Fitch Even News Feed Jul 2022 00:00:00 -0800firmwise Alert: Rehearing Reverses Earlier Federal Circuit Decision Finding Silence Supported Negative Claim Limitation<p>On June 21, in <i><a href="">Novartis Pharmaceuticals Corporation v. Accord Healthcare, Inc.</a></i>, a reshuffled Federal Circuit panel reversed course on rehearing to find that a negative claim limitation was not supported by silence in the patent&rsquo;s specification. The panel (Moore, Linn, Hughes) vacated the decision of a prior panel (Moore, Linn, O&rsquo;Malley), reported <a href=";an=120195&amp;anc=180&amp;format=xml&amp;p=5486">here</a>, which issued before the retirement of Judge O&rsquo;Malley.</p> <p>Novartis is the owner of U.S. Patent No. 9,187,405 (the &rsquo;405 patent), which provides methods for treating relapsing remitting multiple sclerosis. The &rsquo;405 patent included method claims directed to administering fingolimod at a daily dose of 0.5 mg. The claims included a negative limitation requiring administering a daily dose of fingolimod &ldquo;absent an immediately preceding loading dose regimen.&rdquo; Novartis added the negative claim limitation during prosecution to overcome a prior art rejection. Nothing in the specification of the &rsquo;405 patent, however, mentioned the presence or absence of a loading dose.</p> <p>Novartis sued HEC Pharm Co. (&ldquo;HEC&rdquo;) in response to HEC filing an Abbreviated New Drug Application (ANDA) seeking approval of a generic version of Gilenya, the drug covered by the &rsquo;405 patent. The district court determined that HEC infringed the &rsquo;405 patent. The district court also ruled that the negative claim limitation was sufficiently described, crediting Novartis&rsquo; expert testimony. The expert had opined that the phrase &ldquo;Initially patients receive treatment for 2 to 6 months,&rdquo; in the &rsquo;405 patent, disclosed treatment without an immediately preceding loading dose. On appeal of the written description issue, the Federal Circuit affirmed the district court and reasoned that &ldquo;[a] specification that describes a reason to exclude the relevant negative limitation is but one way in which the written description requirement may be met.&rdquo;</p> <p>In its petition for rehearing, HEC argued that the court had erroneously relied on Novartis&rsquo; expert testimony. The reshuffled panel revisited the negative claim limitation, stating that the specification&rsquo;s silence is not enough to satisfy the written description requirement. The panel concluded that the patent&rsquo;s disclosure of &ldquo;initially&rdquo; providing treatment described the initial length of treatment, not the dosage with which the treatment begins. Because the negative claim limitation lacked written description support, the Federal Circuit held the claims invalid.</p> <p>This decision reemphasizes the importance of ensuring claim limitations added during prosecution are sufficiently supported by the patent application as filed. In the absence of explicit support in the application as-filed, this case may require a disclosure establishing a negative claim limitation is &ldquo;necessarily excluded&rdquo; from the invention.</p> <p>For more information on this holding, please contact Fitch Even partner <a href=";A=2622&amp;format=xml&amp;p=5482">Jonathan H. Urbanek</a>, author of this alert.<br /> <b><br /> Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts06 Jul 2022 00:00:00 -0800 Is Coming to an Invention Near You<p>Please join Fitch Even for a free webinar, &ldquo;<a href="">AI Is Coming to an Invention Near You</a>,&rdquo; on July 21 at 9:00 a.m. PDT / 10:00 a.m. MDT / 11:00 a.m. CDT / 12 noon EDT.</p> <p>Artificial Intelligence (AI) is everywhere and it&rsquo;s evolving. AI finds application in virtually every technology and business paradigm. If you haven&rsquo;t seen it already, AI is coming soon to an invention near you and can be found in a greatly increasing number of patent applications and patent claims.</p> <p>During this webinar, our presenter will address these topics and more:</p> <ul> <li>A general explanation of AI and machine learning (ML) in particular</li> <li>A statistical overview of ML in US patenting</li> <li>A patent eligibility overview of ML claims</li> <li>Various approaches to claim drafting</li> <li>Practice tips</li> </ul> <p>Our presenter will be Fitch Even partner <a href=";A=2610&amp;format=xml&amp;p=5482">Steven G. Parmelee</a>. Steve has extensive experience in complex patent preparation and prosecution in the U.S. and abroad. He has assisted clients with patent portfolio management, freedom-to-operate issues, and transactions for over 45 years.