Fitch Even News Feed Jan 2021 00:00:00 -0800firmwise Alert: Federal Circuit Finds Apportionment of Damages Was Built Into Royalty Rate from Prior License Between Parties<p>On November 19, 2020, in <a href=""><i>Vectura Limited v. GlaxoSmithKline</i></a>, the Federal Circuit affirmed a reasonable royalty award relating to infringement of a single patent, using a royalty rate from a prior license agreement involving more than 400 patents without requiring any apportionment.</p> <p>Vectura brought an action in district court against GlaxoSmithKline (&ldquo;GSK&rdquo;) for infringement of a patent covering a formula of ingredients used in a dry-powder inhaler. A jury found in favor of Vectura and awarded $89,712,069 in reasonable royalty damages using a 3% royalty rate. This royalty rate was derived from a prior license agreement involving more than 400 patents between the same parties, which included a 3% royalty on covered sales of dry-powder inhalers.</p> <p>The Federal Circuit held that the district court had not abused its discretion in denying GSK&rsquo;s motion for a new trial on damages, affirming the 3% royalty rate and the district court&rsquo;s finding that the prior license agreement was economically and technologically comparable to the license in a hypothetical negotiation. The Federal Circuit stated that the fact that over 400 patents were included in the 2010 license &ldquo;does not fatally undermine&rdquo; the damage expert&rsquo;s &ldquo;theory of comparability&rdquo; because the 2010 license and the hypothetical negotiation cover &ldquo;roughly very similar technologies.&rdquo; With the prior license agreement being comparable, the Federal Circuit held that apportionment is already built into the royalty rate and royalty base such that no further apportionment is required, and the 3% royalty rate may be applied to all of the accused infringing sales.&nbsp;</p> <p>GSK argued that even if the 2010 license was truly comparable, it was improper to discard the royalty cap in it while simultaneously retaining the royalty rate and royalty base. However, the Federal Circuit rejected that argument because there were changed circumstances as of the date of the 2016 hypothetical negotiation that justified not using the royalty cap from the 2010 license. Those circumstances included the assumption of validity and infringement in a hypothetical negotiation and the fact that by 2016 the accused inhalers had become &ldquo;hugely successful,&rdquo; which would increase Vectura&rsquo;s leverage in the hypothetical negotiation.&nbsp;</p> <p>This case is one of a series of Federal Circuit cases analyzing reasonable royalty awards and evaluating apportionment in the royalty rate and/or base when the entire market value of accused product is used as the royalty base. It solidifies the theory of &ldquo;built-in&rdquo; or &ldquo;baked-in&rdquo; apportionment of the value of the patented technology relative to the accused product when using a royalty rate from a comparable license agreement. The case reinforces the importance of developing critical evidence of comparability (or lack thereof) of previous license agreements from both a technical and an economic perspective.</p> <p>For more information on this ruling, please contact Fitch Even partner <a href=";A=2581&amp;format=xml&amp;p=5482">Karl R. Fink</a>, author of this alert.<br /> <b><br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts19 Jan 2021 00:00:00 -0800 Alert: Supreme Court to Consider Assignor Estoppel<p>The U.S. Supreme Court granted certiorari in <i>Minerva Surgical, Inc. v. Hologic, Inc.</i>, a case involving medical devices used to treat abnormal uterine bleeding, including continuation patents naming Csaba Truckai that were assigned to Hologic. Hologic sued Truckai&rsquo;s new company, Minerva, for infringement of the continuation patents.</p> <p>The issue presented to the Supreme Court is &ldquo;whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.&rdquo;</p> <p>The District of Delaware and the Federal Circuit both ruled that Minerva&rsquo;s invalidity defense was barred by the doctrine of assignor estoppel, an equitable doctrine that prevents the assignor from subsequently rendering the patent worthless. Minerva had argued that claims in the continuation patent asserted by Hologic exceeded the scope of the disclosure, and therefore were not enabled by the patents originally invented by Truckai.