Fitch Even News Feed Mar 2018 00:00:00 -0800firmwise Alert: PTAB Need Not Consider New Arguments Raised for First Time at Oral Argument<p>On March 22, in <i><a href="">Dell Inc. v. Acceleron, LLC</a></i>, the Federal Circuit held that its earlier remand did not obligate the Patent Trial and Appeal Board (&ldquo;the PTAB&rdquo;) to consider an argument presented for the first time during oral arguments.</p> <p>The patent owner, Acceleron, first appealed to the Federal Circuit after the PTAB entered a final decision that, in part, invalidated claims 3 and 20 of the patent at issue. The PTAB&rsquo;s final decision incorporated an argument first presented by the petitioner, Dell, during oral arguments. Acceleron contended that the PTAB did not provide Acceleron with an opportunity to respond to that new argument. On the first appeal, the Federal Circuit held that the Administrative Procedures Act required that Acceleron have an opportunity to respond. Thus, the Federal Circuit remanded to the PTAB.</p> <p>Upon remand, the PTAB refused to further consider the argument that Dell had first raised during oral argument. The PTAB therefore entered a final decision finding claims 3 and 20 valid, favoring Acceleron. Dell appealed the PTAB&rsquo;s remand decision to the Federal Circuit.</p> <p>Dell argued that the Federal Circuit&rsquo;s opinion required the PTAB to consider Dell&rsquo;s new argument. The Federal Circuit disagreed, explaining that its previous remand set forth the procedure that the PTAB would have to follow if the PTAB were to consider Dell&rsquo;s new argument. However, the Federal Circuit explained that the PTAB was under no obligation to actually consider Dell&rsquo;s new argument, citing the Office Patent Trial Practice Guide and the Federal Circuit&rsquo;s decision in <i>Ariosa Diagnostics v. Verinata Health</i>. The Office Patent Trial Practice Guide states that &ldquo;[n]o new evidence or arguments may be presented at the oral argument,&rdquo; and in <i>Ariosa,</i> the Federal Circuit held the &ldquo;[t]he PTAB may control its own proceedings, consistent with its governing statues, regulations, and practice.&rdquo; Indeed, the court concluded that the PTAB was obligated to dismiss Dell&rsquo;s untimely argument.</p> <p>In view of this opinion, parties to <i>inter partes</i> review proceedings should be careful to assert all arguments during briefing, because the PTAB may preclude arguments raised for the first time during oral arguments.</p> <p>For more information on this holding, please contact Fitch Even partner <a href=";A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a> or patent agent <a href=";A=12841&amp;format=xml&amp;p=5482">Thomas A. James</a>, authors of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts22 Mar 2018 00:00:00 -0800 Even Partner Joe Marinelli Published in ABA's Business Law Today<p>An article written by Fitch Even partner <a href=";A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a> is featured in the March 2018 issue of <i>Business Law Today</i>, published by the ABA Business Law Section. In the article, &ldquo;<a href=";utm_medium=email&amp;utm_campaign=march18_articles">Federal Circuit Clarifies On-Sale Bar to Patentability for &lsquo;Secret Sales,&rsquo;</a>&rdquo; Joe reports on the Federal Circuit&rsquo;s denial of Helsinn Healthcare&rsquo;s petition for en banc rehearing on the scope of the America Invents Act's on-sale bar and its partial clarification of its previous ruling.</p> <p>To access the article online, please visit the <a href=";utm_medium=email&amp;utm_campaign=march18_articles">ABA website.</a></p>Professional Activities16 Mar 2018 00:00:00 -0800 Prosecution Churn: When <i>Ex Parte</i> PTAB Appeals Make Dollars and Sense join Fitch, Even, Tabin &amp; Flannery LLP for a free webinar, &ldquo;<a href="">Avoiding Prosecution Churn: When <em>Ex Parte</em> PTAB Appeals Make Dollars and Sense</a>,&rdquo; on Wednesday, March 21, 2018, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT. <br /> <br /> During the process of acquiring patent rights through the patent application process, applicants sometimes wish to seek review of rejections by an examiner. The formal mechanism for achieving this review is an <em>ex parte</em> appeal to the Patent Trial and Appeals Board (PTAB). Some patent practitioners avoid the <em>ex parte</em> review process, viewing it as lengthy and expensive. But, data and