format=xmlIP Alert: Rehearing Reverses Earlier Federal Circuit Decision Finding Silence Supported Negative Claim Limitationhttps://www.fitcheven.com/?t=40&an=127194&format=xml<p>On June 21, in <i><a href="https://cafc.uscourts.gov/opinions-orders/21-1070.OPINION.6-21-2022_1967294.pdf">Novartis Pharmaceuticals Corporation v. Accord Healthcare, Inc.</a></i>, a reshuffled Federal Circuit panel reversed course on rehearing to find that a negative claim limitation was not supported by silence in the patent&rsquo;s specification. The panel (Moore, Linn, Hughes) vacated the decision of a prior panel (Moore, Linn, O&rsquo;Malley), reported <a href="https://www.fitcheven.com/?t=40&amp;an=120195&amp;anc=180&amp;format=xml&amp;p=5486">here</a>, which issued before the retirement of Judge O&rsquo;Malley.</p> <p>Novartis is the owner of U.S. Patent No. 9,187,405 (the &rsquo;405 patent), which provides methods for treating relapsing remitting multiple sclerosis. The &rsquo;405 patent included method claims directed to administering fingolimod at a daily dose of 0.5 mg. The claims included a negative limitation requiring administering a daily dose of fingolimod &ldquo;absent an immediately preceding loading dose regimen.&rdquo; Novartis added the negative claim limitation during prosecution to overcome a prior art rejection. Nothing in the specification of the &rsquo;405 patent, however, mentioned the presence or absence of a loading dose.</p> <p>Novartis sued HEC Pharm Co. (&ldquo;HEC&rdquo;) in response to HEC filing an Abbreviated New Drug Application (ANDA) seeking approval of a generic version of Gilenya, the drug covered by the &rsquo;405 patent. The district court determined that HEC infringed the &rsquo;405 patent. The district court also ruled that the negative claim limitation was sufficiently described, crediting Novartis&rsquo; expert testimony. The expert had opined that the phrase &ldquo;Initially patients receive treatment for 2 to 6 months,&rdquo; in the &rsquo;405 patent, disclosed treatment without an immediately preceding loading dose. On appeal of the written description issue, the Federal Circuit affirmed the district court and reasoned that &ldquo;[a] specification that describes a reason to exclude the relevant negative limitation is but one way in which the written description requirement may be met.&rdquo;</p> <p>In its petition for rehearing, HEC argued that the court had erroneously relied on Novartis&rsquo; expert testimony. The reshuffled panel revisited the negative claim limitation, stating that the specification&rsquo;s silence is not enough to satisfy the written description requirement. The panel concluded that the patent&rsquo;s disclosure of &ldquo;initially&rdquo; providing treatment described the initial length of treatment, not the dosage with which the treatment begins. Because the negative claim limitation lacked written description support, the Federal Circuit held the claims invalid.</p> <p>This decision reemphasizes the importance of ensuring claim limitations added during prosecution are sufficiently supported by the patent application as filed. In the absence of explicit support in the application as-filed, this case may require a disclosure establishing a negative claim limitation is &ldquo;necessarily excluded&rdquo; from the invention.</p> <p>For more information on this holding, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2622&amp;format=xml&amp;p=5482">Jonathan H. Urbanek</a>, author of this alert.<br /> <b><br /> Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts06 Jul 2022 00:00:00 -0800https://www.fitcheven.com/?t=40&an=127194&format=xmlAI Is Coming to an Invention Near Youhttps://www.fitcheven.com/https://attendee.gotowebinar.com/register/8864799728722823439&format=xml<p>Please join Fitch Even for a free webinar, &ldquo;<a href="https://register.gotowebinar.com/register/8864799728722823439">AI Is Coming to an Invention Near You</a>,&rdquo; on July 21 at 9:00 a.m. PDT / 10:00 a.m. MDT / 11:00 a.m. CDT / 12 noon EDT.</p> <p>Artificial Intelligence (AI) is everywhere and it&rsquo;s evolving. AI finds application in virtually every technology and business paradigm. If you haven&rsquo;t seen it already, AI is coming soon to an invention near you and can be found in a greatly increasing number of patent applications and patent claims.</p> <p>During this webinar, our presenter will address these topics and more:</p> <ul> <li>A general explanation of AI and machine learning (ML) in particular</li> <li>A statistical overview of ML in US patenting</li> <li>A patent eligibility overview of ML claims</li> <li>Various approaches to claim drafting</li> <li>Practice tips</li> </ul> <p>Our presenter will be Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2610&amp;format=xml&amp;p=5482">Steven G. Parmelee</a>. Steve has extensive experience in complex patent preparation and prosecution in the U.S. and abroad. He has assisted clients with patent portfolio management, freedom-to-operate issues, and transactions for over 45 years.