</p> <p>The case is significant because the Supreme Court has not squarely addressed assignor estoppel. Past Supreme Court cases have generally reduced the scope of assignor estoppel, and the Court eliminated licensee estoppel in <i>Lear, Inc. v. Adkins</i>. The Federal Circuit recently held that assignor estoppel does not apply in the context of <i>inter partes</i> review proceedings in <i>Arista Networks, Inc. v. Cisco Systems, Inc</i>., arguably undercutting the rationale it had used to support assignor estoppel in district court litigation. The Supreme Court&rsquo;s decision will settle whether assignor estoppel will continue to exist in patent litigation.</p> <p>Fitch Even attorneys are monitoring this case and will report once a decision is released.<br /> <b><br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts12 Jan 2021 00:00:00 -0800 Plus Function Claim Construction in Patent Prosecution and Litigation<p>Please join Fitch Even for a free webinar, &ldquo;<a href="">Means Plus Function Claim Construction in Patent Prosecution and Litigation</a>,&rdquo; on January 27, 2021, at 9:00 a.m. PST / 10:00 a.m. MST / 11:00 a.m. CST / 12 noon EST.</p> <p>Means plus function claim construction is being applied by courts and the USPTO when the term &ldquo;means&rdquo; is not explicitly used. When does this happen, and what is the impact? Understanding the law of means plus function claim construction, as well as its application in litigation and patent prosecution, can provide answers.</p> <p>During this webinar, we will discuss these topics and more:</p> <ul type="disc"> <li>How to <i>identify</i> means plus function claim terms</li> <li>How to <i>construe </i>means plus function claim terms</li> <li>How to <i>avoid</i> a means plus function claim construction in patent prosecution</li> <li>How to <i>use</i> means plus function claim terms in patent prosecution</li> <li>Indefiniteness and means plus function claim terms</li> <li>Differences between the Doctrine of Equivalents and means plus function equivalents</li> </ul> <p>Our speaker will be Fitch Even partner <a href=";A=2574&amp;format=xml&amp;p=5482">Jon A. Birmingham</a>. For over 20 years, Jon has represented clients ranging from Fortune 100 companies to startups in intellectual property litigation, opinion matters, and complex patent prosecution matters.</p> <p>CLE credit has been approved for California and Illinois and is pending for Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but please note registration is required. To reserve your place, please <a href="">REGISTER HERE</a>.<br /> &nbsp;</p>Upcoming Webinars12 Jan 2021 00:00:00 -0800 Alert: PTAB Issues Final Rules Removing Presumption at Institution Favoring Petitioners<p>On December 9, the USPTO published <a href="">Final Rules</a> related to America Invents Act (AIA) trial proceedings. The updated rules address three aspects of trial proceedings. First, the Final Rule aligns the USPTO rules with the Supreme Court&rsquo;s holding in <i>SAS Institute v. Iancu</i> by providing that instituted reviews will proceed on all challenged claims and on all asserted grounds of unpatentability. Second, the rules provide for sur-replies as a matter of right&mdash;but only to address new evidence or arguments raised in a reply. Third, and perhaps most notably, the rules eliminate the presumption that disputed facts are viewed in the light most favorable to the petitioner for purposes of deciding whether to institute a review.</p> <p>In <i>inter partes</i> review (IPR) and post-grant review (PGR) proceedings, the party challenging a patent submits a petition that is typically supported by an expert declaration. The patent owner is entitled to file arguments against instituting trial in a preliminary response, which may also be supported by an expert declaration. Under the current rules, if the experts disagree on a material fact, the petitioner&rsquo;s view of that fact is assumed to be correct for purposes of the Patent Trial and Appeal Board&rsquo;s (PTAB&rsquo;s) institution decision. Under the new rules, however, the PTAB will view the competing testimony and weigh the relative credibility of each party&rsquo;s expert when deciding whether to institute. In certain cases, this rule change could change the decision on institution in favor of the patent owner.