Fitch Even News Feedhttp://full.fitcheven.com/?t=39&format=xml&stylesheet=rss&directive=0&records=20en-us30 Nov 2022 00:00:00 -0800firmwisehttp://blogs.law.harvard.edu/tech/rssIP Alert: Federal Circuit Affirms ITC Ruling Finding Patents Not Essential to LTE Standardhttp://full.fitcheven.com/?t=40&an=129666&format=xml<p>In <i><a href="https://cafc.uscourts.gov/opinions-orders/20-1903.OPINION.8-31-2022_1997811.pdf">INVT SPE LLC v. ITC</a></i>, the Federal Circuit affirmed an International Trade Commission (ITC) decision that held INVT&rsquo;s patent claims were not essential to the LTE cellular communications standard. According to the court, INVT failed to show that an LTE-compliant device was &ldquo;capable&rdquo; of meeting the claimed functional language when the device was put into operation, and thus INVT could not prove infringement by showing the accused product&rsquo;s use of the LTE standard. The court&rsquo;s decision is notable because it required evaluating the essentiality of patent claims directed to functional capabilities.</p> <p>INVT appealed a determination by the ITC that Apple, HTC, and ZTE did not violate 19 U.S.C. &sect; 1337 by importing mobile devices. The court evaluated the essentiality of a patent directed to how a user device (i.e., mobile device) encodes and decodes data sent between the device and a base station. As claimed, the user device determines and sends encoding parameters to the base station; the base station encodes data using those parameters and sends the encoded data back to the user device; and the user device decodes the data using the same parameters that it previously determined. INVT asserted that these functions were essential to practicing the LTE standard and thus the standard could not be implemented without infringing the asserted patent claims.</p> <p>According to the court, in the LTE standard, the user device chooses one of 16 possible combinations of encoding parameters to send to the base station. The base station, in turn, selects encoding parameters&mdash;but from a much greater number (close to 3,000) of possible combinations. The base station then encodes the data using the parameters it selected and sends the encoded data and its selected parameters back to the user device. The user device decodes the data using the parameters selected by the base station. INVT argued that although the claims required use of the encoding parameters determined by the user device, the claims were still standard essential because, under the LTE standard, all LTE-compliant devices must be capable of using any of the available encoding/decoding parameters in the LTE standard, including the parameters originally decided by the user device.</p> <p>Because INVT asserted that the patent was standard essential, it sought to prove infringement by comparing the patent&rsquo;s claims to the LTE standard rather than to the accused products themselves. If a patent claim is standard essential, infringement can be proven based on an accused product&rsquo;s use of the standard. Claims are standard essential if the reach of the claims includes any device that practices the standard, i.e., all implementations of the standard infringe the claim and the patent covers all possible implementations of the standard. Once a claim is found to be standard essential, any device that is compliant with the standard necessarily infringes the claim. If a claim is not standard essential, then the patent owner must prove infringement by comparing the claim to each accused product.</p> <p>The court first addressed INVT&rsquo;s assertion that the patent&rsquo;s claims were infringed if a device was capable of performing the claimed encoding/decoding functions, rather than requiring proof that an accused device actually performed the functions in operation. Recognizing that it has frequently construed functional language as not requiring proof of actual performance of operative steps, and that it has not required claims to adhere to a specific grammatical form to find them drawn to capabilities, the court agreed with INVT that the patent claims were drawn to capabilities rather than actual performance.