Fitch Even News Feed May 2022 00:00:00 -0800firmwise Even Partner Karl Fink Quoted in <i>Bloomberg Law</i> Article<p>Fitch Even partner <a href=";A=2581&amp;format=xml&amp;p=5482">Karl R. Fink</a> was quoted in the <i>Bloomberg Law</i> article, &ldquo;Cisco Wants $2 Billion Patent Hit Axed Over Judge&rsquo;s Wife&rsquo;s Stock.&rdquo; The article discusses a pending appeal of a $1.9 billion judgment of patent infringement wherein the Federal Circuit is considering whether the judgment should be vacated because, shortly before entering judgment, the judge discovered his wife had recently purchased shares of Cisco stock and therefore the judge should have recused himself and not entered the judgment.</p> <p>In the article, Karl comments that &ldquo;It&rsquo;s unusual to hear about a judge&rsquo;s acquisition of stock of a party or a wife&rsquo;s acquisition of stock of a party during a case.&rdquo; He goes on to say that &ldquo;The concern is of the integrity of the judicial system&rdquo; and it is a &ldquo;crying shame&rdquo; that this happened so late in the proceedings that might have to be done over.</p> <p>Karl is co-chair of Fitch Even&rsquo;s litigation practice. He has handled hundreds of lawsuits in state and federal courts across the U.S., with positive results as first chair in all stages of litigation, including jury trial, bench trial, and appeal.</p> <p>The article can be read in its entirety on the Bloomberg Law <a href=";index=0">website</a>.</p>Professional Activities14 Apr 2022 00:00:00 -0800 Alert: Federal Circuit Expands IPR Estoppel and Rejects Differing Chip/Device Royalty Rates<p>On February 4, in&nbsp;<i><a href="">California Institute of Technology v. Broadcom and Apple</a></i>, the Federal Circuit issued two notable holdings, one affecting IPR estoppel and one relating to damages. First, the court held that IPR estoppel applies to prior art that could have been included in an IPR petition where the petitioner was aware of, but did not assert, the prior art when the IPR petition was filed. The court upheld a district court summary judgment order, which had found no invalidity based on IPR estoppel. The Federal Circuit&rsquo;s estoppel holding expressly overruled its earlier decision in <i>Shaw Industries Group, Inc. v. Automated Creel Systems, Inc.</i>, which some district courts had relied upon to hold that art not addressed in the PTAB&rsquo;s final written decision (e.g., because it was not asserted in an IPR petition) could later be asserted in district court. The Federal Circuit panel overruled <i>Shaw </i>based on the intervening decision in <i>SAS Institute, Inc. v. Iancu</i>, in which the Supreme Court held that the PTAB must address all grounds asserted in an IPR and has no partial institution authority. &nbsp;</p> <p>Second, the Federal Circuit further held that different royalty rates may not be applied to the same accused product at different points in a supply chain. The court therefore threw out a damage award exceeding $1 billion. In vacating the damage award, the Federal Circuit rejected Caltech damages experts&rsquo; two-tier damage model. The experts had opined that Caltech would have engaged in two hypothetical negotiations, one with Broadcom at the &ldquo;chip level&rdquo; and one with Apple at the &ldquo;device level.&rdquo; The experts&rsquo; two-tier model excluded from Broadcom&rsquo;s hypothetical chip license any Broadcom chips incorporated into Apple products sold in the United States and treated those identical chips as being subject to Apple&rsquo;s separate hypothetical device license with a different royalty rate. The Federal Circuit rejected this approach, concluding that established precedent required that a higher royalty rate &ldquo;is not available for the same device at a different point in the supply chain,&rdquo; in the absence of a compelling showing otherwise. Although the experts&rsquo; damage model steered clear of double recovery concerns, the Federal Circuit relied solely on two cases addressing concerns regarding double recovery against two different infringers. The court further justified its ruling by stating that &ldquo;there is nothing in the record to suggest that Broadcom and Apple would have been willing to negotiate in this artificial way rather than to more conventionally negotiate a single license at a single rate for the same chips.