Fitch Even News Feed Dec 2021 00:00:00 -0800firmwise Even Ranked Among Top Firms in CAFC Intelligence Report; Partners Recognized as Top Performers<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=";A=2601&amp;format=xml&amp;p=5482">Tim Maloney</a>, <a href=";A=2598&amp;format=xml&amp;p=5482">Nikki Little</a>, and <a href=";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=";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="">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=" Badges/top 10.png" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="150" height="150" />&nbsp; &nbsp;<img src=" 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 -0800 Even Partner Dave Gosse to Copresent Strafford Webinar on Expectation of Success<p>Fitch Even partner <a href=";A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a> will copresent a Strafford Publications&rsquo; CLE webinar &ldquo;<a href="">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="">website</a>.</p>Professional Activities22 Nov 2021 00:00:00 -0800 Even Managing Partner Mark Hetzler Quoted in ALA's <i>Legal Management</i> Magazine<p>Fitch Even managing partner <a href=";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=""><i>Legal Management</i> website</a>.</p>Professional Activities22 Nov 2021 00:00:00 -0800 Alert: Teachings in the Art Undercut PTAB's Reasonable Expectation of Success Finding<p>On November 4, in <i><a href="">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=";A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a> or associate <a href=";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 -0800 Alert: Again, Federal Circuit Holds Apple Lacked Standing to Appeal IPRs It Initiated<p>On November 10, in <a href=""><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=";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=";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 -0800 Even Welcomes New Attorneys to Chicago Office<p>Fitch, Even, Tabin &amp; Flannery is pleased to announce that <a href=";A=23735&amp;format=xml&amp;p=5482">Irfan Hassam-Malani</a> and <a href=";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 -0800 Alert: Lack of Standing Flattens Brewery Appeal from TTAB<p>On October 27, in <i><a href="">Brooklyn Brewery Corporation v. Brooklyn Brew Shop, LLC</a></i>, the Federal Circuit held that parties opposing a trademark registration at the Trademark Trial and Appeal Board (TTAB) cannot appeal from an adverse TTAB decision if they lack constitutional standing. The Federal Circuit accordingly dismissed Brooklyn Brewery Corporation&rsquo;s (&ldquo;Brewery&rdquo;) appeal of the TTAB&rsquo;s decision, which dismissed Brewery&rsquo;s opposition to Brooklyn Brew Shop&rsquo;s (&ldquo;BBS&rdquo;) U.S. trademark application for the below stylized mark for &ldquo;sanitizing preparations for household use&rdquo; in Class 5 (&ldquo;the Class 5 goods&rdquo;).</p> <p align="center"><img src=" BrewShop.jpg" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="205" height="75" /></p> <p>Prior to filing its appeal, Brewery petitioned to cancel BBS&rsquo;s U.S. trademark registration for BROOKLYN BREW SHOP in standard characters and sought to oppose the application for the above-mentioned stylized mark. Brewery asserted that BBS&rsquo;s marks were likely to cause confusion with its registration for BROOKLYN BREWERY for &ldquo;beer&rdquo; in Class 32. Moreover, Brewery claimed that BBS&rsquo;s marks were merely descriptive and lacked acquired distinctiveness.</p> <p>The court addressed most of the issues on appeal, but dismissed Brewery&rsquo;s appeal as to the Class 5 goods for lack of standing. This decision raises new considerations in trademark law.</p> <p>In response to Brewery&rsquo;s appeal on the Class 5 goods, BBS argued that Brewery lacked both Article III and statutory standing to oppose BBS&rsquo;s application in connection with its sanitizing preparations. In its decision, the Federal Circuit noted that it had not previously addressed Article III standing in an appeal of a trademark case from the TTAB. However, based on its prior opinions in the patent context, the court determined that an appellant must satisfy the requirements of both statutory and Article III standing. These requirements include the following: 1) an &ldquo;injury in fact&rdquo; that is both &ldquo;concrete and particularized&rdquo;; 2) a showing that the injury is fairly traceable to the challenged action; and 3) a showing that it is &ldquo;likely,&rdquo; rather than &ldquo;merely speculative,&rdquo; that a favorable judicial decision will redress the injury.</p> <p>The court also concluded that injury in fact in a trademark case requires that &ldquo;an opposer must demonstrate a concrete and particularized risk of interference with its rights that flow to it from registration of its own mark, or some other Article III injury.