Fitch Even News Feed Oct 2019 00:00:00 -0800firmwise Even Again Ranked Among Top Firms in IPR Practice; Partners Recognized as Top Counsel<p>Fitch Even was recently recognized among the Top 25 best-performing law firms overall representing clients in <i>inter partes</i> review (IPR) and the Top 15 most-active law firms representing patent owners in IPR in Patexia&rsquo;s 2019 IPR Intelligence Report. In addition, Fitch Even partner <a href=";A=2611&amp;format=xml&amp;p=5482">Nicholas T. Peters</a>&nbsp;was ranked among the Top 10 most-active attorneys representing patent owners in IPR proceedings, partner <a href=";A=2601&amp;format=xml&amp;p=5482">Timothy P. Maloney</a> was ranked among the Top 25 most active, and partner <a href=";A=2587&amp;format=xml&amp;p=5482">Paul B. Henkelmann</a> was ranked among the Top 100 most active. Tim was also ranked among the Top 50 best-performing attorneys overall representing petitioners or patent owners in IPR, and Nick was among the Top 35 most-active attorneys overall. In addition, Fitch Even represented the best-performing company in IPR overall.</p> <p>Using data from over 8,100 IPR challenges filed from July 2014 through June 2019, Patexia evaluated the activity and performance of more than 900 law firms and over 5,000 attorneys. More information about this annual report and its methodology can be found <a href="">here</a>.</p> <p>In Patexia&rsquo;s inaugural report 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 was also named a Top 10 best-performing law firm overall and a Top 20 most-active law firm representing patent owners in IPR in Patexia&rsquo;s 2018 IPR Intelligence Report. Nick Peters and Tim Maloney were also <a href=";an=87563&amp;anc=93&amp;format=xml&amp;p=5485">ranked highly</a> in that report.</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.&nbsp;<br /> &nbsp;<br /> &nbsp;</p>Firm News15 Oct 2019 00:00:00 -0800 Even Ranked Among Top Firms for IP Litigation in BTI Litigation Outlook 2020<p>Fitch, Even, Tabin &amp; Flannery has been named to the &ldquo;Honor Roll&rdquo; in IP Litigation in the recently released BTI Litigation Outlook 2020 report. Published annually by independent research firm BTI Consulting Group, the report&rsquo;s rankings are based solely on direct client feedback from over 350 in-depth interviews with top legal decision makers that include general counsel, litigation heads, and chief legal officers at large organizations with revenue of $1 billion or more.</p> <p>For more information on this report and BTI&rsquo;s <a href="">methodology</a>, please visit <a href="" target="_blank"></a></p>Firm News10 Oct 2019 00:00:00 -0800 Alert: Federal Circuit Holds Mechanical Engineering Patent Ineligible Under Section 101<p>The Federal Circuit and Supreme Court have frequently discussed the patent eligibility statute, 35 U.S.C. &sect; 101, as it applies to patents in the fields of computer science and medical diagnostics. On October 3, in <a href=""><i>American Axle &amp; Mfg., Inc. v. Neapco Holdings LLC</i></a>, the Federal Circuit seemingly broadened the scope of ineligible subject matter to patents in the mechanical engineering arts, and in so doing, created further uncertainty about what a patentee needs to do to meet the requirements of section 101. The court specifically addressed whether certain claims directed to a method of manufacturing a shaft assembly of a driveline system constituted patentable subject matter when the claims represented an application of a natural law of mechanical engineering.</p> <p>American Axle contended that Neapco infringed U.S. Patent No. 7,774,911. The asserted claims recited a method of manufacturing a shaft assembly having a hollow shaft member with a liner tuned to attenuate <i>at least two</i> types of vibrations encountered by the shaft during use in a vehicle (bending, shell, and torsion mode vibrations).</p> <p>The use of liners to attenuate vibration in a driveline shaft was known in the art. However, prior art systems used liners to dampen <i>only one</i> of the three types of vibration experienced by shafts, not at least two types of vibrations as claimed. The district court held the claims to be ineligible for patent protection, and American Axle appealed.</p> <p>On appeal, a majority of the assigned Federal Circuit panel applied the two-step test established by the Supreme Court for determining patentability under 35 U.S.C. &sect; 101. Specifically,&nbsp;the first step determines whether the claims at issue are directed to a patent-ineligible concept, which includes laws of nature, natural phenomena, or abstract ideas. If so, the second step determines whether the claims contain additional elements that &quot;transform the nature of the claim&quot; into a patent-eligible application&mdash;an inventive concept.