experiences recently compiled by an AIPLA subcommittee suggest that this conventional thinking may be incorrect. It turns out that pursuing an appeal can be a more attractive option than other patent prosecution procedures. <br /> <br /> During this webinar, we will explore how the AIPLA findings may provide guidance on <ul> <li>When to file <em>ex parte</em> PTAB appeals</li> <li>How often to file these appeals</li> <li>Which issues to choose to appeal</li> </ul> Additional topics will include <ul> <li>USPTO incentives</li> <li>Working with the examiner</li> <li>Patent term adjustment</li> <li>Pre-appeal brief reviews</li> <li>Other relevant statistics</li> </ul> Our speakers: <br /> <a href=";A=2596&amp;format=xml&amp;p=5482">Thomas F. Lebens</a>, a partner at Fitch Even, assists clients in preparing and prosecuting patent and trademark applications, including appeals, post-grant review, and interferences. He also counsels clients in IP and business strategy; licensing issues; infringement and validity analysis and opinions; and copyright matters. <br /> <br /> <a href=""> Trent Ostler</a> is in-house counsel for Illumina, Inc., where he helps protect the company&rsquo;s software and informatics products and inventions through patent, copyright, and open source licensing. Trent is the founder of, a PTAB appeals database. <br /> <br /> A recording of this webinar is available through March 20, 2019.<br /> <br type="_moz" />Past Webinars05 Mar 2018 00:00:00 -0800 Even’s Doug Watson Speaks at Girls4Science Program at the Adler Planetarium<p>On Saturday, February 17, Fitch Even patent scientist/technical writer <a href=";A=9490&amp;format=xml&amp;p=5482">Douglas F. Watson, Ph.D.</a>, spoke to approximately 150 young students participating in a Girls4Science program at the Adler Planetarium in Chicago. The Chicago Intellectual Property Alliance (CIPA) coordinated the program with <a href="">Girls4Science</a>, a nonprofit organization dedicated to exposing girls in Chicago, ages 10&ndash;18 years old, to science, technology, engineering, and math.</p> <p>The students first toured the planetarium, then gathered for Doug&rsquo;s presentation. Doug began his talk by explaining what patents are, why they are important, and how they can relate to astronomy. He then provided a quick overview of the research he did in his work as a theoretical physicist at the University of Chicago, recounting the amazing technologies and instruments constructed there to carry out cutting-edge science. Doug then discussed his transition to IP law and how crucial it is to protect emerging inventions, how he applies his science background to new IP projects, and how IP law allows you to learn and immerse yourself in a wide variety of new technologies.</p> <p>Fitch Even partner, <a href=";A=2609&amp;format=xml&amp;p=5482">Joseph T. Nabor</a>, a founding board member and past president of CIPA, was also on hand, along with other CIPA members, to speak informally with attendees.</p> <p>The <a href="">Chicago Intellectual Property Alliance</a> is a 501(c)(3) not for profit entity that identifies and promotes Chicago, the Midwest and its committed intellectual property practitioners, law schools, associations and businesses as the intellectual property center for new ideas, programs and education.<br /> &nbsp;</p>Community Activities01 Mar 2018 00:00:00 -0800 Alert: PTAB Panel Says Tribal Immunity No Defense to <i>Inter Partes</i> Review<p>Last Friday, in <i><a href="/2E8FB4/assets/files/Documents/Mylan Pharmaceuticals v. Saint Regis Mohawk Tribe.pdf">Mylan Pharmaceuticals Inc. et al. v. Saint Regis Mohawk Tribe</a>, </i>a panel of the Patent Trial and Appeal Board (PTAB) decided that the Saint Regis Mohawk Tribe&rsquo;s assertion of sovereign immunity cannot be used to terminate the <i>inter partes</i> review (IPR) of six patents covering Allergan&rsquo;s popular dry-eye drug Restasis<sup>&reg;</sup>. This decision marks the first time the PTAB has had occasion to address whether tribal sovereign immunity may be used as a defense to an IPR.