</p> <p>CLE credit has been approved for California, Illinois, and Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but please note registration is required.</p> <p>To reserve your place, please <a href="">REGISTER HERE</a>.</p>Upcoming Webinars28 Jun 2022 00:00:00 -0800 Alert: Senators Introduce Bill to Reform USPTO Patent Trials<p>On June 16, Senators Leahy, Cornyn, and Tillis introduced a bipartisan bill, the &ldquo;Patent Trial and Appeal Board (PTAB) Reform Act of 2022.&rdquo; A press release from the Senators is <a href="">here</a>. They tout four goals for the bill:</p> <ol> <li>Prevent Abusive Serial Petitions from Harassing Patent Owners</li> <li>Prohibit the USPTO from Considering Inaccurate District Court Litigation Timelines</li> <li>Revise the PTAB Structure to Conform with the Appointments Clause While Preserving PTAB Autonomy</li> <li>Address PTAB Certainty and Fairness in Other Areas.</li> </ol> <p>Changes associated with these goals are summarized in this <a href="">document</a>, linked in the press release. The first two goals are likely to be the most controversial.</p> <p>Related to the first goal, the bill would prevent petitioners from challenging claims in a patent if the same petitioner had already challenged the same claims. This absolute ban on follow-on petitions may be unpopular with petitioners, but the bill includes many petitioner-friendly changes. For example, the bill would allow petitions filed against new or amended claims within one year after the new or amended claims are asserted against the petitioner. Current law prevents institution on petitions asserted more than one year after petitioner is served with the first complaint asserting the patent.</p> <p>The second goal is achieved by strictly prohibiting the PTAB from considering timing of co-pending district court or International Trade Commission (ITC) proceedings. According to the bill, institution decisions &ldquo;shall not in any respect consider an ongoing civil action or a proceeding before the International Trade Commission.&rdquo; The bill would jettison the PTAB&rsquo;s current policy, which applies a balancing test (the <i>Fintiv</i> factors) at institution of an <i>inter partes</i> review (IPR) to evaluate whether the IPR would duplicate efforts of the district courts or the ITC. Petitioners have complained that district court trial dates often get delayed, making it inaccurate to decide whether an IPR will duplicate the district court&rsquo;s efforts more than a year before trial. Since late in 2020, however, the PTAB has made it easier for petitioners to avoid this problem by allowing them to stipulate not to assert the same challenges in the district courts. The bill would allow IPRs to proceed in parallel with or even after a district court has considered validity of the challenged patents.</p> <p>The third goal for the bill attempts to address problems raised by the Supreme Court&rsquo;s decision in <i>United States v. Arthrex, Inc.</i>, as reported <a href=";an=116885&amp;format=xml&amp;p=5486">here</a>. The bill explicitly provides for review by the Director of PTAB decisions and requires the USPTO to set timelines for rehearing and review of PTAB decisions.</p> <p>The bill includes many changes to support the fourth goal. Most notable among these changes is a provision that would require the USPTO to cover reasonable attorney and expert witness fees for small and micro entities whose patents are challenged at the PTAB. To qualify for fee reimbursement, the patent owner cannot have asserted the challenged patent in district court litigation.</p> <p>The bill is likely to undergo changes both in the Senate and in the House of Representatives. Hearings are scheduled in both chambers of Congress this week. Fitch Even attorneys will continue to monitor developments related to this bill.</p> <p>For more information on this case, please contact Fitch Even partner <a href=";A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a>, author of this alert.<br /> <b><br /> <br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts22 Jun 2022 00:00:00 -0800 Even Sponsors Chicago Women in IP Annual Dinner<p>Fitch Even is proud to be a platinum sponsor of Chicago Women in IP&rsquo;s Annual Progressive Networking Dinner &amp; Anniversary Party on June 20 at the RPM on the Water in Chicago. The dinner is a flagship event for ChiWIP, bringing together IP professionals from leading Chicago corporations, law firms, law schools, and service providers in an innovative format designed to stimulate conversation and maximize networking opportunities.