&rdquo; The court offered several examples of such risk, but noted that a concrete and particularized harm specifically does not include a registrant&rsquo;s mere competition with an opposer, where the registrant receives benefits from an unlawful trademark.</p> <p>In its analysis, the Federal Circuit determined that Brewery did not provide the requisite proof of an injury in fact to satisfy the Article III standing requirements. The court noted that Brewery did not state how the registration of BBS&rsquo;s mark for sanitizing preparations in Class 5 would cause it to suffer an injury. The Federal Circuit also found that Brewery neither manufactured nor sold sanitizing preparations and that there was no showing that BBS&rsquo;s Class 5 goods would likely travel in the same channels of trade as Brewery&rsquo;s beer.</p> <p>Brewery countered that it would possibly suffer an injury if it expanded its business to include sanitizing preparations in the future. However, it did not provide further information or details regarding its plans for such an expansion. The Court considered Brewery&rsquo;s assertion to be hypothetical and, thus, insufficient to establish Article III standing. Therefore, the Federal Circuit dismissed Brewery&rsquo;s appeal of the Board&rsquo;s refusal to oppose BBS&rsquo;s trademark application as to the Class 5 goods.</p> <p>Trademark owners may need to adopt new strategies in view of the <i>Brooklyn</i> <i>Brewery </i>decision if they intend to oppose a registration or petition to cancel a competitor&rsquo;s trademark. Even if they only intend to challenge the competitor&rsquo;s marks at the TTAB, the requisite injury in fact will be necessary to establish standing on appeal to the Federal Circuit. Trademark owners should consider whether they use their own marks in connection with goods or services if they intend to challenge a competitor&rsquo;s marks on similar goods or services. Based on such use, trademark owners may be able to demonstrate a concrete and particularized risk of interference with their rights, sufficient to establish standing.</p> <p>For more information on this topic, please contact Fitch Even attorney <a href=";A=16851&amp;format=xml&amp;p=5482">Kerianne A. Strachan</a>, author of this alert.</p> <p><br /> <b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts04 Nov 2021 00:00:00 -0800 Alert: PTAB's Structure and Funding Pass Due Process Muster<p>On October 13, in <i><a href="">Mobility Workx v. Unified Patents, LLC</a></i>, the Federal Circuit rejected a series of due process challenges to the structure of the Patent Trial and Appeal Board (PTAB), leaving the PTAB to continue with business as usual. The court held that the structure and funding of the PTAB do not violate constitutional guarantees of due process based on (a) the fee-generating structure of the PTAB, (b) the alleged financial interests of the PTAB judges, and (c) the Director&rsquo;s delegation of authority for the institution decision to the same PTAB judges who will render a final decision if trial is instituted. The panel concluded, however, that Mobility is entitled to a remand under <i>Arthrex</i> for rehearing by the Director to address substantive questions, and to consider Mobility&rsquo;s argument that the PTAB&rsquo;s failure to issue a final determination within 12 months of institution requires dismissal of the petition or issuance of a certificate confirming the challenged claims.</p> <p>In reaching its conclusion that the structure and funding of the PTAB do not violate the constitution&rsquo;s guarantees of due process, the court analyzed three Supreme Court cases.</p> <p>In the first, <i>Tumey v. Ohio</i>, the Supreme Court found that in a &ldquo;mayor&rsquo;s court,&rdquo; due process was violated because the mayor received compensation if the defendant was convicted and had to pay fees, but did not receive such compensation if the proceedings resulted in an acquittal. Because the mayor was the chief executive of the village and was responsible for the finances of the village, and since the structure of the mayor&rsquo;s court provided that the convicted parties&rsquo; fees funded the village, the Court determined that there was a violation of due process.</p> <p>In the second, <i>Dugan v. Ohio</i>, the Court found no violation of due process because the mayor (a) exercised only judicial functions; (b) received a salary set by others, and (c) did not receive fees from the mayor&rsquo;s court.</p> <p>In the third, <i>Ward v. Monroeville</i>, because the mayor had &ldquo;executive responsibilities for village finances&rdquo; that might &ldquo;make him partisan to maintain the high level of contribution from the mayor&rsquo;s court,&rdquo; the Court again found that due process was violated.