</p> <p>Having construed the patent claims as drawn to capability, the court then stated that, for infringement purposes, a computer-implemented claim drawn to a functional capability requires some showing that the accused device is configured, without modification, to perform the claimed function when in operation. The court stated that proof of reasonable capability of performing claimed functions requires, at least as a general matter, proof that an accused product&mdash;when put into operation&mdash;in fact executes all of the claimed functions at least some of the time or at least once in the claim-required environment.</p> <p>INVT&rsquo;s proof fell short in this regard. The patent claims required encoding/decoding based on parameters determined by the user device, but INVT failed to show that, under the LTE standard, a user device ever receives and handles data signals that way. For that reason, INVT failed to show that an LTE standard-compliant user device was capable of meeting the claimed functional language when that device is put into operation under the LTE standard, thus the claims were not essential to the standard.</p> <p>Because the claims were not essential to the LTE standard, INVT was required to prove infringement in the ordinary manner by comparing the claims to each accused product. However, INVT had not reviewed the base station source code to determine whether the base station decided to use the same parameters determined by the user device, as required by the claims. The court affirmed the ITC&rsquo;s finding of no infringement based on this evidentiary gap.</p> <p>With the roll-out of 5G devices and emergence of new IoT standards, much attention has been placed on standard essential patents (SEPs). This case provides a useful overview of U.S. law on patent essentiality and illustrates the importance of providing sufficient evidence to show functional capability even in cases where patent infringement will be shown by comparing the claims to an LTE standard.</p> <p>For more information on this holding, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a> or associate <a href="https://www.fitcheven.com/?t=3&amp;A=29533&amp;format=xml&amp;p=5482">Alvaro Cure Dominguez</a>, authors of this alert.<br /> <b><br /> Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts18 Nov 2022 00:00:00 -0800http://full.fitcheven.com/?t=40&an=129666&format=xmlFitch Even Welcomes New Attorneys to Chicago Officehttp://full.fitcheven.com/?t=40&an=129664&format=xml<p>Fitch, Even, Tabin &amp; Flannery is pleased to announce that <a href="https://www.fitcheven.com/?t=3&amp;A=29533&amp;format=xml&amp;p=5482">Alvaro Cure Dominguez</a> and <a href="https://www.fitcheven.com/?t=3&amp;A=29534&amp;format=xml&amp;p=5482">Hyojeong (Sonny) Son</a> have joined the firm&rsquo;s Chicago office as associates.</p> <p>Alvaro Cure Dominguez focuses his law practice on patent, trademark, and trade secret litigation and on PTAB patent invalidity proceedings. Alvaro also advises clients on patent clearance and freedom to operate opinions and with intellectual property portfolio development and analysis. He works with patent owners in telecommunications, home design, vaporizer (e-cigarettes), cosmetics, and fleet management technologies.</p> <p>Alvaro had previously worked with Fitch Even as a law clerk. He graduated <i>cum laude</i> from the Northwestern University Pritzker School of Law in June 2022 and earned a M.S. degree in Biological Sciences from Fordham Graduate School of Arts and Sciences and a B.S. degree in Biochemistry from Hartwick College.</p> <p>Hyojeong (Sonny) Son focuses her practice on U.S. and international utility patent preparation and prosecution, freedom-to-operate, IP-related due diligence, and idea development with inventors. She also supports litigation teams through research and document preparation. Sonny works with start-up to global high-tech companies.</p> <p>Before joining Fitch Even, Sonny was a patent attorney in Korea where she worked with in-house counsel and inventors of a top Fortune 500 company, conducted IPR and <i>ex parte</i> trials, and prosecuted patent applications. Sonny had previously worked with Fitch Even as a law clerk. She earned her J.D. from Chicago-Kent College of Law, graduating <i>cum laude</i> in May 2022. She received a Bachelor of Engineering degree in Electrical and Electronics from The Cyber University of Korea and a Bachelor of Materials Science &amp; Engineering from Seoul National University.</p> <p>We are thrilled to welcome Alvaro and Sonny to the Fitch Even team!