Fitch Even News Feed Feb 2019 00:00:00 -0800firmwise Open Source Risk with Tools for Usage Evaluation and License Compliance<p>Please join Fitch, Even, Tabin &amp; Flannery LLP for a free webinar, &ldquo;<a href="">Navigating Open Source Risk with Tools for Usage Evaluation and License Compliance</a>,&rdquo; on Thursday, February 28, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12 noon EST.</p> <p>Software is increasingly incorporated into products released into the market, and more companies are releasing mobile applications every day. As the percentage of open source content in use rises, the legal and security risks accompanying such use needs to be actively managed. During this webinar, our presenters will provide background information and actionable advice that will assist you in handling open source.</p> <p>Among other insights, our presenters will discuss the following:</p> <ul> <li>Assessing license compliance and compatibility</li> <li>Leveraging tools to monitor and assess risks associated with software deals and open source software incorporated into a company&rsquo;s code</li> <li>Creating programs and policies to effectively manage a company&rsquo;s incorporation of open source into its code</li> <li>External web service call-out or API identification and management of associated obligations, risks, and privacy concerns</li> </ul> <p>Our guest speaker will be Philip Odence, General Manager of Black Duck On-Demand, the industry leader in open-source due diligence services. Fitch Even partners <a href=";A=2599&amp;format=xml&amp;p=5482">Amanda Lowerre O&rsquo;Donnell</a>, <a href=";A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a>, and <a href=";A=2610&amp;format=xml&amp;p=5482">Steven G. Parmelee</a> will round out the panel.</p> <p>Phil Odence is General Manager of Synopsys&rsquo; Black Duck On-Demand business unit, which provides due diligence audits for companies and both sides of M&amp;A transactions. He works closely with the company&rsquo;s law firm partners and the open source community and is a frequent speaker on open source management and M&amp;A.</p> <p><a href=";A=2599&amp;format=xml&amp;p=5482">Amanda Lowerre O&rsquo;Donnell</a> focuses her practice primarily on patent prosecution, patent licensing, and commercial clearance assessments. She also advises clients in the U.S. and abroad on business method protections as well as open source software issues.</p> <p><a href=";A=2603&amp;format=xml&amp;p=5482">Joe Marinelli</a> is an IP litigator with 20 years of hands-on courtroom experience and a diverse intellectual property law practice covering all aspects of IP creation, management, enforcement, and licensing.</p> <p><a href=";A=2610&amp;format=xml&amp;p=5482">Steve Parmelee</a> 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>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. To reserve your place, please <a href="">REGISTER HERE</a>.</p> <br />Upcoming Webinars12 Feb 2019 00:00:00 -0800 Even Partner Steve Parmelee Speaks at University of South Carolina<p>Fitch Even partner <a href=";A=2610&amp;format=xml&amp;p=5482">Steven G. Parmelee</a> recently served as guest lecturer for the University of South Carolina Darla Moore School of Business, as part of the MBA-level international business course &ldquo;International Intellectual Property Management.&rdquo; On January 31, Steve presented on &ldquo;Provisional Patent Applications,&rdquo; and on February 7, he discussed &ldquo;How to Conduct Patent Searches.&rdquo;</p> <p>Steve has extensive experience in complex patent preparation and prosecution in the U.S. and abroad, and has assisted clients with patent portfolio management, freedom-to-operate issues, and transactions for over 40 years.<br /> <br /> &nbsp;</p>Professional Activities08 Feb 2019 00:00:00 -0800 Alert: Any Party Joined to an IPR Proceeding Under § 315(c) Has Right to Appeal<p>On February 1, in <i><a href="">Mylan Pharmaceuticals Inc. v. Research Corporation Technologies, Inc.</a></i><i>, </i>the Federal Circuit held that any party joined to an <i>inter partes</i> review (IPR) proceeding under &sect; 315(c) by the Patent Trial and Appeal Board (PTAB) has a statutory right to appeal the outcome of the decision.</p> <p>In 2013, Research Corporation Technologies (RCT) filed a lawsuit against Mylan, Breckenridge, and Alembic (&ldquo;the appellants&rdquo;) for infringement of U.S. Reissue Pat. No. 38,551, which claims pharmaceutical compositions useful in the treatment of epilepsy. In 2015, a separate entity&mdash;Argentum&mdash;petitioned for IPR of the &rsquo;551 patent. Several days after the PTAB instituted review of the Argentum petition, all the appellants filed their own petitions along with motions to join Argentum.