</p> <p>The court concluded that although Mobility contended that the Chief APJ, Deputy Chief APJ, and Vice Chief APJs participate in AIA review proceedings and &ldquo;provide policy direction and ensure the quality and consistency of AIA decisions,&rdquo; while also &ldquo;oversee[ing] fiscal planning and expenditures of the Board&rdquo; they do not have responsibility for the agency&rsquo;s finances. It is the Director, and not these leadership APJs, who has responsibility for USPTO&rsquo;s budgetary request to the Office of Management and Budget. Also, because it is Congress that sets the USPTO budget, the agency&rsquo;s fees for work on AIA proceedings, including institution and post-institution, do not automatically become available to the agency. With all of this considered, the court concluded that the leadership APJs roles in budgeting are too remote and do not constitute a violation in due process.</p> <p>Mobility also argued that &ldquo;performance bonuses give individual APJs an unconstitutional interest in instituting AIA proceedings.&rdquo; However, due to the backlog of <i>ex parte</i> appeals, the court concluded that there is no showing that APJs are incentivized to institute AIA proceedings in order to earn performance bonuses.</p> <p>One of the most interesting arguments made by Mobility is that the Director violates due process and the Administrative Procedure Act by delegating authority to institute AIA proceedings. Mobility argued that APJs suffer pre-judgment bias or the appearance of such bias because the Director delegated the initial institution decision to &ldquo;the exact same panel of Judges that ultimately hears the case.&rdquo; The majority disregarded this argument, noting that the Federal Circuit had &ldquo;previously rejected a nearly identical challenge&rdquo; in <i>Ethicon Endo-Surgery</i>.</p> <p>Judge Newman dissented, taking a much different position on this portion of the decision. Currently, institution decisions conducted by the PTAB are a final decision. Judge Newman questioned whether, when authored by inferior officers without supervision or control or review by a principal officer of the agency, the procedure for institution may violate the Appointments Clause. Although the America Invents Act assigned the institution decision to the Director, soon after enactment the agency assigned institution to the PTAB, retaining no control or supervision or review by the Director. Further, in Judge Newman&rsquo;s view, delegating institution to PTAB APJs eliminated the legislative design whereby separate entities conduct separate determinations.</p> <p>Finally, Mobility raised an Appointments Clause challenge based on the PTAB&rsquo;s final decision. The Federal Circuit agreed that a &ldquo;limited remand&rdquo; is required under <i>Arthrex</i>, to allow the Acting Director to decide whether to review the PTAB&rsquo;s final written decision pursuant to newly established USPTO procedures. The court also noted that Mobility may argue during the remand that the claims should be confirmed, or the petition should be dismissed because the PTAB failed to reach a final determination within the 12-months after institution.</p> <p>This case is relevant for patent owners and petitioners practicing before the PTAB who may have received an adverse institution decision. In particular, Judge Newman&rsquo;s dissent suggests a potential for future challenges to the constitutionality of the Director&rsquo;s delegation of institution authority to the PTAB. This issue may receive more attention in light of <i>Arthrex</i>, although the majority&rsquo;s view was contrary to this perspective.</p> <p>For more information on this decision, please contact Fitch Even partner <a href=";A=2596&amp;format=xml&amp;p=5482">Thomas F. Lebens</a>, author of this alert.<br /> <br /> <br /> <b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts03 Nov 2021 00:00:00 -0800 Separate IPR Counsel to Maximize Litigation Success<p>Please join Fitch Even for a free webinar, &ldquo;<a href="">Leveraging Separate IPR Counsel to Maximize Litigation Success</a>,&rdquo; on November 18 at 9 a.m. PST / 10 a.m. MST / 11 a.m. CST / 12 noon EST.</p> <p>Most patents challenged in <i>inter partes</i> review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) are involved in co-pending litigation. A threshold question is whether litigation counsel will also handle the IPR proceedings. When engaging separate counsel for the IPR proceedings, cooperation between litigation and IPR counsel is paramount to a successful outcome both at the PTAB and in the district court. Numerous issues that require close coordination must be addressed, including whether to engage separate expert witnesses, claim construction, discretionary denial, validity (or invalidity) arguments, stays, discovery, objective evidence of nonobviousness, motions to amend, and estoppel.</p> <p>During this webinar, we will cover these topics and more:</p> <ul> <li>Pros and cons of engaging litigation counsel or separate counsel for IPR proceedings &nbsp;</li> <li>Critical issues common to both litigation and IPR proceedings that require close coordination</li> <li>Practical guidance when working with separate litigation or IPR counsel</li> <li>Strategies for improving cooperation between litigation and IPR counsel</li> </ul> <p>Our speakers will be Fitch Even partners <a href=";A=2601&amp;format=xml&amp;p=5482">Timothy P. Maloney</a> and <a href=";A=2587&amp;format=xml&amp;p=5482">Paul B. Henkelmann</a>.