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Fitch Even Partner Nikki Little Moderates In-House Counsel Life Webinar Series

24 Mar 2023 00:00:00 -0800

On March 21, Fitch Even partner Nikki Little moderated a virtual panel presented by Chicago Women in IP (ChiWIP) and the Association of Corporate Counsel’s Women In The House (WITH) Network. This program is the second installment in a webinar series hosted by ChiWIP’s In-House Advisory Committee that focuses upon common issues encountered when transitioning into and amongst in-house counsel positions. Part 1 focused upon the considerations that go into researching and interviewing for an in-house counsel job.

Part 2 focused upon various aspects of compensation for in-house roles, including the different structures used in public, private, and not-for-profit companies, the importance of researching compensation data across demographics, and negotiating salaries, raises, bonuses, and title changes. The panel featured a lively discussion amongst panelists Laurel Palluzi, Director and Head of Legal at solo.io, Susanna McDonald, Vice President and Chief Legal Officer at Association of Corporate Counsel, and Mindy Sircus, Managing Director of In-House Counsel Recruiting at Major, Lindsey & Africa.

Recordings of this webinar series can be accessed on the ChiWIP website here.

Nikki is a cofounder of ChiWIP and currently is a member of its Board of Directors, as well as co-chair of its In-House Advisory Committee and a member of its Special Events Committee. ChiWIP is a vibrant networking and mentoring organization committed to the connection, promotion, and success of Chicagoland-area women working in the field of intellectual property law.

IP Alert: Federal Circuit Finds Motivation to Combine References Absent Obvious Improvement

21 Mar 2023 00:00:00 -0800

On March 13, in Intel Corp. v. PACT XPP Schweiz AG, the Federal Circuit concluded that the “known techniques” rationale may support a motivation to combine two references so long as the combination is a “suitable option” to address a known problem in the art, even if the combination does not result in an obvious improvement to the proposed system. Based on this, the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) because it had misapplied the “known techniques” rationale in finding that there was no motivation to combine two references. The court’s decision may be viewed as lowering the bar for showing a motivation to combine references in the absence of an explicit teaching or suggestion to combine.

PACT’s patent at issue, U.S. Patent No. 9,250,908, relates to multiprocessor systems and how processors in those systems access data. These systems require a mechanism to monitor and maintain cache coherency. One way to maintain such cache coherency is by “snooping” along a shared bus. Kabemoto, one of the references in the obviousness combination, teaches this method. Kabemoto also separately teaches a secondary cache. Bauman, the other reference in the combination, teaches using a global, segmented secondary cache to maintain cache coherency. The relevant claim language at issue requires “an interconnect system interconnecting each of the separated cache segments with each of the processors . . . and each of the separated cache segments with neighboring separated cache segments.”

Intel argued that a person of ordinary skill would replace Kabemoto’s secondary caches with Bauman’s segmented global secondary cache by connecting the global secondary cache to Kabemoto’s snoop bus on the processor. This modification would result in a system with the claimed separated cache and interconnecting system. During the PTAB trial, PACT did not dispute that this combination taught all limitations of the challenged claim. Rather, PACT argued that there was no motivation to combine Kabemoto with Bauman. The PTAB agreed because Kabemoto purportedly already addressed the problem of cache coherency with its snoop bus. The PTAB therefore failed to see why one skilled in the art would use the technique of Bauman to address the issue of cache coherency where it was not an obvious improvement over Kabemoto’s own solution for cache coherency.

Revisiting the motivation to combine issue on appeal, and in particular, the “known techniques” rational for a motivation to combine, the Federal Circuit reversed. The Federal Circuit first emphasized that “universal” motivations known in a particular field provide a motivation to combine even without any teaching or suggestion to combine in any reference itself. Likewise, if a technique has been used to improve a device, and a person of ordinary skill would recognize that this technique could improve similar devices, the technique is obvious if it is within the skill of a person of ordinary skill. Importantly, the Federal Circuit emphasized that so long as a known problem in the field is being addressed by combination of references, it is not necessary that the combination be the best option, but only that it be a suitable option.