</p>Firm News17 Nov 2022 00:00:00 -0800http://full.fitcheven.com/?t=40&an=129664&format=xmlIP Alert: U.S. Supreme Court to Consider "Full Scope" Enablement of Claimshttp://full.fitcheven.com/?t=40&an=129656&format=xml<p>On November 4, the United States Supreme Court granted a petition for writ of <i>certiorari</i> to review the Federal Circuit&rsquo;s decision in <a href="https://cafc.uscourts.gov/opinions-orders/20-1074.opinion.2-11-2021_1731739.pdf"><i>Amgen Inc., v. Sanofi</i></a><i>.</i> <i>Certiorari</i> was limited to the question of whether the enablement requirement of 35 U.S.C. &sect; 112 requires patent specifications to enable the &ldquo;full scope&rdquo; of the claims, or rather whether it is sufficient that the specification teach those skilled in the art to &ldquo;make and use&rdquo; the claimed invention. The Supreme Court will review the Federal Circuit&rsquo;s holding that Amgen&rsquo;s patent claims fail to satisfy the enablement requirement of &sect; 112. This &ldquo;full scope&rdquo; enablement question has come up in several Federal Circuit cases before <i>Amgen</i>, but this is the first time the Supreme Court has addressed the issue.</p> <p>Amgen&rsquo;s patents are directed to antibodies that reduce low-density lipoprotein (&ldquo;LDL&rdquo;) cholesterol, which is linked to heart disease. LDL receptors in cells remove LDL cholesterol from the blood stream. The proprotein convertase subtilisin/kexin type 9 (&ldquo;PCSK9&rdquo;) enzyme facilitates LDL receptor degradation by binding to the LDL receptors, thus decreasing the number of LDL receptors available in cells to remove LDL cholesterol from the blood stream. Certain antibodies may bind to and block PCSK9 to prevent this degradation of LDL receptors, allowing LDL receptors to continue removing LDL cholesterol.</p> <p>The antibodies claimed in Amgen&rsquo;s patents are defined by their function, which is to bind to a combination of sites on the PCSK9 protein, thus blocking the PCSK9 protein from binding to LDL receptors. The claims are &ldquo;genus&rdquo;-type claims that are defined by their function, and broader in functional diversity than the examples disclosed in the patent specification.</p> <p>In the district court proceeding, a jury found that Sanofi had failed to prove that Amgen&rsquo;s patent claims are invalid for lack of written description and enablement. However, the district court granted Sanofi&rsquo;s motion for Judgment as a Matter of Law, finding the claims invalid for failing to meet the requirement of 35 U.S.C. &sect; 112 that a patent&rsquo;s specification must enable a person skilled in the art to make and use the claimed invention. The purpose of the enablement requirement is to ensure that the public is told how to carry out the invention. To prove that a claim is invalid for lack of enablement, a challenger must show by clear and convincing evidence that a person of ordinary skill in the art would not be able to practice the claimed invention without undue experimentation.</p> <p>Amgen appealed the trial judge&rsquo;s ruling to the Federal Circuit, arguing that its patent claims are enabled because no undue experimentation is required to obtain antibodies within the scope of the claims. Sanofi responded that the claims are not enabled because there are millions of antibody candidates within the scope of the claims, the disclosures do not provide sufficient guidance, antibody generation is unpredictable, and practicing the full scope of the claims requires substantial trial and error.</p> <p>The Federal Circuit agreed with Sanofi. The court found that while the &ldquo;full scope&rdquo; of the genus claims was broad, the examples disclosed in the specification were narrow. The court held that under those facts, and given the broad &ldquo;full scope&rdquo; of the claims, the trial judge did not err by concluding that undue experimentation would be required to practice the full scope of the claims.</p> <p>This is not the first time the Federal Circuit has held that the enablement requirement applies to the full scope of the claims, and it has done so most often in biopharma cases. For example, in <i>Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc.</i>, a case on which we have <a href="https://www.fitcheven.com/?t=40&amp;an=116338&amp;anc=180&amp;format=xml&amp;p=5486">previously provided commentary</a>, the Federal Circuit upheld a jury verdict of invalidity for lack of enablement after determining there was sufficient evidence to support a finding that the full scope of claims directed to methods for sequencing a nucleic acid using nanopore technology had not been enabled. In our analysis, we noted that patent applicants should take care in how broadly they draft their claims in view of the disclosure and advised that, depending on the circumstances, applicants may want to take steps to include claims of different scope or consider whether a slight delay in filing is warranted to conduct more testing and provide additional disclosure in the application.</p> <p>Amgen petitioned the Supreme Court for review of the Federal Circuit&rsquo;s decision, and the Supreme Court granted certiorari on Amgen&rsquo;s question of:</p> <blockquote> <p>Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to make and use the claimed invention, 35 U.S.C. &sect;112, or whether it must instead enable those skilled in the art to reach the full scope of claimed embodiments without undue experimentation&mdash;i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial time and effort.</p> </blockquote> <p>Amgen and others in the industry do not want to delay patent filings so that they can clear the &ldquo;high hurdle&rdquo; of showing full-scope enablement of a genus claim. They believe that having to enable the &ldquo;full scope&rdquo; of a claim will allow competitors to leapfrog the original innovator by focusing on minor changes that avoid infringement without having to invest in the same R&amp;D. They argue that innovators faced with the elevated enablement standard that the Federal Circuit applied in <i>Amgen</i> and earlier cases will divert resources away from making new discoveries or advancing discoveries to market, devoting them instead to making and testing additional embodiments of their invention to satisfy the &ldquo;full scope&rdquo; enablement requirement, slowing the pace of research and development and hindering innovation to the detriment of the public.</p> <p>Sanofi and its supporters argue that the Federal Circuit has it correct, and that genus claims, when properly supported, are alive and well. Broad, unsupported genus claims, they argue, would have an even more chilling impact on innovation. For example, other companies would have less incentive to develop new therapeutics within the scope of such broad functional claims, even if those therapeutics might prove more effective for patients.</p> <p>Until now, the Supreme Court has repeatedly denied petitions raising this question, so it is interesting that the Court is now taking on the issue. Indeed, the United States Solicitor General argued in an <i>amicus curiae</i> brief that Amgen&rsquo;s challenge to the Federal Circuit&rsquo;s enablement holding did not warrant further review. Perhaps the Court simply seeks to end the debate by reinforcing the Federal Circuit&rsquo;s interpretation of the enablement requirement for functional genus claims. On the other hand, the Supreme Court&rsquo;s decision to review the <i>Amgen</i> case may signal a shift in favor of functional genus claims without the requirement of enabling the &ldquo;full-scope&rdquo; of the claims in the specification. It is also intriguing that the Supreme Court did not follow the recommendation of the Solicitor General. In any event, patent owners, inventors, and patent practitioners now await briefing, oral argument, and the Supreme Court&rsquo;s decision.</p> <p>Fitch Even attorneys are monitoring the <i>Amgen</i> case and will report on the Court&rsquo;s disposition in a future alert. For more information on this topic, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a>, author of this alert.&nbsp;<br /> <br /> <b>Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts17 Nov 2022 00:00:00 -0800http://full.fitcheven.com/?t=40&an=129656&format=xmlFitch Even Partner Nikki Little to Speak at IP Litigation Bootcamphttp://full.fitcheven.com/?t=40&an=129582&format=xml<p>Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2598&amp;format=xml&amp;p=5482">Nikki Little</a> will be a featured speaker at Chicago Women in IP&rsquo;s (&ldquo;ChiWIP&rdquo;) IP Litigation Bootcamp on November 10.