</p> <p>With respect to step one, Neapco asserted that tuning the liner was merely the application of Hooke&rsquo;s law. Hooke&rsquo;s law is a natural law of physics that mathematically relates the mass and stiffness of an object to the frequency at which it vibrates. Neapco relied on testimony from the inventor and American Axle&rsquo;s expert that tuning the liner included altering the mass or stiffness of the liner.</p> <p>American Axle attempted to distinguish the claims from Hooke&rsquo;s law by explaining that the liners were very complex systems with a density and stiffness that changed throughout, based on the local vibrations experienced by the proximate portion of the shaft. The court ruled for Neapco, dismissing American Axle&rsquo;s argument because the distinction relied on was not recited in the claims. Accordingly, the court held that the claims were directed to a natural law rather than a specific method of implementing it.</p> <p>Turning to step two of the eligibility analysis, the court held that nothing in the claims qualified as an &ldquo;inventive concept&rdquo; sufficient to constitute patentable subject matter. American Axle argued that liners had never been tuned to damp two different modes of vibration simultaneously. However, the court again found that this amounted to applying Hooke&rsquo;s law through trial and error.</p> <p>In a sharply worded dissent, Judge Moore criticized the majority for effectively ignoring the second part of the Alice/Mayo two-part test. Judge Moore asserted that the majority had basically repeated its response to part one by simply stating that the claimed method was merely applying Hooke&rsquo;s law. Judge Moore further criticized the majority for finding not that the claims were directed to a specific natural law but to &ldquo;Hooke&rsquo;s law <i>and possibly other natural laws.</i>&rdquo; In contrast, Judge Moore found that the claims recited numerous elements constituting inventive concepts. She also criticized the procedural posture, commenting that the appeal was from a summary judgment finding. On summary judgment, overturning the invalidity finding only required a question of fact over whether or not the claims recited an inventive concept.</p> <p>The <i>American Axle</i> ruling appears to have added to the uncertainty about what constitutes patentable subject matter under 35 U.S.C. &sect; 101. One aspect that stands out is the court&rsquo;s focus on the absence of a specific method or mechanism of achieving the desired results in the claims: &ldquo;Most significantly, the claims do not instruct how the variables would need to be changed to produce the multiple frequencies required to achieve a dual-damping result, or to tune a liner to dampen bending mode vibrations.&rdquo; Patent applicants and litigants facing an invention that involves a law of mechanical engineering should consider whether there are claims that focus on specific structure for achieving the stated result.</p> <p>Fitch Even will monitor the <i>American Axle</i> case for any subsequent developments. In the meantime, please contact Fitch Even attorneys <a href=";A=2588&amp;format=xml&amp;p=5482">Mark W. Hetzler</a> or <a href=";A=9296&amp;format=xml&amp;p=5482">Donald R. Bunton</a> with any questions concerning this decision.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts09 Oct 2019 00:00:00 -0800 Alert: Federal Circuit Addresses Eligibility for CBM Review<p>On September 25, in <a href=""><i>SIPCO, LLC, v. Emerson Electric Co.</i></a>, the Federal Circuit acknowledged the difficulty in determining when a patent is directed to a &ldquo;technological invention&rdquo; under the statute providing for covered business method (CBM) review. In reversing the Patent Trial and Appeal Board (PTAB) decision in this case, the court provided guidance for evaluating CBM eligibility.</p> <p>The patent at issue, U.S. Patent No. 8,908,842, discloses a two-step communication system for communicating information from a low-power transceiver to a network of intermediate nodes and then from the intermediate nodes to a central location. Emerson filed a petition requesting CBM review of the &rsquo;842 patent on sections 101 and 103 grounds. The PTAB instituted review and ultimately found the claims ineligible under section 101 and obvious under section 103.</p> <p>SIPCO appealed, challenging the PTAB&rsquo;s determination that the &rsquo;842 patent was subject to CBM review. Specifically, SIPCO challenged the PTAB&rsquo;s analysis of the &ldquo;technological invention&rdquo; exception. Under 37 C.F.R. &sect; 42.301(b), a patent that would otherwise be subject to CBM review is properly excluded as disclosing a &ldquo;technological invention&rdquo; when (1) the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art, and (2) the patent solves a technical problem using a technical solution. Both prongs of this test must be met to avoid CBM eligibility.