</p> <p>Fitch Even attorneys that will be attending the dinner include ChiWIP co-founder and board member <a href=";A=2598&amp;format=xml&amp;p=5482">Nikki Little</a>, ChiWIP board member <a href=";A=2607&amp;format=xml&amp;p=5482">Calista Mitchell</a>, ChiWIP committee member <a href=";A=2599&amp;format=xml&amp;p=5482">Amanda Lowerre O'Donnell</a>, Carrie Albright, Kerianne Strachan, and summer associate Tiffany Hu.</p> <p><a href="">Chicago Women in IP</a> is a vibrant and inclusive networking and mentoring organization committed to the connection, promotion, and success of Chicagoland-area women working in the field of intellectual property law. Founded in 2015, this June marks the seventh anniversary of ChiWIP.</p>Professional Activities15 Jun 2022 00:00:00 -0800 Alert: Reliance on Obvious Clerical Error Does Not Avoid Willfulness<p>The Federal Circuit&rsquo;s recent decision in <i><a href="">Pavo Solutions LLC v. Kingston Technology Company, Inc.</a></i> sheds light on situations where it is appropriate for a court to rewrite claim language to preserve the drafter&rsquo;s intent. The case also limits the extent to which defendants can avoid willful infringement by relying on clerical errors in claim language.</p> <p>Pavo is the owner of U.S. Patent No. 6,926,544, which relates to a flash memory device with a rotating cover that pivots so that the cover does not need to be completely removed during use. An example of such a device, as illustrated in the &lsquo;544 patent, is shown below, including the flash memory case (30) for the main body and rotating cover (40):</p> <p align="center"><img src=" v Kingston.jpg" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="144" height="251" />&nbsp;</p> <p>Claim 1 of the &lsquo;544 patent recites in part &ldquo;pivoting the case with respect to the flash memory main body,&rdquo; despite the fact that the &ldquo;case&rdquo; is described earlier in the claim and in the specification as a part of the main body. The district court accordingly held that recitation of &ldquo;case&rdquo; in the foregoing phrase was a clerical error, and interpreted claim 1 to require pivoting the <u>cover</u> with respect to the main body. Kingston Technology was subsequently found liable for $7.5 million in damages for infringement, which was enhanced by 50 percent for willful infringement.</p> <p>On appeal, the Federal Circuit agreed with the district court that the recitation of &ldquo;case&rdquo; instead of &ldquo;cover&rdquo; in the claim phrase relating to pivoting was an obvious minor clerical error that was appropriately subjected to judicial correction. The court pointed out that the limitations of the claim itself show that the reference to the case was an error because the cover is described as the portion that necessarily pivots with respect to the main body. Additionally, the claim did not make sense on its face, because the case is part of the main body, and therefore cannot pivot with respect to a component of which it forms a part. Finally, the specification confirms the error by exclusively identifying the cover as the pivoting portion of the device.</p> <p>In its decision, the court distinguished its 2004 holding in <i>Chef America, Inc. v. Lamb-Weston, Inc.</i>, where it refused to re-write &ldquo;heating&hellip;dough to a temperature&hellip;of about 400&deg; F to about 850&deg; F&rdquo; to instead mean &ldquo;&hellip;<u>at</u> a temperature&hellip;of about 400&deg; F to about 850&deg; F&rdquo; (emphasis added) even though it was undisputed that heating the dough itself (rather than an oven in which the dough is baked) to the specified temperature would burn the dough to a crisp. Unlike in <i>Chef America</i>, the earlier limitations of the claim in <i>Pavo</i> showed that there was an error by describing the &ldquo;cover,&rdquo; not the &ldquo;case,&rdquo; as the pivoting portion. Further, the claim as written did not make sense because the case cannot pivot with respect to a component of which it is a part, whereas the claim in <i>Chef America</i> included a limitation that merely led to an undesirable, but not impossible, result. In addition, in <i>Chef America</i> the patent specification and prosecution history presented no evidence that use of the term &ldquo;at&rdquo; was an error, and, significantly, the patentee made no attempt to have the error corrected by action of the district court.