Fitch Even News Feedhttp://full.fitcheven.com/?t=39&format=xml&stylesheet=rss&directive=0&records=20en-us19 Jun 2018 00:00:00 -0800firmwisehttp://blogs.law.harvard.edu/tech/rssIP Alert: New Guidance on PTAB Institutionshttp://full.fitcheven.com/?t=40&an=77954&format=xml<p>As previously <a href="https://www.fitcheven.com/?t=40&amp;an=76257&amp;anc=180&amp;format=xml&amp;p=5486">reported</a>, the recent Supreme Court decision <i>SAS Institute Inc. v. Iancu</i> held that the Patent Trial and Appeal Board (PTAB) must decide the patentability of all claims challenged by the petitioner when the PTAB institutes an <i>inter partes</i> review. On June 5, the USPTO issued a &ldquo;<a href="https://www.uspto.gov/sites/default/files/documents/sas_qas_20180605.pdf">Frequently Asked Questions about SAS Implications</a>&rdquo; document (the &ldquo;FAQ&rdquo;) to further address how the PTAB would apply the <i>SAS</i> decision in issuing institution decisions and in dealing with ongoing partial institution proceedings. The document addresses several issues left open after <i>SAS</i>.</p> <p>When instituting <i>inter partes</i> review proceedings, practitioners have questioned whether a petition might be denied if it fails to surpass a threshold number of grounds meriting institution. The FAQ explains that the PTAB will not impose such a threshold, but that the &ldquo;panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system . .&nbsp;. the entire petition should be denied.&rdquo; Additionally, if the panel finds that certain challenges do not meet the reasonable likelihood standard, they intend to indicate so in the decision to institute, even if instituting on all challenges.</p> <p>For ongoing proceedings, practitioners have questioned how the PTAB will handle cases that were partially instituted. The FAQ explains that the PTAB will issue an order instituting review on all claims and all grounds, but will not restart the trial process for these proceedings. Based on a panel&rsquo;s assessment of a case, the panel may recommend extension of the statutory deadline for a final written decision. Alternatively, the panel may receive a joint request filed by the parties for rehearing to waive additional claims and/or grounds or receive a motion by either party to limit claims and/or grounds.</p> <p>Depending on the stage of the case, the panel may extend due dates for the patent owner response or petitioner reply and other procedural dates as necessary. Generally, if additional briefing and/or evidence is needed for either party to address the newly added claims and/or grounds, the parties can request to do so, and the due dates and timeline of the proceeding can be adjusted as necessary by the panel.</p> <p>In proceedings already subject of a final written decision, the FAQ explains that either party can file a rehearing request or may request a conference call with the panel to discuss additional briefing and/or evidence to address additional claims and/or grounds. The panel may also extend or waive the rehearing deadline. However, if the case is already on appeal to the Federal Circuit, the PTAB cannot reopen the case.</p> <p>For more information on this guidance from the USPTO, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a>.<br /> <br /> <em>--Written by Fitch Even summer associate Zachary Van Engen</em></p> <p>&nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;<br /> </sup></b></p>IP Alerts11 Jun 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=77954&format=xmlFrom <i>Alice</i> to <i>Berkheimer:</i> Practical Tips for Preparing Software Patent Applicationshttp://full.fitcheven.com/?t=40&an=76861&format=xml<p>Please join Fitch, Even, Tabin &amp; Flannery LLP and Wood IP LLC for a free webinar, &ldquo;<a href="https://register.gotowebinar.com/register/2041196449188548865">From <i>Alice</i> to <i>Berkheimer</i><em>:</em> Practical Tips for Preparing Software Patent Applications</a>,&rdquo; on Wednesday, June 27, 2018, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.</p> <p>Changes in subject matter eligibility prompted by the Supreme Court&rsquo;s decision in <i>Alice v. CLS Bank</i> have created no small measure of confusion and uncertainty, particularly in the area of software. Seemingly hundreds of related cases in the district courts, Federal Circuit, and USPTO have resulted&mdash;many ostensibly at odds with others. One of the latest Federal Circuit decisions, <i>Berkheimer v. HP</i>, may represent an especially important analytical milestone. Recent USPTO memos offer further helpful guideposts. During this webinar, our presenters will provide practice tips derived from some of these decisions and memos, principally from the software perspective.