&rdquo;&nbsp; &nbsp;&nbsp;</p> <p>This case clarifies that a petitioner may not avoid IPR estoppel by choosing not to assert known prior art in their IPR petition. Instead, under the Federal Circuit&rsquo;s holding, if the petitioner is aware of prior art that could have been, but was not, asserted in the petition, then the PTAB&rsquo;s adverse IPR ruling will estop the petitioner from later asserting such prior art in district court litigation. Further, this case makes clear that, in the absence of compelling circumstances, the Federal Circuit will prevent damages experts from asserting different royalty rates against different infringers in the same supply chain for the same infringing product.</p> <p>For more information on this ruling, please contact Fitch Even partner&nbsp;<a href=";A=2581&amp;format=xml&amp;p=5482" target="_blank">Karl R. Fink</a>, author of this alert.&nbsp;<br /> <br /> <br /> <b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts14 Mar 2022 00:00:00 -0800 Even Sponsors 78th Annual UNCF Gala<p>Fitch Even was proud to be a sponsor of United Negro College Fund&rsquo;s (UNCF) 78<sup>th</sup> Annual National &ldquo;A Mind Is&hellip;&rdquo;<sup>&reg;</sup> Gala on March 3 at Marriott Marquis in Washington, DC. This fundraising and social event focuses on raising awareness of the need and benefits of a college education, the students UNCF serves, and the contributions of historically Black colleges and universities (HBCUs).</p> <p>Fitch Even attorneys in attendance at the event included <a href=";A=2575&amp;format=xml&amp;p=5482">Sherri Blount</a>, <a href=";A=2598&amp;format=xml&amp;p=5482">Nikki Little</a>, and <a href=";A=16851&amp;format=xml&amp;p=5482">Kerianne Strachan</a>.</p> <p><a href="">UNCF </a>serves as the leading advocate for promoting minority education and community engagement in the U.S. Since its founding in 1944, UNCF has raised more than $5 billion to fund college scholarships for over 500,000 students and to support 37 HBCUs.&nbsp;</p>Professional Activities07 Mar 2022 00:00:00 -0800 Alert: Federal Circuit Enforces Forum Selection Clause to Prevent IPR Petitions<p>The Federal Circuit recently reversed the district court and remanded for entry of a preliminary injunction enjoining defendant Sarepta Therapeutics, Inc. from proceeding with <i>inter partes</i> review (IPR) petitions at the Patent Trial and Appeal Board (PTAB). The case, <i><a href="">Nippon Shinyaku Co., Ltd. v. Sarepta Therapeutics, Inc.</a>,</i> serves to emphasize the importance and utility of forum selection clauses. Furthermore, the case makes clear that the effect of forum selection clauses is not limited to court proceedings and, as in <i>Sarepta</i>, may extend to patent office proceedings as well. The Federal Circuit declined to construe the forum selection clause in that case as limited to federal district court actions where the plain language of the clause was not so limited.</p> <p>Nippon Shinyaku and Sarepta Therapeutics entered into a Mutual Confidentiality Agreement (MCA) for the purpose of discussing a potential business relationship. The MCA established a Covenant Term, defined as &ldquo;the time period commencing on the Effective Date and ending twenty (20) days after the earlier of: (i) the expiration of the Term, or (ii) the effective date of termination.&rdquo; The MCA contained a mutual covenant not to sue, whereby each party agreed that during the Covenant Term it:</p> <blockquote> <p>Shall not directly or indirectly assert or file any legal or equitable cause of action, suit or claim or otherwise initiate any litigation or other form of legal or administrative proceeding against the other Party . .&nbsp;. in any jurisdiction in the United States or Japan of or concerning intellectual property in the field of Duchenne Muscular Dystrophy.</p> </blockquote> <p>Importantly, the covenant not to sue applied only during the Covenant Term. The MCA further provided:</p> <blockquote> <p>For clarity, this covenant not to sue includes, but is not limited to, patent infringement litigations, declaratory judgment actions, patent validity challenges before the U.S. Patent and Trademark Office or Japanese Patent Office, and reexamination proceedings before the U.S. Patent and Trademark Office .&nbsp;.&nbsp;. .</p> </blockquote> <p>The MCA also contained a forum selection clause, which provided in relevant part:</p> <blockquote> <p>[T]he Parties agree that all Potential Actions arising under U.S. law relating to patent infringement or invalidity, and filed within two (2) years of the end of the Covenant Term, shall be filed in the United States District Court for the District of Delaware and that neither Party will contest personal jurisdiction or venue in the District of Delaware and that neither Party will seek to transfer the Potential Actions on the ground of <i>forum non conveniens</i>.