</p> <p>In <i>Pavo</i>, the court also refused to set aside the willful infringement verdict against Kingston. Kingston argued that it did not infringe the claims as originally written and could not have anticipated that a court would later correct the claims. The Federal Circuit held, however, that reliance on an obvious minor clerical error in the claim language is not a defense to willful infringement, because the obvious error cannot mask the meaning of the claim.</p> <p>This case is significant in that a verdict of willful infringement was upheld even though it was technically impossible to infringe the claims as issued. Accused infringers and their counsel therefore should be wary of reliance on overly-technical aspects of claims, especially apparent typographical errors where intrinsic evidence within the patent or its prosecution history provides evidence that the patentee intended the claims to have a particular scope.</p> <p>For more information on this case, please contact Fitch Even partner <a href=";A=2567&amp;format=xml&amp;p=5482">Mark A. Borsos</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts15 Jun 2022 00:00:00 -0800 Even Partner Maureen Smith to Speak at Ethics in the Practice of IP Law Seminar<p>Fitch Even partner <a href=";A=18527&amp;format=xml&amp;p=5482">Maureen R. Smith</a> will be a panelist at UIC Law Center for Intellectual Property, Information &amp; Privacy Law&rsquo;s 13<sup>th</sup> Annual Ethics in the Practice of IP virtual seminar on June 10 at 11:45 a.m. to 3:45 p.m. CDT.</p> <p>Maureen will be a co-panelist during the Diversity, Equity &amp; Inclusion session. The panelists will discuss in-house and law firm DEI initiatives, measuring success in DEI initiatives, the role of bar associations in DEI initiatives, and The Mansfield Rule. This session is scheduled for 2:00 p.m. CDT</p> <p>CLE credit (including in ethics, diversity, equality and inclusion) will be available for Illinois attorneys. For more information and to register, please visit <a href="">here</a>.</p>Professional Activities09 Jun 2022 00:00:00 -0800 Alert: Failure to Raise Claim Construction Issue at Jury-Instruction Phase Constituted Forfeiture<p>On May 20, in <a href=""><i>Michael Philip Kaufman v. Microsoft Corporation</i></a>, the Federal Circuit issued an opinion illustrating the importance of raising claim construction disputes at trial to avoid forfeiting arguments in post-verdict motions and appeals. The court upheld a jury verdict of infringement over Microsoft&rsquo;s challenge that there were unresolved claim construction issues. The court found that Microsoft&rsquo;s failure to preserve the issues, including in the jury-instruction phase, constituted forfeiture. The case also implicates practical questions such as: Do the parties have to raise all claim construction arguments during the claim construction phase of the case? When is it too late to raise a new claim construction argument? If a court&rsquo;s rules limit the number of terms to be construed, will a party be estopped from having additional terms construed later in the case? What must a party do to preserve a claim construction issue for appeal?</p> <p>Kaufman&rsquo;s patent covered methods for using a computer to automatically generate an end-user interface for working with data in a relational database. The claims recited &ldquo;a processor for <i>automatically</i> generating an end-user interface.&rdquo; Microsoft argued during claim construction that the plain and ordinary meaning of &ldquo;automatically&rdquo; permits some user intervention. Microsoft later argued at summary judgment that &ldquo;automatically&rdquo; meant &ldquo;no human labor required,&rdquo; but Microsoft did not propose a construction that identified the scope of actions in the overall process that had to be automatic and what actions a developer could perform manually. Microsoft also argued at summary judgment that there was an open claim construction dispute that needed to be resolved before trial. After further discussion, however, the parties appeared to agree that &ldquo;automatically&rdquo; meant that no separate developer input occurred. As a result, the district court found that there was no actual dispute regarding the meaning of &ldquo;automatically&rdquo; and denied Microsoft&rsquo;s motion for summary judgement of noninfringement. A jury found Microsoft liable for infringement. The district court further denied Microsoft&rsquo;s post-verdict motions for judgment as a matter of law and for a new trial.