</p> <p>Among other insights, our presenters will share the following:</p> <ul> <li>How to quickly assess whether certain software programs might qualify as patent-eligible subject matter</li> <li>Practical tips for preparing office action responses and drafting patent applications in view of the USPTO memo to examiners following <i>Berkheimer</i></li> <li>A simple checklist for inventors preparing software-related invention disclosures</li> </ul> <p><i>Our speakers:</i></p> <p>Wood IP managing partner <a href="http://www.woodiplaw.com/dt_team/a-theodore-a-wood/">Theodore A. Wood</a> has over 35 years of electrical, electro-mechanical, communications, software, and computer security-related technical, legal, and military experience. He uses this experience to help companies protect and leverage their innovations and ensure marketplace exclusivity. Ted&rsquo;s practice also includes <i>inter partes</i> reviews, reexaminations, and oral arguments before the Patent Trial and Appeal Board.</p> <p>Wood IP partner <a href="http://www.woodiplaw.com/dt_team/b-archie-e-williams-jr/">Archie E. Williams Jr.</a> has over 40 years of patent preparation and prosecution experience, with a special focus on software patentability, subject matter eligibility, and USPTO rules. Archie leverages his insights in these areas to counsel clients on successfully navigating the obstacles to software patentability created by recent Supreme Court and Federal Circuit decisions. Archie is also a retired USPTO Supervisory Patent Examiner (SPE) and a former USPTO Special Laws Expert/Special Program Examiner (SPRE).</p> <p>CLE credit has been approved for California and Illinois and is pending in 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="https://register.gotowebinar.com/register/2041196449188548865">REGISTER HERE</a>.</p>Upcoming Webinars05 Jun 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=76861&format=xmlAdvanced Obviousness Analysis: Understanding the Reasonable Expectation of Success Doctrinehttp://full.fitcheven.com/https://attendee.gotowebinar.com/register/63636825237992449&format=xml<p>Please join Fitch, Even, Tabin &amp; Flannery LLP for a free webinar, &ldquo;Advanced Obviousness Analysis: Understanding the Reasonable Expectation of Success Doctrine,&rdquo; on Thursday, May 31, 2018, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.</p> <p>When an invention combines previously known features, non-obviousness turns on whether the person having ordinary skill in the art would have a reason to make the combination. This analysis requires considering whether the ordinarily skilled person would have a reasonable expectation of success in combining the known features.</p> <p>Recent Federal Circuit cases provide guidance in successfully arguing for patentability under this doctrine and establish that it applies even when obviousness is asserted based on a single reference. Successfully arguing obviousness in patent prosecution, post-issuance proceedings, and district court litigation depends on this analysis with increasing frequency.</p> <p>In addition to discussing applicable cases, we will explore these issues:</p> <ul> <li>When do circumstances favor arguing reasonable expectation of success at the PTAB and during patent examination?</li> <li>What types of evidence are helpful or needed to support the arguments?</li> <li>How can patents be drafted to establish that skilled persons would not have expected success by modifying the known art?</li> </ul> <p>Our speakers will be Fitch Even attorneys <a href="https://www.fitcheven.com/?t=3&amp;A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a> and <a href="https://www.fitcheven.com/?t=3&amp;A=13638&amp;format=xml&amp;p=5482">Margaret &ldquo;Peggy&rdquo; Wojkowski</a>. Dave has a diverse IP law practice with substantial experience in district court litigation and PTAB practice in a variety of post-issuance proceedings, as well as with patent preparation and prosecution. Peggy is a registered patent attorney whose practice currently encompasses patent preparation and prosecution, patent post-issuance proceedings, and product clearance and legal opinions.</p> <p>A recording of this webinar is available through May 30, 2019.&nbsp;<br /> &nbsp;</p>Past Webinars15 May 2018 00:00:00 -0800http://full.fitcheven.com/https://attendee.gotowebinar.com/register/63636825237992449&format=xmlIP Alert: Corporate Defendant "Resides" in Only One District in States Having Multiple Judicial Districts Under Section 1400(b)http://full.fitcheven.com/?t=40&an=76430&format=xml<p>Today, in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-120.Motion_Panel_Order.5-11-2018.1.PDF"><i>In re: BigCommerce, Inc.</i></a>, a Federal Circuit panel held that &ldquo;for purposes of determining venue under &sect; 1400(b) in a state having multiple judicial districts, a corporate defendant shall be considered to &lsquo;reside&rsquo; only in the single judicial district within that state where it maintains a principal place of business, or, failing that, the judicial district in which its registered office is located.