Fitch Even News Feed

Fitch Even Recognized as a Top Firm in PTAB Practice

18 Sep 2023 00:00:00 -0800

Fitch Even was recently recognized as being among the top 20 best-performing law firms representing patent owners and among the top 50 best-performing law firms overall in Patent Trial and Appeal Board (PTAB) proceedings in Patexia’s 2023 PTAB Intelligence Report. Fitch Even was also ranked among the top 100 most-active law firms representing patent owners. In addition, Fitch Even partner Paul B. Henkelmann was ranked among the top 200 best-performing attorneys representing patent owners in PTAB proceedings, and partner Timothy P. Maloney was ranked among the top 250 most-active attorneys representing patent owners.

This year, Patexia expanded their IPR Intelligence Report into a new PTAB Intelligence Report that covers all proceedings within the PTAB, including Inter Partes Review (IPR), Post-Grant Review (PGR), Covered Business Method (CBM), and Derivation (DER). Using data from over 7,000 PTAB proceedings filed from July 2018 through June 2023, Patexia evaluated the performance of more than 900 law firms and over 6,000 attorneys. More information about this annual report and its methodology can be found here.

Fitch Even has represented both patent owners and petitioners in a wide variety of industries in over 140 AIA trial 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’s entire PTAB Trial Practice group and validates our approach of leveraging the skills of both patent litigators and patent prosecution attorneys.

Fitch Even Partner Thomas Lebens Honored with the National Outstanding Eagle Scout Award

12 Sep 2023 00:00:00 -0800

Fitch Even partner Thomas F. Lebens was honored by the Boy Scouts of America Los Padres Council at the Boots N’ Bling fundraiser on August 24. Tom was presented with the National Outstanding Eagle Scout Award (NOESA) in recognition for helping build character and leadership in the local youth. NOESA recipients have inspired others through their positive actions reflected by recognized accomplishments and devotion to their profession, hobby, community, and beliefs.

The Los Padres Council serves youth in Santa Barbara and San Luis Obispo Counties. The mission of Los Padres Council, Boy Scouts of America is to prepare young people in the community to make ethical and moral choices over their lifetimes.

Tom is an accomplished patent attorney specializing in preparing and prosecuting patent and trademark applications, as well as matters involving intellectual property and business strategy, licensing, and infringement issues. He often assists clients with various mechanical, electronic, and software-implemented inventions, many involving artificial intelligence. In addition to his patent practice, he currently manages Fitch Even’s California offices.

IP Alert: Federal Circuit Warns Against Patent Owner Sandbagging in IPR Claim Construction

23 Aug 2023 00:00:00 -0800

On August 7, in Axonics, Inc. v. Medtronic, Inc., the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) was required to consider an inter partes review (IPR) petitioner’s arguments that were raised for the first time in its reply brief addressing a claim construction first-proposed in the patent owner’s response brief. USPTO guidance generally precludes petitioners from submitting new arguments in a reply brief. However, the Federal Circuit concluded that, where a patent owner advances a new claim construction after institution, the PTAB must consider the petitioner’s new arguments and evidence replying to the newly proposed construction.

At issue in the IPR was whether two different limitations in the claims-at-issue could be met by the same parameter in an accused device. In particular, whether the requirements that the system—(i) automatically vary power based on a value associated with current passing through the power source and (ii) automatically vary power based on a measured current associated with the current passing through the power source—could be satisfied by automatically varying power based on a charging current, or whether the limitations required automatically varying the power based on two separate parameters.

In its petition, Axonics adopted the first construction (i.e., the one-parameter construction). In its preliminary response, patent owner Medtronic did not dispute the construction. Neither party expressly proposed a construction of the term. In its response brief following the PTAB’s institution of the IPR, however, Medtronic advanced the two-parameter construction. Under this interpretation, a system automatically varying power based on a charging current alone no longer satisfied the claim. In its final written decision, the PTAB adopted the two-parameter construction. The PTAB also refused to consider Axonics’s arguments and evidence on reply regarding the two-parameter construction, explaining that these arguments amounted to a “new ground not set forth in the Petition.” Axonics appealed.