</p> <p>The PTAB instituted the petitions and joined each proceeding with Argentum under &sect;&nbsp;315(c), even though the petitions on their own would have been time-barred by &sect;&nbsp;315(b). In the PTAB&rsquo;s decision permitting joinder, the appellants agreed that they would be limited to an &ldquo;understudy role&rdquo; in the trial. Ultimately, the PTAB concluded that each challenged claim had not been shown to be unpatentable.</p> <p>The appellants appealed the decision to the Federal Circuit but were not joined by Argentum. Although RCT did not challenge the PTAB&rsquo;s joinder decision, it argued that the appellants did not have standing because &ldquo;[they do] not fall within the zone of interests of 35 U.S.C. &sect;&nbsp;319.&rdquo; Specifically, RCT argued that allowing the appellants to appeal &ldquo;would constitute an end-run around the statutory time-limit for instituting IPR proceedings&rdquo; because the appellants&rsquo; initial petitions would have been time-barred had they not been previously joined.</p> <p>The court relied on statutory construction to find that any parties joined under &sect;&nbsp;315(c) may appeal pursuant to &sect;&nbsp;319. In support, the court found that &sect;&nbsp;315(c) provides discretion for the PTAB to join any person &ldquo;as a party&rdquo; to the proceeding and that &sect; 319 provides that &ldquo;any party to the inter partes review shall have the right to be a party to the appeal.&rdquo; The court reasoned that finding otherwise would require reading the term &ldquo;party&rdquo; differently between &sect;&nbsp;315 and &sect;&nbsp;319. As a result, the court found that the appellants were within the zone of interests and were not barred from appellate review. Proceeding to the merits, the court affirmed the PTAB&rsquo;s decision finding that the petitioner had not met its burden to show the claims of the &rsquo;551 patent were unpatentable.</p> <p>Interestingly, the court also addressed the appellants&rsquo; request for remand during oral arguments in light of the <i>SAS v. Iancu</i> decision that issued after briefing was completed. Specifically, the appellants argued that the decision should be remanded to the PTAB to consider the non-instituted grounds. However, the court was unpersuaded and found that the appellants had waived their request by waiting &ldquo;over 6 months after the <i>SAS</i> decision&rdquo; and raising the argument for the first time during their rebuttal argument.</p> <p>This decision is relevant to any clients engaged in, or expecting to be engaged in, proceedings at the PTAB. Even if a party would otherwise be time-barred from filing an IPR petition, any party joined by the PTAB under &sect;&nbsp;315(c) has the right to appeal the decision under &sect;&nbsp;319.</p> <p>For more information on this decision, please contact Fitch Even partner <a href=";A=2598&amp;format=xml&amp;p=5482">Nicole L. Little</a>, author of this alert.&nbsp;</p> <p><i>Fitch Even associate </i><i><a href=";A=16703&amp;format=xml&amp;p=5482">Evan Kline-Wedeen</a></i><i> contributed to this alert.</i>&nbsp;</p> <p>&nbsp;</p> <b>Fitch Even IP Alert<sup>&reg;</sup></b>IP Alerts08 Feb 2019 00:00:00 -0800 Even Partners Named to Illinois Super Lawyers and Illinois Rising Stars Lists for 2019<p>Seven Fitch Even partners have been selected for inclusion in the 2019 list of Illinois Super Lawyers and one partner has been selected for inclusion in the 2019 list of Illinois Rising Stars<i>. </i></p> <p><a href=";A=2581&amp;format=xml&amp;p=3130">Karl R. Fink</a> and <a href=";A=2601&amp;format=xml&amp;p=3130">Timothy P. Maloney</a> were once again recognized as top attorneys in Intellectual Property Litigation in Illinois, and <a href=";A=2580&amp;format=xml&amp;p=5482">Stephen S. Favakeh</a>, <a href=";A=2588&amp;format=xml&amp;p=5482">Mark W. Hetzler</a>, <a href=";A=2589&amp;format=xml&amp;p=5482">Allen E. Hoover</a>, <a href=";A=2609&amp;format=xml&amp;p=5482">Joseph T. Nabor</a>, and <a href=";A=2616&amp;format=xml&amp;p=3130">Joseph E. Shipley</a> were recognized as top attorneys in Intellectual Property Law in Illinois. No more than 5 percent of all lawyers in the state are selected by the research team at Super Lawyers to receive this honor each year.</p> <p><a href=";A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a> was named to this year&rsquo;s <i>Illinois Rising Stars</i> list as a top-rated attorney in Intellectual Property Litigation. He was included among the top up-and-coming attorneys in the state who are 40 years old or younger or who have been practicing for 10 years or less. No more than 2.5 percent of Illinois lawyers receive this honor each year.