</p> <p>To conclude that the &rsquo;842 patent was CBM-eligible, the PTAB first found that the patent included dependent claims associating the disclosed communication scheme for use in an ATM and a vending machine. Second, the PTAB addressed the &ldquo;technological invention&rdquo; exception, finding that the &rsquo;842 patent did not solve a technical problem under step 2 of section 42.301(b). Specifically, the PTAB opined that the claimed two-step communication scheme recited &ldquo;no more than generic and known hardware elements and routine computer functions,&rdquo; and the problem being solved was &ldquo;automating service requests of vending machines and ATMs,&rdquo; which was a financial problem&mdash;not a technological one.</p> <p>Although the Federal Circuit agreed that the &rsquo;842 patent was directed to a financial product or service, meeting the threshold test for CBM eligibility, the court found that the PTAB erred in its analysis of the technological invention exception. Specifically, the court held that the PTAB had mischaracterized the technical problem and solution at issue, finding that the &rsquo;842 patent concerned the problem of &ldquo;how to extend the reach of an existing communication system from a central location to a remote, unconnected device while protecting against unwanted interference with the transmitted signals.&rdquo; In addition, the court found that the technical solution was &ldquo;the creation of a two-step communication system that communicates information through a low-power, i.e., limited transmission range, transceiver over a first, wireless step, that taps into the intermediate node&rsquo;s existing network connection to transport information to the central location.&rdquo;</p> <p>Interestingly, the court openly acknowledged the difficulties involved in determining what exactly qualifies as a &ldquo;technological invention&rdquo; under section 42.301(b). Citing its prior <i>Versata</i> case, the court held that &ldquo;neither the statute&rsquo;s punt to the USPTO nor the agency&rsquo;s lateral of the ball offer anything very useful in understanding the meaning of the term &lsquo;technological invention.&rsquo;&rdquo; Further, &ldquo;[t]he omission of any definition for the phrase &lsquo;technological invention&rsquo; underscores the importance of meaningful guidance from the patent office on &sect; 42.301(b).&rdquo; Because the PTAB had erred in finding the claims were eligible for CBM review, the court vacated the PTAB&rsquo;s unpatentability determinations and remanded for the PTAB to determine whether the patent likewise satisfied step 1 under section 42.301(b).</p> <p>This decision is relevant to any clients owning patents that claim financial or financially related aspects. Given the Federal Circuit&rsquo;s apparent frustration with the difficulty in determining what precisely qualifies as a &ldquo;technological invention,&rdquo; we can expect this area of law to continue to develop as more cases are heard by the PTAB and the Federal Circuit.</p> <p>For more information on this decision, please contact Fitch Even partner <a href=";A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a>, author of this alert.&nbsp;</p> <p><i>Fitch Even attorney </i><a href=";A=16703&amp;format=xml&amp;p=5482"><i>Evan Kline-Wedeen</i></a><i> contributed to this alert.</i>&nbsp;<br /> <b><br /> Fitch Even IP Alert<sup>&reg;</sup></b>&nbsp;</p>IP Alerts09 Oct 2019 00:00:00 -0800 Alert: Federal Circuit Says PTAB Too Strict in Refusing Certificate of Correction<p>On October 1, in <i><a href="">Honeywell Int&rsquo;l Inc. v. Arkema Inc.</a></i>, the Federal Circuit provided significant guidance for parties seeking a Certificate of Correction in Patent Trial and Appeal Board (PTAB) proceedings. The court summarized the steps for seeking a Certificate of Correction in a post-grant review (PGR) proceeding and identified the appropriate standard of review that the PTAB must apply when considering motions for leave to seek a Certificate of Correction.</p> <p>A Certificate of Correction is a document issued to correct certain types of errors in a patent. Sometimes these errors are of a typographical or clerical nature, but in other cases the errors can have a substantive effect on the patent. Under 35 U.S.C. &sect; 255, patentees may petition the USPTO Director to issue a Certificate of Correction to correct an issued patent. The patentee must show that the mistake was of &ldquo;minor character&rdquo; and &ldquo;occurred in good faith.&rdquo; This statute applies generally to all patents and is not specific to proceedings in the PTAB.</p> <p>Honeywell sought to correct a mistake in the chain of priority listed on the face of its patent after the PTAB instituted two PGR proceedings. Honeywell&rsquo;s proposed correction was to include additional patent applications in the priority chain to confer a different priority benefit and therefore render the patent ineligible for post-grant review. Arkema opposed, arguing that allowing this correction would be prejudicial. After holding two telephone conferences, the PTAB refused to authorize Honeywell to file a motion for leave. The PTAB explained that Honeywell failed to show that the requirements of section 255 had been met.