&rdquo;</p> <p>BigCommerce was sued for patent infringement in the Eastern District of Texas in two separate lawsuits, one initiated by Diem LLC and another by Express Mobile, Inc. In the <i>Diem</i> case, BigCommerce moved to dismiss under the <i><a href="https://www.fitcheven.com/?t=40&amp;an=66124&amp;anc=180&amp;format=xml&amp;p=5486">TC Heartland case</a></i> on the basis that BigCommerce only resides in the Western District of Texas. The magistrate judge concluded that the objection had been waived. In adopting the magistrate&rsquo;s recommendation, the district court determined that even if the defense had not been waived, venue would still be proper in the Eastern District of Texas.</p> <p>BigCommerce's petition for a writ of mandamus was granted by the Federal Circuit, which found that the question presented was &ldquo;basic&rdquo; and will inevitably be repeated.&nbsp;</p> <p>Section 1400(b) states as follows: &ldquo;Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.&rdquo; At issue before the Federal Circuit was the first prong, relating to where the defendant &ldquo;resides&rdquo; for purposes of this statute. Applying statutory construction, the Federal Circuit found that a corporate defendant resides in only one district in those states with multiple judicial districts. BigCommerce has no place of business in the Eastern District of Texas. Instead, its registered office and its principal place of business are within the Western District of Texas. Accordingly, the Federal Circuit found that venue was improper in the Eastern District of Texas.</p> <p>The Federal Circuit opinion provides guidance on how to determine where a corporate defendant resides under the first prong of section 1400(b):</p> <ul> <li>For a corporate defendant that does not maintain its principal place of business within the state in which it is incorporated, &ldquo;then the natural default is to deem it reside in the district in which its registered office, as recorded in its corporate filings, is located.&rdquo;</li> <li>For a corporate defendant that maintains its principal place of business within the state in which it is incorporated, the principal place of business can be identified by, for example, where its books are kept and its corporate business is transacted&mdash;the place where a corporation&rsquo;s officers direct, control, and coordinate the corporation&rsquo;s activities. This is different from the &ldquo;regular and established place of business&rdquo; part of the second prong of the statute.</li> </ul> <p><i>In re: BigCommerce, Inc.</i> will provide guidance for litigants involved in contested venue disputes. For more information on this ruling, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2574&amp;format=xml&amp;p=5482">Jon A. Birmingham</a>.</p> <p><br /> <b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts15 May 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=76430&format=xmlFitch Even Attorneys Participate in IPLAC 2018 Annual Meetinghttp://full.fitcheven.com/?t=40&an=76402&format=xml<p>On May 1, during the <a href="http://www.iplac.org/">Intellectual Property Law Association of Chicago</a> (IPLAC) Annual Meeting, Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2617&amp;format=xml&amp;p=5482">Alisa C. Simmons</a>, current president of the IPLAC Educational Foundation, was on hand as five local high-school graduates were awarded college scholarships. Each year, the IPLAC Educational Foundation awards scholarships to Chicago Public School students planning to study engineering, science, or pre-law in college.</p> <p>Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2616&amp;format=xml&amp;p=5482">Joseph E. Shipley</a> also participated in the IPLAC Annual Meeting, opening the event by singing a beautiful rendition of the national anthem. Other Fitch Even attorneys in attendance included IPLAC actives <a href="https://www.fitcheven.com/?t=3&amp;A=2609&amp;format=xml&amp;p=5482">Joseph T. Nabor</a>, <a href="https://www.fitcheven.com/?t=3&amp;A=2587&amp;format=xml&amp;p=5482">Paul B. Henkelmann</a>, and <a href="https://www.fitcheven.com/?t=3&amp;A=13120&amp;format=xml&amp;p=5482">Andrew C. Wood</a>.</p> <p>Founded in 1884, IPLAC is the oldest intellectual property law association in the United States. Fitch Even attorneys have served as leaders and members of the organization since its inaugural meeting.