</p> <p>Tim has had a primary role in over 100 PTAB trial proceedings emanating from high-stakes patent litigations, developing a notably strong track record. Tim was recognized in an independent study as the #3 best performing attorney nationwide representing patent owners in IPR proceedings in 2017, consistently achieving favorable outcomes.</p> <p>Paul focuses his practice on PTAB trial proceedings, patent procurement, patent litigation, and IP portfolio management. Nationally recognized for his active practice before the PTAB, he has represented clients in over 60 IPR proceedings.</p> <p>A recording of this webinar is available through November 17, 2022.</p>Past Webinars22 Oct 2021 00:00:00 -0800 Alert: USPTO Abused Discretion by Allowing Further Abuse by <i>Ex Parte</i> Reexamination<p>On September 29, in <a href=""><i>In re Vivint, Inc.</i></a>, the Federal Circuit clarified the interplay between petitions for <i>inter partes</i> review (IPR) and a subsequent request for <i>ex parte </i>reexamination. The court held that the USPTO abused its discretion and acted arbitrarily and capriciously by ordering, and subsequently refusing to terminate, reexamination based on nearly identical arguments previously presented by the same party in a petition for IPR, which was denied under 35 USC &sect; 325(d) as abusive by the Patent Trial and Appeal Board (PTAB). The court held this was an abuse of discretion despite agreeing that the USPTO correctly determined that the arguments presented substantial new questions of patentability (SNQs).</p> <p>Vivint Inc. (&ldquo;Vivint&rdquo;) sued for infringement of four patents. While defending itself in district court, filed fourteen IPR petitions, including three successive petitions that challenged the validity of one asserted patent, the &rsquo;513 patent.</p> <p>The PTAB declined to institute trial on the first two petitions on the merits, but denied the third petition under &sect;&nbsp;325(d) because it was found to be an abusive, incremental challenge that used the PTAB&rsquo;s prior two denials as a roadmap to correct deficiencies. More than a year after the third denial, filed a request for reexamination of the &rsquo;513 patent, largely based on the same art and arguments raised in the third IPR petition. The USPTO found SNQs and ordered reexamination.</p> <p>Vivint petitioned the USPTO, arguing that the USPTO should have denied reexamination as abusive under &sect;325(d). The USPTO denied the petition, arguing they could not consider petitions filed after reexamination was ordered. Vivint filed a second petition seeking reconsideration, which was also denied. An examiner issued a final rejection of all claims in the &rsquo;513 patent, and the PTAB affirmed. Vivint appealed.</p> <p>On appeal, Vivint first argued that because the patentability questions presented in the request for reexamination had already been presented to the Patent Office in the third IPR petition, there could be no SNQ. The Federal Circuit disagreed, finding that two of the patentability questions with respect to a single claim were new. Two recycled IPR positions, while presented, were never considered and decided on the merits, as the third IPR petition was denied under &sect;325(d). Accordingly, the court agreed that the reexamination request raised four SNQs.</p> <p>Vivint next contended that the USPTO abused its discretion by ordering reexamination based primarily on the same arguments found to be abusive in the third IPR petition and subsequently refusing to terminate the proceeding under &sect;325(d). The Federal Circuit agreed, holding that the USPTO cannot deny an IPR petition for abusive filing practices then grant an almost identical reexamination request. Accordingly, the Federal Circuit vacated the PTAB&rsquo;s decision and remanded with instructions to dismiss the <i>ex parte</i> reexamination.</p> <p>This decision provides guidance to both petitioners filing, and patent owners facing, multiple post-issuance proceedings. Petitioners should be wary of filing a reexamination request based on arguments previously presented in an IPR petition and should address a potential &sect;325(d) challenge in their request. To improve the likelihood of success, a reexamination request should be filed prior to a decision on a similar IPR petition. Patent owners should be aware that they may contest a reexamination request based on the same or similar art or arguments previously presented to the USPTO under &sect;325(d).</p> <p>For more information on this topic, please contact Fitch Even partner <a href=";A=2587&amp;format=xml&amp;p=5482">Paul B. Henkelmann</a>.</p> <p><i>Fitch Even law clerk Prestin Van Mieghem contributed to this alert</i>.</p> <p><b><br /> Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts22 Oct 2021 00:00:00 -0800