Fitch Even News Feedhttp://full.fitcheven.com/?t=39&format=xml&stylesheet=rss&directive=0&records=20en-us20 Jan 2022 00:00:00 -0800firmwisehttp://blogs.law.harvard.edu/tech/rssFitch Even Partner Karl Fink to Copresent AIPLA Webinar on IP Damageshttp://full.fitcheven.com/?t=40&an=120250&format=xml<p>Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2581&amp;format=xml&amp;p=5482">Karl R. Fink</a> will copresent the AIPLA CLE webinar &ldquo;Damages 2021 Year-in-Review: Lessons and Litigation Strategies&rdquo; on February 15.</p> <p>During this webinar, the panelists will share their insights on several of 2021&rsquo;s most interesting and important IP damages cases, focusing on key takeaways from these cases. In addition to Karl, the other featured panelist will be Christopher Schulte, Managing Director of the IP Practice at Ankura Consulting Group, with Eric Faragi of Baker Botts LLP as moderator.</p> <p>CLE credit will be available for multiple states. For more information and to register, please visit the <a href="https://www.aipla.org/webinars">AIPLA website</a>.</p>Professional Activities19 Jan 2022 00:00:00 -0800http://full.fitcheven.com/?t=40&an=120250&format=xmlIP Alert: Trademark Modernization Act Provides Cancellation of Unused Markshttp://full.fitcheven.com/?t=40&an=120228&format=xml<p>The Trademark Modernization Act (TMA) came into force December 18, 2021. Key provisions of the TMA enlarge options for cancelling a trademark registration in whole or in part by targeting nonuse of the registered mark for some or all specified goods or services. These new options appear in the form of USPTO proceedings to expunge or reexamine issued registrations as well as a new ground for seeking cancellation based on nonuse. These new proceedings also supplement an existing USPTO audit program, which trims goods and services during maintenance, limiting the registration to only those justified by actual trademark use.</p> <p>While this article focuses only on aspects of the TMA affecting practice within the USPTO, the TMA also impacts trademark litigation practice by standardizing the burdens of proof across the circuits when trademark owners seek an injunction. Under the TMA, after establishing a likelihood of success at a preliminary stage or proving infringement to the court during a later stage, the plaintiff is entitled to a rebuttable presumption of irreparable harm in seeking an injunction, which shifts the burden to the defendant.</p> <p><i><u>Ex Parte</u></i><u> Expungement and Reexamination Proceedings</u></p> <p>The TMA introduces new avenues for both third parties and the USPTO to contest the validity of a U.S. registration by requiring the registrant to prove use of the registered mark in U.S. commerce for identified goods or services outside of established statutory maintenance periods. The proceedings can challenge the registration as a whole, or in part for certain of the goods or services associated with the -mark. For third parties, these TMA proceedings offer a viable alternative to a cancellation proceeding against, for example, a registration cited during examination of the third party&rsquo;s application&mdash;saving the time, uncertainty, and expense of cancellation proceedings. Advantageously, the new proceedings will be recognized as a basis for suspending examination of the third party&rsquo;s application until the outcome of the proceeding is final.</p> <p>Filing a petition for <i>ex parte</i> expungement or, alternatively, a petition for reexamination can lead to the full or partial cancellation of a registration when prima facie evidence shows that the registered mark has not been used in commerce for one or more goods or services specified in the registration. The USPTO can also bring either proceeding on its own initiative. Unless the registrant submits evidence of timely use or excusable nonuse for all disputed specified goods or services, each good or service without adequate proof of use is subject to deletion.</p> <p><i>Ex parte</i> expungement and reexamination proceedings are used to address two different factual issues. Expungement is based on an allegation that a registered mark has never been used in commerce on or in connection with some or all goods or services specified in the registration. In contrast, reexamination is based on an allegation that the registered mark was not used in commerce on or in connection with specified goods or services by one of the following: the filing date of the application; the filing date of an amendment to allege use; or before the deadline for filing a statement of use.