</p> <p>Super Lawyers<sup>&reg;</sup>, a Thomson Reuters business, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. Attorneys are selected using a multiphase process that includes independent research evaluation of candidates, peer nominations, and peer evaluations. For more information, please visit <a href=""></a>.<br /> &nbsp;</p>Firm News04 Feb 2019 00:00:00 -0800 Even Again Ranked Among Top 10 Firms in IPR Practice; Partners Recognized as Top Performers<p>Fitch Even was recently recognized among the Top 10 best-performing law firms overall and the Top 20 most-active law firms representing patent owners in <i>inter partes</i> review (IPR) in Patexia&rsquo;s 2018 IPR Intelligence Report. In addition, Fitch Even partner <a href=";A=2611&amp;format=xml&amp;p=5482">Nicholas T. Peters</a> was ranked among the Top 10 most-active attorneys representing patent owners in IPR proceedings, and partner <a href=";A=2601&amp;format=xml&amp;p=5482">Timothy P. Maloney</a> was ranked among the Top 25 most active. Both Nick and Tim ranked among the Top 50 best-performing attorneys overall (representing petitioners or patent owners).</p> <p>Using data from over 7,700 IPR challenges filed from July 2013 through June 2018, Patexia evaluated the activity and performance of more than 1,100 law firms and 5,000 attorneys. More information about this annual report and its methodology can be found <a href="">here</a>.</p> <p>In 2017, Fitch Even was ranked as the #1 best-performing law firm representing patent owners in IPR proceedings from 2012 through 2016, based on analysis conducted by Patexia and reported in their article &quot;<a href="">Top 5 Performing Law Firms in IPR</a>.&quot; Also in 2017, Tim Maloney was ranked as the #3 best-performing attorney representing patent owners in (IPR) proceedings, reported in Patexia&rsquo;s article &quot;<a href="">Best Performing Attorneys in IPR</a>.&quot;</p> <p>Fitch Even has represented both patent owners and petitioners in a wide variety of industries in numerous IPR 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 <a href=";LPA=7733&amp;format=xml&amp;p=5480">PTAB practice group</a> and validates our approach of leveraging the skills of both patent litigators and patent prosecution attorneys to defend vital patents against IPR challenges.<br /> &nbsp;</p> <p style="text-align: center;"><img src=" Badges/PTAB_10_BestPerforming1.png" alt="" width="100" vspace="0" hspace="0" height="100" border="0" align="absmiddle" />&nbsp; &nbsp; &nbsp; &nbsp; &nbsp;&nbsp;<img src=" Badges/PTAB_10_MostActive.png" alt="" width="100" vspace="0" hspace="0" height="100" border="0" align="absmiddle" /><br /> <br /> &nbsp;</p>Firm News31 Jan 2019 00:00:00 -0800 Alert: Federal Circuit Invalidates USPTO Rule on Patent Term Adjustment<p>Today, in <i><a href="">Supernus Pharmaceuticals, Inc. v. Iancu</a></i>, the Federal Circuit issued a decision invalidating one rule for the calculation of patent term adjustment (PTA) by the U.S. Patent and Trademark Office. The decision is important because it may significantly extend the terms for many U.S. patents and may raise questions regarding other rules affecting PTA.</p> <p>By way of background, the term of a patent nominally extends from its issue date until the 20-year anniversary of its effective filing date. Because the nominal expiration date of the patent is fixed, any delays during prosecution of the patent can reduce the patent&rsquo;s term. In 1999, Congress enacted legislation to address delays in prosecution. This legislation provides for adjustment of the term of a patent where the delay is due to processing time at the USPTO. There have been various cases concerning the USPTO&rsquo;s application of this statute and how the term is to be calculated. The USPTO has also promulgated various regulations concerning how it will calculate any PTA.</p> <p>In <i>Supernus</i>, the Federal Circuit overturned a USPTO decision reducing the number of days of patent term adjustment for a patent assigned to Supernus. On April 27, 2006, Supernus filed a patent application that eventually matured into U.S. Patent No. 8,747,897. On February 22, 2011, during the prosecution of the application, Supernus filed a request for continued examination (RCE), which removed the finality of a rejection made by the examiner.</p> <p>Supernus also filed an international application that gave rise to a European patent application filed with the European Patent Organization (EPO). On August 21, 2012, the EPO notified Supernus&rsquo;s European counsel that an opposition was filed to this parallel European case; the opposition cited 10 documents. On September 11, 2012, Supernus received a letter from its European counsel disclosing the opposition and identifying the documents. On November 29, 2012, Supernus filed an information disclosure statement (IDS) providing the cited documents for consideration to the U.S. examiner. The USPTO issued a first office action on September 10, 2013, Supernus responded on January 10, 2014, and on February 4, 2014, the USPTO allowed the case. On June 10, 2014, the patent issued with a PTA of 1,260 days added to the patent&rsquo;s 20-year term.