</p> <p>In 2017, the PTAB found in a series of decisions that state universities, as arms of the sovereign state, were immune under the Eleventh Amendment from being subject to IPR proceedings against their will. In one instance, the PTAB decided that an IPR could not continue with an exclusive licensee in place of an immune sovereign patent owner. These decisions prompted Allergan and the Saint Regis Mohawk Tribe to attempt a novel strategy to shield Allergan&rsquo;s patents from being reviewed in ongoing IPRs. Allergan paid the tribe $13.75 million to take the patents in exchange for the tribe&rsquo;s promise to assert sovereign immunity as a defense to the IPRs. Concurrently, the tribe granted Allergan an exclusive license to the patents in exchange for $15 million a year in future royalties.</p> <p>After the transaction was completed, and shortly before oral argument was to be held, the tribe notified the PTAB it had acquired the patents and requested permission to file a motion to dismiss the proceedings as an immune sovereign. Allergan also asked to be dismissed from the proceedings, contending it was no longer the patent owner.</p> <p>The PTAB reasoned that IPR proceedings were created by a generally applicable statute to which tribal sovereign immunity does not apply. In addition, the PTAB found that &ldquo;reconsideration of the patentability of issued claims via <i>inter partes</i> review is appropriate without regard to the identity of the patent owner&rdquo;; notably, this pronouncement appears to be at odds with the prior decisions finding state universities to be immune from IPR.</p> <p>The PTAB also held that even if the tribe were immune, the IPRs could continue with Allergan alone despite the assignment of the patents to the tribe. The panel reviewed the license agreement and found it transferred all of the substantial patent rights back to Allergan, such that Allergan remained an owner of the patents. Further, the PTAB found the tribe was not an indispensable party to the IPR because Allergan has &ldquo;at least an identical interest&rdquo; to the tribe in defending the patents, &ldquo;if not <i>more</i> of an interest.&quot;</p> <p>In view of these determinations, the PTAB denied the Saint Regis Mohawk Tribe&rsquo;s motion to dismiss the IPR proceedings. This decision, although not binding in other IPR proceedings, will be of interest to those considering ways to defend patents from review in an IPR.</p> <p>For more information on this ruling, please contact Fitch Even partner <a href=";A=2587&amp;format=xml&amp;p=5482">Paul B. Henkelmann</a>, author of this alert.</p> <p><i>For additional background on sovereign immunity at the PTAB and beyond, including discussion of the case described above, you can view a recording of last week&rsquo;s Fitch Even webinar, <b>Immunity for Sale? Tribal and State Sovereign Immunity at the PTAB, </b>accessible at no charge through our &ldquo;Webinars&rdquo; page <a href="">here</a>.</i></p> <p><b><br /> </b><b>Fitch Even IP Alert</b><sup><sub><b>&reg;</b></sub></sup></p>IP Alerts27 Feb 2018 00:00:00 -0800 Even Attorneys Assist with INTA Chicago Moot Court Competition; Law Clerk Evan Kline-Wedeen Advances to Finals<p>On February 10, Fitch Even law clerk Evan Kline-Wedeen and his Chicago-Kent College of Law classmate Brittany Kaplan participated in the Chicago Regional Oral Arguments of the International Trademark Association's <a href="">Saul Lefkowitz Moot Court Competition</a>, winning the Dolores K. Hanna Best Brief Award and placing second as a team overall. Evan and his teammate now advance to the national finals of the competition, taking place on March 17 in Washington, D.C., where they will compete against the top teams of the other five regions.</p> <p>Fitch Even partner <a href=";A=2617&amp;format=xml&amp;p=3131">Alisa C. Simmons</a> served as Chair of the Chicago Regional Competition, which featured 40 students participating as part of 13 teams. Alisa has held various roles on this regional committee since 2009. Fitch Even partner <a href=";A=2600&amp;format=xml&amp;p=5482">John E. Lyhus</a> once again served as a brief-reading judge for the competition, a role he has held since 2008. In addition, Fitch Even associates <a href=";A=13638&amp;format=xml&amp;p=5482">Margaret A. Wojkowski</a> and <a href=";A=13120&amp;format=xml&amp;p=5482">Andrew C. Wood</a> served as bailiffs.</p> <p>Fitch Even partner <a href=";A=2609&amp;format=xml&amp;p=3131">Joseph T. Nabor</a> is currently National Committee Chair of the Lefkowitz Competition, a committee he has served on since 2006. Joe served as judge during the oral arguments at the inaugural Los Angeles Regional Competition, also held on February 10.