</p> </blockquote> <p>The MCA defined Potential Actions as</p> <p style="margin-left: 40px;">&ldquo;any patent or other intellectual property disputes between [Nippon Shinyaku] and Sarepta, or their Affiliates, other than the EP Oppositions or JP Actions, filed with a court or administrative agency prior to or after the Effective Date in the Unites States, Europe, Japan or other countries in connection with the Parties&rsquo; development and commercialization of therapies for Duchenne Muscular Dystrophy.&rdquo;</p> <p>On the same day the Covenant Term ended, Sarepta filed seven IPR petitions at the PTAB. Shortly thereafter, Nippon Shinyaku sued Sarepta for breach of contract in the U.S. District Court for the District of Delaware. Nippon Shinyaku alleged that Sarepta breached the MCA&rsquo;s forum selection clause by filing the IPR petitions and moved for a preliminary injunction enjoining Sarepta from proceeding with its IPR petitions and requiring Sarepta to withdraw them.</p> <p>The district court denied Nippon Shinyaku&rsquo;s motion for a preliminary injunction and stated:</p> <blockquote> <p>Nippon Shinyaku has failed to persuade the Court that it is likely to succeed on the merits, that it will suffer cognizable irreparable harm in the absence of extraordinary relief, that the balance of harms tips in its favor, or that the public interest warrants the relief it seeks.</p> </blockquote> <p>The district court focused on the first preliminary injunction factor, that Nippon Shinyaku had not shown a reasonable probability that Sarepta breached the MCA. The district court reasoned that, although the covenant not to sue and the forum selection clause implicate different time periods (i.e., during the Covenant Term and the two years after the Covenant Term, respectively), it would be odd if the covenant not to sue expressly deferred filing IPR petitions for one year and twenty days only for them to be impliedly delayed for two additional years, likely making them time-barred and never available. Thus, the district court read the covenant not to sue to allow IPRs after the Covenant Term ended and during the two-year period of the forum selection clause.</p> <p>Additionally, the district court found the forum selection clause did not support Nippon Shinyaku&rsquo;s breach of contract claim. The district court acknowledged that the forum selection clause &ldquo;obliquely refers to IPR proceedings through its mention of &lsquo;Potential Actions,&rsquo; which is defined to include proceedings before administrative agencies such as the PTAB.&rdquo; But the district court reasoned that &ldquo;[r]ead in full context, however, [the forum selection clause] applies only to cases filed in federal court.&rdquo; The district court concluded that, &ldquo;while the definition of &lsquo;Potential Actions&rsquo; in [the forum selection clause] literally encompasses IPRs, the use of that term in [the forum selection clause] is best understood as limited to cases in federal district court.&rdquo;&nbsp;</p> <p>Finally, the district court found that, in light of the timing of Nippon Shinyaku&rsquo;s complaint for patent infringement, if Sarepta were forced to wait two years after the Covenant Term to file its IPR petitions, they would be time-barred under 35 U.S.C. &sect; 315(b) (&ldquo;An <i>inter partes</i> review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent&rdquo;). The district court found that the MCA &ldquo;as a whole does not evince a shared expectation and intent that Sarepta was waiving its right to file IPR petitions.&rdquo; The district court found that Nippon Shinyaku failed to establish the other three preliminary injunction factors&mdash;irreparable harm, the balance of hardships, and the public interest&mdash;on the ground that Nippon Shinyaku did not have a reasonable probability of success on its breach of contract claim.</p> <p>Nippon Shinyaku filed an appeal from the district court&rsquo;s order. While the appeal was pending, the PTAB granted institution in all of Sarepta&rsquo;s IPR petitions at issue.</p> <p>The Federal Circuit said that the appeal presented &ldquo;a question of contract interpretation under Delaware law,&rdquo; which requires that &ldquo;a contact&rsquo;s construction should be that which would be understood by an objective, reasonable third party.