</p> <p>The USPTO initially attributed 2,321 days as the PTA amount available. The USPTO then reduced this amount to the final PTA amount of 1,260 days, in part because of delays it attributed to Supernus. In the reduction amount, 646 days were included for the period between February 22, 2011 (the filing of the RCE) and November 29, 2012 (the filing of the IDS).</p> <p>Supernus asked the USPTO to reconsider the PTA calculation. The USPTO refused, and Supernus appealed this refusal to the District Court for the Eastern District of Virginia. Among other things, Supernus argued that the USPTO&rsquo;s PTA regulations were arbitrary and that Supernus was entitled to at least 546 of the 646 days (the period between the filing of the RCE and the EPO notification) because there was nothing it could have done during this time period to further the prosecution of the case. Supernus conceded that it had delayed by 100 days between the date it filed the RCE and the later date on which it filed the IDS, but argued that it should not be charged with the remaining 546 days before the examiner issued the next office action. After the District Court held for the USPTO, Supernus then appealed to the Federal Circuit.</p> <p>The PTA statute provides that the PTA amount may be reduced &ldquo;by a period equal to the length of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application.&rdquo; The Federal Circuit stated that the meaning of this language was clear: If there was no period of time during which the applicant could have engaged in reasonable efforts but failed to do so, there can be no reduction in PTA. Applying this interpretation to the facts of the case, the Federal Circuit agreed with Supernus that there was nothing Supernus could have done during the period of time from the filing of the RCE until the filing of the IDS. Supernus had responded to the office action and there was nothing more for it to do. As a result, Supernus received an additional 546 days of PTA (for the period from February 22, 2011, to August 21, 2012).</p> <p>The Federal Circuit&rsquo;s decision raises a number of questions. First, the decision will almost certainly cause the USPTO to adjust its rules to be in accord with the decision, but the exact adjustments made by the USPTO to its rules are yet to be determined or announced. For example, it is presently unclear whether a patent owner will have to petition the USPTO for any adjustment, what form any petition will take, or for what circumstances an adjustment will even be allowed. It is also unclear how many patents have this (or a similar) fact pattern that would allow the PTA to be increased. It is likewise unclear whether the rationale behind the <i>Supernus</i> decision will affect other PTA rules promulgated by the USPTO.</p> <p>For these reasons, owners of U.S. patents for which the patent term is a serious concern are well advised to contact a Fitch Even attorney, who can assist in considering this decision and monitoring future developments at the USPTO regarding the possibilities for recovering any improperly reduced PTA amount.</p> <p>For more information, please contact Fitch Even partner <a href=";A=2573&amp;format=xml&amp;p=5482">Timothy R. Baumann</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts23 Jan 2019 00:00:00 -0800 Alert UPDATE: Supreme Court Says Confidential Sales Can Qualify as Prior Art<p>Today, in a unanimous <a href="">decision</a>, the U.S. Supreme Court held that &ldquo;on sale&rdquo; activity under post-AIA 35 U.S.C. &sect; 102 includes activity that is confidential, affirming the Federal Circuit&rsquo;s 2017 decision in <i>Helsinn Healthcare S.A. v. Teva Pharmaceuticals </i>(reported in a previous IP alert <a href=";an=65334&amp;anc=180&amp;format=xml&amp;p=5486">here</a>).</p> <p>Writing for the Court, Justice Thomas noted that while &ldquo;the Court has never addressed the precise question presented in this case,&rdquo; the Court&rsquo;s precedents &ldquo;suggest that a sale or offer of sale need not make an invention available to the public.&rdquo; Further, because &ldquo;the phrase &lsquo;on sale&rsquo; had acquired a well-settled meaning when the AIA was enacted,&rdquo; and because Congress had not seen fit to remove &ldquo;on sale&rdquo; from the statutory language, the Court concluded that &ldquo;Congress did not alter the meaning of &lsquo;on sale&rsquo; when it enacted the AIA.&rdquo;</p> <p>The Court&rsquo;s decision today appears to have settled this interpretation of the AIA.