On appeal, the Federal Circuit vacated the PTAB’s decision and remanded the case for the PTAB to consider Axonics’s arguments and supplemental expert declaration replying to Medtronic’s new claim construction. The Federal Circuit determined that while PTAB rules did not specifically address instances where patent owners proposed a new claim construction after an institution decision, petitioners were generally entitled to respond to new arguments in a patent owner’s response. In support, the court cited to 37 C.F.R. § 42.23(b), the Administrative Procedure Act, the Supreme Court’s SAS v. Iancu decision, and a string of precedential Federal Circuit decisions, including Ericsson v. Intellectual Ventures I, Hamilton Beach Brands v. f’real Foods, Qualcomm v. Intel, Fanduel v. Interactive Games, and Rovalma v. Bohler-Edelstahl. The Federal Circuit noted how holding to the contrary would create opportunities for patent owners to sit on their strongest claim construction arguments before institution, and then raise those arguments after institution in response to obtain a favorable final IPR decision and an estoppel without the Board reaching the merits of any invalidity arguments under the newly adopted claim construction, thus “sandbagging” petitioners.

In reaching its conclusion, the Federal Circuit rejected Medtronic’s argument that it would be unfair to permit petitioners to submit new expert declarations with their reply because regulations did not permit patent owners to submit supplemental declarations in their sur-reply. The court explained that the PTAB had authority to waive or suspend such restrictions “in circumstances such as these,” suggesting that the PTAB could allow patent owners to submit evidence with their sur-reply. The Federal Circuit has since doubled down on this position in its August 11, 2023, decision, Rembrandt Diagnostics v. Alere. In Rembrandt, the court stated that “[s]ince the need to rely on new evidence in response may not arise until a particular point has been raised . . ., [this court has] held that there is no blanket prohibition against the introduction of new evidence during an IPR.”

The Axonics decision further clarifies IPR procedural and evidentiary matters. In particular, the decision highlights how petitioners and patent owners should be strategic with regards to evidentiary regulations and how these regulations differently affect the parties. For example, from the perspective of patent owners, the parties should be mindful that if they present claim construction arguments for the first time in their response, petitioners will have an opportunity to answer in reply.

For more information on this holding, please contact Fitch Even partner Kendrew H. Colton or associate Alvaro Cure Dominguez, authors of this alert.

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IP Alert: Importers Entitled to See Confidential Evidence Used Against Them in Antidumping Proceedings

14 Aug 2023 00:00:00 -0800

On July 27, in Royal Brush Manufacturing, Inc. v. United States, the Federal Circuit held that importers have a right to see the evidence used against them in antidumping proceedings by the Customs and Border Patrol (CBP), including data and confidential business information. The decision concerns a CBP antidumping investigation where the agency made a final determination of evasion but redacted confidential information from its report.

The CBP initiated its investigation after Dixon Ticonderoga Co., a pencil importer, alleged that Royal Brush Manufacturing, Inc., a competing importer, was transshipping Chinese-manufactured pencils through the Philippines and falsely claiming the pencils to be of Philippine origin. As part of its investigation, the CBP visited Royal Brush’s Philippines manufacturing facility to confirm whether the plant in fact had the production capabilities that Royal Brush alleged. The CBP concluded that the plant did not have the alleged production capabilities and provided its findings and reasoning in an Attaché Report and a Verification Report (together, the “Reports”). The Reports contained estimates and other Royal Brush confidential business information—including numbers used to calculate production capability, determinations about the final production capacity, facility photographs, and invoice and purchase order information.

After making its final determination, the CBP provided Royal Brush with a copy of the Reports, but with the estimates and business information redacted. Royal Brush appealed to the Court of International Trade (CIT), which remanded the case and required the CBP to provide a summary of the redacted information. On remand, the CBP issued a public summary and replaced the redacted photographs with generic descriptions, such as “photo of labeled box with finished merchandise,” and the production numbers with nondescript terms, such as “number.” Royal Brush appealed again to the CIT, but the court held that the CBP’s summarized version of the Reports complied with the relevant regulations and that Royal Brush had not established that the CBP failed to provide due process. Royal Brush appealed to the Federal Circuit.

On appeal, the Federal Circuit noted that it is an “immutable principle” that individuals have access to the evidence used against them by the government to support a case and concluded that the summarized version of the Reports did not convey to Royal Brush with sufficient detail the evidence used against them. The court recognized that, while the Trade Secrets Act can prevent government employees from disclosing confidential business information in certain instances, such measures did not apply to information required to be released as a matter of constitutional due process under the Fifth Amendment. The court further noted how the government’s concerns over providing the information could be alleviated by the simple issuance of a Protective Order by the CBP. The court found the government’s position—that it could “avoid compliance with due process requirements by the simple expedient of failing to provide for a protective order in a statute or regulation”—to be untenable. Instead, the Federal Circuit remanded the case to the CBP and stated that it had “no doubt that [the] CBP ha[d] inherent authority to provide protective orders in EAPA proceedings before the agency.”

