Fitch Even News Feed Dec 2020 00:00:00 -0800firmwise 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, <a href="">&ldquo;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>One hour of professional responsibility CLE credit has been approved for Illinois and Nebraska and one hour of legal ethics CLE credit has been approved for California. Other states may also award CLE credit upon attendee request. There is no fee to attend, but please note registration is required.</p> <p>To reserve your place, please <a href="">REGISTER HERE</a>.&nbsp;</p>Upcoming 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 Even Attorneys Joe Marinelli and Tom James Present AIPLA Webinar on Trade Secret Misappropriation<p>On November 17, Fitch Even attorneys <a href=";A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a> and <a href=";A=12841&amp;format=xml&amp;p=5482">Thomas A. James</a> presented a webinar on &quot;Trade Secret Misappropriation: When and How to Take Action&rdquo; to the American Intellectual Property Law Association (AIPLA) Corporate Practice Committee.</p> <p>During this program, Joe and Tom discussed the factors to consider when bringing a trade secret action. They covered topics including pre-suit diligence and conduct, filing considerations related to jurisdiction and venue, available relief, and protecting trade secrets during litigation.</p>Professional Activities18 Nov 2020 00:00:00 -0800 Even Launches Back 2 School Illinois Fundraiser<p>Our <a href=""><b>Back 2 School Illinois</b></a> initiative is going virtual this year! Because we aren&rsquo;t able to gather in person to assemble school-supply kits as in past years, we are supporting Back 2 School with a <a href=";aid=HziSSi6EEng">virtual fundraiser</a> running from October 15 to November 19, 2020.</p> <p>In 2019, Back 2 School provided over one million school supplies to nearly 34,000 underprivileged children in Illinois through distribution to government agencies, community organizations, and schools. The COVID pandemic has made the need for school supplies even more urgent, with children attending school remotely and many families struggling with unemployment.</p> <p>Fitch Even is proud to support Back 2 School Illinois in their efforts.We welcome you to join us by accessing Fitch Even&rsquo;s fundraising page <a href=";aid=HziSSi6EEng">here</a><b>. </b></p> <p>We invite you to also consider participating in Back 2 School&rsquo;s <a href=""><b>Notes of Inspiration Program</b></a><b>. </b>This involves writing notes of encouragement that will go into the Back 2 School kits, letting the kids know we are cheering them on! To volunteer, simply go to the program website page <a href=""><b>here</b></a> and follow the instructions.</p> <p><a href="">Back 2 School Illinois</a> is a 501(c)(3) nonprofit whose mission is to create and support educational opportunities that enrich the lives of Illinois children. In addition to its Back 2 School program, the organization offers other programs to fulfill their mission, including a college scholarship program.&nbsp;</p> <p><i>For more information, please view these inspiring videos:</i></p> <ul> <li><a href=""><b>Back 2 School Illinois School Supply Distribution</b></a></li> <li><a href=""><b>Back 2 School Illinois Documentary</b></a></li> </ul> <br type="_moz" />Firm News15 Oct 2020 00:00:00 -0800, Not Afterthought: Patent Strategies for Protecting Aftermarket Parts<p>Please join Fitch Even for a free webinar, &ldquo;<a href="">Aftermarket, Not Afterthought: Patent Strategies for Protecting Aftermarket Parts</a>,&rdquo; on October 29, 2020, at 9 am PDT / 10 am MDT / 11 am CDT / 12 noon EDT.</p> <p>Aftermarket parts for a product such as a vehicle or large machine can provide an important revenue stream for the product manufacturer. Aftermarket parts sales are often highly profitable for the manufacturer, which invites will-fitters to sell their own aftermarket parts. These competing parts may not only negatively impact the manufacturer&rsquo;s sales, but may cause safety and warranty concerns due to potential quality issues.</p> <p>This webinar will provide approaches for cost-effectively protecting aftermarket parts, including these tactics:</p> <ul> <li>Preparing, filing, and prosecuting patent applications to develop a strong portfolio focused on aftermarket parts</li> <li>Integrating business input into the patent life cycle</li> <li>Detecting and stopping will-fitters</li> <li>Creating non-patent challenges for will-fitters</li> </ul> <p>Our presenters will be Fitch Even attorneys <a href=";A=2622&amp;format=xml&amp;p=5482">Jonathan H. Urbanek</a> and <a href=";A=19278&amp;format=xml&amp;p=5482">Jacqueline L. Thompson</a>.</p> <p>Jon focuses his practice on developing and managing patent portfolios in the U.S. and abroad. He works with each client to create a comprehensive patent strategy through skilled patent prosecution, freedom-to-operate opinions, patent design-arounds, competitive technology analysis, and a keen understanding of their business. Jon advises clients in the mining, commercial vehicle, rail, heat transfer, and industrial IoT device fields.