Under this legal framework, the Federal Circuit determined that the PTAB had erred in rejecting Intel’s known-technique rationale to combine the references. The PTAB had reasoned that because the Kabemoto reference already addresses the issue of cache coherency, there would be no reason why a person of ordinary skill would implement Bauman’s cache coherency solution in Kabemoto, because Bauman’s technique was not an obvious improvement. The Federal Circuit rejected this reasoning on the basis that under the “known techniques” rationale, a combination merely needs to be suitable to address a known problem in the field—it does not need to be an obvious improvement. Because Bauman’s global secondary cache was used to solve cache coherency in Bauman itself, and because a person of ordinary skill would recognize that a global secondary cache would be a suitable solution to the cache coherency problem in similar systems (such as Kabemoto), there is a motivation to combine the implementation of Bauman’s cache with Kabemoto.

This decision provides additional guidance on the application of the “known techniques” rationale beyond what was articulated earlier by the U.S. Supreme Court in KSR v. Teleflex. In particular, where two references describe devices in the same field, and there is a known technique that has been used to improve the functionality of one device, then a motivation to combine the references may exist if a person of ordinary skill would recognize the technique as a way to improve similar devices. It is not necessary that either reference express a suggestion to use the technique on other devices, or that the combination would result in an obvious improvement. All that is required is a known problem in the art, a solution to the problem found in a reference, and a finding that the combination would not be beyond the capabilities of the ordinary artisan.

For more information on this holding, please contact Fitch Even associate Brian P. Herrmann, the author of this alert.

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IP Alert: Supreme Court to Decide on Lanham Act's Extraterritorial Reach

20 Mar 2023 00:00:00 -0800

On March 21, the U.S. Supreme Court will hear oral argument in Abitron Austria GmbH v. Hetronic International, Inc. to address an important question involving the exterritorial reach of federal trademark law under the Lanham Act. Petitioner Abitron, a European corporation, appeals a $96 million jury verdict awarded against it by a jury in the Western District of Oklahoma for Lanham Act violations of U.S. trademarks and trade dress for radio remote controls used to operate heavy equipment, such as cranes. The verdict was affirmed by the 10th Circuit Court of Appeals. The issue on appeal is whether the Lanham Act reaches extraterritorially to trademark infringement by a foreign entity’s conduct outside of the United States, including sales that never reached the U.S. and that were based on activities that never took place in the U.S. The vast majority of damages in the case were based on products that Abitron had sold abroad to foreign buyers that were not designated for use in the U.S. The Supreme Court docket and briefing may be accessed here.

Abitron argues that the Lanham Act gives no indication that it applies extraterritorially, and that the Act’s lack of guidance for imposing liability based on foreign conduct reinforces that it does not reach that far, even if the foreign conduct produces negative effects within the U.S. Abitron asserts that, because the “use” of trademarks in commerce establishes the foundation for obtaining, maintaining, and enforcing trademark protections under the Act, the Act’s focus is to regulate “uses” in the U.S. Abitron argues that any use that happens outside of the U.S. is beyond the Act’s scope. Abitron argues that if the Act could apply abroad, any such application must be limited to foreign uses likely to cause customer confusion in the U.S.

Hetronic argues that the Lanham Act reaches all commerce that may be regulated by Congress, and that Congress has the power to regulate conduct that substantially affects commerce in the U.S. Hetronic claims that Abitron’s infringement substantially affected U.S. commerce, and that Abitron’s diversion of $96 million in sales from Hetronic is a substantial effect on U.S. commerce. Hetronic further argued that Abitron’s infringement also implicated the Act because it was likely to confuse U.S. consumers. Hetronic argued that infringement occurs when a mark is used misleadingly, and all of Abitron’s uses of Hetronic’s marks were likely to cause confusion in the U.S. Looking to protect its damages verdict, Hetronic asserts that because all of Abitron’s sales resulted from those misleading uses, they were all subject to disgorgement.

The potential impact of this decision is highlighted in the numerous amici curiae that have filed briefs in the appeal, and the Court requested that the United States submit briefing on its position. The Supreme Court also granted the U.S. Solicitor General’s request to participate in the oral argument. The case has the potential to resolve a deepening split in various circuits on tests used to determine the limits of the Lanham Act’s reach.

Fitch Even will continue to monitor developments related to the Hetronic case and will report on how the Supreme Court’s awaited decision may affect the Lanham Act’s extraterritorial application and a trademark owner’s ability to enforce trademarks internationally.

For more information on this topic, please contact Fitch Even partner Joseph F. Marinelli, the author of this alert.