</p> <p>Along with the petitioner&rsquo;s contact information and a payment of $400 official fee for each International Class subject to the requested inquiry, the third-party petitioner alleges one of the two authorized bases for the proceeding, submits evidence of nonuse, and provides a declaration detailing the reasonable investigation conducted in obtaining the prima facie evidence of nonuse. The petitioner need not allege any standing or damages in requesting an inquiry, and the petitioner may be acting on behalf of another undisclosed entity. Foreign entities must be represented by U.S. legal counsel. All submissions are made via the USPTO&rsquo;s website and thereafter appear in the public record of the disputed registration.</p> <p>The key to an effective expungement or reexamination proceeding relies on submitting sufficient evidence to establish a prima facie case with the petition. While the exact kinds of evidence needed vary by circumstances, examples of evidence sources include trademark records from the USPTO or state registries, the registrant&rsquo;s websites or social media, inquiries to registrant about product availability, records of administrative proceedings related to products, and other sources. The USPTO will correspond with the third-party and provide 30 days to complete certain deficiencies in the petition; however, any additional submissions of evidence from the petitioner will be rejected.</p> <p>Upon the USPTO&rsquo;s determination that a prima facie nonuse case exists, the third party has no further involvement in the proceeding. The USPTO issues an Office Action requesting that the registrant respond by providing evidence and other information to rebut the prima facie case of nonuse. The registrant then has a three-month due date for responding, extendible by one month on payment of an official fee. The registrant&rsquo;s response should consist of a declaration with appropriate evidentiary proof of the mark&rsquo;s use for each good or service at issue or, alternatively, excusable nonuse. The registrant may also choose to delete some or all the goods or services at issue.</p> <p>It is important to note that the TMA provides limited windows of time for either third parties or the USPTO to file an <i>ex parte</i> expungement or reexamination proceeding. The window for filing an expungement proceeding opens three years after issuance of a registration and closes on the tenth anniversary of issuance. The TMA also provides an introductory period ending December 27, 2023 during which an expungement proceeding may be filed against any registration without being limited to the tenth anniversary of issuance. The window for initiating a reexamination proceeding opens on the issuance of a registration and closes on the fifth anniversary of issuance.</p> <p>An expungement or reexamination may be brought only once against specific goods or services in a registration. If another proceeding is contemporaneously filed against a registration, the USPTO may consolidate the separate petitions into a single proceeding.</p> <p><u>New Grounds for Cancellation</u></p> <p>In addition to the new proceedings within the USPTO, the TMA adds a new ground for seeking cancellation against registered marks in adversarial proceedings. The petitioner for cancellation may now allege that the registered mark has never been used in U.S. commerce for one or more goods or services specified in the registration. This new ground may not be brought until at least three years after a registration issues. As an adversarial proceeding, the parties are entitled to discovery tools, such as document production and depositions, to obtain evidence relevant to the nonuse cause of action.</p> <p>If the registration results from international treaty provisions under Section 44(e) or Section 66, the registrant may demonstrate that any nonuse of the mark has occurred because of &ldquo;special circumstances that excuse such nonuse.&rdquo; Under established excusable nonuse practice the special circumstances need to be beyond the control of the registrant, such as a trade embargo. The treaty provisions underlying Section 44(e) and Section 66 mandate the different treatment for excusable nonuse.