Fitch Even News Feed Jun 2019 00:00:00 -0800firmwise Even Partner Joe Nabor to Discuss Trademark Fair Use During ABA IPL Webinar<p>Fitch Even partner <a href=";A=2609&amp;format=xml&amp;p=3131">Joseph T. Nabor</a> will be a panelist for the ABA Section of Intellectual Property Law webinar &ldquo;Trademark Fair Use in the Digital World&rdquo; on June 18, 2019, at 12 noon CDT.</p> <p>Part of the Landslide Webinar Series, the program will explore the state of the law on trademark fair use with an emphasis on the doctrine&rsquo;s applicability to common digital scenarios and will provide an overview on recent judicial developments. The panelists will also summarize the factors weighing for or against trademark fair use, discuss how to employ those factors to evaluate risk scenarios, and share how to implement best practices and tips for assessing trademark fair use fact patterns.</p> <p>1.5 hours of CLE credit will be available. For more information and to register, please visit the <a href=";sc_cid=CE1906DIG-1">ABA website.</a></p>Professional Activities14 Jun 2019 00:00:00 -0800 Alert: USPTO Modifies Patent Term Adjustment Procedures Following <i>Supernus</i><p>The USPTO has modified its patent term adjustment (PTA) procedures in view of the Federal Circuit&rsquo;s January 2019 decision in <i>Supernus Pharmaceuticals, Inc. v. Iancu. </i>As detailed in the <a href="">Federal Register notice</a> published on May 9, &quot;the USPTO will continue to make the patent term adjustment determinations indicated in patents under the existing regulations using information recorded in its PALM system.&quot; However, a patentee who holds there was no identifiable effort it could have taken to conclude prosecution of its application may make a timely request for reconsideration of the PTA, providing relevant information not recorded in the PALM system. The USPTO's decision on such a patentee&rsquo;s request for reconsideration &ldquo;will apply the Federal Circuit's decision in <i>Supernus</i> in view of the information presented by the patentee.&rdquo;</p> <p>As reported in our earlier alert <a href=";an=87411&amp;format=xml&amp;p=5486">here</a>, in January the Federal Circuit overturned a USPTO decision reducing the number of days of PTA for a patent assigned to Supernus. Briefly, the Federal Circuit agreed with applicant Supernus that there was nothing Supernus could have done during a period of time from the filing of a request for continued examination until the filing of the information disclosure statement. As a result, Supernus received an additional 546 days of PTA (for the period from February 22, 2011, to August 21, 2012).</p> <p>In a footnote in this recent Federal Register notice, the USPTO provides a reminder that the PTA reduction at issue in <i>Supernus</i> &ldquo;can be avoided by the prompt submission of the information disclosure statement.&rdquo;</p> <p>For more information on the modified procedures, please contact Fitch Even partner <a href=";A=2573&amp;format=xml&amp;p=5482">Timothy R. Baumann</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts31 May 2019 00:00:00 -0800 Women's Conflict in the Legal Workplace and the Bias That Built It<p>Please join Fitch, Even, Tabin &amp; Flannery LLP for a free webinar presented with Chicago Women in IP (ChiWIP), &ldquo;<a href="">Understanding Women's Conflict in the Legal Workplace and the Bias That Built It</a>,&rdquo; on Thursday, June 13, at 10:00 am PDT / 11:00 am MDT / 12 noon CDT / 1:00 pm EDT.</p> <p>A common misconception is that women inherently have challenging relationships with other women at work. But the research of our guest speakers, Andrea Kramer and Alton Harris, has shown this is patently untrue. They will provide real-world advice and tactics for how both women and men in the legal profession can avoid workplace conflict and overcome deeply rooted biases in a traditionally male-dominated industry.</p> <p>During this webinar, our presenters will share insights on the following:</p> <ul type="disc"> <li>Gender bias in the workplace, including women&rsquo;s same-gender conflicts</li> <li>How gendered workplaces disadvantage women</li> <li>How to build supportive work environments to help women succeed and advance</li> </ul> <p>Attorneys <a href="">Andrea S. Kramer</a> and <a href="">Alton B. Harris</a> are coauthors of <i>It's Not You, It's the Workplace: Women's Conflict at Work and the Bias That Built It. </i>Andie is a partner at McDermott Will &amp; Emery and an adjunct professor at Northwestern University School of Law. Andie is a member of the Illinois Supreme Court Commission on Professionalism&rsquo;s Diversity and Inclusion Advisory Board and cofounder and chair of the Women's Leadership and Mentoring Alliance.