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IP Alert: ITC Determines Claims to Diamond Drill Bits with Certain Physical Measures Are Not Patent-Eligible Under § 101

16 Mar 2023 00:00:00 -0800

On October 26, 2022, in In the Matter of Certain Polycrystalline Diamond Compacts, the International Trade Commission (ITC) affirmed in part an Initial Determination (ID) that various respondents did not violate § 337 of the Tariff Act of 1930 after finding the asserted claims not patent-eligible under 35 U.S.C. § 101. The ID was part of the ITC’s investigation relating to US Synthetic Corporation’s complaint alleging that certain respondents violated § 337 by selling and importing products that infringed claims in US Synthetic’s patents. In the ID, the Administrative Law Judge found that at least one accused product infringed all asserted claims, but, because the claims were directed at non-patent-eligible subject matter, inter alia, § 337 was not violated.

US Synthetic’s patents relate to polycrystalline diamond compacts (PDCs) for use in various mechanical applications, including as an abrasive element in drill bits. In particular, the patents relate to enhanced PDCs that are made using specific manufacturing techniques and result in more durable drill bits. As the ID explained, although the claims recite compositions of matter not found in nature, they also define the invention in terms of structural and design features (e.g., specified grain size and a catalyst), performance measures (e.g., wear parameters and thermal stability), and side effects (e.g., various electrical and magnetic parameters). Claim 1 of U.S. Patent No. 10,507,565 listed below is representative:

1. A polycrystalline diamond compact, comprising:

a polycrystalline diamond table, at least an unleached portion of the polycrystalline diamond table including:

a plurality of diamond grains directly bonded together via diamond-to-diamond bonding to define interstitial regions, the plurality of diamond grains exhibiting an average grain size of about 50 μm or less;

a catalyst occupying at least a portion of the interstitial regions;

wherein the unleached portion of the polycrystalline diamond table exhibits a coercivity of about 115 Oe or more;

wherein the unleached portion of the polycrystalline diamond table exhibits an average electrical conductivity of less than about 1200 S/m; and

wherein the unleached portion of the polycrystalline diamond table exhibits a G_ratio of at least about 4.0×10⁶; and

a substrate bonded to the polycrystalline diamond table.

As is customary under a § 101 analysis, the ITC applied the Alice test to determine patentable subject matter eligibility. At step one, the ITC considered whether the claims at issue were directed to a patent-ineligible concept. The respondents had initially alleged that the claimed properties were ineligible natural phenomena, and later argued they were abstract ideas. The ITC found no issue with the swap and, citing to American Axle—reported in a previous IP Alert here—explained that “[t]here is no indication in the case law that different principles or modes of analysis apply to the judicially recognized exceptions.”

To determine whether the claims were directed to the abstract idea, the ITC considered the patents’ specifications, in particular, the problem the inventors faced. The ITC found that the problem was the premature failure of PDCs, and the invention was focused on creating stronger PDCs by enhancing diamond-to-diamond bonding between the individual polycrystalline diamonds in the PDCs. The ITC then found the claims to be directed to the concept of PDCs that achieve certain performance measures, which it found to be an abstract idea under Alice step one. In support of its position, the ITC noted how the claimed PDC’s properties—for example, G_ratio, thermal stability, electrical and magnetic properties—were not structural elements of the PDCs or indicative of specific microstructures, but resulted from the conditions and input materials that went into manufacturing the PDCs. Regarding the electric and magnetic properties specifically, the ITC noted that while these were indirect measures of other design choices and manufacturing variables, given the tenuous connection between the variables, such properties were “little more than side effects.”

The Final Determination by the ITC was not unanimous, however. In a dissent, Commissioner Schmidtlein expressed how she considered the claims to be directed to PDCs that were defined by specific, objective measurements, and were thus a patent-eligible composition of matter and not abstract under Alice. She noted how the patents’ specifications related the claimed properties with the PDC structure and that labeling and distinguishing certain claim elements as “performance standards” or “side effects” failed to appreciate the concreteness and objectivity of the properties for defining the invention. Commissioner Schmidtlein also disagreed with the majority’s application of the judicial exception doctrine for abstract ideas to claims it viewed as reciting compositions of matter, noting the lack of any precedential case law in which a claim to a composition of matter was deemed ineligible as an abstract idea.

This Final Determination represents a significant development in patentable subject matter doctrine, at least in the ITC, wherein the Commission applied the judicial exception doctrine for abstract ideas to claims that it viewed as being directed to compositions of matter. Commissioner Schmidtlein’s dissent evinces the tension existing between § 101 theory and application as courts continue to grapple with applying the Alice test to novel situations and inventions.

For more information on this holding, please contact Fitch Even associate Alvaro Cure Dominguez, author of this alert.