</p> <p>Trademark owners and applicants should be aware of these new proceedings, both as a means of challenging prior trademarks and as a potential risk of non-use of a registered mark that has not been used for all the goods or services registered for the mark.</p> <p>For more information on the TMA, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2600&amp;format=xml&amp;p=5482">John E. Lyhus</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts18 Jan 2022 00:00:00 -0800http://full.fitcheven.com/?t=40&an=120228&format=xmlIP Alert: Indefiniteness Does Not Necessarily End PTAB's Patentability Inquiryhttp://full.fitcheven.com/?t=40&an=120193&format=xml<p>On December 28, in <a href="https://cafc.uscourts.gov/opinions-orders/20-1828.OPINION.12-28-2021_1885998.pdf"><i>Intel Corp. v. Qualcomm Inc.</i></a>, the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) may not decline to consider the patentability of a claim challenged in an <i>inter partes </i>review (IPR) petition simply because it contains a potentially indefinite claim term. Despite lacking the authority to invalidate claims based on indefiniteness, the PTAB must make its own definiteness determinations and further must make a patentability determination on each challenged claim unless indefiniteness of a claim term renders such a determination impossible.</p> <p>Intel challenged every claim of the &rsquo;949 patent owned by Qualcomm in three IPRs. The PTAB consolidated the cases and issued a final written decision holding the challenged claims unpatentable, except for claims 1&ndash;9, 12, 16, and 17.</p> <p>The Federal Circuit vacated the PTAB&rsquo;s decision as to the upheld claims for two reasons. First, the Federal Circuit vacated the PTAB&rsquo;s decision regarding claims 1&ndash;9 and 12 because it found that the PTAB failed to adequately construe the phrase &ldquo;hardware buffer.&rdquo; In the final written decision, the PTAB agreed with Intel that &ldquo;hardware buffer&rdquo; meant not a temporary buffer. The PTAB concluded the asserted prior art did not disclose a non-temporary buffer and therefore declined to find those claims unpatentable.</p> <p>The Federal Circuit expressed dissatisfaction with the PTAB&rsquo;s purely negative claim construction, finding the PTAB&rsquo;s construction did not adequately articulate what the inventors actually invented. The Federal Circuit stated that a more substance-focused analysis was needed. While there is no per se rule against a negative construction, the court posited that further substantive analysis would likely support an affirmative construction.</p> <p>Second, the Federal Circuit vacated the PTAB&rsquo;s decision regarding claims 16 and 17, which included means-plus function terms, because the PTAB failed to conduct its own determination whether the specification disclosed sufficient corresponding structure to support those terms, and further failed to address whether the patentability challenges could be resolved despite any potential indefiniteness.</p> <p>In the institution decision, the PTAB suggested the &rsquo;949 patent lacked sufficient structure to support the means-plus function terms of claims 16 and 17. In subsequent briefing, Intel agreed, and the PTAB found that this admission meant that Intel, as the petitioner, failed to meet its burden of demonstrating the unpatentability of those claims based on the asserted art. The Federal Circuit held that the PTAB must make its own determination whether there is sufficient structure in the specification to support the means-plus-function limitations, and whether the absence of that structure precludes resolution of Intel&rsquo;s prior art challenges.</p> <p>The Federal Circuit reasoned that the PTAB, under 35 U.S.C. &sect; 318, is obligated to issue a final written decision with respect to patentability of a claim on the presented prior art grounds. However, this obligation does not mean the PTAB must reach a patentability determination if the determination is rendered impossible because of indefiniteness. Notably, the Federal Circuit reiterated that the statutory estoppel provisions of 35 U.S.C. &sect;&nbsp;315(e) do not apply if the claims are indefinite because the problem was created by the patentee, not the challenger.