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts22 Jan 2019 00:00:00 -0800 Alert: USPTO Releases Latest Guidance for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101<p>Since the 2012 and 2014 landmark Supreme Court decisions <i>Mayo Collaborative Servs. v. Prometheus Labs., Inc.</i> and <i>Alice Corp. Pty. Ltd. v. CLS Bank Int&rsquo;l</i>, inventors, business owners, patent practitioners, courts, and USPTO examiners alike have struggled with how to apply the Supreme Court&rsquo;s framework in <i>Mayo/Alice</i> for evaluating whether an invention is eligible subject matter for patenting. On January 7, in an effort to address the need for accurate and consistent application of the <i>Mayo/Alice</i> test, the USPTO issued <a href="">guidance</a> to be used by examiners in evaluating subject matter eligibility for patent applications.</p> <p>Patent-eligible subject matter is defined in 35 U.S.C. &sect; 101 as &ldquo;any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.&rdquo; However, the Supreme Court has identified laws of nature, natural phenomena, and abstract ideas as &ldquo;judicial exceptions&rdquo; to those statutory categories. In <i>Alice</i>, the Court announced a two-part test for determining patent-eligible subject matter: (1) whether a claim is directed to one of the judicial exceptions, and (2) whether the claim recites additional elements that amount to significantly more than the judicial exception.</p> <p>The USPTO previously issued a series of guidelines intended to advise its Examining Corps in making accurate and consistent decisions regarding patent eligibility. Past efforts have not been wholly successful in either regard. Many of the previous guidelines relied upon an analysis approach that required patent examiners to apply litigation-based precedent on a case-by-case basis. As a general rule, however, the 8,000+ examiners at the USPTO are not lawyers, so are not deeply trained in reading, interpreting, and applying case law in such a manner.</p> <p>This latest guidance, although heavily annotated to demonstrate a direct link between the dictates of guidance and the relevant case law, includes clear statements and examples so that examiners need not individually (and possibly inconsistently) interpret legal decisions. While patent-eligibility analysis may never submit to a simple bright-line test, this new guidance may prove very helpful to both examiners and those seeking patents by at least clarifying the basic rules of the road.</p> <p>The guidance largely addresses only the first step of the <i>Alice/Mayo</i> test&mdash;whether a claim is directed to one of the judicial exceptions. It does this by breaking down this first step into two sequential inquiries.</p> <p>Under the first prong, if the examiner believes that a claim presents abstract subject matter, the examiner must confirm that the identified abstract claim features fall within one of a number of specific subject matter groupings. Those specific groupings are</p> <p style="margin-left: 40px;">(a) Mathematical concepts&mdash;mathematical relationships, mathematical formulas or equations, mathematical calculations;</p> <p style="margin-left: 40px;">(b) Certain methods of organizing human activity&mdash;fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and</p> <p style="margin-left: 40px;">(c) Mental processes&mdash;concepts performed in the human mind (including an observation, evaluation, judgment, opinion).</p> <p>The guidance specifies that, except in rare circumstances, claims should not be treated as abstract ideas if they do not fall into one of the above groupings. If a claim does pass the first prong, the examiner then proceeds to a new second prong.</p> <p>Under the second prong of the guidance, examiners must evaluate whether the abstract content is integrated into a practical application. If true, the claim is not directed to an abstract concept, notwithstanding the presence of that abstract concept.</p> <p>The guidance provides several examples of when a judicial exception is integrated into a practical application, such as when the claim</p> <ul> <li>reflects an improvement in the functioning of a computer,</li> <li>effects a particular treatment for a disease or medical condition,</li> <li>is applied with or used by a particular machine,</li> <li>transforms or reduces a particular article to a different state or thing, or</li> <li>is applied or used in some other meaningful way beyond generally linking the use to a particular technological environment.</li> </ul> <p>Under the <i>Mayo/Alice</i> two-part test, if a claim is directed to abstract content, the second part of the test then assesses whether there is nevertheless something &ldquo;significantly more&rdquo; in the claim that preserves the patent eligibility of that claim. When assessing that &ldquo;significantly more&rdquo; aspect, examiners often assess whether the additional element or elements at issue represent &ldquo;well-understood, routine, conventional activity.