</p> <p>Removing the presumption favoring petitioners on institution decisions is the latest in a series of rule changes related to pre-institution pleadings in IPR and PGR proceedings. In August 2012, after Congress passed the AIA, the USPTO published initial rules that defined trial procedures. Those initial rules prevented patent owners from filing any testimonial evidence with their preliminary response. In April 2016, the USPTO amended the rules to permit patent owners to file testimonial evidence with their preliminary response. This change was designed to give patent owners the opportunity to present expert evidence and provide the PTAB with more information when deciding whether to institute a trial. To balance this change, the amended rules established that such testimonial evidence would be subject to a presumption favoring evidence submitted by the petitioner, to the extent disputed material facts exist after the patent owner submits its testimonial evidence.</p> <p>In comments on the new rules, some stakeholders had argued that the presumption favoring petitioners dissuaded patent owners from filing testimonial evidence to support their preliminary response. The USPTO seemingly agrees, noting in response that the &ldquo;rule change removes any bias or appearance of bias in favor of petitioner, and provides a balanced approach to ensure that all testimonial evidence submitted by the parties is fairly considered.&rdquo; With the latest rules, the USPTO notes that &ldquo;the PTAB will consider the totality of the evidence to determine whether the petitioner has met the standard for institution of the procedure.&rdquo; Getting more evidence before the PTAB is intended to improve the efficiency of these proceedings and therefore benefit both the parties and the public. Nevertheless, the rules will not apply retroactively, meaning that the presumption favoring a petitioner&rsquo;s testimonial evidence will be eliminated only for petitions filed after January 8, 2021.</p> <p>For more information on this ruling, please contact Fitch Even partner <a href=";A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a>, author of this alert.<br /> <b><br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts14 Dec 2020 00:00:00 -0800 Even Partner Tim Maloney Named BTI Client Service All-Star<p>Fitch Even partner <a href=";A=2601&amp;format=xml&amp;p=5482">Timothy P. Maloney</a> has been recognized as a BTI Client Service All-Star for 2020, singled out exclusively by corporate counsel for his unwavering dedication to superior client service.</p> <p>This is a <a href="">data-driven recognition</a> based solely on BTI Consulting Group&rsquo;s in-depth telephone interviews with over 350 top legal decision makers at large organizations as part of BTI&rsquo;s ongoing Annual Survey of General Counsel. This year, clients identified 475 individual attorneys from 181 law firms nationwide as &ldquo;standing above all the others in delivering the absolute best in client service.&rdquo; Attorneys are evaluated for exceptional performance in client engagement and investment and for qualities including keen strategic insight and industry savvy, unequivocal clarity, and a forward-thinking mindset.</p> <p>Tim counsels clients on all aspects of intellectual property enforcement and defense, with an emphasis on representing patent owners in litigation and licensing. He is an established first-chair trial lawyer with a strong track record in numerous jury and bench trials, including cases involving patent, trade secret, antitrust, trademark, unfair competition, and professional malpractice matters. Tim has handled over 100 litigation-related patent post-issuance proceedings in the USPTO, consistently achieving favorable outcomes.</p> <p>For more information on the 2020 BTI Client Service All-Stars, please visit the <a href="">BTI website</a>.<br /> &nbsp;</p>Firm News10 Dec 2020 00:00:00 -0800 Even Partner John Lyhus Published in AIPPI Japan Journal<p>An article written by Fitch Even partner <a href=";A=2600&amp;format=xml&amp;p=5482">John E. Lyhus</a> is featured in the Japanese version of the November 2020 edition of <i>A.I.P.P.I.</i>, the journal of the International Association for the Protection of Intellectual Property in Japan.</p> <p>In the article, &ldquo;U.S. Supreme Court Expands Trademark Protection for Certain Domain Names Composed of Generic Terms,&rdquo; John traces the 10-year journey of the &ldquo;; domain name mark through the USPTO and federal judicial system and discusses the significance of the Supreme Court&rsquo;s decision in <i>United States Patent and Trademark Office et al. v. </i>In that decision, the Court expressly rejected the concept of a per se rule against registration of a generic term followed by a top-level domain, holding instead that whether the term is generic or a protectable trademark must be determined by an assessment of consumer perception.