</p> <p>The Federal Circuit further explained that it is not always impossible to adjudicate a prior art challenge just because one limitation of a claim is indefinite. For example, the asserted art may fail to teach a different limitation of the challenged claim. The Federal Circuit explained that &ldquo;the indefiniteness of a limitation .&nbsp;.&nbsp;. precludes a patentability determination only when the indefiniteness renders it logically impossible for the Board to reach such a decision.&rdquo;</p> <p>Here, the PTAB did not make its own determination on whether the specification identified sufficient corresponding structure to the means-plus-function terms, and therefore the PTAB failed to consider whether a patentability determination was impossible. In other words, the PTAB must determine whether it can resolve the prior art challenge despite any indefiniteness.</p> <p>This decision is notable because the PTAB now may not decline to address the patentability of a challenged claim merely because of the indefiniteness of a claim limitation. This obligation to address patentability unless logically impossible is an issue that practitioners should consider. Petitioners should be aware that they can still receive an adverse decision finding the challenged claims not unpatentable, even if the PTAB cannot ascertain the scope of a claim term. Patent owners should be aware that it may be critical to argue claim limitations other than a potentially indefinite limitation, because they can still overcome a prior art challenge despite the potentially indefinite limitation.</p> <p>For more information on this topic, 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>.</p> <p>Fitch Even associate <a href="https://www.fitcheven.com/?t=3&amp;A=23736&amp;format=xml&amp;p=5482">Prestin Van Mieghem</a> contributed to this alert.</p> <p><b><br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts13 Jan 2022 00:00:00 -0800http://full.fitcheven.com/?t=40&an=120193&format=xmlIP Alert: Expert Testimony May Establish Written Description Support for Negative Claim Limitationhttp://full.fitcheven.com/?t=40&an=120195&format=xml<p>On January 3, in <i><a href="https://cafc.uscourts.gov/opinions-orders/21-1070.OPINION.1-3-2022_1887614.pdf">Novartis Pharmaceuticals Corporation v. Accord Healthcare, Inc.</a></i>, the Federal Circuit found written description support for a negative claim limitation, even though the negative claim limitation did not have literal support in the specification. The court found that expert testimony established that a person having ordinary skill in the art (PHOSITA) would understand the specification to disclose the negative claim limitation.</p> <p>Novartis&rsquo; patent claimed methods for treating relapsing remitting multiple sclerosis (RRMS) by administering fingolimod at a daily dose of 0.5 mg. The method claims included a negative limitation that administering the fingolimod at the daily dose of 0.5 mg was performed &ldquo;absent an immediately preceding loading dose regimen.&rdquo; A loading dose is a higher than daily dose, usually given as a first dose. The negative limitation was added during prosecution to overcome a prior art rejection.</p> <p>Novartis sued Accord Healthcare and the case went to a bench trial. The district court found that an Abbreviated New Drug Application (ANDA) filed by HEC Pharm Co. and associated with Accord Healthcare, Inc., infringed the claims of the Novartis patent. The district court also found that the Novartis patent was not proved invalid for insufficient written description of the &ldquo;absent an immediately preceding loading dose regimen&rdquo; claim limitation.</p> <p>On appeal of the written description issue, the Federal Circuit affirmed. The majority of the Federal Circuit panel noted that the written description requirement &ldquo;may take any form, so long as a [PHOSITA] would read the disclosure as describing the claimed invention.&rdquo; The Novartis patent describes giving patients a daily dose of 0.5 mg and that patients initially receive treatment for 2 to 6 months. The majority of the Federal Circuit panel agreed with expert testimony indicating that a PHOSITA would understand that if the treatment required a loading dose, the patent would have indicated as such. The majority also agreed with expert testimony that the use of the term &ldquo;initially&rdquo; in the patent illustrates that the patent is referencing Day 1 of the treatment in relation to the daily dose of 0.5 mg. Thus, the majority agreed with the district court that the &ldquo;absence of an immediately preceding loading dose from the specification . . . would tell a [PHOSITA] that loading doses are excluded from the invention.