&rdquo; According to the Federal Circuit, the plain language of the forum selection clause resolves the dispute. As the Federal Circuit noted, the forum selection clause expressly provides that &ldquo;all Potential Actions arising under U.S. law relating to patent infringement or invalidity, and filed within two (2) years of the end of the Covenant Term, shall be filed in the United States District Court for the District of Delaware.&rdquo; &ldquo;Potential Actions&rdquo; was defined to include &ldquo;patent or other intellectual property disputes .&nbsp;.&nbsp;. filed with a court or administrative agency.&rdquo; Thus, the definition of &ldquo;Potential Actions&rdquo; literally encompasses IPRs, which cannot be filed in a district court.</p> <p>The Federal Circuit rejected Sarepta&rsquo;s &ldquo;nonsensical&rdquo; suggestion that including IPRs in the forum selection clause would require IPRs to be filed in district court. Importantly, the court stated that &ldquo;[a]s a general principle, this court has recognized that parties are entitled to bargain away their rights to file IPR petitions, including through the use of forum selection clauses.&rdquo; In this case, Sarepta&rsquo;s IPRs would be time-barred by 35 U.S.C. &sect; 315(b) as a result of Nippon Shinyaku filing a patent infringement complaint, not from the parties&rsquo; entry into the MCA. Accordingly, the court found that Nippon Shinyaku is likely to succeed on the merits of its claim for breach of contract. The court then found that the other three factors relevant to the preliminary injunction analysis were also met. Being deprived of its bargained-for choice of forum constitutes irreparable harm to Nippon Shinyaku. The balance of hardships also tips in favor of Nippon Shinyaku because of the irreparable harm it will suffer without the preliminary injunction and Sarepta will potentially get multiple bites at the invalidity apple. The public interest does not excuse a party&rsquo;s violation of a forum selection clause.</p> <p>In conclusion, parties should recognize that forum selection clauses may be used to limit the bringing of IRP petitions and may be of limited duration.</p> <p>For more information on this topic, please contact Fitch Even partner <a href=";A=18289&amp;format=xml&amp;p=5482">Stanley A. Schlitter</a>, author of this alert.<br /> <b><br /> <br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts02 Mar 2022 00:00:00 -0800 Alert: Federal Circuit Nixes Admitted Prior Art as Basis for IPR<p>On February 1, in&nbsp;<a href=""><i>Qualcomm Inc. v. Apple Inc.</i></a>, the Federal Circuit held that Apple could not base an <i>inter partes</i> review (IPR) challenge of a Qualcomm patent solely on &ldquo;applicant admitted prior art&rdquo; (AAPA) found in the patent itself. The court looked carefully at 35 U.S.C. &sect; 311(b), the statute that limits what a petitioner may use as a ground for an IPR, and held that AAPA does not constitute &ldquo;prior art consisting of patents or printed publications&rdquo; under the statute.</p> <p>The appeal came after Apple successfully petitioned for <i>inter partes</i> review in the PTAB of a Qualcomm patent related to using a feedback network to increase performance of integrated circuits with power detection circuits. The PTAB found several claims of the Qualcomm patent unpatentable as obvious under 35 U.S.C. &sect; 103. The PTAB relied on a prior art patent along with AAPA&mdash;statements the applicant made in the patent application itself acknowledging that certain limitations of the patent&rsquo;s claims were known in the prior art.</p> <p>On appeal, Qualcomm, Apple, and the U.S. Patent and Trademark Office (USPTO) offered competing views of the use of AAPA in IPR proceedings. According to 35 U.S.C. &sect; 311(b), petitioners in <i>inter partes</i> reviews may only challenge patent claims &ldquo;on the basis of prior art consisting of patents or printed publications.&rdquo; Qualcomm argued that AAPA was neither a patent nor a printed publication, and therefore could not serve as the basis for an IPR. Apple argued that &sect; 311(b) permits the use of any prior art, including AAPA contained in any patent or printed publication. The USPTO argued a middle ground that although AAPA does not fall within &ldquo;prior art consisting of patents or printed publications,&rdquo; it may be used as evidence of the general knowledge of a skilled artisan, which may be used to supply a missing claim limitation or support a motivation to combine.