&nbsp;<br /> &nbsp;</p>Professional Activities04 Dec 2020 00:00:00 -0800 Ethics for IP Practitioners: A Cautionary Tale of Professional Irresponsibility<p>Please join Fitch Even for a free webinar, &ldquo;<a href="">Legal Ethics for IP Practitioners: A Cautionary Tale of Professional Irresponsibility</a>,&rdquo; on December 16, 2020, at 9:00 a.m. PST / 10:00 a.m. MST / 11:00 a.m. CST / 12 noon EST.</p> <p>Registered patent practitioners must follow the USPTO Rules of Professional Conduct, which conform to the ABA Model Rules of Professional Conduct. Although largely similar to state bar rules, the USPTO rules can be applied in some fact scenarios that are unique to the intellectual property world.</p> <p>During this webinar, we will take a deep dive into how one patent attorney repeatedly ran afoul of the USPTO Rules of Professional Conduct in the context of a business venture that purported to serve the unique needs of the inventor community. This troublesome tale showcases some interesting ways in which the USPTO Office of Enrollment and Discipline interprets and applies these USPTO rules. We&rsquo;ll examine these and other behaviors to which the USPTO objected:</p> <ul type="disc"> <li>Following instructions from an intermediary on when to file a patent application for a client</li> <li>Disclosing a fee arrangement with a client</li> <li>Supervising an employee working for a client via an intermediary</li> <li>Doing business under an assumed name</li> </ul> <p>Our presenter will be Fitch Even partner <a href=";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 40 years.</p> <p>Steve frequently speaks on intellectual property law topics, ranging from the basics to the innovative and beyond. He has contributed to several books on IP-related issues, most recently <i>The Essentials of Japanese Patent Prosecution</i>, published in August by the ABA.<br /> <br /> A recording of this webinar is available through December 15, 2021.</p>Past Webinars24 Nov 2020 00:00:00 -0800 Alert: Federal Circuit Finds PTAB's Determination That a Patent Qualifies for CBM Review Is Not Appealable<p>On November 17, in <a href=""><i>SIPCO, LLC v. Emerson Electric Co.</i></a>, the Federal Circuit held that the Supreme Court&rsquo;s decision in <i>Thryv, Inc. v. Click-to-Call Technologies, LP</i> makes clear that the Patent Trial and Appeal Board&rsquo;s (PTAB&rsquo;s) threshold determination of whether a patent qualifies for covered business method (CBM) review is a decision that is nonappealable. The Federal Circuit thus extended the Supreme Court&rsquo;s decision in <i>Thryv </i>regarding appeals from <i>inter partes</i> review (IPR) proceedings to CBM proceedings.</p> <p>The <i>SIPCO</i> case was before the Federal Circuit for a second time, after the Supreme Court reversed the Federal Circuit&rsquo;s earlier decision and remanded in light of the Court&rsquo;s decision in <i>Thryv</i>.</p> <p>In <i>Thryv</i>, the Supreme Court held that challenges based on 35 U.S.C. &sect; 315(b)&rsquo;s time-bar provisions are nonappealable in IPRs. Under section 315(b), an &ldquo;inter partes review may not be instituted if the petition . .&nbsp;. is filed more than 1 year after the date on which the petitioner .&nbsp;.&nbsp;. is served with a complaint alleging infringement.&rdquo; Relatedly, however, section 314(d) provides that &ldquo;[t]he determination .&nbsp;.&nbsp;. to institute an inter partes review under this section shall be final and nonappealable.&rdquo; Reasoning that the time-bar provisions of section 315(b) expressly relate to the PTAB&rsquo;s decision to institute an IPR and that the PTAB&rsquo;s institution decisions are nonappealable under section 314(d), the Supreme Court held that appeals based on section 315(b) are barred under section 314(d).</p> <p>In <i>SIPCO, </i>the Federal Circuit held that the Supreme Court&rsquo;s decision in <i>Thryv</i> makes clear that the determination of whether a patent qualifies for CBM review is nonappealable. The statute governing CBM review includes a similar &ldquo;no appeal&rdquo; provision in section 324(e) that prohibits appeals regarding the determination to institute the CBM review proceeding. The Federal Circuit held that the PTAB&rsquo;s decision on whether a patent qualifies for CBM review is expressly and exclusively tied to the decision to institute. Consequently the Federal Circuit, finding <i>Thryv</i> to be indistinguishable, held that the &ldquo;no appeal&rdquo; provision of section 324(e) prohibits appeals regarding whether a patent qualifies for CBM review. Thus, the Federal Circuit found it was precluded from reviewing SIPCO&rsquo;s challenge to the PTAB&rsquo;s determination that SIPCO&rsquo;s patent was eligible for CBM review, being nothing more than a contention that the PTAB should have declined to institute CBM review.