&rdquo;</p> <p>Chief Judge Moore wrote a stinging dissent that argued &ldquo;the majority dramatically expands a patentee&rsquo;s ability to add . . . negative claim limitations that have zero support in the written description.&rdquo; The dissent emphasized that the Federal Circuit has previously held that &ldquo;[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation, such as by listing the disadvantages of some embodiment.&rdquo; The dissent asserts that the Novartis patent fails this test because the Novartis patent has no literal disclosure in the specification of not using a loading dose nor does the patent discuss advantages or disadvantages of using a loading dose. According to the dissent, the silence of the Novartis patent regarding the loading dose is unable to be overcome by expert testimony.</p> <p>Patent practitioners may find this decision useful for rebutting a written description challenge to a negative claim limitation during litigation or prosecution because the decision emphasizes the relevance of expert testimony to support the understanding of a PHOSITA. The decision also underscores that a lack of literal support for a negative claim limitation may not be fatal from a written description perspective.</p> <p>For more information on this holding, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2622&amp;format=xml&amp;p=5482">Jonathan H. Urbanek</a> or associate <a href="https://www.fitcheven.com/?t=3&amp;A=23735&amp;format=xml&amp;p=5482">Irfan Hassam-Malani</a>, authors of this alert.<br /> <br /> <br /> <b>Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts13 Jan 2022 00:00:00 -0800http://full.fitcheven.com/?t=40&an=120195&format=xmlFitch Even Ranked Among Top Firms in CAFC Intelligence Report; Partners Recognized as Top Performershttp://full.fitcheven.com/?t=40&an=119798&format=xml<p>Fitch Even was recently recognized by Patexia&rsquo;s 2021 CAFC Intelligence Report as being among the top 10 best-performing law firms representing appellants and the Top 100 most-active law firms overall before the U.S. Court of Appeals for the Federal Circuit (Federal Circuit), which specializes in hearing patent appeals. In the report, Fitch Even partners <a href="https://www.fitcheven.com/?t=3&amp;A=2601&amp;format=xml&amp;p=5482">Tim Maloney</a>, <a href="https://www.fitcheven.com/?t=3&amp;A=2598&amp;format=xml&amp;p=5482">Nikki Little</a>, and <a href="https://www.fitcheven.com/?t=3&amp;A=2585&amp;format=xml&amp;p=5482">Dave Gosse</a> were ranked among the top 25 best-performing attorneys representing appellants and partner <a href="https://www.fitcheven.com/?t=3&amp;A=2603&amp;format=xml&amp;p=5482">Joe Marinelli</a> was ranked among the top 50 best-performing attorneys representing appellants at the Federal Circuit.</p> <p>Using data from over 4,800 Federal Circuit appeals filed from January 2016 through December 2020, Patexia evaluated the performance of more than 700 law firms and over 3,000 attorneys. More information about the report and its methodology can be found <a href="https://www.patexia.com/pressrelease/view/id/43">here</a>.</p> <p>Fitch Even has represented both appellants and appellees before the Federal Circuit and has obtained key decisions that have helped shape intellectual property law. The recognition of our experience and strong track record on behalf of our clients reflects the contributions of the firm&rsquo;s entire litigation practice group.</p> <p style="text-align: center;"><img src="http://full.fitcheven.com/2E8FB4/assets/images/Patexia Badges/top 10.png" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="150" height="150" />&nbsp; &nbsp;<img src="http://full.fitcheven.com/2E8FB4/assets/images/Patexia Badges/top 100.png" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="150" height="150" /></p>Firm News03 Dec 2021 00:00:00 -0800http://full.fitcheven.com/?t=40&an=119798&format=xmlFitch Even Partner Dave Gosse to Copresent Strafford Webinar on Expectation of Successhttp://full.fitcheven.com/?t=40&an=119692&format=xml<p>Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a> will copresent a Strafford Publications&rsquo; CLE webinar &ldquo;<a href="https://www.straffordpub.com/products/patents-and-the-expectation-of-success-doctrine-2022-01-13">Patents and the Expectation of Success Doctrine</a>&rdquo; on January 13 from 12 noon to 1:30 p.m. CST.