</p> <p>The bootcamp is designed to introduce up and coming female litigators to all aspects of an intellectual property case from start to finish, with specialized breakout sessions for attorneys focused on patent litigation and another for trademark litigation. Nikki will kick off the day-long CLE with a presentation on best practices for preparing complaints, counterclaims, and answers.</p> <p>Nikki is a cofounder of ChiWIP and currently serves as a member of its Board of Directors, co-chair of its In-House Advisory Committee, and a member of its Special Events Committee. ChiWIP is a vibrant networking and mentoring organization committed to the connection, promotion, and success of Chicagoland-area women+ working in the field of intellectual property law.</p> <p>For more information and to register, please visit the <a href="https://www.chiwip.org/event-details/ip-litigation-bootcamp">ChiWIP website</a>.</p>Professional Activities09 Nov 2022 00:00:00 -0800http://full.fitcheven.com/?t=40&an=129582&format=xmlFitch Even Ranked Among Top Firms in CAFC Intelligence Reporthttp://full.fitcheven.com/?t=40&an=129567&format=xml<p>Patexia&rsquo;s 2022 CAFC Intelligence Report evaluates the performance of more than 1,100 law firms and over 5,500 attorneys in the U.S. Court of Appeals for the Federal Circuit (Federal Circuit), which specializes in hearing patent appeals. Fitch Even was once again recognized as being among the top 100 best-performing law firms, and as one of the top 100 most-active law firms, in the Federal Circuit. In the report, Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2601&amp;format=xml&amp;p=5482">Tim Maloney</a> was ranked among the top 100 best-performing attorneys representing appellants at the Federal Circuit.&nbsp;More information about the report and its methodology can be found <a href="https://www.patexia.com/pressrelease/view/id/51">here</a>.</p> <p>Fitch Even represents both appellants and appellees before the Federal Circuit in a wide variety of complex cases and has obtained key decisions that have helped shape intellectual property law. The firm&rsquo;s litigation practice group is grateful for the recognition of its experience and strong track record of advocating on behalf of its clients in this critical forum.</p> <p style="text-align: center;"><img src="http://full.fitcheven.com/2E8FB4/assets/images/Patexia Badges/badges-_CAFC_100_BP_firm_2022.png" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="150" height="150" />&nbsp; &nbsp;<img src="http://full.fitcheven.com/2E8FB4/assets/images/Patexia Badges/badges-_CAFC_100_MA_firm_2022.png" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="150" height="150" /></p>Firm News07 Nov 2022 00:00:00 -0800http://full.fitcheven.com/?t=40&an=129567&format=xmlFitch Even Partner David Gosse to Speak at AIPLA 2022 Annual Meetinghttp://full.fitcheven.com/?t=40&an=129392&format=xml<p>Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a> will be a featured speaker at the American Intellectual Property Law Association (AIPLA) 2022 Annual Meeting on October 27-29 in Washington, D.C.</p> <p>On October 28, Dave will participate in a patent session with three presentations and a Q&amp;A session. Dave will discuss issues relating to PTAB proceedings in a presentation titled: &ldquo;Staying In/Out of PTAB Proceedings: What to Know About Standing to Appeal and Forum Selection Clauses.&rdquo; Dave currently serves as chair of the AIPLA PTAB Trial Committee.</p> <p>For more information and to register, please visit the <a href="https://www.aipla.org/home/meetings-education/2022-annual-meeting">AIPLA website</a>.</p>Professional Activities21 Oct 2022 00:00:00 -0800http://full.fitcheven.com/?t=40&an=129392&format=xmlThe European Patent System Is A-Changin': The Unitary Patent and Unified Patent Courthttp://full.fitcheven.com/https://register.gotowebinar.com/register/1378184375543138829&format=xml<p>Please join Fitch Even and Greaves Brewster for a free webinar, &ldquo;<a href="https://attendee.gotowebinar.com/register/1378184375543138829">The European Patent System Is A-Changin&rsquo;: The Unitary Patent and Unified Patent Court</a>,&rdquo; on October 18 at 9:00 a.m. PDT / 10:00 a.m. MDT / 11:00 a.m. CDT / 12 noon EDT / 5:00 p.m. BST.