This decision is a reminder of how the CBP must give parties in antidumping proceedings proper access to the evidence used against them. It is also a reminder to importers in antidumping proceedings that they have a due process right to see the evidence that the CBP uses against them.

For more information on this holding, please contact Fitch Even partner Joseph F. Marinelli or associate Alvaro Cure Dominguez, authors of this alert.

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IP Alert: Federal Circuit Will Not Read Safety and Efficacy Limitations into Pharma Method Claims

07 Aug 2023 00:00:00 -0800

On July 24, in United Therapeutics Corporation v. Liquidia Technologies, Inc., the Federal Circuit addressed whether safety and efficacy are required for pharmaceutical method claims to be sufficiently enabled and supported by written description.

Liquidia filed a New Drug Application for a dry powder inhalation formulation of treprostinil for the treatment of pulmonary hypertension (“PH”). In response, United Therapeutics, the owner of U.S. Patent 10,716,793, sued Liquidia in district court. United Therapeutics alleged that Liquidia’s proposed product would infringe the ’793 patent. The ’793 patent is directed to a method of treating PH comprising administering by inhalation a formulation comprising treprostinil. Claim 1 recited:

1. A method of treating pulmonary hypertension comprising administering by inhalation to a human suffering from pulmonary hypertension a therapeutically effective single event dose of a formulation comprising treprostinil or a pharmaceutically acceptable salt thereof with an inhalation device, wherein the therapeutically effective single event dose comprises from 15 micrograms to 90 micrograms of treprostinil or a pharmaceutically acceptable salt thereof delivered in 1 to 3 breaths.

Treprostinil treats PH by vasodilating the pulmonary vasculature and thereby reducing pulmonary blood pressure. Most types of PH are caused by conditions affecting the pulmonary arteries or precapillary vessels of the lungs (“precapillary PH”). However, Group 2 PH typically has a cardiac-based cause, and there are potential safety concerns in treating Group 2 PH patients with treprostinil that are not present when treating precapillary PH patients with treprostinil.

Liquidia argued that that the asserted claims of the ’793 patent were invalid for lacking adequate enablement and written description. Liquidia first argued that the claim language “treating pulmonary hypertension” required a showing of safety and efficacy. Although the Federal Circuit affirmed the district court’s finding that “treating pulmonary hypertension” includes all types of PH, it held that, in context, the claim language “treating pulmonary hypertension” did not import any additional efficacy or safety limitations.

Regarding enablement, Liquidia argued that because any changes in hemodynamics caused by inhalation of treprostinil would provide no benefit to Group 2 PH patients, the full scope of the claimed invention was not enabled. The Federal Circuit found that because the claimed administration of treprostinil would improve the hemodynamics even in Group 2 PH patients, the claims were enabled. The potential safety concerns with treating Group 2 PH patients with treprostinil may be an issue for the FDA, but not patentability.

Regarding written description, Liquidia alleged that because the specification described treating patients with precapillary PH but did not describe treating Group 2 PH patients, there was no information in the specification sufficient for a skilled artisan to conclude that the inventors possessed a method of treating Group 2 PH patients. Liquidia further argued that because vasodilation of the pulmonary vasculature is not effective in treating Group 2 PH patients, a skilled artisan would have understood that the inventors were not in possession of a method of treating Group 2 PH patients. The Federal Circuit held that a separate disclosure for each individual variant of the condition is not required unless the variants are specified in the claims. The court again found that because safety and efficacy were not recited in the claims, disease-specific treatment requirements are matters for the FDA and medical practitioners.

This case may be relevant to patent applications including methods of treating diseases. While safety and efficacy limitations may not be read into the claim language “treating a disease,” a patent applicant may want to carefully consider using claim language such as a “therapeutically effective dose.” If “therapeutically effective dose” or similar claim language is used, the patent applicant may want to define what that phrase means in the specification.

For more information on this decision, please contact Fitch Even attorney Caroline A. Albright, author of this alert.

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Fitch Even Partner Danielle Muñoz Speaks at Lavender Law® Conference & Career Fair

02 Aug 2023 00:00:00 -0800

Fitch Even partner Danielle K. Muñoz recently was a featured speaker at the National LGBTQ+ Bar Association and Foundation’s 2023 Lavender Law^® Conference & Career Fair on the topic of “Recent Developments in Trademarks and Copyrights,” on July 26.

