Proving non-obviousness with secondary indicia is hard on the best of days.  It is even harder when the PTAB creates additional hurdles.  The Federal Circuit, in the Chemours case, had something to say about these new hurdles. 

 

More on Nitika Fiorella.

 

SPEAKERS

Wayne Stacy, Nitika Fiorella

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. This is Wayne Stacy, the Executive Director for BCLT. And today I have Nitika Fiorella. From Fish and Richardson joining us. Nitika. Thank you for joining us today. And I wanted to lead off with the fact that you had a very successful Federal Circuit outcome. You'll be too modest to brag about it. But it was a it was an impressive win and a very interesting win. Before we talk about that, I think it's important to know who the client was and what that industry is. So would you please set the background for us?

 

Nitika Fiorella  00:41

Sure, happy to and thank you, Wayne, for having me on, very excited to be here. So our client in this case is Chemours, which is a global Chemical Company. It traces its roots back over 200 years, to the start of the DuPont company, actually, which is a relatively household name, especially here in the northeast. It's both Chemour and DuPont are headquartered in my hometown of Wilmington, Delaware. But since separating from DuPont, Chemours really created a name for itself as a world leader, in really a host of different industries, ranging from everything from automotive, paints, plastics, to things like electronics, energy, you know, the list goes on and on. They are, they're really a company of innovation through chemistry. And you know, that, for me has been something that's been very exciting to get to work with a client like that, you know, who's just so their technology is so important to so many things that are essential in society, you know, they, they do things like make semiconductors, but they also help to fight climate change. So it's really just a very exciting company. And it's a really exciting client for a patent litigator, you know, to really be involved with and help them protect their many inventions and innovations in a lot of fields.

 

Wayne Stacy  02:16

Well, in this particular case, the Federal Circuit reversed a PTAP finding, which is somewhat rare in itself. But in this case that the Federal Circuit didn't even remand, which is even even more rare. Federal Circuit goes through several different reasons. But the one I wanted to focus on today was the the secondary indicia portion of the Federal Circuit decision. And and to some degree, what the the PTAB had to say. I mean, as anybody that litigates patent, no patents knows, wins on secondary indicia are almost non existent these days. But this was a win on secondary indicia. So can you tell us how, how the case developed and why this was different?

 

Nitika Fiorella  03:03

Sure, yes. So I think it as you mentioned, getting the Federal Circuit to go against the PTAB is extremely difficult. So I I clerked at the Federal Circuit, you know, I've seen many of these cases come up. And as you mentioned, just just getting the Federal Circuit to disagree with the patent office is is hard. Getting it to reverse instead of remand is extremely rare. And getting it to do it on the basis of secondary considerations in particular, is is definitely something we were very excited to see. And I think can be a good guidance point, I guess, for future cases on secondary inicia. So So how we got here. Well, when we got the board decision, we really wanted to look at just like any good appellate l