&rdquo; When true, such an element may fail to constitute something that is &ldquo;significantly more.&rdquo;</p> <p>The new guidance clarifies that the inquiry into whether an element is well-understood, routine, and conventional has no part to play when initially deciding whether a claim is directed to abstract subject matter. In particular, when deciding whether the abstract content is integrated into a practical application, the guidance instructs that it is irrelevant whether the details of that practical application are otherwise well-understood, routine, and conventional.</p> <p>In addition to offering clarity, the guidance ideally will mitigate inconsistent examination as well as unduly harsh denials of patent eligibility during patent examination.</p> <p>The Computer-Implemented Functional Claim Limitations Guidance is effective immediately and applies to all pending and newly filed applications as well as to all patents resulting from applications filed before, on, or after January 7, 2019. It also applies to proceedings before the Patent Trial and Appeal Board.</p> <p>For more information, please contact Fitch Even partners <a href=";A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a> and <a href=";A=2610&amp;format=xml&amp;p=5482">Steven G. Parmelee</a>, authors of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts11 Jan 2019 00:00:00 -0800 Alert: USPTO Releases Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112<p>On January 7, contemporaneously with the release of guidance addressing the analysis of patent eligibility under 35 U.S.C. &sect; 101, the USPTO issued <a href="">guidance</a> that addresses requirements presented by 35 U.S.C. &sect; 112 regarding computer-implemented functional claim limitations. Unlike the patent-eligibility guidance, which presents a new examination procedure, the section 112 examination guidance doesn't introduce something new but presents a consolidation of existing practices that are now more clearly bound by common points of concern, inquiry, and vocabulary.</p> <p>Section 112 explicitly permits a claim to include a purely functional claim expression rather than a recitation of structure to accomplish that function. This statutory provision specifies that such a practice is invoked by presenting a &ldquo;means&rdquo; for accomplishing a stated function. In such a case, section 112 then further states that such a claim limitation shall be interpreted as the structure described in the specification as accomplishing the claimed function. The section 112 guidance attempts to clarify not only the foregoing, but also make these points:</p> <ul> <li>A functional claim recitation that includes the word &ldquo;means&rdquo; may nevertheless be interpreted without invoking the functional claim language provisions of section 112 if the claim recitation also includes sufficient structure to accomplish the stated function.</li> <li>A functional claim recitation that does not include the word &ldquo;means&rdquo; but which does not otherwise include sufficient structure to accomplish the stated function may nevertheless be interpreted as though it did include the word &ldquo;means&rdquo; if the function is accomplished by a &ldquo;non-structural generic placeholder&rdquo; (such as a mechanism, module, device, unit, component, element, member, apparatus, system, or machine). (The Manual of Patent Examination Procedure refers to such words as &ldquo;nonce&rdquo; words.)</li> <li>Notwithstanding the foregoing list of suspect words, there is no fixed list of words that always result in treating the claim limitation as a &ldquo;means&rdquo; limitation, and conversely there is no fixed list of words that guarantee exclusion from such treatment (&ldquo;every case will turn on its own unique set of facts&rdquo;).</li> <li>The specification must include an algorithm that fully accomplishes the entire claimed computer-implemented function regardless of whether the claimed function is being interpreted as a &ldquo;means&rdquo; expression or not.</li> <li>One suitable definition of an algorithm is &ldquo;a finite sequence of steps for solving a logical or mathematical problem or performing a task&rdquo; and an algorithm can be satisfactorily expressed in any understandable terms including as a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure.</li> <li>While things that are well known in the art need not be described in detail, it is still necessary to present structure in the specification to accomplish the claimed function when the function is interpreted as being accomplished by a &ldquo;means&rdquo; or its equivalent.