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IP Alert: USPTO Announces Transition to Electronic Patent Grants

10 Mar 2023 00:00:00 -0800

On February 27, the United States Patent Office (USPTO) announced its transition to issuing electronic patent grants (eGrants) effective April 18, 2023. Official notice is in the Federal Register. Instead of patents being issued on paper and mailed to the correspondence address of record, the eGrants will be made available exclusively in electronic form through the USPTO’s Patent Center.

According to the USPTO, the primary reasons for issuing eGrants is “to reduce pendency of patent applications, foster a green economy by reducing paper waste, and permit complete issued patents to be viewable and printable by both the applicants as well as the public immediately upon issuance in Patent Center.”

While the eGrants will be the official patent grant, the USPTO will provide a paper copy of the patent, referred to as a “ceremonial paper copy,” during a transition period. After the transition period, patent recipients may purchase for a nominal fee a ceremonial paper copy, a certified copy, and a presentation copy (first page of the patent suitable for display). The length of the transitional period is not determined yet.

The USPTO cautions that eGrants may reduce the time which applicants can file continuation applications and recommends that such applications be filed before payment of the issue fee.

For more information on this announcement, please contact Fitch Even partner Mark W. Hetzler, author of this alert.

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IP Alert: Federal Circuit Holds Priority Documents Lack Direction to Support Claims

09 Mar 2023 00:00:00 -0800

On March 6, in Regents of the University of Minnesota v. Gilead Sciences, Inc., the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) invalidating claims of the University of Minnesota’s U.S. Patent No. 8,815,830. This opinion is a cautionary tale for those asserting written description support for a claimed genus based on multiple dependent claims or similarly formatted disclosures.

In the appeal, the University challenged the PTAB’s holding that a prior art publication anticipated claims of the ’830 patent directed to phosphoramidate prodrugs for cancer and antiviral treatments. The parties did not dispute that the publication taught all features in the claims, but disagreed as to whether the claims were entitled to filing dates of priority documents that occurred before the asserted publication. The PTAB found that priority documents lacked written description sufficient to antedate the publication.

At issue on appeal, claim 1 of the ’830 patent recites a compound having a generic structural formula including variable moieties at different positions. The University argued that a series of multiple dependent claims in one of the priority documents provided either ipsis verbis support for claim 1 or provided “blaze marks” to guide a skilled artisan to the patented claim.

Like claim 1 of the ’830 patent, the claims of the asserted priority document recite a generic structural formula including variable moieties at different positions. However, the moieties are defined in a series of multiple dependent claims that depend on other multiple dependent claims. Many of the variable moieties are defined differently in separate multiple dependent claims. The parties characterized the priority claims as a genus and the patented claims as a subgenus.

The University asserted that selection of specific multiple dependent claimsin the priority documentprovided ipsis verbis support. The Federal Circuit disagreed, stating that “[f]ollowing this maze-like path, each step providing multiple alternative paths, is not a written description of what might have been described if each of the optional steps had been set forth as the only option.” The court likened the University’s argument to Yogi Berra’s famed but indeterminate statement “when one comes to a fork in the road, take it.”

The University alternatively asserted that claims of the priority document provided “blaze marks” that would guide one skilled in the art to claim 1 of the ’830 patent. The blaze mark concept is articulated in In re Ruschig and Fujikawa v. Wattanasin, where finding species or subgenera within a large genus is like finding blaze marks on trees in a forest. Quoting Fujikawa, the court found that the University’s priority documents did not direct one to the proposed tree in particular and did not teach the point where one should leave the trail to find it.

The University also alleged that the PTAB erred in not properly considering Ariad Pharms., Inc. v. Eli Lilly. However, the court found that the University mischaracterized Ariad as holding that merely disclosing structural features common to the members of a genus demonstrates possession of and support for the claimed genus. The court noted that Ariad requires more, i.e., a description of a claimed genus by disclosing either a representative number of species falling within the scope of the genus, or structural features common to the members of the genus, either of which must enable one of skill in the art to visualize or recognize the members of the genus.

The parties did not dispute that the priority documents lacked disclosure of a representative number of species of the patented subgenus. Regarding whether common structural features must exist between a claim and a putative priority disclosure, the court noted those features must constitute the near-entirety of the structures being compared. The court again focused on the claims of one of the priority documents and held that the multiple dependencies encompassed a significantly larger genus than claimed in the ’830 patent and did not provide sufficiently common structural features to provide adequate written description.