</p> <p>The International Trademark Association (INTA) established this annual competition in 1990 in honor of <a href="">Saul Lefkowitz</a>, past chair of the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, and is the only moot court competition in the U.S. with a focus on trademark and unfair competition law. The late <a href="">Dolores K. Hanna</a>, former Fitch Even partner and the first woman to serve as INTA president, was fundamental in the creation of this competition. Its objective is to introduce law students to important issues arising in U.S. trademark and unfair competition law.</p> <p>&nbsp;</p> <p>&nbsp;</p>Professional Activities24 Feb 2018 00:00:00 -0800 Alert: State Court Holds Communications with Patent Agents Are Privileged<p>As <a href=";an=50380&amp;anc=180&amp;format=xml&amp;p=5486">previously reported</a>, in 2016 the Federal Circuit, in <i>In re: Queen&rsquo;s University at Kingston, PARTEQ Research and Development Innovations</i>, held that a client&rsquo;s communications with its non-attorney patent agents can be privileged. This decision is not binding on the state courts. Today, however, the Supreme Court of Texas agreed with the Federal Circuit and concluded that under Texas law, patent agents count as &ldquo;lawyers&rdquo; for purposes of the Texas lawyer-client privilege. The decision, one of the first state court decisions to follow <i>Queen&rsquo;s University</i>, may signal broader recognition of attorney-client privilege for patent agents.</p> <p>The case is <a href="/2E8FB4/assets/files/Documents/In re Andrew Silver.pdf"><i>In re Andrew Silver</i></a>. The underlying Texas state court lawsuit involves a claim for breach of contract involving the &ldquo;Ziosk,&rdquo; a stand-alone tablet device that is designed to allow customers at restaurants to order food and pay their checks. The plaintiff, Andrew Silver, claims that he invented the technology involved and that the manufacturer of the Ziosk failed to pay him for it. When Silver brought a breach-of-contract action against the manufacturer of the Ziosk, the manufacturer sought production of email messages between Silver and his non-attorney patent agent. The trial court granted a motion to compel production of the emails. Silver then sought mandamus relief in the court of appeals, and subsequently in the Texas Supreme Court.</p> <p>The Texas Supreme Court, while noting that Texas law provided for a lawyer-client privilege, concluded that a patent agent is a &ldquo;lawyer&rdquo; for purposes of Texas law. Accordingly, the court held, Silver was entitled to a writ of mandamus, and to an in camera review of the emails for privilege under the appropriate Texas procedure. The court&rsquo;s analysis largely followed the logic of <i>Queen&rsquo;s University.</i></p> <p>For more information, 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><b><br /> Fitch Even IP Alert<sup>&reg;</sup></b></p> <p><b><sup><br /> </sup></b></p>IP Alerts23 Feb 2018 00:00:00 -0800 Alert: Factual Questions Can Be Relevant to Section 101 Analysis<p>On February 14, 2018, in <i><a href="">Aatrix Software v. Green Shades Software</a></i>, a Federal Circuit panel concluded that in a section 101 analysis, &ldquo;like many legal questions, there can be subsidiary fact questions which must be resolved en route to the ultimate legal determination.&rdquo; The court concluded that factual allegations included in Aatrix&rsquo;s complaint were sufficient to survive Green Shades&rsquo;s Rule 12(b)(6) motion to dismiss predicated on 35 U.S.C. 101, and remanded the case to the district court. Along the way, the court held that Aatrix&rsquo;s claims to a &ldquo;system&rdquo; could not be declared invalid under section 101 for lack of &ldquo;tangible&rdquo; statutory subject matter.</p> <p>Aatrix sued Green Shades for infringement of two patents that generally are directed to systems and methods for designing, creating, and importing data into a viewable form on a computer. The specification of the patents describes a &ldquo;data processing system&rdquo; that has three main components: a &ldquo;form file,&rdquo; a &ldquo;data file,&rdquo; and a &ldquo;viewer.&rdquo; Aatrix claimed a &ldquo;data processing system&rdquo; that included these components and a &ldquo;form file creation program.