</p> <p>The <i>SIPCO </i>decision is yet another Federal Circuit case following <i>Thryv</i> that expands the PTAB&rsquo;s nonreviewable discretion in making determinations in post-grant proceedings. For example, in <a href=""><i>ESIP Series 2, LLC v. Puzhen Life USA, LLC</i></a>, the Federal Circuit held that section 314(d) precludes review of the PTAB&rsquo;s real party-in-interest determinations under section 312(a)(2). The Federal Circuit further held in <a href=""><em>F</em><i>all Line Patents, LLC v. Unified Patents, LLC</i></a><i> </i>that mandamus review is unavailable to address real party-in-interest determinations. In <a href=""><i>Fitbit, Inc. v. Valencell, Inc.</i></a>, the Federal Circuit also held that the PTAB&rsquo;s acceptance of a &ldquo;tardy&rdquo; petition and request for joinder at the institution phase is not reviewable on appeal. The Federal Circuit has applied this reasoning in several other nonpublished cases.</p> <p>The Federal Circuit has differentiated <i>Thryv</i> in a single case, holding in <a href=""><i>Facebook, Inc. v. Windy City Innovations, LLC</i></a> that section 314(d) does not preclude review of the PTAB&rsquo;s discretion to join a follow-on petition filed by the same PTAB petitioner &ldquo;as a party&rdquo; under section 315(c). There, the Federal Circuit reasoned that &ldquo;Windy City's cross-appeal does not challenge the Board&rsquo;s decision to institute Facebook's follow-on petitions, but challenges whether the Board&rsquo;s joinder decisions had exceeded the statutory authority provided by &sect; 315(c)&rdquo; as to the manner in which the already-instituted IPR proceeded.</p> <p>Even though petitions for CBM review can no longer be filed, the <i>SIPCO </i>decision is significant because it shows the breadth of unreviewable discretion that the PTAB has in making decisions that are related to the institution decision. This decision not only expands the Supreme Court&rsquo;s decision in <i>Thryv</i> to other post-grant proceedings such as CBM review, but also holds that the PTAB&rsquo;s decisions regarding whether a patent is even eligible for the post-grant review proceeding may not be appealed.</p> <p>The ongoing expansion of the PTAB&rsquo;s unreviewable authority to institute should give both petitioners and patent owners reason for concern. Under this body of precedent, dissatisfied parties before the PTAB are left to request reconsideration of the institution decision in front of the very same panel that issued the decision. This lessens the likelihood that legitimate errors will be corrected. In <i>Cuozzo Speed Technologies, LLC v. Lee</i>, the Supreme Court allowed that certain cases might be reviewable, if the PTAB engaged in &ldquo;shenanigans&rdquo; by depriving a party of due process or by exceeding its statutory limits. Post-<i>Thryv</i>, the Federal Circuit has not yet applied <i>Cuozzo&rsquo;s</i> exception to the section&nbsp;314(d) no-appeal rule. &nbsp;</p> <p>For more information on this ruling, please contact Fitch Even attorneys <a href=";A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a> or <a href=";A=19279&amp;format=xml&amp;p=5482">Zachary Van Engen</a>, coauthors of this alert.&nbsp;<br /> &nbsp;</p> <b>Fitch Even IP Alert<sup>&reg;<br /> </sup></b>IP Alerts24 Nov 2020 00:00:00 -0800 Alert: Federal Circuit Addresses Printed Matter Doctrine in Reversing Invalidity Ruling<p>On November 10, in <i><a href="">C. R. Bard, Inc. v. AngioDynamics, Inc.</a></i>, the Federal Circuit clarified that a patent claim may be found patent-ineligible under 35 U.S.C. &sect; 101 on the ground that it is directed to non-functional &ldquo;printed matter.&rdquo; The court further explained how the <i>Alice</i> doctrine applies when a claim contains some terms directed to printer matter and some structural terms. This case provides significant guidance under the printed matter doctrine.</p> <p>The plaintiffs, C. R. Bard, Inc., and Bard Peripheral Vascular, Inc. (collectively, &ldquo;Bard&rdquo;), brought a patent infringement action in the U.S. District Court for the District of Delaware against AngioDynamics, Inc., for infringement of Bard&rsquo;s U.S. Patent Nos. 8,475,417, 8,545,460, and 8,808,478 (&ldquo;the asserted patents&rdquo;). The asserted patents are directed to a medical device that uses a radiographic marker to identify to a user that a vascular access port is &ldquo;power injectable,&rdquo; meaning that the port may be used for injection of fluids into a vein at claimed flow rates and/or claimed pressures. The radiographic marker may be seen in an X-ray scan at the start of the medical procedure to confirm to the user that the access port is power injectable.