</p> <p>During this webinar, the panelists will provide patent counsel with guidance on the reasonable expectation of success doctrine. In particular, the panel will examine the degree of predictability required, and the tension between expectation of success and enablement. The panel will discuss recent cases and will offer best practices for patent drafting and patent prosecution.</p> <p>CLE credit will be available for multiple states. For more information and to register, please visit the Strafford <a href="https://www.straffordpub.com/products/patents-and-the-expectation-of-success-doctrine-2022-01-13">website</a>.</p>Professional Activities22 Nov 2021 00:00:00 -0800http://full.fitcheven.com/?t=40&an=119692&format=xmlFitch Even Managing Partner Mark Hetzler Quoted in ALA's <i>Legal Management</i> Magazinehttp://full.fitcheven.com/?t=40&an=119693&format=xml<p>Fitch Even managing partner <a href="https://www.fitcheven.com/?t=3&amp;A=2588&amp;format=xml&amp;p=5482">Mark W. Hetzler</a> was quoted in an article in the November/December 2021 issue of <i>Legal Management</i>, published by the Association of Legal Administrators.</p> <p>The article, &ldquo;Finding the Positives in Challenging Times,&rdquo; discusses new policies, practices, and systems that firms initiated during the COVID pandemic. Mark comments on how internal communication has improved while working from home. &ldquo;People have learned to use and rely on the technology for instant messaging and emails,&rdquo; he said. &ldquo;Some people are even picking up the phone and calling more.&rdquo;</p> <p>Mark also comments on remote hiring and onboarding noting that, &ldquo;every aspect of our training programs, including the summer associate program, was transitioned to a virtual platform.&rdquo; He goes on to say, &ldquo;it enabled our associates to have a broader exposure to attorneys and staff in our other offices.&rdquo;</p> <p>The article can be read in its entirety on the <a href="https://www.legalmanagement.org/2021/november-december/features/finding-the-positives-in-challenging-times"><i>Legal Management</i> website</a>.</p>Professional Activities22 Nov 2021 00:00:00 -0800http://full.fitcheven.com/?t=40&an=119693&format=xmlIP Alert: Teachings in the Art Undercut PTAB's Reasonable Expectation of Success Findinghttp://full.fitcheven.com/?t=40&an=119644&format=xml<p>On November 4, in <i><a href="https://cafc.uscourts.gov/opinions-orders/20-2243.OPINION.11-4-2021_1859852.pdf">University of Strathclyde v. Clear-Vu Lighting</a></i>, evidence from outside the asserted references tipped the Federal Circuit toward finding a lack of reasonable expectation of success. The Federal Circuit reversed the Patent Trial and Appeal Board (PTAB), because the PTAB lacked evidentiary support for finding a reasonable expectation of success when combining the two asserted prior art references.</p> <p>The University&rsquo;s patent claimed methods for inactivating certain antibiotic-resistant bacteria using narrow wavelengths of blue light. Prior art methods, as described by the University&rsquo;s patent, required applying a photosensitizer to the bacteria, such that the bacteria would be inactivated when exposed to visible light. The University&rsquo;s patent, however, claimed methods for disinfecting by exposing the bacteria to the light without using a photosensitizer.</p> <p>Clear-Vu filed a petition for <i>inter partes</i> review, asserting grounds of anticipation based on a 2004 article by Nitzen, and obviousness based on an article by Ashkenazi combined with the Nitzan article. The PTAB found that Nitzan did not anticipate, but that the combination of Ashkenazi and Nitzan invalidated the challenged claims.</p> <p>On appeal, the University challenged the PTAB&rsquo;s obviousness determination on two grounds: (1) the PTAB erred in finding that the combination of the two cited references taught that bacteria could be inactivated without using a photosensitizer and (2) the PTAB erred because its finding of a reasonable expectation of success was not supported by substantial evidence.