</p> <p>Alton Harris was a founding partner of Ungaretti &amp; Harris and is a retired partner from Nixon Peabody. Al is a frequent speaker and author on gender bias in the workplace. He has mentored and advised women in many career fields, focusing on the communication skills they need to advance despite the prevalence of negative gender stereotypes.</p> <p>Our moderator will be Fitch Even partner <a href=";A=2598&amp;format=xml&amp;p=5482">Nikki L. Little</a>. Nikki is an IP litigator who represents clients in cases across a broad spectrum of technologies. She has participated in numerous jury and bench trials on behalf of clients ranging from individual inventors to multinational corporations. Nikki also represents clients in post-issuance proceedings in the USPTO in parallel with ongoing district court proceedings. She is cofounder and chair-elect of ChiWIP.</p> <p>A recording of this webinar is available through June 12, 2020.<br /> &nbsp;</p>Past Webinars30 May 2019 00:00:00 -0800 Alert: Legislators Publish Plan for Bill to Clarify Patentable Subject Matter Eligibility Under 35 U.S.C. ยง 101<p>On May 22, a bipartisan group of Congressional lawmakers&nbsp;<a href="">released</a> a one-page plan to rewrite section 101 of the Patent Act. This plan is not final and is purportedly designed to generate feedback before drafting a final bill. Though quite brief, this plan seems clearly aimed at legislatively overruling the Supreme Court&rsquo;s judicial exceptions to patent eligibility.</p> <p>Since the 2012 and 2014 landmark Supreme Court decisions <i>Mayo Collaborative Servs. v. Prometheus Labs., Inc.</i> and <i>Alice Corp. Pty. Ltd. v. CLS Bank Int&rsquo;l </i>were released, inventors, business owners, patent practitioners, courts, and USPTO examiners alike have struggled with how to apply the Supreme Court&rsquo;s framework in <i>Mayo/Alice</i> for evaluating whether an invention is eligible subject matter for patenting under 35 U.S.C. &sect; 101. Perhaps at the core of the confusion is that while the Supreme Court found fault with previous tests for patent eligibility, the Court failed to provide a clear objective test that would legally suffice instead. Further confusion seems to have arisen from the Court&rsquo;s judicial musings bringing prior art elements into the mix, notwithstanding that two other tests of patentability are already explicitly based upon a comparison of the invention to the prior art. Many patents have been invalidated and many patent applications have failed to mature into issued patents as the apparent result of this situation.</p> <p>The full draft of the proposed changes reads as follows:</p> <p style="margin-left: 40px;"><b>Section 100:</b></p> <p style="margin-left: 40px;">(k) The term &ldquo;useful&rdquo; means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.</p> <p style="margin-left: 40px;"><b>Section 101:</b></p> <p style="margin-left: 40px;">(a) Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.</p> <p style="margin-left: 40px;">(b) Eligibility under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.</p> <p style="margin-left: 40px;"><b>Section 112:</b></p> <p style="margin-left: 40px;">(f) Functional Claim Elements &mdash; An element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.</p> <p style="margin-left: 40px;"><b>Additional Legislative Provisions:</b></p> <p style="margin-left: 40px;">&nbsp; &nbsp; &nbsp; &nbsp;&bull;&nbsp; &nbsp;The provisions of section 101 shall be construed in favor of eligibility.&nbsp;&nbsp;<br /> &nbsp; &nbsp; &nbsp; &nbsp;&bull;&nbsp; &nbsp;No implicit or other judicially created exceptions to subject matter eligibility, including &ldquo;abstract ideas,&rdquo; &ldquo;laws of nature,&rdquo; or &ldquo;natural phenomena,&rdquo; shall be used to determine patent eligibility under section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated.<br /> &nbsp; &nbsp; &nbsp; &nbsp;&bull;&nbsp; &nbsp;The eligibility of a claimed invention under section 101 shall be determined without regard to: the manner in which the claimed invention was made; whether individual limitations of a claim are well known, conventional or routine; the state of the art at the time of the invention; or any other considerations relating to sections 102, 103, or 112 of this title.</p> <p>The Senate Judiciary Subcommittee on Intellectual Property will be holding hearings on&nbsp;June 4, 5, and 11&nbsp;&ldquo;to solicit additional stakeholder feedback and&nbsp;to hear from a diverse set of witnesses on the problems different industries are facing with our nation&rsquo;s patent eligibility laws.&rdquo; Feedback on the proposal can be emailed to <a href=""></a>. &nbsp;</p> <p>For more information on the proposed revisions, please contact Fitch Even partner <a href=";A=2610&amp;format=xml&amp;p=5482">Steven G. Parmelee</a>, author of this alert.