</p> <p>During trial, at the close of Bard&rsquo;s case-in-chief, AngioDynamics moved for judgment as a matter of law (&ldquo;JMOL&rdquo;) of non-infringement based on lack of evidence of direct infringement and a JMOL of no willful infringement based on lack of evidence of willfulness. The district court asked the parties sua sponte whether the issue of patent eligibility and printed matter were also ripe for decision. The district court granted AngioDynamics&rsquo; motion for JMOL of non-infringement and no willful infringement, and in the same opinion granted AngioDynamics&rsquo; pre-trial motion for summary judgment of invalidity based on patent ineligibility under section 101 and the Supreme Court decision in <i>Alice Corp. v. CLS Bank Int&rsquo;l</i> and also based on anticipation under 35 U.S.C. &sect; 102, both of which implicated the printed matter doctrine.</p> <p>On appeal, the Federal Circuit reversed the district court&rsquo;s JMOL and summary judgment rulings. The Federal Circuit held that there was sufficient evidence to create triable issues of fact regarding direct and indirect infringement and willfulness. The court then discussed the rationale and history of the printed matter doctrine in reversing the summary judgment of invalidity.</p> <p>The court reviewed precedents of the Federal Circuit and the Court of Customs and Patent Appeals addressing the printed matter doctrine and initially noted that &ldquo;historically &lsquo;printed matter&rsquo; referred to claim elements that literally encompassed &lsquo;printed&rsquo; material.&rdquo; The court then noted that the doctrine &ldquo;has evolved over time to guard against attempts to monopolize the conveyance of information using any medium,&rdquo; going on to say, &ldquo;Today, printed matter encompasses any information claimed for its communicative content, and the doctrine prohibits patenting such printed matter unless it is &lsquo;functionally related&rsquo; to its &lsquo;substrate,&rsquo; which encompasses the structural elements of the claimed invention.&rdquo;</p> <p>The court explained that in evaluating the existence of a functional relationship, it has considered &ldquo;whether the printed matter merely informs people of the claimed information, or whether it instead interacts with the other elements of the claim to create a new functionality in a claimed device or to cause a specific action in a claimed process.&rdquo; In the asserted patents, the court noted that the parties agreed that the asserted claims included printed matter, which the court described as &ldquo;one or more markers &lsquo;identifying&rsquo; or &lsquo;confirming&rsquo; that the implanted access port is &lsquo;suitable&rsquo; either&rdquo; for the claimed fluid flow rate or the claimed fluid pressure. In recognizing the claim elements as printed matter, the court emphasized that &ldquo;These elements are directed to the content of the information conveyed.&rdquo;</p> <p>The court then focused on the question of whether the printed matter in the claims is &ldquo;functionally related to the power injectable port, as recited in all the asserted claims, or to the step of performing a power injection, as recited in the method claims.&rdquo; The court rejected Bard&rsquo;s argument that information conveyed by the radiographic markers provides &ldquo;new functionality&rdquo; to the port because it makes the port &ldquo;self-identifying.&rdquo; The court stated that such a finding would &ldquo;eviscerate our established case law that &lsquo;simply adding new instructions to a known product&rsquo; does not create a functional relationship.&rdquo;</p> <p>The court also rejected Bard&rsquo;s argument that &ldquo;the printed matter is functionally related to the power injection step of the method claims because the medical provider performs the power injection &lsquo;based on&rsquo; the identification of the port&rsquo;s functionality.&rdquo; The court noted that Bard did not advocate for such a claim construction and saw no reason to read such a limitation into the claims. Therefore, the court explicitly held &ldquo;that the content of the information conveyed by the claimed subject matters&mdash;i.e. that the claimed access ports are suitable for injection at the claimed pressure and flow rate&mdash;is printed matter not entitled to patentable weight.