</p> <p>On appeal, the Federal Circuit held that the PTAB abused its discretion by requiring that Honeywell show that the requirements of section 255 have been met before authorizing Honeywell to file a motion for leave. The court noted that section 255 authorizes the Director, not the PTAB, to determine whether a mistake in an issued patent is of &ldquo;minor character&rdquo; or &ldquo;occurred in good faith.&rdquo; Significantly, the PTAB itself has no authority to determine whether the patentee is or is not entitled to a Certificate of Correction. That authority is delegated by statute to the Director, who has delegated this authority to the Office of Data Management.</p> <p>The court held that when considering such a motion the PTAB must determine &ldquo;whether there is sufficient basis supporting Patent Owner&rsquo;s position that the mistake may be correctable.&rdquo; The USPTO has previously allowed patentees to correct priority errors via a Certificate of Correction, so the court held that it was an error for the PTAB to have refused to grant Honeywell&rsquo;s motion. The court therefore vacated the PTAB&rsquo;s decision and remanded, instructing the PTAB to authorize Honeywell to file a motion for leave.</p> <p>The court specified the three procedural steps that an applicant must take under these circumstances: (1) Seek authorization from the PTAB to file a motion for leave, as is required for all motions. (2) If authorization is granted, file a motion for leave with the PTAB so the patentee can seek a Certificate of Correction. (3) If motion is granted, petition the Director for a Certificate of Correction.</p> <p>This decision makes it clear that the Director, not the PTAB, decides the merits of a patentee&rsquo;s petition for a Certificate of Correction during a post-grant review proceeding.</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>.</p> <p><i>Fitch Even law clerk Jacqueline L. Thompson contributed to this alert.<br /> <br /> </i><b>Fitch Even IP Alert<sup>&reg; </sup></b></p>IP Alerts08 Oct 2019 00:00:00 -0800 Prosecution Options at the USPTO: Tried-and-True or New to You<p>Please join Fitch Even for a free webinar, &ldquo;<a href="">Patent Prosecution Options at the USPTO: Tried-and-True or New to You</a>,&rdquo; on October 23, 2019, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.</p> <p>The USPTO is constantly striving to reduce average pendency and achieve compact prosecution office-wide, but that&rsquo;s of little consequence if your patent application is bogged down in prosecution with the examiner&mdash;or if business reasons dictate a patent be obtained more quickly than usual. Fortunately, the USPTO offers several programs and initiatives to applicants designed to advance the examination process.</p> <p>During this webinar, our presenters will provide background information and helpful advice on these prosecution tactics and publication strategies:</p> <ul> <li>Track One prioritized examination</li> <li>Petitions to make special and accelerated examination</li> <li>First Action Interview Pilot Program</li> <li>Patent Prosecution Highway (PPH)</li> <li>Early publication and non-publication</li> <li>After Final Consideration Pilot 2.0 (AFCP 2.0)</li> <li>Pre-Appeal Brief Conference Pilot Program</li> </ul> <p>Our speakers will be Fitch Even attorneys <a href=";A=8389&amp;format=xml&amp;p=5482">Alan E. Schiavelli</a> and <a href=";A=8536&amp;format=xml&amp;p=5482">George N. Dandalides</a>.</p> <p>Al has strategically prepared and prosecuted patent applications for clients in the U.S., Japan, and Europe for over 30 years, also providing validity and infringement opinions, trademark availability studies and prosecution, and IP infringement litigation support.</p> <p>George focuses his IP law practice on domestic and international patent preparation and prosecution, leveraging his background in physics and computer technology to assist clients in a variety of high-tech industries including telecommunications, electronics, and computer hardware, software, and architecture.</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 registration is required.</p> <p>To reserve your place, please <a href="">REGISTER HERE</a>.&nbsp;</p>Upcoming Webinars08 Oct 2019 00:00:00 -0800 Alert: Significant Changes to Canadian Patent Law Coming Soon<p>On October 30, 2019, Canada will be implementing significant changes to its patent law that will affect patent prosecution. Some of the new rules will only apply to new applications filed after the October 30 date and not to currently pending applications.</p> <p>Some of the more notable changes include these:</p> <ul> <li>A new &ldquo;unintentional&rdquo; standard applied to PCT national phase applications entering Canada more than 30 months from the earliest priority date</li> <li>A new &ldquo;due care&rdquo; standard for reinstatement of certain types of abandoned applications and expired patents</li> <li>Restoration of late priority claims in certain circumstances</li> <li>Filing of non-PCT applications in any language to obtain a filing date</li> <li>Reduced time periods for certain actions during prosecution.