The court affirmed the PTAB’s holding that the prior art publication anticipated the claims of the ’830 patent because the claims were unsupported by the priority documents. Going forward, practitioners should examine whether compound multiple dependent claims or other analogous disclosures provide adequate written description of claims to a genus or subgenus.

For more information on this holding, please contact Fitch Even partner Giles Turner, the author of this alert.

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Fitch Even Partner Karl Fink to Copresent AIPLA Webinar on Performance Appraisals

23 Feb 2023 00:00:00 -0800

Fitch Even partner Karl R. Fink will copresent an American Intellectual Property Law Association (AIPLA) webinar, “Preparing for Performance Appraisals and Being Your Own Advocate," sponsored by the AIPLA Mentoring Committee on March 2.

The presenters will discuss topics that include information most pertinent to career development and advancement; the importance of record keeping in performance appraisals with supervisors; and presenting yourself and your work: what to include, leave out, how to take credit; and more.

Fitch Even Partner Karl Fink to Copresent AIPLA Webinar on IP Damages

22 Feb 2023 00:00:00 -0800

Fitch Even partner Karl R. Fink will copresent the AIPLA CLE webinar “Damages 2022 Year-in-Review: Lessons and Litigation Strategies” on March 15 from 11:30 a.m. to 1:00 p.m. CST.

During this webinar, the panelists will share their insights on several of 2022’s most interesting and important IP damages cases, focusing on key takeaways from these cases. In addition to Karl, the other featured panelist will be Greg Pinsonneault, Managing Director at LitiNomics, Inc., with Eric Faragi of Baker Botts LLP as moderator.

CLE credit will be available for multiple states. For more information and to register, please visit the AIPLA website.

Fitch Even Sponsors Chicago Women in IP Annual Dinner

09 Feb 2023 00:00:00 -0800

Fitch Even was proud to be a premier sponsor of Chicago Women in IP’s Annual Progressive Networking Dinner on February 8 at The Dalcy in Chicago. The annual dinner is a flagship event for ChiWIP, bringing together IP professionals from leading Chicago corporations, law firms, law schools, and service providers in an innovative format designed to stimulate conversation and maximize networking opportunities.

Fitch Even attorneys attending the dinner included ChiWIP co-founder and board member Nikki Little, ChiWIP board member Calista Mitchell, ChiWIP committee members Amanda Lowerre O'Donnell and Dani Muñoz, and Caroline Albright, Mary Fetsco, Kerianne Strachan, and Hyojeong Son.

Chicago Women in IP is a vibrant and inclusive networking and mentoring organization committed to the connection, promotion, and success of Chicagoland-area women working in the field of intellectual property law.

Navigating the Patent Gauntlet: Considerations for New Product Launch

09 Feb 2023 00:00:00 -0800

Please join Fitch Even for a free webinar, “Navigating the Patent Gauntlet: Considerations for New Product Launch,” on February 23 at 9:00 a.m. PST / 10:00 a.m. MST / 11:00 a.m. CST / 12 noon EST.

A new product launch comes with various considerations and risks. This includes different types of searches such as patentability and freedom-to-operate (FTO). Obstacles may arise; however, there may be alternatives for achieving at least reasonably similar functionality while reducing the risk of infringing an existing patent.

During this webinar, our presenters will share a number of practical tips and cover these topics:

How to assess a new product and perform and analyze a patentability search
How to perform a focused FTO search and identify potential risks
Finding alternatives for proceeding when a potentially troublesome patent is identified during the FTO search
What to do with a potentially troublesome pending patent application
Comparison of the inter partes review, reexamination, and litigation options to reduce patent infringement risk

Our speakers are Fitch Even partners Nicholas T. Peters and David M. Kogan.

Nick focuses his practice on patent licensing, patent post-issuance proceedings, sophisticated patent portfolio management, and the prosecution of complex patents. He uses his litigation experience to advise clients on managing patent risk and leverages his extensive USPTO experience into successful representation in post-issuance proceedings work. Nick was ranked among the top 10 most-active attorneys representing patent owners in IPR proceedings based on data collected from 2013 through 2022.

David has substantial experience in both patent prosecution and litigation, handling matters relating to mechanical, chemical, pharmaceutical, and software technologies. David also counsels clients on worldwide IP portfolio management, strategic development, and licensing. He also has extensive experience performing patentability studies and freedom-to-operate studies for start-ups and global companies contemplating patenting their core technology and/or launching a new product.

A recording of this webinar is available through February 22, 2024.