</p>Professional Activities14 May 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=76402&format=xmlIP Alert: Federal Circuit Clarifies Privity in the Context of Section 315(b) Time-Barhttp://full.fitcheven.com/?t=40&an=76376&format=xml<p>On May 7, in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2099.Opinion.5-4-2018.1.PDF"><em>WesternGeco LLC v. ION Geophysical Corp</em></a>., the Federal Circuit affirmed the holding of the Patent Trial and Appeal Board (PTAB) that Petroleum Geo-Services (PGS) was not time-barred from filing an <em>inter partes</em> review (IPR) because PGS was not a privy to parties from prior litigation. This decision comes on the heels of <em>Wi-Fi One, LLC v. Broadcom Corp</em>., in which the Federal Circuit ruled en banc that section 315(b) time-bar determinations made by the PTAB in IPR proceedings are reviewable. In <em>WesternGeco</em>, the court further clarified the factors and considerations for determining privity in the context of section 315(b).</p> <p>The patents challenged in the IPRs at issue were earlier litigated between WesternGeco, the patent owner, and ION. ION and PGS had a customer-manufacturer relationship regarding the accused product, and ION had agreed to indemnify PGS for infringement damages in the parties&rsquo; purchase agreements. Also, PGS was served with a third-party subpoena in the litigation, and PGS appeared through counsel and served discovery responses.</p> <p>After a favorable infringement verdict against ION, WesternGeco initiated a separate lawsuit against PGS. PGS then filed two rounds of IPR petitions. ION moved to join the IPR proceedings but was accorded &ldquo;spectator&rdquo; status after oppositions from both WesternGeco and PGS.</p> <p>Section 315 (b) of the Patent Act precludes <em>inter partes</em> review if the petition is filed more than one year after the date on which the petitioner, real party in interest, or &ldquo;privy of the petitioner&rdquo; is served with a complaint alleging infringement of the patent. WesternGeco argued that PGS&rsquo;s petitions were time-barred under section 315(b) because ION had been served with an infringement complaint well over a year before the IPRs were filed. Although PGS and ION admittedly were separate entities, WesternGeco asserted that ION was either a &ldquo;real party in interest&rdquo; or the &ldquo;privy&rdquo; of PGS. WesternGeco focused on privity as &ldquo;the key basis of its time-bar challenge, reasoning that privity is more expansive in the types of parties it encompasses compared to real party in interest.&rdquo; In arguing that PGS is a privy to ION, WesternGeco relied on the preexisting business alliance between ION and PGS and the indemnity provisions contained in the purchase agreements for the product accused of infringing WesternGeco&rsquo;s patents. The PTAB rejected WesternGeco&rsquo;s contention, and WesternGeco appealed.</p> <p>On appeal, the Federal Circuit reasoned that &ldquo;[p]rivity is essentially a shorthand statement that collateral estoppel may be applied in a given case.&rdquo; The court stated that the privity analysis is highly fact-dependent and should be a flexible analysis decided on a case-by-case basis, but cautioned that the reach of privity cannot extend beyond the limit of due process. Because the rationale behind section 315(b)&rsquo;s preclusion provision is to prevent successive challenges to a patent by those who previously have had the opportunity to make such challenges in prior litigation, the privity inquiry should focus on the relationship between the named IPR petitioner and the party in the prior lawsuit. Citing an earlier Supreme Court case, <em>Taylor v. Sturgell</em>, the court gave the following nonexhaustive list of considerations where nonparty preclusion would be justified: &ldquo;(1) an agreement to be bound; (2) preexisting substantive legal relationships between the person to be bound and a party to the judgment (e.g., &lsquo;preceding and succeeding owners of property&rsquo;); (3) adequate representation by someone with the same interests who was a party (e.g., &lsquo;class actions&rsquo; and &lsquo;suits brought by trustees, guardians, and other fiduciaries&rsquo;); (4) assumption of control over the litigation in which the judgment was rendered; (5) where the nonparty to an earlier litigation acts as a proxy for the named party to relitigate the same issues; or (6) a special statutory scheme expressly foreclosing successive litigation by nonlitigants.