During the program, Dani discussed recent developments in the areas of trademark and copyright practice, including the Trademark Modernization Act and its impacts on trademark holders and applicants, and the Copyright Office’s new Claims Board.

Since its inception in 1988, Lavender Law^® brings together LGBTQ+ and ally legal professionals. The Lavender Law^® Conference & Career Fair is the largest LGBTQ+ legal conference in the country with over 2,000 attendees attending annually.

IP Alert: Federal Circuit Takes Claim Preclusion by the Horns

18 Jul 2023 00:00:00 -0800

On July 5, in Inguran, LLC v. ABS Global, Inc., the Federal Circuit issued an opinion clarifying the preclusive effect of a direct infringement claim on subsequent inducement claims. The court held that an earlier direct infringement judgement did not preclude Inguran from bringing a later induced infringement claim. Claim preclusion is important for plaintiffs in considering whether to bring causes of action in a single concurrent suit. It is also important for defendants in avoiding serial lawsuits based on claims that were raised or could have been raised in an earlier suit.

This case emerged from ongoing litigation between Inguran (dba STGenetics) and ABS. ABS is a “bull stud” that sells semen drawn from bulls packaged in straws for use in artificial insemination. ST provides bull studs like ABS with sexed semen straws that predominantly include sperm cells of one sex. ST is the patent holder of U.S. Patent No. 8,206,987, which claims a method of sorting bull sperm cells.

In ABS I, ABS alleged that ST was maintaining a monopoly for sexed specimen processing. ST brought a counterclaim that alleged ABS’s competing GSS System directly infringed the ’987 patent. In ABS III, ST brought another infringement claim that alleged that ABS’s selling or licensing of its GSS Systems to third parties induced infringement of the ’987 patent. ABS moved to dismiss on the ground that the induced infringement claims were precluded by the direct infringement judgment in ABS I. The district court held that the induced infringement claims were precluded. ST appealed.

The elements of claim preclusion, or res judicata, are as follows:

An identity of the parties or their privies in the first and second lawsuits;
An identity of the cause of action; and
A final judgment on the merits in the first suit.

On appeal, the Federal Circuit addressed the second element—whether ABS I and ABS III had the same cause of action. The Federal Circuit has interpreted the same cause of action to mean that the second claim is based on the same set of transactional facts as the first. Accordingly, whether the induced infringement claims are precluded based on prior direct infringement claims hinges on whether the same set of transactional facts are at issue. In a patent suit, transactional facts include the asserted patents and the accused activity.

ST argued that direct and induced infringement claims are distinct and involve different infringing acts. For example, proof of direct and indirect infringement involves different elements and statutes—35 U.S.C. § 271(a) versus § 271(b), respectively. Additionally, during ABS I, an inducement claim would have been premature because ABS had not yet begun selling or licensing the GSS technology to third parties. ABS argued that the licensing program was part of the accused conduct for both claims and the transactional facts were essentially the same.

The Federal Circuit agreed with ST. First addressing whether ST asserted inducement in ABS I, the court determined that it had not. The court then looked to whether ST could have supported an inducement claim from the transactional facts in ABS I. The court found that ST could not have. The direct infringement claims in ABS I centered on ABS’s activity. The induced infringement claims in ABS III centered on third parties’ activities. An induced infringement claim would involve elements and evidence beyond those required to prove direct infringement. On this basis, the court held that ST’s induced infringement claims in ABS III were not precluded by the direct infringement judgement in ABS I.

This decision will help guide plaintiffs and defendants in determining the applicability of claim preclusion in future patent infringement litigation. Notably, depending on the facts, plaintiffs may not be required to join direct and induced infringement claims in a single suit. Further, defendants may not be able to avoid later induced infringement claims where there has been an earlier direct infringement judgment.

For more information on this topic, please contact Fitch Even associate Jacqueline L. Thompson, author of this alert.

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Fitch Even Recognized Among Vault's 2024 Top 3 "Best Midsize Law Firms to Work For"

17 Jul 2023 00:00:00 -0800

Fitch Even is pleased to be included on Vault’s 2024 list of the Best Midsize Law Firms to Work For, ranked at #3. Fitch Even was also ranked among the top midsize law firms in the following categories:

Formal Training: #3
Informal Training, Mentoring, & Sponsorship: #3
Technology & Innovation: #3
Hours: #4
Satisfaction: #4
Associate/Partner Relations: #5
Quality of Work: #5
Diversity: #6
Firm Culture: #6
Transparency: #6
Career Outlook: #10
Wellness: #14

Rankings are derived from Vault’s nationwide Law Firm Associate Survey, in which associates at midsize firms of 150 attorneys or fewer rated and commented on various aspects of their work life. The rankings were calculated using a formula that weighed associate ratings in categories including firm culture, quality of work, associate/partner relations, and others.