</p> <p>Regarding the first challenge, the Federal Circuit rejected the PTAB&rsquo;s finding that the combined Ashkenazi and Nitzan references would have taught that bacteria could be inactivated without using a photosensitizer. According to the Federal Circuit, Nitzan did not disclose successfully inactivating bacteria without a photosensitizer. And the University had presented unrebutted evidence to the PTAB showing that each of Ashkenazi&rsquo;s experiments had grown bacteria in the presence of riboflavin, a known photosensitizer.</p> <p>Regarding the second challenge, on reasonable expectation of success, the Federal Circuit looked to teachings in the art as a whole&mdash;not merely the cited references. The court rejected the PTAB&rsquo;s invalidity finding that the teachings of Ashkenazi and Nitzan would have provided evidence of a reasonable expectation of success. Neither reference disclosed inactivating bacteria without using a photosensitizer. The court supplemented its finding by looking at teachings from a third article by Nitzan, published in 1999. The teachings in the Nitzan 1999 article were &ldquo;directly contrary&rdquo; to the PTAB&rsquo;s finding of what a skilled artisan would have reasonably expected, because Nitzan 1999 found no effect on bacteria exposed to light without added photosensitizers. Thus, the court found not only a complete lack of evidence in the record to support the PTAB&rsquo;s reasonable expectation of success determination, but also, through the use of the Nitzan 1999 reference, that a skilled artisan would have expected failure of the claimed invention.</p> <p>The Federal Circuit also reiterated the importance of evaluating reasonable expectation of &nbsp;success from the subjective perspective of the skilled artisan&mdash;not based on the objective success of the inventor. The Federal Circuit found the PTAB&rsquo;s analysis was based on &ldquo;pure conjecture coupled with hindsight reliance&rdquo; because it was improperly based on teachings in the challenged patent. Clear-Vu had argued that teachings in the challenged patent established physical phenomena that, although unknown prior to the inventor&rsquo;s discovery, showed the asserted combination of Ashkenazi and Nitzan would have been successful. The Federal Circuit rejected this argument. The court noted that in an obviousness determination &ldquo;[w]hat matters is the path that the person of ordinary skill in the art would have followed, as evidenced by the pertinent prior art,&rdquo; not the inventor&rsquo;s own path.</p> <p>This opinion reinforces that when evaluating whether an ordinarily skilled artisan would have a reasonable expectation of success, teachings throughout the known art may be relevant. Well-reasoned expert testimony and teachings within the art may establish whether a skilled artisan would have expected success in building upon teachings in the cited references. Further, teachings in the patent being challenged are hindsight evidence that cannot serve as the basis for finding a reasonable expectation of success.</p> <p>For more information on this holding, 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> or associate <a href="https://www.fitcheven.com/?t=3&amp;A=23735&amp;format=xml&amp;p=5482">Irfan Hassam-Malani</a>, authors of this alert.</p> <p><br /> <b>Fitch Even IP Alert</b><sup><b>&reg;<br type="_moz" /> </b></sup></p>IP Alerts18 Nov 2021 00:00:00 -0800http://full.fitcheven.com/?t=40&an=119644&format=xmlIP Alert: Again, Federal Circuit Holds Apple Lacked Standing to Appeal IPRs It Initiatedhttp://full.fitcheven.com/?t=40&an=119613&format=xml<p>On November 10, in <a href="https://cafc.uscourts.gov/opinions-orders/20-1683.OPINION.11-10-2021_1862707.pdf"><i>Apple Inc. v. Qualcomm Incorporated</i></a>, for the second time, and in a 2-1 decision by a different panel, the Federal Circuit held that Apple lacked standing to appeal final decisions in <i>inter partes</i> review (IPR) proceedings it initiated against Qualcomm patents, because of the license agreement between Apple and Qualcomm. Losing standing to appeal an unfavorable Patent Trial and Appeal Board (PTAB) decision is a counterintuitive side-effect of settling patent litigation, worth noting when entering global license agreements.</p> <p>As with the first appeal in this matter (&ldquo;<i>Apple I</i>&rdquo;), which we previously reported <a href="https://www.fitcheven.com/?t=40&amp;an=115894&amp;format=xml&amp;p=5486">here</a>, the IPR decisions appealed in this case were filed by Apple in response to Qualcomm&rsquo;s 2017 lawsuit against Apple in the Southern District of California. The parties settled and reached a license agreement, resulting in dismissal of the district court action with prejudice. In both cases, the PTAB issued a final written opinion upholding the validity of various claims. Apple appealed, and Qualcomm moved to dismiss for lack of standing.