&rdquo;</p> <p>With specific regard to the &ldquo;control&rdquo; factor, the court found that PGS filed its IPRs as a defensive measure in response to WesternGeco&rsquo;s lawsuit against PGS, rather than at ION&rsquo;s instruction. Also relevant were PGS&rsquo;s active opposition to ION&rsquo;s attempt to join the IPR proceedings, the fact that ION did not disclose any prior art references to PGS in connection with the IPR proceedings, the fact that ION did not pay for the IPR proceedings, and the fact that the parties were represented by separate counsel. </p> <p>As to other factors in the privity analysis, the court held that the business relationship and the indemnification provision between PGS and ION, without more, were insufficient to establish that ION controlled the lawsuit. The nonspecific nature of the indemnification provision did not obligate ION to defend PGS from a patent infringement lawsuit, reimburse or pay for a lawsuit, cover any damages liability for any adverse patent infringement verdict against PGS, or initiate an invalidity challenge. Instead, the court observed that in the prior litigation PGS did no more than respond to the third-party subpoena. The relationship between PGS and ION did not give PGS a &ldquo;full and fair opportunity&rdquo; to litigate the validity of claims in that litigation. The court opined that as a general proposition, &ldquo;a common desire among multiple parties to see a patent invalidated, without more, does not establish privity.&rdquo;</p> <p>As such, the court concluded that PGS and ION were not privies, such that PGS was not time-barred by the prior litigation.</p> <p>This case is relevant to patent owners and third parties who are evaluating potential time-bar arguments in an IPR, specifically in the context of whether third-party involvement in a patent lawsuit could create time bars for IPR filings under section 315(b).</p> For more information on this ruling, please contact Fitch Even partner&nbsp;<a href="https://www.fitcheven.com/?t=3&amp;A=3766&amp;format=xml&amp;p=5482">Karen J. Wang</a>, author of this alert. <br /> <br /> <br /> <div><b><span> Fitch Even IP Alert<sup>&reg;</sup></span></b></div>IP Alerts11 May 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=76376&format=xmlIP Alert: USPTO Proposes Adopting District Court Claim Construction Standards for Post-Issuance Proceedingshttp://full.fitcheven.com/?t=40&an=76328&format=xml<p>Today the USPTO released a <a href="https://www.federalregister.gov/documents/2018/05/09/2018-09821/changes-to-the-claim-construction-standard-for-interpreting-claims-in-trial-proceedings-before-the">notice of proposed rulemaking</a> that would significantly alter the claim construction standard used in post-issuance proceedings. The USPTO currently applies the broadest reasonable interpretation (BRI) claim construction standard in many post-issuance proceedings such as <i>inter partes</i> reviews, covered business method proceedings, and post-grant reviews. The proposed rules include two changes. First, the USPTO would adopt the same claim construction standards applied in Article III federal courts following <i>Phillips v. AWH Corp.</i>, and second, the USPTO would consider any prior claim construction determination from a civil action or an ITC proceeding. The USPTO will accept comments for 60 days before deciding whether to adopt the proposed changes.</p> <p>The USTPO currently applies the BRI claim construction standard to patent claims that will not expire during the post-issuance proceedings. Under this standard, claim terms are given the broadest interpretation that the specification reasonably supports, irrespective of whether developments in the original prosecution of the patent&mdash;or evidence extrinsic to the patent record&mdash;might have directed a narrower interpretation. This is the same standard applied during original prosecution of patent claims at the USPTO. The USPTO originally justified this standard for post-issuance proceedings on the basis that these proceedings allow patent owners to amend their claims. However, critics argue that the BRI approach has led to a lack of predictability and unreasonably high patent invalidation rates, particularly when the USPTO has, in practice, allowed very few claim amendments.</p> <p>The claim construction standard differs for expired patent claims in post-issuance proceedings, in ITC proceedings, and in district court litigation. In those scenarios, claim terms are given their ordinary and customary meaning, as would be understood by a person having ordinary skill in the art in view of the entire intrinsic record and also relevant extrinsic evidence such as expert testimony. The claim construction principles set forth in the <i>Phillips </i>case and related decisions have tended to yield narrower claim interpretations that are more closely aligned with the disclosed invention and the patent prosecution file history evidence.</p> <p>The proposed rulemaking notes that minimizing differences between claim construction standards used in the USPTO and in the district courts and ITC could lead to greater uniformity and predictability in the scope of a granted patent. This is important, according to the USPTO, because about 86 percent of patents challenged in post-issuance proceedings were asserted in litigation. The USPTO notes that post-issuance proceedings under current claim construction standards can lead to patent claims being found unpatentable based on claim scope that the patent owner could not assert in a district court or ITC infringement proceeding.