&rdquo;</p> <p>Green Shades moved to dismiss the complaint under Rule 12(b)(6), asserting that all of the claims were ineligible under section 101. The district court granted Green Shades&rsquo;s motion and held that all the asserted claims were invalid. The court reasoned that the claims had no tangible embodiments or were directed to abstract ideas without inventive concepts. Aatrix then filed a number of motions including a motion for leave to amend the complaint to supply additional allegations and evidence. The district court denied these motions, and Aatrix appealed.</p> <p>The Federal Circuit determined that patent eligibility can only be determined at the Rule 12(b)(6) stage when there are <i>no</i> factual allegations, taken as true, that prevent resolving the eligibility question as a matter of law. The court found that the district court erred in this determination.</p> <p>First, the court found that the district court erred when it held that claim 1 was patent-ineligible solely because it is directed to an intangible embodiment. The court explained that claim 1 is a system claim that claims a data processing system that requires computer operating software and elements for viewing data, forms, and reports. Distinguishing Aatrix&rsquo;s &ldquo;system&rdquo; claims from claims to &ldquo;pure data&rdquo; or &ldquo;transitory signals embedded with data,&rdquo; which have been held patent-ineligible as not falling within the classes of statutory subject matter under section 101, the court noted that Aatrix&rsquo;s claims required computer software, a means for viewing and changing data, and a means for viewing forms and reports. This was &ldquo;very much a tangible system,&rdquo; according to the court. This was so even where the patent included a dependent claim that added client computer and server computer limitations.</p> <p>Second, the court found that the district court erred in refusing to allow Aatrix to file an amended complaint at this stage, because the proposed amended complaint alleged facts that if taken as true would have precluded a dismissal. Green Shades argued that the claims were &ldquo;invalid on their face&rdquo; and that amending the complaint would not alter this status. The Federal Circuit disagreed, determining that the proposed amended complaint contained allegations that taken as true would directly affect the patent eligibility analysis, or at least raise factual disputes.</p> <p>Specifically, Aatrix&rsquo;s amended complaint identified certain problems that were present in the prior art, the specific improvements of Aatrix&rsquo;s invention, and how Aatrix&rsquo;s patented inventions solved the prior problems. For example, the complaint alleged that the claimed &ldquo;data file&rdquo; allowed programs on a computer to better communicate with one another than prior art systems did. According to Aatrix, &ldquo;[t]his invention increased the efficiencies of computers processing tax forms&rdquo; and &ldquo;saved storage space both in the users&rsquo; computers&rsquo; RAM [memory] . . . and hard disk. . . .&rdquo; The Federal Circuit reasoned that these allegations point to an improvement in the computer technology itself and that the invention is not directed to generic components performing conventional activities. Taken as true, these allegations would contradict the district court&rsquo;s finding that the claims are conventional or routine.</p> <p>Significantly, the court determined that while the section 101 determination of patent eligibility is ultimately a legal question, there are subsidiary fact questions that must be resolved in order to reach a legal determination. For example, the question of whether the claim elements are well-understood, routine, and conventional is a question of fact. The majority found that Aatrix's allegations about the claimed &ldquo;data file&rdquo; were sufficient to present the claimed inventions as not being, in fact, well-understood, routine, or conventional. Thus, the court held, the district court had erred in not allowing Aatrix to file an amended complaint.</p> <p>The panel decision was 2&ndash;1. Judge Reyna partially dissented, arguing that the section 101 inquiry is a legal question and that the majority had incorporated a new factual component into the section 101 analysis. He argued that allowing a factual component in section 101 analysis opens the door to the introduction of &ldquo;an inexhaustible array of extrinsic evidence, such as prior art, publications, other patents, and expert opinion.