</li> </ul> <p><b>The standard for PCT national phase entry after 30 months will change</b>. Currently, Canada allows an applicant to enter the national phase in a PCT application at any time up to 42 months from the earlier priority date. The new rules, however, will apply an &ldquo;unintentional&rdquo; standard to PCT applicants seeking to enter the national phase after 30 months from the earlier priority date. Applicant will be required to submit a statement that the failure to enter the national phase by the 30-month due date was &ldquo;unintentional.&rdquo; This rule change will only apply to PCT applications filed on or after October 30, 2019. For PCT applications that are filed and pending prior to October 30, 2019, the old rule will continue to apply. While the effect of this rule change might not be evident right away, applicants should reconsider any approach that routinely delays national phase decisions past the 30-month date.</p> <p><b>The standard for reinstatement of certain types of abandoned applications and expired patents will also change</b>. Currently, an applicant may automatically reinstate an application within one year of abandonment upon payment of a fee. Some applicants have used this one-year period, in effect, as an automatic extension during which to make decisions. Under the new rules, an applicant must make a showing of &ldquo;due care&rdquo; for certain types of reinstatements. These types of reinstatements include applications abandoned due to failure to pay a maintenance fee, patents expired due to failure to pay a maintenance fee, and applications abandoned due to failure to request examination. In addition, intervening rights may apply to third parties during periods of abandonment or lapse such that actions taken in good faith during those periods may not constitute infringement. In light of this rule change, applicants should reconsider any approach that relies on automatic reinstatement in these circumstances.</p> <p><b>The new rules allow for the restoration of priority claims in certain circumstances</b>. The period for claiming priority to an earlier application will remain 12 months. For non-PCT applications, however, an applicant will have an additional two-month period (after the expiration of 12 months) to restore the priority claim. The applicant must state that the failure to satisfy the 12-month period was &ldquo;unintentional.&rdquo; For PCT national phase applications, the applicant may be able to restore a priority claim if restoration is requested within one month of national phase entry.</p> <p><b>The new rules change the requirements for filing a non-PCT application</b>. Currently, an application must be filed in English or French in order to receive a filing date. Going forward, the description of an application may be filed in <i>any</i> language, and a translation may then be submitted at a later date. For PCT national phase applications, however, applicants will still need to provide a translation at the time of entry.</p> <p><b>The new rules also shorten some of the time periods during prosecution</b>. For example, the time for requesting examination will be reduced from five years to four years after filing (for applications filed after October 30, 2019), the time to respond to an Office Action will be reduced from six months to four months, and the due date for payment of the final fee will be reduced from six months to four months from the Notice of Allowance. These changes may result in more-compact prosecution.</p> <p>Fitch Even does not itself have Canadian offices, and any actions involving Canadian patent practice should be undertaken in conjunction with a Canadian attorney. We believe, though, that the general guidelines above will be of interest to our patent prosecution clients who intend to file counterpart applications in Canada.</p> <p>For more information, please contact Fitch Even partner <a href=";A=2593&amp;format=xml&amp;p=5482">Rudy I. Kratz</a>, the head of Fitch Even&rsquo;s international practice group and author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert</b><b><sup>&reg;</sup></b></p>IP Alerts03 Oct 2019 00:00:00 -0800 Alert: USPTO Extends After Final Consideration Pilot Program 2.0<p>This week the U.S. Patent and Trademark Office announced that the After Final Consideration Pilot Program 2.0 (AFCP 2.0) has been extended to September 30, 2020. The program has been part of the USPTO&rsquo;s ongoing efforts toward &ldquo;compact prosecution and increased collaboration between examiners and stakeholders.&rdquo;</p> <p>AFCP 2.0 was first launched in May 2013 and was originally scheduled to run through September 30, 2013. The program has been extended several times since.</p> <p>Any request to consider a response after final rejection under AFCP 2.0 must be filed on or before September 30, 2020. For more information, please visit the <a href="">AFCP 2.0 page</a> on the USPTO website.