</p> <p>The proposed rules are a significant development that could potentially make certain patents more difficult to invalidate through post-issuance proceedings.</p> <p>For more information on the impacts of the proposed rulemaking, please contact Fitch Even partners <a href="https://www.fitcheven.com/?t=3&amp;A=2601&amp;format=xml&amp;p=5482">Timothy P. Maloney</a> or <a href="https://www.fitcheven.com/?t=3&amp;A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a>, authors of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts08 May 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=76328&format=xmlIP Alert: Supreme Court Ruling in <i>SAS</i> Causes Significant Changes to PTAB Practicehttp://full.fitcheven.com/?t=40&an=76257&format=xml<p>As previously <a href="https://www.fitcheven.com/?t=40&amp;an=75998&amp;anc=180&amp;format=xml&amp;p=5486">reported</a>, on April 24, the Supreme Court issued a decision in <i>SAS Institute Inc. v. Iancu</i> in which a 5&ndash;4 majority of the Court reversed the Federal Circuit and held that the Patent Trial and Appeal Board (PTAB) must decide the patentability of all claims challenged by a petitioner when it institutes an <i>inter partes </i>review. Accordingly, the Court struck down the PTAB&rsquo;s practice of &ldquo;partial institution,&rdquo; wherein the PTAB institutes trial and subsequently issues a final written decision determining the patentability of only a subset of claims challenged in the petition. The majority reasoned that, upon institution, the pertinent statute unambiguously requires the USPTO to determine the patentability of each claim challenged by the petitioner in a final written decision. The Court analyzed other related statutory provisions, finding that Congress intended the petitioner, rather than the USPTO, to determine which claims would be reviewed. Finding the statutory scheme unambiguous, the Court determined the USPTO&rsquo;s regulations allowing partial institution were not entitled to <i>Chevron </i>deference.</p> <p>The <i>SAS</i> decision raises a number of immediate issues for those currently engaged in <i>inter partes</i> review proceedings, which until the <i>SAS</i> decision have frequently involved partial institution decisions. On April 26, the PTAB issued &ldquo;<a href="/2E8FB4/assets/files/Documents/Guidance on the Impact of SAS on AIA Proceedings.pdf">Guidance on the Impact of SAS on AIA Trial Proceedings</a>,&rdquo; in which the PTAB addressed how it would handle currently pending trials involving partial institution decisions. In such cases, panels &ldquo;may&rdquo; issue an order supplementing the decision on institution to include all challenges raised in the petition. In addition, panels may grant the parties additional time for briefing, discovery, and oral argument to address challenges added to the proceeding, including extending the 12-month statutory deadline as needed.</p> <p>To provide further guidance to practitioners, the Chief Judge of the PTAB hosted a webinar on April 30 to address the impact of the <i>SAS</i> decision. The PTAB leadership explained that all challenged claims and, at least temporarily, all unpatentability grounds challenging the claims would now become part of an instituted trial, regardless of whether the individual grounds meet the minimum standard for instituting trial, i.e., &ldquo;a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.&rdquo; The decision to include all patentability challenges by the PTAB is interesting because the <i>SAS</i> decision does not hold that all grounds must be addressed in a final written decision. Often petitioners challenge the same claims according to multiple alternate grounds, and the PTAB has used its discretion in some cases to deny institution of such alternate grounds to simplify the issues for trial. By including all challenged claims and grounds in a trial, the number of issues to be addressed by the parties and resolved by the PTAB during trial, as well as by the Federal Circuit on any appeal of a final decision, will increase.</p> <p>The PTAB leadership also suggested that PTAB panels could exercise their discretion to not institute trial at all on a petition that contains relatively weak challenges, even though the petition meets the &ldquo;reasonable likelihood&rdquo; standard.&nbsp;For example, the PTAB may decline to institute trial when only 1 out of 20 challenged claims meets the institution standard, to preserve the resources of the PTAB and the parties.