&rdquo;</p> <p>The court went on to consider whether patent claims containing one or more elements directed to printed matter not having &ldquo;patentable weight&rdquo; can be invalidated as ineligible subject matter under section 101. The court noted that prior case law had evaluated whether printed matter elements were entitled to patentable weight under sections 102 and 103, concluding that prior decisions did not &ldquo;foreclose the possibility that an entire claim could be found patent ineligible when the claim as a whole is directed to printed matter.&rdquo; The court noted that post-<i>Alice </i>decisions have recognized that &ldquo;the mere conveyance of information that does not improve the functioning of the claimed technology is not patent-eligible subject matter under &sect; 101.&rdquo; The court concluded that in the asserted patents, when &ldquo;each claim is read as a whole, the focus of the claimed advance is not solely on the content of the information conveyed, but also on the means by which that information is conveyed.&rdquo; The court further stated that even if the sole focus of the claimed advance was the printed subject matter, the evidence is insufficient to establish as a matter of law, &ldquo;at <i>Alice </i>step two,&rdquo; that the use of a radiographic marker in the &ldquo;ordered combination&rdquo; of claimed elements was not an inventive concept; that is, the evidence &ldquo;does not establish that radiographic marking was routine and conventional under <i>Alice </i>step two.&rdquo; Thus, the court specifically held, &ldquo;We therefore hold that the asserted claims are not patent ineligible under &sect; 101 because the claims in their entireties are not solely directed to printed matter.&rdquo;</p> <p>Regarding Bard&rsquo;s invalidity argument under section 102, the Federal Circuit held that &ldquo;when evaluating the novelty and non-obviousness of claims, we must assign no patentable weight to the non-functional printed matter in the claims, which in this case is the information that the claimed access ports are suitable for injection at the claimed pressure and flow rate.&rdquo; The court held that there remained a factual dispute as to whether the asserted prior art contained the other claim elements that do not claim printed matter, i.e., the claim elements calling for a &ldquo;radiographic marker&rdquo; or &ldquo;radiographic feature.&rdquo; Thus, the Federal Circuit vacated the finding of invalidity based on section 102, and remanded the case to the district court for further proceedings consistent with the Federal Circuit&rsquo;s opinion.</p> <p>This Federal Circuit decision is significant because it (1) establishes that the printed matter doctrine may be a ground for invalidating claims as being patent-ineligible under section 101 and <i>Alice</i>; (2) confirms that in a validity analysis under section 101, claim elements specifying printed matter have no patentable weight unless they are functionally related to other structural elements of the claimed invention; and (3) confirms that even if a patent claim is deemed to be focused solely on printed matter, the claim may be patent-eligible if the &ldquo;<i>Alice</i> step 2&rdquo; analysis shows that the &ldquo;ordered combination of elements&rdquo; is not routine and ordinary.</p> <p>For more information on this ruling, please contact Fitch Even partner <a href=";A=2581&amp;format=xml&amp;p=5482">Karl R. Fink</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg; </sup></b></p> <b><sup> </sup></b>IP Alerts23 Nov 2020 00:00:00 -0800 Even Partner David Gosse Appointed Chair of AIPLA PTAB Trial Committee<p>Fitch Even partner <a href=";A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a> was recently appointed Chair of the American Intellectual Property Law Association (AIPLA) <a href="">PTAB Trial Committee</a>, following his two-year tenure as Vice Chair of the committee. Dave will serve in this role through October 2022.</p> <p>The PTAB Trial Committee is charged with providing up-to-date information and CLE programs on significant decisions and trends related to <i>inter partes</i> proceedings before the USPTO Patent Trial and Appeal Board (PTAB). The committee considers rules, regulations, and decisions related to PTAB proceedings and, when appropriate, makes recommendations regarding amicus briefing and comments submitted by AIPLA to the PTAB.</p> Dave has a diverse IP law practice encompassing both the acquisition and the enforcement of patent rights, including post-grant proceedings before the PTAB.Professional Activities19 Nov 2020 00:00:00 -0800