&rdquo; The effect of this, he argued, is that a plaintiff, when faced with a 12(b)(6) motion to dismiss, can now simply amend its complaint to allege extrinsic facts to be taken as true. Instead, he argued, the section 101 analysis should be primarily focused on the claims and the written description of the patent, and not the factual allegations of the patent owner.</p> <p>The court&rsquo;s decision is significant in a number of respects. The court&rsquo;s holding that section 101 analysis can implicate factual questions appears to be new, at least by way of the clarity by which the court makes that point. By and large, the majority&rsquo;s holding is favorable to patent owners, since it seems to point to a path for survival of Rule 12 motions based on patent eligibility in some cases. The decision is also significant in its discussion of &ldquo;system&rdquo; claims, in that a claim to a software-implemented &ldquo;system&rdquo; is not automatically treated as patent-ineligible. The word &quot;system&quot; in patent claims has been on something of a downward trek in recent years, and this case may auger less-pejorative treatment of the word going forward.</p> <p>For more information on this ruling, please contact Fitch Even partner <a href=";A=2610&amp;format=xml&amp;p=5482">Steven G. Parmelee</a>, author of this alert.</p> <p><i>&mdash;Fitch Even law clerk Zach van Engen contributed to this alert.</i></p> <p>&nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;<br /> </sup></b></p>IP Alerts20 Feb 2018 00:00:00 -0800 Even Partner Tim Maloney Ranked Among Best Performing Attorneys in IPR Practice<p>Fitch Even partner <a href=";A=2601&amp;format=xml&amp;p=5482">Timothy P. Maloney</a> was ranked as the #3 best-performing attorney representing patent owners in<i> inter partes</i> review (IPR) proceedings, based on analysis conducted by Patexia and reported on February 14 in their article &quot;<a href="">Best Performing Attorneys in IPR</a>.&quot;</p> <p>The findings were based on cases filed from September 2012 through June 2017 that had been denied, settled, or instituted or had received a final written decision as of September 2017. Pending cases were excluded. The analysis covered more than 5,000 attorneys who had been involved in a minimum of 20 IPR cases over the period of the study.</p> <p>Fitch Even has represented both patent owners and petitioners in a wide variety of industries in numerous IPR proceedings to date. Tim&rsquo;s strong track record reflects the contributions of the firm&rsquo;s entire PTAB practice group and validates our approach of leveraging the skills of both patent litigators and patent prosecution attorneys to defend vital patents against IPR challenges.</p> <p>In one matter, Fitch Even successfully defended nine digital rights management patents against 35 individual IPR and CBM challenges, with only one trial instituted. Tim won a rare motion to amend the claims at trial, while also obtaining the first-known finding by the PTAB of no intervening rights despite the amendment to the claim.<br /> <br /> Successes in recent months include defeating seven IPR petitions filed against another client&rsquo;s portfolio of patents directed to key breakthroughs in formulating gypsum wallboard.<br /> &nbsp;</p>Firm News16 Feb 2018 00:00:00 -0800 Even Sponsors Chicago Women in IP Post-Holiday Dinner Even was proud to be a platinum sponsor of Chicago Women in IP&rsquo;s Third Annual Post-Holiday Dinner, on January 24, 2018, at the Hotel Allegro in Chicago. The sold-out event began with open networking and continued with a lively, interactive progressive dinner attended by IP professionals from top Chicago corporations, law firms, law schools, and service providers. Fitch Even attorneys attending the dinner included event co-organizer and Chicago Women in IP chair-elect&nbsp; <a href=";A=2598&amp;format=xml&amp;p=5482">Nikki Little</a>, Calista Mitchell, Alisa Simmons, Peggy Wojkowski, Mark Hetzler, Tim Maloney, and Joe Marinelli.<br /> <br /> <a href="">Chicago Women in IP</a> (&ldquo;ChiWIP&rdquo;) is a networking and mentoring group for women attorneys working in IP law and women in IP-related businesses. Its mission is to create a community of professionals who share a common interest in the advancement of women within the field of intellectual property law. ChiWIP was cofounded by Fitch Even partner Nikki Little and six other Chicago-area intellectual property law professionals. <br /> <br />Professional Activities09 Feb 2018 00:00:00 -0800