&nbsp;</p> <p><i>SAS Institute</i> will have a great impact on PTAB practice and beyond. For instance, estoppel will be a larger concern for petitioners. Previously, petitioners were not estopped from raising noninstituted grounds in another proceeding. Now, assuming trial is instituted, estoppel will apply to all grounds raised in a petition. This may counsel petitioners to consider filing a more focused petition with fewer challenged claims or fewer alternate invalidity grounds for the PTAB to consider. In addition, a panel may be less willing to institute trial on a petition that contains a plurality of weak challenges now that partial institution is no longer an option.</p> <p>For patent owners, it remains in their best interest to avoid institution of trial. When possible, a comprehensive preliminary response that shows the entire petition to be weak will be the best course. On the other hand, when faced with strong challenges and institution of trial is likely, addressing each claim and challenge in a preliminary response may unnecessarily give the petitioner and the PTAB a preview of the patent owner&rsquo;s arguments. Similarly, in cases where the challenges are strong, submitting an expert declaration with the preliminary response might be of less utility, particularly since fact disputes raised by testimonial evidence are resolved in favor of the petitioner in an institution decision.<span>&nbsp;&nbsp;&nbsp;&nbsp; </span></p> <p>In addition, stays of parallel litigation will likely increase. Courts have been more likely to decline staying a case when some claims came out of an institution decision unscathed. This will no longer happen, thus providing a court with more incentive to stay a lawsuit. This gives defendants yet another reason to challenge an asserted patent at the PTAB.<span>&nbsp;&nbsp;&nbsp; </span></p> <p>For more information on the <i>SAS</i> case, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2587&amp;format=xml&amp;p=5482">Paul B. Henkelmann</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert</b><b>&reg;</b></p>IP Alerts04 May 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=76257&format=xmlIP Alert: Section 315(b) Time-Bar Does Not Apply Absent "Right to Control"http://full.fitcheven.com/?t=40&an=76225&format=xml<p>In <i><a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1944.Opinion.4-18-2018.1.PDF">Wi-Fi One, LLC v. Broadcom Corp.</a></i>, the Federal Circuit ruled en banc that section 315(b) time-bar determinations made by the Patent Trial and Appeal Board (PTAB) in <i>inter partes</i> review (IPR) proceedings are appealable. As discussed in our earlier <a href="https://www.fitcheven.com/?t=40&amp;an=73077&amp;format=xml&amp;p=5486">alert</a> on that case, the en banc court remanded the case to a Federal Circuit panel to consider whether Broadcom&rsquo;s IPR petition was time-barred under 35 U.S.C. &sect; 315(b). On April 20, 2018, the panel affirmed the PTAB&rsquo;s holding that Broadcom&rsquo;s IPR petition was not time-barred, upholding the PTAB&rsquo;s &ldquo;right to control&rdquo; standard. Specifically, the court held that a third party will not be deemed to be in privity with a litigation defendant unless the third party had a right to control the litigation.</p> <p>The patents at issue were previously litigated in <i>Ericsson, Inc. v. D-Link Sys., Inc.</i> There the district court found infringement of three patents owned by the plaintiff, Ericsson. After the court entered judgment, and more than one year after D-Link was served, a third party, Broadcom, petitioned for IPR of all three patents. Broadcom was the manufacturer of some of the components of D-Link&rsquo;s products, but was not itself a defendant in the district court litigation.</p> <p>At the PTAB, the patent owner (now Wi-Fi One) argued that Broadcom was barred from the IPR filing under section 315(b). There was no question that the petition was filed more than one year after the complaint in the<i> Ericsson</i> case was served on D-Link, but the parties disputed whether Broadcom was in privity with the D-Link defendants. Under section 315(b), &ldquo;[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.&rdquo; Wi-Fi One argued that Broadcom should be barred because Broadcom was in privity with the defendants in the district court case.</p> <p>In the remanded decision, the Federal Circuit panel disagreed. Wi-Fi One argued that the PTAB had applied an overly rigid legal standard for determining privity between Broadcom and D-Link by requiring that Broadcom exercised control over the prior <i>Ericsson</i> litigation. Instead, Wi-Fi One claimed, Broadcom was in privity with D-Link by virtue of (1) an indemnity agreement between Broadcom and D-Link, and (2) an amicus curiae brief filed by Broadcom in the prior <i>Ericsson </i>litigation. The Federal Circuit panel disagreed and held that the &ldquo;right to control&rdquo; was indeed the correct standard. Neither the indemnity agreement nor the filing of the amicus curiae brief was sufficient to show that Broadcom had exercised control in the prior litigation. The Federal Circuit also considered confidential evidence submitted by Broadcom demonstrating the absence of control over the lawsuit.