</p> <p>CLE credit has been approved for California, Illinois, and Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but please note registration is required.</p> <p>A recording of this webinar is available through July 20, 2023.</p>Past Webinars28 Jun 2022 00:00:00 -0800https://www.fitcheven.com/https://attendee.gotowebinar.com/register/8864799728722823439&format=xmlIP Alert: Senators Introduce Bill to Reform USPTO Patent Trialshttps://www.fitcheven.com/?t=40&an=126066&format=xml<p>On June 16, Senators Leahy, Cornyn, and Tillis introduced a bipartisan bill, the &ldquo;Patent Trial and Appeal Board (PTAB) Reform Act of 2022.&rdquo; A press release from the Senators is <a href="https://www.leahy.senate.gov/press/leahy-cornyn-and-tillis-introduce-bipartisan-bill-to-ensure-the-patent-trial-and-appeal-board-is-a-fair-and-predictable-forum-for-all-parties">here</a>. They tout four goals for the bill:</p> <ol> <li>Prevent Abusive Serial Petitions from Harassing Patent Owners</li> <li>Prohibit the USPTO from Considering Inaccurate District Court Litigation Timelines</li> <li>Revise the PTAB Structure to Conform with the Appointments Clause While Preserving PTAB Autonomy</li> <li>Address PTAB Certainty and Fairness in Other Areas.</li> </ol> <p>Changes associated with these goals are summarized in this <a href="https://www.leahy.senate.gov/download/ptab-reform-act-one-pager">document</a>, linked in the press release. The first two goals are likely to be the most controversial.</p> <p>Related to the first goal, the bill would prevent petitioners from challenging claims in a patent if the same petitioner had already challenged the same claims. This absolute ban on follow-on petitions may be unpopular with petitioners, but the bill includes many petitioner-friendly changes. For example, the bill would allow petitions filed against new or amended claims within one year after the new or amended claims are asserted against the petitioner. Current law prevents institution on petitions asserted more than one year after petitioner is served with the first complaint asserting the patent.</p> <p>The second goal is achieved by strictly prohibiting the PTAB from considering timing of co-pending district court or International Trade Commission (ITC) proceedings. According to the bill, institution decisions &ldquo;shall not in any respect consider an ongoing civil action or a proceeding before the International Trade Commission.&rdquo; The bill would jettison the PTAB&rsquo;s current policy, which applies a balancing test (the <i>Fintiv</i> factors) at institution of an <i>inter partes</i> review (IPR) to evaluate whether the IPR would duplicate efforts of the district courts or the ITC. Petitioners have complained that district court trial dates often get delayed, making it inaccurate to decide whether an IPR will duplicate the district court&rsquo;s efforts more than a year before trial. Since late in 2020, however, the PTAB has made it easier for petitioners to avoid this problem by allowing them to stipulate not to assert the same challenges in the district courts. The bill would allow IPRs to proceed in parallel with or even after a district court has considered validity of the challenged patents.</p> <p>The third goal for the bill attempts to address problems raised by the Supreme Court&rsquo;s decision in <i>United States v. Arthrex, Inc.</i>, as reported <a href="https://www.fitcheven.com/?t=40&amp;an=116885&amp;format=xml&amp;p=5486">here</a>. The bill explicitly provides for review by the Director of PTAB decisions and requires the USPTO to set timelines for rehearing and review of PTAB decisions.</p> <p>The bill includes many changes to support the fourth goal. Most notable among these changes is a provision that would require the USPTO to cover reasonable attorney and expert witness fees for small and micro entities whose patents are challenged at the PTAB. To qualify for fee reimbursement, the patent owner cannot have asserted the challenged patent in district court litigation.</p> <p>The bill is likely to undergo changes both in the Senate and in the House of Representatives. Hearings are scheduled in both chambers of Congress this week. Fitch Even attorneys will continue to monitor developments related to this bill.</p> <p>For more information on this case, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a>, author of this alert.<br /> <b><br /> <br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts22 Jun 2022 00:00:00 -0800https://www.fitcheven.com/?t=40&an=126066&format=xml