</p> <p>Microsoft argued on appeal that the district court erred by not ordering a new trial, because, under <i>O2 Micro International v. Beyond Innovation Technology (&ldquo;02 Micro&rdquo;)</i>, clarification of the construction of &ldquo;automatically&rdquo; could have reasonably led the jury to a different verdict. Although the Federal Circuit acknowledged the requirement under <i>O2 Micro</i> that the trial judge, not the jury, must resolve claim construction disputes, the Federal Circuit stated that an <i>O2 Micro</i> issue does not necessarily arise whenever further claim construction could resolve the dispute. Rather, a party must &ldquo;sufficiently request further construction of the relevant limitation&rdquo; to raise an actual dispute. If there was no indication that the court was aware of the supposed dispute, a party is considered to have forfeited the <i>O2 Micro</i> issue and cannot resurrect its argument on appeal by pointing to ambiguous statements in the record.</p> <p>Applying these principles, the court found that Microsoft could not rely on its own ambiguous statements at different phases in the case. Microsoft did not include a definition of the scope of the &ldquo;automatically&rdquo; requirement in its proposed jury instructions and did not point to anything in the charge conference that raised the issue. The court noted that in the claim construction phase, Microsoft did not request a construction of &ldquo;automatically.&rdquo; And, while Microsoft asserted a need for a construction of &ldquo;automatically&rdquo; in summary judgment briefing, it never clearly articulated that a construction was needed regarding the scope of the term, nor did it offer the district court a construction that would have resolved the scope issue. In short, the court reasoned that although Microsoft may have touched on the issue at different points in the case, Microsoft never clearly articulated the dispute or proposed a construction to resolve that dispute.</p> <p>This case highlights the importance of clearly and timely articulating claim construction arguments. Timely raising arguments does not necessarily mean during claim construction or at summary judgment. Claim construction issues may be timely even if they are raised in the context of proposing jury instructions, and, moreover, <i>must</i> be raised at that time to preserve the issue if they were not clearly raised and resolved earlier. It isn&rsquo;t enough to raise the specter of a dispute; the best practice is for litigants to set forth the dispute, identify how it relates to the scope of the claim, and provide a construction that purports to resolve the dispute. Otherwise, a party risks forfeiting the argument, as Microsoft did in this case. Litigants should also revisit claim construction issues throughout a case. All of this requires carefully and thoroughly developing case strategies early on to anticipate infringement and validity arguments that may require claim construction, clearly articulating any claim construction disputes and proposing constructions that address the disputes, and being vigilant as the case progresses to be sure that claim construction disputes are preserved on appeal.</p> <p>For more information on this ruling, please contact Fitch Even partner&nbsp;<a href=";A=2603&amp;format=xml&amp;p=5482" target="_blank">Joseph F. Marinelli</a>, author of this alert.&nbsp;</p> <p><b><br /> Fitch Even IP Alert</b><b><sup>&reg;</sup></b>&nbsp;</p>IP Alerts09 Jun 2022 00:00:00 -0800 Alert: Federal Circuit Finds Claim Language Added in IPR Patentable Over Indefiniteness Challenge<p>On June 1, in <a href=""><i>ClearOne, Inc. v. Shure Acquisition Holdings, Inc.</i></a>, the Federal Circuit applied preexisting legal standards to find that new claim language added in an <i>inter partes</i> review (IPR) proceeding was not indefinite. The court found that intrinsic and extrinsic evidence provided skilled artisans reasonable certainty about the meaning of the new claim language.</p> <p>Shure&rsquo;s patent related to a particular configuration of a microphone array for use in drop ceilings. In particular, the new claim language interpreted by the court covered a &ldquo;self-similar&rdquo; configuration for the microphone array that Shure first added during an IPR proceeding initiated by ClearOne.</p> <p>At the USPTO&rsquo;s Patent Trial and Appeal Board (PTAB), ClearOne argued that the &ldquo;self-similar&rdquo; language rendered the added claims indefinite. The PTAB disagreed and ClearOne appealed. On appeal, ClearOne again argued that the added &ldquo;self-similar&rdquo; language was indefinite because the specification was susceptible to multiple different interpretations. However, the court ultimately upheld the PTAB ruling finding the added claim terms not indefinite.