</p> <p>Wi-Fi One further argued that the PTAB had improperly denied its request for additional discovery that might have demonstrated privity between Broadcom and D-Link, and that the PTAB had failed to provide an adequate basis for its ruling. The Federal Circuit panel rebuffed these arguments, concluding that the PTAB&rsquo;s discovery order was not an abuse of discretion and that the PTAB&rsquo;s rulings were adequately supported.</p> <p>In a dissenting opinion, Judge Reyna argued that the legal standard for finding privity applied by the majority was improperly narrow. Specifically, Judge Reyna would have required the PTAB to have considered a broader range of factors to determine whether the parties were in privity, as enumerated by the courts in other contexts.</p> <p>This case is relevant for anyone planning to file an IPR petition where prior-served litigation involving the petitioned patent also involves a party in privity with the petitioner. Evidence proving that the petitioner had a right to control the prior litigation or would be bound by the prior litigation could lead to a time-bar where the petition is filed more than one year after the party in privity is served in the litigation.</p> <p>For more information on this decision, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2596&amp;format=xml&amp;p=5482">Thomas F. Lebens</a>, author of this alert.</p> <p><i>Fitch Even law clerk Evan Kline-Wedeen contributed to this alert.</i>&nbsp;</p> <b><br /> Fitch Even IP Alert<sup>&reg;</sup></b>&nbsp;IP Alerts03 May 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=76225&format=xmlChambers USA 2018 Recognizes Fitch Even and Partner Tim Maloneyhttp://full.fitcheven.com/?t=40&an=76217&format=xml<p>Fitch, Even, Tabin and Flannery LLP has been ranked as a leading intellectual property law firm in Illinois in the 2018 edition of<i> Chambers USA: America&rsquo;s Leading Lawyers for Business</i>, a prestigious research-based directory and one of the most widely cited referral sources for legal services in the U.S.</p> <p>In the listing, <i>Chambers</i> notes in part that the Fitch Even team is known for its &ldquo;strong reputation for work in the contentious and noncontentious spheres of patent, trademark and copyright law&rdquo; and the firm&rsquo;s &ldquo;substantial experience handling post-grant, reexamination and <i>inter partes</i> reviews at the USPTO.&rdquo; <i>Chambers</i> also quotes clients remarking that the team is<i> &quot;experienced, skilled, attentive and very capable,&quot; </i>as well as <i>&quot;knowledgeable, sensitive to concerns about budgets, has smart attorneys and makes an effort to learn about our business.&quot;</i></p> <p>In addition, partner <a href="http://www.fitcheven.com/?t=3&amp;A=2601&amp;format=xml&amp;p=5482">Timothy P. Maloney</a> was once again singled out by <i>Chambers</i> as a notable practitioner in the field of intellectual property law in Illinois. <i>Chambers</i> reports that clients observed that Tim <i>is an &quot;excellent&quot; </i>lawyer who is<i> &quot;very approachable, knowledgeable and proactive in defense. </i>Tim&rsquo;s practice entails all aspects of intellectual property enforcement and defense, with an emphasis on representing plaintiffs in patent litigation, often multi-party complex litigation. He is an established trial lawyer with a strong track record in numerous jury and bench trials. Tim has handled over 75 litigation-related patent post-issuance proceedings in the USPTO, consistently achieving favorable outcomes. He was recently ranked as the #3 best-performing attorney representing patent owners in IPR proceedings, based on analysis conducted by Patexia. Tim has also successfully argued several cases before the U.S. Court of Appeals for the Federal Circuit.</p> <p>Published annually by London-based Chambers &amp; Partners, <i><a href="http://www.chambersandpartners.com/USA">Chambers USA</a></i> determines its rankings through confidential, in-depth interviews with clients and outside attorneys as well as independent research and assessment of recent work done. Inclusion in the guide is based solely on the findings of the Chambers research team. Criteria used includes legal knowledge and experience, capability and effectiveness, strength and depth of the firm as a whole, professional conduct, client service, commercial astuteness, diligence, commitment, and other qualities most valued by clients.<br /> <br /> &nbsp;</p>Firm News03 May 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=76217&format=xml