</p> <p>Jackie assists clients with patent preparation and prosecution, product clearance and legal opinions, and IP litigation. She leverages her hands-on engineering experience to better serve clients working in the chemical engineering, food science, mechanical engineering, and biomedical engineering industries, among others.</p> A recording of this webinar is available through October 28, 2021.<br />Past Webinars05 Oct 2020 00:00:00 -0800 Even Partner Catherine Toppin to Speak on NCPP CLE Diversity Panel<p>Fitch Even partner <a href=";A=22010&amp;format=xml&amp;p=5482">Catherine J. Toppin</a> will participate in an online CLE session titled &ldquo;Addressing Diversity Concerns Within the Patent Profession&rdquo; hosted by the National Council on Patent Practicum (NCPP) on October 19 at 10 a.m. CDT.</p> <p>Catherine will join fellow panelists Bill LaFontaine of IBM, Elizabeth Lester of Equifax, Dinesh Melwani of Bookoff McAndrews, and Justin Pierce of Venable to share insights into diversity issues in the patent industry and recommendations for successfully cultivating a diverse, equitable, and inclusive workplace for the long term.</p> <p>The session is part of the NCPP COVID Relief Package CLE Series and is free to attend. For more information on the series and to register, please visit the <a href="">NCPP website.</a></p>Professional Activities05 Oct 2020 00:00:00 -0800 Alert: List of PTAB Sanctions Under 37 CFR ยง 42.12(b) Is Non-Exhaustive<p>On September 25, in <a href=""><i>Apple Inc., v. Inc</i></a>., the Federal Circuit ruled that the Patent Trial and Appeal Board (PTAB) did not commit an Administrative Procedures Act (APA) violation when it issued a sanction not explicitly listed under 37 CFR &sect; 42.12(b).</p> <p>Voip-Pal sued Apple for infringement of two patents in February 2016. Apple initiated two IPR proceedings against Voip-Pal on several claims of the patents in June 2016. During the IPR proceedings, Voip-Pal former Chief Executive Officer Dr. Thomas E. Sawyer sent six letters to various parties that included members of Congress, the president, federal judges, and administrative patent judges at the PTAB. However, Dr. Sawyer did not send copies of these letters to Apple.</p> <p>Apple moved for sanctions against Voip-Pal and argued that the APA and Apple&rsquo;s due process rights were violated by Dr. Sawyer&rsquo;s <i>ex parte</i> communications with the PTAB and the USPTO. Apple requested that PTAB sanction Voip-Pal by entering adverse judgment against Voip-Pal or, alternatively, by vacating the final written decisions and assigning a new panel of judges. The PTAB then entered a final written decision partially in favor of Voip-Pal. Apple then appealed, but the Federal Circuit stayed the appeals and remanded the cases to the PTAB to consider Apple&rsquo;s sanction motions. The PTAB then determined that the <i>ex parte</i> communications of Dr. Sawyer were sanctionable. Instead of granting Apple&rsquo;s request for an adverse judgment, the PTAB &ldquo;fashioned its own sanction.&rdquo; This sanction provided that a new panel of PTAB judges would preside over Apple&rsquo;s petition for rehearing, a sanction that the PTAB stated &ldquo;achieves the most appropriate balance when considering both parties&rsquo; conduct as a whole.&rdquo; After the parties proceeded to panel rehearing briefing, the PTAB denied Apple&rsquo;s petition for rehearing, reasoning that Apple had &ldquo;not met its burden. . . .&rdquo; Apple then moved the Federal Circuit to lift the stay.</p> <p>On appeal, Apple argued that the PTAB&rsquo;s sanctions order and denial of rehearing violated the APA and Apple&rsquo;s due process rights &ldquo;when the [PTAB] imposed non-enumerated sanctions for Voip-Pal&rsquo;s ex parte communications.&rdquo; In particular, Apple argued that PTAB had &ldquo;exceeded its authority under its own sanction regulations&rdquo; under 37 CFR &sect; 42.12(b) by issuing a sanction that is &ldquo;not explicitly provided by Section 42.12(b).&rdquo; The court rejected Apple&rsquo;s argument and reasoned that the use of the term &ldquo;include&rdquo; in Section 42.12(b) &ldquo;signifies a non-exhaustive list of sanctions, . . . [which is] consistent with the context of the [PTAB&rsquo;s] sanctioning regime&rdquo; and further, in the plain reading of Section 42.12(b), &ldquo;allows the [PTAB] to issue sanctions not explicitly provided in the regulation.&rdquo; As such, the court held that PTAB &rdquo;did not commit an APA violation when it issued a sanction not explicitly listed under Section 42.12.&rdquo;</p> <p>Moreover, the Federal Circuit reiterated that a sanction that would terminate a party&rsquo;s patent rights &ldquo;should be used as a weapon of last . . . resort&rdquo; and that &ldquo;[a]s long as the tribunal&rsquo;s choice falls within a reasonable range, it cannot constitute an abuse of discretion.&rdquo;</p> <p>This case is significant to Fitch Even&rsquo;s PTAB clients because it confirms that the PTAB has some discretion to enter sanctions not specifically enumerated in the rules. The case further confirms that case-terminating sanctions should be rarely applied.</p> <p>For more information, please contact Fitch Even attorney <a href=";A=12371&amp;format=xml&amp;p=5482">Jennifer V. Suarez</a>, author of this alert.<br /> <b><br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts01 Oct 2020 00:00:00 -0800