</li> <li>The applicant cannot merely rely upon the knowledge of one skilled in the art to substitute for a description of structure, and the guidance further cautions that an applicant cannot rely on the knowledge of one skilled in the art to supply information that is required to enable the novel aspect of the claimed invention when the enabling knowledge is in fact not known in the art.</li> </ul> <p>While this guidance does not necessarily break any new ground, it may well prove useful (both for patent examiners as well as patent applicants) in prompting more-consistent analysis and treatment of claims that include functional claim expressions.</p> <p>Hazarding a guess, the author suspects that the patent-eligibility guidance mentioned above will lead to a reduction in the number of applications that face serious patent-eligibility problems, but this section 112 guidance will likely lead to an increase in the number of applications that face serious challenges based on the contents of the specification (or, perhaps more accurately, based on the lack of contents in the specification).</p> <p>The guidance is effective immediately and applies to all pending and newly filed applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019.</p> <p>For more information, please contact Fitch Even partner <a href=";A=2610&amp;format=xml&amp;p=5482">Steven G. Parmelee</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts11 Jan 2019 00:00:00 -0800 Alert: PTAB Can Consider Previously Non-Instituted Ground of Unpatentability<p>On January 9, in <i><a href="">AC Technologies S.A. v., Inc.</a></i>, the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) did not exceed its statutory authority or violate due process when it ordered a rehearing to consider a previously non-instituted ground of unpatentability.</p> <p>In its petition for <i>inter partes </i>review, Amazon raised three grounds for unpatentability. The PTAB instituted review of Grounds 1 and 2, but declined to institute Ground 3. Grounds 1 and 3 relied on alternative constructions of the phrase &ldquo;computer unit.&rdquo; The PTAB adopted a broad construction of that phrase in the institution decision, which favored Ground 1 and rendered Ground 3 moot. The PTAB&rsquo;s final decision, however, construed &ldquo;computer unit&rdquo; differently.</p> <p>Under this revised construction, the PTAB held that Ground 1 did not invalidate the claims, but did not consider Ground 3. Amazon moved for reconsideration, pointing to the omission of Ground 3. On reconsideration, the PTAB addressed Ground 3 and invalidated the remaining claims. The patent owner, AC Techs, appealed to the Federal Circuit, arguing that by reconsidering Ground 3 the PTAB exceeded its statutory authority and fell short of its obligation to provide due process.</p> <p>The Federal Circuit held that precedent mandates that the PTAB consider all grounds of unpatentability raised in an instituted petition, citing <i>SAS Institute Inc. v. Iancu</i>. Notably, each of the PTAB&rsquo;s decisions in this case came before the Supreme Court issued the <i>SAS</i> decision. Applying <i>SAS</i>, the Federal Circuit held that the PTAB did not exceed its statutory authority when it addressed non-instituted Ground 3. To the contrary, the Federal Circuit explained that the PTAB would have violated the statutory scheme if it did not address the non-instituted ground when it reconsidered its final written decision.</p> <p>Furthermore, the Federal Circuit held that the PTAB did not violate due process on the facts of this case. After ordering reconsideration of Ground 3, the PTAB permitted AC Techs to take discovery and to submit additional briefing and evidence on Ground 3. Although AC Techs did not receive a hearing on Ground 3, it had never requested one.</p> <p>As noted above, the circumstances of this case are somewhat unique because each of the PTAB&rsquo;s decisions was issued prior to the Supreme Court&rsquo;s <i>SAS</i> decision. Post-<i>SAS</i>, if the PTAB institutes trial it must include every ground asserted in the petition. This decision reiterates that the PTAB must consider every ground in an instituted IPR and emphasizes that due process concerns are mitigated if the parties have the opportunity to address issues raised after institution. Specifically, if a patent owner wants a hearing on a ground that was not instituted but is later considered, it should request one.</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>, author of this alert.</p> <p><i>Fitch Even law clerk </i><i>Jacqueline L. Thompson contributed to this alert.</i>&nbsp;</p> <p>&nbsp;</p> <p><b>Fitch Even IP Alert&reg;</b></p>IP Alerts11 Jan 2019 00:00:00 -0800