Fitch Even was also named to Vault’s 2024 Top 150 Under 150 list—Vault’s recognition of the leading small and midsize firms in the U.S. with 150 or fewer attorneys. Vault conducts extensive research and assessment of firms of this size and narrows the results to compile its list of 150 firms “known for providing top-notch service and delivering big results.”

Discretionary Denial and Beyond: Recent Developments in AIA Trial Practice

29 Jun 2023 00:00:00 -0800

Please join Fitch Even for a free webinar, “Discretionary Denial and Beyond: Recent Developments in AIA Trial Practice,” on July 27 at 9:00 a.m. PDT / 10:00 a.m. MDT / 11:00 a.m. CDT / 12 noon EDT.

Since the introduction of inter partes review proceedings in 2012, AIA trial practice has been constantly evolving and the USPTO has signaled that big changes may be ahead. Starting with the USPTO director’s 2022 memorandum issuing guidance on discretionary denial practice and continuing up to the Office’s recent Advance Notice of Proposed Rulemaking, this webinar will give attendees an overview of the latest precedent affecting AIA trial practice from the PTAB and the Federal Circuit, as well as current practice guidance and potential future rulemaking issued by the USPTO.

During this webinar, our presenters will address these topics and more:

Recent guidance and proposed changes to discretionary denial procedures
The latest notable decisions from the PTAB and the Federal Circuit affecting AIA trial practice
A summary of proposed changes to AIA trial practice issued by the USPTO

Our presenters will be Fitch Even attorneys Paul B. Henkelmann and Brian P. Herrmann.

Paul Henkelmann focuses his practice on patent post-issuance proceedings, U.S. and international patent procurement, and intellectual property litigation and counseling. Paul has represented clients in dozens of AIA trials before the PTAB in a wide variety of technical fields including nanotechnology, software, semiconductors, and computer peripherals. He also has substantial experience in both asserting and defending against patent and trademark infringement claims in the federal courts, while remaining active in procuring and managing international IP portfolios.

Brian Herrmann is a registered patent attorney who has centered his career on complex litigation. He has practiced at numerous venues including the PTAB, the International Trade Commission, and many district courts across the country. Brian has represented clients in telecommunications, computer infrastructure, networks (LTE, WiFi), electronic devices and their parts such as LCD televisions, Bluetooth, and video technology.

A recording of this webinar is available through July 26, 2024.

IP Alert: The Patent Eligibility Restoration Act of 2023

26 Jun 2023 00:00:00 -0800

It’s hardly a secret that certain Supreme Court decisions within the past ten years have roiled and muddied everyone’s understanding of what constitutes patent-eligible subject matter. Some things have always been understood to not be eligible for patenting (think things like a human being, a mathematical equation as such, or an observed natural phenomena such as gravity).

Without belaboring the point, the aforementioned Supreme Court decisions purported to present patent-eligibility tests that were poorly defined and/or that seemed to be conflated with other tests for patentability that are based upon the prior art. Various studies reveal that hundreds of patents have been held invalid in whole or in part by the federal courts and that tens of thousands of patent applications were left abandoned for failure to get past these vague requirements.

This state of affairs has not gone unnoticed by members of Congress. Most recently, Senators Thom Tillis (R-NC) and Chris Coons (D-DE) introduced the Patent Eligibility Restoration Act of 2023.

Put simply, this Act proposes to do away with all judicial exceptions to patent eligibility (hence overruling numerous Supreme Court decisions) and statutorily recognizes a number of specific exceptions to patent eligibility. The latter generally include:

A mathematical formula that is not part of an invention
A mental process performed solely in the mind of a human being
An unmodified human gene, as that gene exists in the human body
An unmodified natural material, as that material exists in nature
A process that is substantially economic, financial, business, social, cultural, or artistic

At least some of the foregoing exceptions are themselves subject to further explanation or conditions in the Act.

Whether this bipartisan Act makes its way to becoming law, of course, remains to be seen.

For more information on this topic, please contact Fitch Even partner Steven G. Parmelee, author of this alert.

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