</p> <p>A major change to the European patent system is imminent. A new Unitary Patent and Unified Patent Court are expected to come into effect in early 2023. Action is required to avoid the prospect of a powerful central validity challenge against your existing European patents in an unpredictable and untested system. Find out about the new system and how to navigate its risks and opportunities in this short and practical webinar.</p> <p>During this webinar, our presenters will address these topics and more:</p> <ul> <li>Introduction and review of the current European patent system</li> <li>Implementation, timing, and geographical coverage of the new system</li> <li>Overview of the Unitary Patent</li> <li>The Unified Patent Court</li> <li>Strategies for navigating the new system</li> </ul> <p>Our discussion will be presented by Greaves Brewster director <a href="https://www.greavesbrewster.co.uk/people/jade-powell/">Jade Powell</a>, partner <a href="https://www.greavesbrewster.co.uk/people/jakob-bumke/">Jakob Bumke</a>, director <a href="https://www.greavesbrewster.co.uk/people/paul-casbon/">Paul Casbon</a>, and director <a href="https://www.greavesbrewster.co.uk/people/lee-chapman/">Lee Chapman</a>. Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2587&amp;format=xml&amp;p=5482">Paul B. Henkelmann</a> will moderate the discussion.</p> <p>Jade Powell is a UK Patent Attorney and European Patent Attorney. Jade has experience in the drafting and prosecution of patent applications in a range of chemical fields. Jade also has experience in helping clients manage their patent portfolios worldwide. She has successfully defended and attacked key patents and is an expert on case law and procedure.</p> <p>Jakob Bumke has experience managing and consolidating very large patent portfolios. In addition to drafting, prosecution, and strategic management of intellectual property portfolios, a particular specialism of Jakob&rsquo;s practice lies in European Patent Office opposition and appeal proceedings.</p> <p>Paul Casbon is a UK Patent Attorney and European Patent Attorney. He has strong relationships with overseas IP attorneys and takes a pro-active approach to help adapt clients&rsquo; IP strategies to suit Europe and the UK.</p> <p>Lee Chapman is a UK Patent Attorney and European Patent Attorney and a Higher Courts Patent Attorney Litigator. He leverages his in-house experience to provide clients with tailored and pragmatic IP solutions, including insightful advice on how best to develop a complete IP portfolio.</p> <p>Paul Henkelmann focuses his practice on patent post-issuance proceedings, U.S. and international patent procurement, and intellectual property litigation and counseling. Paul has substantial experience in both asserting and defending against patent and trademark infringement claims in the federal courts, while remaining active in procuring and managing international IP portfolios.<br /> <br /> A recording of this webinar is available through October 17, 2023.</p>Past Webinars04 Oct 2022 00:00:00 -0800http://full.fitcheven.com/https://register.gotowebinar.com/register/1378184375543138829&format=xmlFitch Even Partners with PODERhttp://full.fitcheven.com/?t=40&an=129215&format=xml<p>Fitch Even is excited to announce the commencement of its relationship with PODER. PODER started in 1997 and is an immigration integration center that empowers Spanish-speaking adults to seize employment opportunities in Chicago through comprehensive and tuition-free English classes, civic education, job training, and career placement programs. <br /> <br /> PODER works together with their partner companies and firms and offers volunteering opportunities to assist their participants in meeting their goals. Fitch Even believes in the mission of PODER in transforming the lives of the immigrants they serve and is thrilled to become a proud supporter of PODER in the important work that they are doing.</p> <p>More information about PODER can be found at <a href="http://www.poderworks.org">www.poderworks.org</a>.</p>Firm News04 Oct 2022 00:00:00 -0800http://full.fitcheven.com/?t=40&an=129215&format=xmlFitch Even Again Recognized as a Top Firm in IPR Practicehttp://full.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 -0800http://full.fitcheven.com/?t=40&an=129106&format=xmlIP Alert: Patent Term Adjustment Is Not Available for Unsuccessful Appealshttp://full.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 -0800http://full.fitcheven.com/?t=40&an=129110&format=xml