</p> <p>The court applied the test for indefiniteness from <i>Nautilus, Inc. v. Biosig Instruments, Inc.</i>, which requires claim language to inform the skilled artisan &ldquo;about the scope of the invention with reasonable certainty.&rdquo; The court found the required certainty from various intrinsic and extrinsic evidence including the context and nature of the examples from Shure&rsquo;s specification, relevant dictionary definitions, and ClearOne&rsquo;s own expert&rsquo;s testimony. &nbsp;&nbsp;</p> <p>First, the court expressly found that specific examples of fractal configurations &ldquo;such as concentric rings, ovals, or other shapes&rdquo; in Shure&rsquo;s patent specification were complimentary descriptions of &ldquo;self-similar&rdquo; configurations and not ambiguous contrary descriptions as ClearOne argued. The court specifically found that the language &ldquo;self-similar or fractal-like&rdquo; and &ldquo;self-similar or repeating&rdquo; as used in the specification were not juxtapositions and instead had the effect of equating &ldquo;self-similar&rdquo; to the described fractal like and repeating patterns.</p> <p>Second, while the court found that the intrinsic specification examples alone were sufficient to render the claim language definite, the court also relied on extrinsic dictionary definitions and the testimony of ClearOne&rsquo;s expert to bolster its case. Notably, the court found the mere fact that ClearOne&rsquo;s expert was able to nominally identify the prior art references as including a self-similar microphone configuration supported the conclusion that the language provided reasonably certainty to the skilled artisan.</p> <p>Finally, the court reiterated existing precedent that the mere existence of different possible interpretations for claim language was not sufficient on its own to show indefiniteness. The court noted that such a holding &ldquo;would render nearly every claim term indefinite.&rdquo;</p> <p>This case is significant because it provides a further example of the type and nature of both intrinsic and extrinsic evidence sufficient to demonstrate that a skilled artisan would understand claim language with reasonable certainty. The case also demonstrates a possible conflict between successfully arguing that a claim is both indefinite and also taught by various prior art references.</p> <p>For more information on this ruling, please contact Fitch Even attorney <a href="">Michael R. Anderson</a>, author of this alert.&nbsp;<br /> <b><br /> <br /> Fitch Even IP Alert<sup>&reg;</sup></b>&nbsp;</p>IP Alerts08 Jun 2022 00:00:00 -0800 Even Partner Nikki Little to Speak at GirlCon<p>Fitch Even partner <a href=";A=2598&amp;format=xml&amp;p=5482">Nikki Little</a> will be a featured speaker at GirlCon 2022, an international tech conference for womxn, taking place online and in-person on June 15&ndash;18, 2022.</p> <p>Nikki will be a co-panelist during the Tech + IP session. The panelists will discuss how to protect your innovations. They will introduce Intellectual Property, discuss real world examples, the use of technology in the IP space, NFTs, and careers in IP. This session will be digital and is scheduled for June 15 at 4:45 p.m. CDT.</p> <p>GirlCon is a free conference that was started in 2018 by two Chicagoland high schoolers who saw a need to increase the representation of womxn in tech. GirlCon aims to motivate and empower the next generation of leaders to reach their full potential. The conference is for students, by students. Since its inception, the conference has grown immensely, and last year drew a virtual crowd of over 700 who tuned in to be inspired by the journeys of womxn professionals working in all aspects of tech.</p> <p>For more information and to register, please visit the <a href="">GirlCon website</a>.</p>Professional Activities07 Jun 2022 00:00:00 -0800 Even Welcomes 2022 Summer Associates<p>We are pleased to welcome law students Clayton Goldman and Tiffany Hu as our summer associates for 2022. Clayton is attending the University of Notre Dame Law School, with an expected graduation date of May 2023. Tiffany is a student at University of Illinois College of Law and is working toward a May 2024 graduation.</p> <p>We appreciate having Clayton and Tiffany join us this summer, bringing with them their impressive credentials and notable skills!</p>Firm News07 Jun 2022 00:00:00 -0800