</p> <p>The Federal Circuit agreed with Qualcomm and the USPTO that the &ldquo;patents or printed publications&rdquo; that form the &ldquo;basis&rdquo; of a ground for an IPR must themselves be prior art to the challenged patent. This excludes descriptions of the prior art contained in the challenged patent itself. In other words, &sect; 311(b) does not permit AAPA to be the basis of a ground in an IPR because it is not contained in a document that is a prior art patent or prior art printed publication. However, the court tempered its decision by adding that although AAPA cannot be the sole basis of a ground in an IPR, AAPA is not categorically excluded from an IPR; admissions in the patent specification may be considered when assessing whether a patent&rsquo;s claims would have been obvious such as for establishing the background knowledge possessed by a person of ordinary skill in the art. With this guidance, the Federal Circuit remanded the case to the PTAB for further consideration.</p> <p>This decision provides important guidance on how AAPA may be used in an IPR. Challengers must avoid using AAPA as the sole basis for an IPR. And patent owners fending off an IPR challenge should contest grounds that rely solely on AAPA. This case also provides important guidance for patent applicants. Describing the state of the art at the time of the invention has been a common practice in patent drafting, but had been disfavored to the extent it could be used against the applicant in an IPR. This decision provides some shelter from IPR challenges based solely on the background information set forth in the patent itself.</p> <p>For more information on this topic, please contact Fitch Even partner <a href=";A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a>, author of this alert.<br /> <br /> <b><br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts01 Mar 2022 00:00:00 -0800 Alert: Federal Circuit Declines to Revive Opioid Overdose Remedy<p>On February 10, in <i><a href="">Adapt Pharma Operations Ltd. v. Teva Pharmaceuticals USA, Inc.</a></i>, the Federal Circuit affirmed a district court&rsquo;s holding that Adapt&rsquo;s methods of treatment of opioid overdose is invalid as obvious. The patented methods at issue relate to intranasal administration of naloxone for reversing drug overdoses and are listed in the orange book as covering the Narcan<sup>&reg;</sup> name. Adapt sued Teva for filing an Abbreviated New Drug Application (ANDA) seeking approval for a generic form of Narcan<sup>&reg;</sup>.</p> <p>Before Adapt&rsquo;s priority date, it was known to administer naloxone by injection or intranasally. Yet, these prior methods had disadvantages. Injections required a trained professional and the prior intranasal administration required assembly of a special device which delivered excess fluid. In 2012, the FDA publicly encouraged the pharmaceutical industry to develop improved intranasal naloxone products. In 2015, Adapt filed a U.S. patent application establishing the priority date for the patents in suit.</p> <p>After a two-week bench trial, the district court ruled that the claims were invalid as obvious over two separate combinations of prior art asserted by Teva. On appeal, Adapt argued that the lower court erred in its conclusions regarding the existence of motivation to combine, the lack of teaching away in the art, and deficiencies in proffered objective indicia of nonobviousness.</p> <p>The issues before the Federal Circuit primarily related to drug formulation aspects of the method claims. The representative formulation included specific amounts of naloxone, sodium chloride (isotonicity agent), benzalkonium chloride (preservative), disodium edetate (stabilizer), and acid for pH modulation.</p> <p>Judges Stoll and Prost opined for the majority and took note of the close nature of case. Nonetheless, the two judges found that the district court had not erred in its conclusions regarding motivation to combine. At the outset, the judges noted that the FDA had provided motivation to formulate an improved intranasal naloxone product by publicly identifying problems associated with the prior methods of administration. Both the prior art and Teva&rsquo;s expert testimony were also found to provide ample reasons for the claimed drug formulation via selection and optimization of prior art components.</p> <p>Adapt had supplied a reference as evidence of teaching away from use of benzalkonium chloride with naloxone. Yet, the majority discounted this as only teaching away from use of high concentrations of benzalkonium chloride with naloxone and agreed that the prior art as a whole did not teach away.