</p> <p>Before turning to Apple&rsquo;s arguments, the court noted the writing was already on the wall for this appeal, because, as Apple admitted, the operative facts in this case were the same as <i>Apple I</i>.</p> <p>In attempting to obtain a different decision from <i>Apple I</i>, Apple first argued that <i>Apple I</i> did not address the nuance of why the threat of liability, in case of a termination of the agreement, is not sufficient injury to support standing. The court was unconvinced, stating that the &ldquo;nuance&rdquo; does not allow the court to turn back the clock on <i>Apple I</i> and defy the earlier decision by dealing differently with its double.</p> <p>Apple further argued that the PTAB&rsquo;s decision should be vacated to eliminate any doubt about the applicability of estoppel, citing <i>United States v. Munsingwear, Inc. </i>The court rejected this argument, stating that <i>Munsingwear </i>concerns mootness and not standing. The court further noted even if mootness is at issue, vacatur is still inappropriate because Apple voluntarily entered the jurisdiction-destroying license agreement. Effectively, Apple surrendered its claim to the equitable remedy of vacatur.</p> <p>Judge Newman, in dissent, noted that the life of some of the licensed patents extends beyond the term of the license agreement and opined that such concerns provide standing, citing <i>Medimmune v. Genentech</i>. She also agreed with Apple&rsquo;s argument that Apple is suffering concrete and present harm by having to pay royalty for a patent it believes to be invalid.</p> <p>This decision stands as another interesting exception to <i>Medimmune v. Genetech</i>. Both patent owners and licensees should take note of the effect a large portfolio license agreement can have on the issue of standing for challenging individual patents in the portfolio on appeal at the Federal Circuit.</p> <p>For more information on this topic, 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>,&nbsp;author of this alert.<br /> <br /> <b><br /> Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts16 Nov 2021 00:00:00 -0800http://full.fitcheven.com/?t=40&an=119613&format=xmlFitch Even Welcomes New Attorneys to Chicago Officehttp://full.fitcheven.com/?t=40&an=119535&format=xml<p>Fitch, Even, Tabin &amp; Flannery is pleased to announce that <a href="https://www.fitcheven.com/?t=3&amp;A=23735&amp;format=xml&amp;p=5482">Irfan Hassam-Malani</a> and <a href="https://www.fitcheven.com/?t=3&amp;A=23736&amp;format=xml&amp;p=5482">Prestin Van Mieghem</a> have joined the firm&rsquo;s Chicago office as associates.</p> <p>A registered patent attorney, Irfan Hassam-Malani assists clients with patent preparation and prosecution, IP litigation, product clearance, legal opinions, and global intellectual property portfolio management and transactions. He has worked with large global manufacturers in the consumer electronics, telecommunications, chemicals/chemical engineering, and food/agricultural sciences industries. Irfan had previously worked with Fitch Even as a law clerk. He graduated <i>cum laude</i> from the University of Illinois College of Law in May 2021 and earned a B.S. degree in Chemistry and a B.A.L.A.S. degree in Economics from the University of Illinois in 2018.</p> <p>Prestin Van Mieghem focuses his practice on patent preparation and prosecution, freedom-to-operate, infringement analysis, and global portfolio prosecution. As a law clerk with Fitch Even, Prestin worked with clients innovating in areas including mechanical engineering and other high-tech industries. He has drafted and reviewed a variety of business contracts and intellectual property agreements, including product distribution agreements, licensing agreements, and joint development agreements. He earned his J.D. from Chicago-Kent College of Law, graduating <i>cum laude</i> in May 2021. He received a B.S. degree in Physics, <i>summa cum laude</i>, from Illinois State University in 2018.</p> <p>We are delighted to welcome Irfan and Prestin to the Fitch Even team!</p>Firm News11 Nov 2021 00:00:00 -0800http://full.fitcheven.com/?t=40&an=119535&format=xml