</p> <p><b><br /> Fitch Even IP Alert</b><b><sup>&reg;</sup></b></p>IP Alerts27 Sep 2019 00:00:00 -0800 Even Welcomes Attorney Caroline Schneider to Chicago Office<p>Fitch, Even, Tabin &amp; Flannery is pleased to announce that <a href=";A=19216&amp;format=xml&amp;p=5482">Caroline A. Schneider</a> has joined the firm&rsquo;s Chicago office as an associate. A registered patent attorney, Carrie&rsquo;s practice focus is on U.S. and international patent preparation and prosecution, assisting clients in the chemical, electrochemical, information technology, automotive, and food science industries in the development and protection of their intellectual property rights.</p> <p>After earning her J.D. from Notre Dame Law School, Carrie worked as a patent attorney with an IP law boutique based in Troy, Michigan, for nearly four years. While attending law school, she served as a judicial extern for the Honorable James G. Carr of the U.S. District Court for the Northern District of Ohio. Carrie holds both a B.A. in Chemistry and a B.A. in Philosophy from the University of Toledo.</p> <p>We are happy to welcome Carrie to Fitch Even!</p>Firm News27 Sep 2019 00:00:00 -0800 Alert: IPR Not Instituted Where Examiner Considered Same Prior Art During Patent Prosecution<p><a href="/2E8FB4/assets/files/Documents/Aquestive Therapeutics, Inc. v. Neurelis, Inc..pdf"><i>Aquestive Therapeutics</i><i>, Inc. v. Neurelis, Inc.</i></a>, a case decided last month, highlights the risk that the Patent Trial and Appeal Board (PTAB) may decide against instituting an <i>inter partes</i> review (IPR) when the petitioner relies on prior art extensively considered during the original patent prosecution.</p> <p>Aquestive Therapeutics petitioned for IPR against claims 1&ndash;36 in U.S. Patent No. 9,763,876 on the basis the claims would have been obvious over a combination of a U.S. patent (Sonne) and a U.S. patent publication (Meezan).&nbsp;Aquestive also separately filed two other petitions for IPR asserting other grounds of invalidity against the &rsquo;876 patent. The &rsquo;876 patent relates to nasally administered pharmaceutical solutions.</p> <p>Neurelis responded by arguing the PTAB should deny institution under 35 U.S.C. 325(d) because Aquestive failed to present new grounds of invalidity substantively different from those already considered during the original patent prosecution.&nbsp;Neurelis argued that both Sonne and Meezan were considered at length during the original patent prosecution and that the <i>Becton Dickinson</i> factors favored denying institution of IPR.</p> <p>In deciding whether to exercise its discretion under section 325(d), the PTAB considers the non-exhaustive <i>Becton Dickinson</i> factors (a)&ndash;(f):</p> <p style="margin-left: 40px;">(a) the similarities and material differences between the asserted art and the prior art involved during examination;</p> <p style="margin-left: 40px;">(b) the cumulative nature of the asserted art and the prior art evaluated during examination;</p> <p style="margin-left: 40px;">(c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection;</p> <p style="margin-left: 40px;">(d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art;</p> <p style="margin-left: 40px;">(e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and</p> <p style="margin-left: 40px;">(f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.</p> <p>According to the PTAB&rsquo;s analysis of the extensive original patent prosecution, Sonne and Meezan were evaluated in depth and were the basis of prior art rejections. The PTAB did acknowledge that an aspect of Sonne was mistakenly characterized by Neurelis during original patent prosecution and that Aquestive provided some new evidence (an evidentiary declaration) and hypothetical compounds based on an example in Sonne.&nbsp;However, the PTAB pointed out that the example in Sonne was identified and relied upon by the examiner during the original prosecution, which prompted the PTAB to conclude it &ldquo;does not warrant the Board retreading the same worn path the Examiner and Applicant travelled during the extensive prosecution history in this patent family.&rdquo;</p> <p>Accordingly, the PTAB exercised its discretion and denied institution of trial.</p> <p>Petitioners should be aware a petition for IPR may well be denied institution when it revisits the same prior art considered in detail by the examiner during original patent prosecution. When faced with such a petition, patent owners are well advised to demonstrate to the PTAB in a preliminary response the similarity of the petition&rsquo;s challenge to the art and arguments considered during prosecution.</p> <p>If you have questions regarding this decision, please contact Fitch Even partner <a href=";A=2568&amp;format=xml&amp;p=5482">Kendrew H. Colton</a>, author of this alert.</p> <p><b><br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts20 Sep 2019 00:00:00 -0800