</p> <p>The majority also rejected Adapt&rsquo;s argument that the district court erred by considering objective indicia of nonobviousness only after concluding the claims were <i>prima facie</i> obvious. The majority found that there was nothing inherently wrong with the district court&rsquo;s opinion discussing the objective indicia after the <i>prima facie</i> analysis. In detail, the majority agreed that Adapt had not shown the drug performance evidence was &ldquo;unexpected&rdquo; and agreed that evidence of copying was irrelevant in the context of ANDA litigation. The majority similarly agreed with the district court&rsquo;s weighing of evidence of skepticism, holding that the district court did not err by finding that evidence of industry sketpticism did not support nonobviousness. While the majority found that the district court improperly considered Adapt&rsquo;s evidence of long-felt need, the judges found the error harmless in view of the strong case of obviousness.</p> <p>In a pointed dissent, Judge Newman noted the marked superiority of Adapt&rsquo;s method and product and criticized the majority and district court for finding obviousness in light the prior art&rsquo;s inadequate teaching or suggestion for the claimed combination and amounts of components in the claimed drug formulation. She further criticized Teva&rsquo;s expert for merely stating the prior art components were &ldquo;available&rdquo; and for failing to provide reasons to select and combine the claimed elements. Judge Newman repeatedly criticized the district court and the majority for employing improper hindsight bias.</p> <p>The dissent further asserted that the district court&rsquo;s analysis of the objective indicia of nonobviousness was contrary to existing law, which requires courts to consider objective indicia of obviousness as part of the determination of <i>prima facie</i> obviousness. Judge Newman also disagreed with the district court&rsquo;s treatment of the evidence of superior results. Her dissent notes that others had tried and failed to develop products that improved on the prior art, and that none of the references cited disclosed the specific combination of attributes claimed along with its ease of administration. After further noting that other objective indicia of nonobviousness had not been given proper consideration, Judge Newman concluded by speculating that the majority&rsquo;s opinion would discourage innovation in crowded pharmaceutical fields and those in which the FDA has mentioned need for improvement.</p> <p>Analyzing obviousness is a fact-intensive exercise, and the results can depend on evidence beyond the features disclosed in the art. As exemplified in this case, even Federal Circuit judges disagree on how to weigh facts relating to objective considerations of non-obviousness.</p> <p>For more information on this topic, please contact Fitch Even partner <a href=";A=8909&amp;format=xml&amp;p=5482">Giles N. Turner</a>, author of this alert.<br /> <b><br /> <br /> Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts22 Feb 2022 00:00:00 -0800 Alert: Federal Circuit Holds Letter Sent Before Critical Date Was a Commercial Offer For Sale<p>On February 10, in <a href=""><i>Junker v. Medical Components, Inc.</i></a>, the Federal Circuit invalidated a design patent based on commercial activity that occurred before the critical date of the subject patent application, reversing a nearly $1.25M damages award in the case. This case represents the latest guidance on commercial conduct that may constitute an offer for sale for purposes of invoking the on-sale bar.</p> <p>The patentee of the design patent in question, US D450,839, engaged Xentek Medical to develop a prototype of the product, a catheter introducer sheath. Xentek corresponded with Boston Scientific Corporation regarding selling the patentee&rsquo;s introducer sheaths to Boston Scientific. Among the communications were a January 8, 1999 letter from Xentek to Boston Scientific that included a price chart and specified numerous commercial terms such as payment terms, shipment terms, and delivery conditions.</p> <p>The patentee filed the application for the &rsquo;839 patent on February 7, 2000&mdash;more than one year after the January 8, 1999 letter. The patentee later filed suit against Medical Components, Inc. (MedComp), asserting infringement of the &rsquo;839 patent. MedComp countered, asserting invalidity of the &rsquo;839 patent under pre-AIA 35 U.S.C. 102(b), which states a patent claim is invalid if &ldquo;the invention was . . . on sale in this country, more than one year prior to the date of the application for patent in the United States.&rdquo;</p> <p>At issue before the Federal Circuit was whether the January 1999 letter from Xentek to Boston Scientific was a commercial offer for sale of the claimed design, or merely a quotation signaling the parties were engaged in preliminary negotiations.</p> <p>The Federal Circuit rejected the patentee&rsquo;s argument that the January 1999 letter was merely an invitation to further negotiate and determined the letter contained all the required elements to qualify as a commercial offer for sale. Citing resources such as the Uniform Commercial Code and Restatement (Second) of Contracts, the court observed the January 1999 letter was sent directly in response to a &ldquo;request for quotation&rdquo; from Boston Scientific, was addressed to Boston Scientific alone, contained a number of necessary terms typical for a commercial contract, and specified multiple different purchase options.</p> <p>The Federal Circuit concluded that the January 1999 letter was an offer for sale which Boston Scientific could have accepted to bind the parties in a contract. Because the offer for sale occurred prior to the critical date of the application for the &rsquo;839 patent, the court held the &rsquo;839 patent is invalid under pre-AIA 35 U.S.C. 102(b).</p> <p>The <i>Junker</i> decision provides further guidance regarding potential on-sale bar implications resulting from prefiling commercial activity. The decision may also be a cautionary tale for patent applicants. Courts will objectively analyze correspondence to evaluate whether an offer for sale existed. A patent may be invalidated regardless of whether the applicant believes they offered their invention for sale.</p> <p>For more information on this topic, please contact Fitch Even partner <a href=";A=2618&amp;format=xml&amp;p=5482">Brett J. Smith</a>, author of this alert.<br /> <b><br /> <br /> Fitch Even IP Alert<sup>&reg;</sup>&nbsp; &nbsp;</b></p>IP Alerts16 Feb 2022 00:00:00 -0800 Even Partner Dave Gosse Quoted in <i>Bloomberg Law</i> Article<p>Fitch Even partner <a href=";A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a> was quoted in the February 10 issue of <i>Bloomberg Law</i> in an article discussing contract clauses about forum selection after a Federal Circuit ruling in <i>Nippon Shinyaku Co v. Sarepta Therapeutics Inc</i>.</p> <p>In the article, &ldquo;Forum Selection Clauses No Longer &lsquo;Boilerplate&rsquo; for IP Fights,&rdquo; Dave comments that &ldquo;Patent owners, I think, will see it as a nice thing to see that the Federal Circuit has weighed in with that sort of endorsement&mdash;that you&rsquo;re allowed to contract away whatever right you might have to go to the PTAB.&rdquo;</p> <p>Dave represents clients in district court and PTAB litigation, with deposition and courtroom experience in both venues.</p> <p>The article can be read in its entirety on the Bloomberg Law <a href="">website</a>.</p>Professional Activities14 Feb 2022 00:00:00 -0800 Alert: Federal Circuit Affirms Refusal to Register Generic Top-Level Domain Trademarks<p>On February 2, in <i><a href="">In re: Vox Populi Registry Ltd.</a></i>, the Federal Circuit affirmed the Trademark Trial and Appeal Board&rsquo;s (TTAB) refusal to register a standard character mark and a stylized mark, both related to the &ldquo;.sucks&rdquo; generic top-level domain (gTLD). The court held that neither mark served as a source-identifier, and that the stylized mark failed to create a commercial impression separate from the characters in the mark.</p> <p>Vox, a domain registry operator for the &ldquo;.sucks&rdquo; gTLD, filed a trademark application for the following stylized mark:</p> <p style="text-align: center;"><img src="" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="75" height="30" />&nbsp;</p> <p>Vox also filed a trademark application for the standard character mark .SUCKS. The U.S. Patent and Trademark Office (USPTO) refused to register the subject applications based on their failure to function as trademarks when used in connection with the specified domain name registration services.</p> <p>On appeal, the TTAB determined that consumers will not perceive the standard character mark .SUCKS as a source identifier, but &ldquo;as one of many gTLDs that are used in domain names.&rdquo; Moreover, the TTAB concluded that the stylized form of the mark neither creates a separate commercial impression, nor possesses a sufficient degree of distinctiveness to warrant its registrability.</p> <p>Vox appealed the TTAB&rsquo;s decision with regard to the stylized form of the .SUCKS mark. In its analysis, the Federal Circuit considered whether the mark at issue served as a source identifier. Based on the Federal Circuit&rsquo;s assessment of prior decisions of the TTAB, the court determined that consumer perception must be evaluated to establish whether a proposed mark functions as a source identifier. More specifically, a court must review the specimens of use and other evidence of record demonstrating how the mark is used in the marketplace to determine the manner in which the relevant public perceives the designation.</p> <p>Although Vox did not appeal the refusal of the .SUCKS mark in standard characters, it presented arguments regarding the mark&rsquo;s functionality as a source identifier and registrability as a service mark in its opening brief. The Federal Circuit reviewed the TTAB&rsquo;s factual findings related to the .SUCKS standard mark for substantial evidence. Such factual findings included specimens from Vox&rsquo;s website which showed use of the mark to refer to a product, not a source of services. Additionally, the court considered several declarations, including a statement from the company&rsquo;s COO which detailed advertising and sales volumes. However, the court did not find such evidence to be persuasive and concluded that the TTAB did not err in refusing to register the designation.</p> <p>Lastly, the court considered whether the design of the .SUCKS mark in stylized form contributed to its registrability. A stylized mark that is unregistrable may be registrable if the features of its design &ldquo;create an impression on the purchasers separate and apart from the impression made by the words themselves.&rdquo; The Federal Circuit assessed the designs of several marks, including&nbsp;&nbsp;<img src=" a Closet.jpg" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="175" height="36" />and&nbsp;<img src=" Hole.jpg" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="130" height="45" />, which the TTAB previously found to create a &ldquo;striking&rdquo; or &ldquo;separate&rdquo; commercial impression due to the sufficient distinctiveness of the elements of the marks. In contrast to the foregoing marks, the Federal Circuit determined that the stylized .SUCKS mark failed to create a separate commercial impression based on the TTAB&rsquo;s reasoning that the designation included characters that were identical in height and width and commonly used as a font style of computers. Thus, based on its analysis, the court affirmed the TTAB&rsquo;s refusal of the application for the stylized .SUCKS mark.</p> <p>The Federal Circuit&rsquo;s decision applies existing trademark law to gTLDS and provides further guidance regarding the registrability of such domain names. Applicants who are seeking registration of gTLDS as trademarks should be aware that the USPTO may refuse to register such matter if it fails to function as an identifier of the source of goods or services. Therefore, when filing a trademark application for a gTLD, applicants should accumulate evidence that demonstrates consumers&rsquo; perception of the mark as a source identifier to attempt to overcome the USPTO&rsquo;s likely issuance of a refusal.</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.<br /> <br /> <br /> <b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts11 Feb 2022 00:00:00 -0800 Even Partner Nikki Little Quoted in Law360 Article on Federal Circuit Applicant Admitted Prior Art Ruling<p>Fitch Even partner <a href=";A=2598&amp;format=xml&amp;p=5482">Nikki Little</a> was quoted in the February 9 issue of Law360 in an article discussing the Federal Circuit&rsquo;s recent ruling in <i>Qualcomm v. Apple </i>that applicant admitted prior art (AAPA) cannot be used as a basis for invalidating a patent.</p> <p>In the article, &ldquo;Fed. Circ. Raises The Bar For 'Admitted' Prior Art In IPRs,&rdquo; Nikki comments that &ldquo;petitioners will have to revise how they approach the relationship between AAPA and prior art.&rdquo; She goes on to say that &ldquo;Rather than patent owners and petitioners fighting over &lsquo;Is [AAPA] the basis of [the challenge], I think petitioners will get smart very quickly and will phrase it as, &lsquo;This is the knowledge in the art,&rsquo; and patent owners will push back and say, &lsquo;You&rsquo;re still improperly making it the basis of your challenge.&rdquo;</p> <p>The article can be read in its entirety on the <a href=""><i>Law360 website</i></a> (sub. req.).</p>Professional Activities11 Feb 2022 00:00:00 -0800