</p> <p>&nbsp;</p> <p><b>Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts28 May 2019 00:00:00 -0800 Even Attorneys Participate in IPLAC 2019 Annual Meeting<p>On May 7, at the <a href="">Intellectual Property Law Association of Chicago</a> (IPLAC) Annual Meeting, Fitch Even partner <a href=";A=2617&amp;format=xml&amp;p=5482">Alisa C. Simmons</a>, current president of the IPLAC Educational Foundation, was on hand as five local high-school graduates were awarded college scholarships. Each year, the IPLAC Educational Foundation awards scholarships to Chicago Public School students planning to study engineering, science, or pre-law in college.</p> <p>Other Fitch Even attorneys in attendance at the meeting included IPLAC members <a href=";A=2609&amp;format=xml&amp;p=5482">Joseph T. Nabor</a>, chair of the Historical Records Committee; <a href=";A=2616&amp;format=xml&amp;p=5482">Joseph E. Shipley</a>, past IPLAC president; <a href=";A=16703&amp;format=xml&amp;p=5482">Evan Kline-Wedeen</a>, co-chair of the Field Day Committee; <a href=";A=13120&amp;format=xml&amp;p=5482">Andrew C. Wood</a>, co-vice chair of the Young Members Committee, and <a href=";A=13638&amp;format=xml&amp;p=5482">Margaret &ldquo;Peggy&rdquo; Herrmann</a>.</p> <p>Founded in 1884, IPLAC is the oldest intellectual property law association in the United States. Fitch Even attorneys have served as leaders and members of the organization since its inaugural meeting.</p>Professional Activities23 May 2019 00:00:00 -0800 Alert: Estoppel and Reduction in Ability to Compete Not Enough to Confer Appellate Standing to a Noninfringing IPR Petitioner<p>Petitioners appealing adverse Patent Trial and Appeal Board (PTAB) decisions must show that they are engaged in, or have nonspeculative plans to engage in, conduct potentially covered by the challenged claims to have sufficient standing for the Federal Circuit to have jurisdiction over the appeal. On May 13, in <a href=""><i>AVX Corp. v. Presidio Components, Inc.</i></a>, the Federal Circuit clarified the requirements for standing. The court also stated that a petitioner who lacked standing to appeal might not face the estoppel that normally attaches to a challenger after a final decision in the PTAB.</p> <p>AVX challenged its competitor Presidio&rsquo;s patent directed to ceramic capacitors in an <i>inter partes</i> review (IPR), and the PTAB found some, but not all, of the challenged claims unpatentable. AVX appealed the decision with regard to the upheld claims. The Federal Circuit had <a href=";an=79510&amp;anc=180&amp;format=xml&amp;p=5486">previously found</a> that &ldquo;in IPR appeals, &lsquo;an appellant must . . . supply the requisite proof of an injury in fact when it seeks review of an agency&rsquo;s final action in a federal court,&rsquo; by creating a necessary record in this court, if the record before the Board does not establish standing.&rdquo; Presidio argued that AVX has not established an injury in fact, and thus lacked Article III standing to appeal the decision.</p> <p>First, AVX argued that an injury in fact was established by the PTAB&rsquo;s rejection of its obviousness challenges to the upheld claims because the statutory estoppel provision, 35 U.S.C. &sect; 315(e), would prevent AVX from asserting the same challenges if the upheld claims were asserted against it in the future. The Federal Circuit disagreed. Specifically, the court found that estoppel under &sect; 315(e) does not constitute an injury in fact when the petitioner is not engaged in activity that would give rise to a possible infringement suit.</p> <p>Notably, the court also declined to decide whether &sect; 315(e) even has an estoppel effect when an IPR petitioner lacks Article III standing to appeal. The court did not decide this issue because the estoppel question was not before the court.</p> <p>Second, AVX argued that an injury in fact was established by the PTAB&rsquo;s decision upholding certain claims because it reduced AVX&rsquo;s ability to compete with Presidio under the competitor standing doctrine. Under this doctrine, the Federal Circuit stated that the appealing party must show that &ldquo;the challenged government action nonspeculatively threatened economic injury to the challenger by the ordinary operation of economic forces.&rdquo; The court previously held that IPR petitioners lacked standing where they had no &ldquo;concrete plans for future activity that creates a substantial risk of future infringement or likely cause the patentee to assert a claim of infringement.&rdquo; Here, the court found that AVX had not shown that it was engaging in, or had plans to engage in, any conduct covered by the upheld claims. As a result, the court dismissed the appeal for lack of jurisdiction.</p> <p>This decision is relevant to any party who is considering challenging a patent in an IPR but does not currently practice, or have any plans to practice, any claims of the patent. Under those circumstances, petitioners may not have standing to appeal an adverse decision from the PTAB and may wish to reconsider whether to proceed with filing an IPR. Conversely, as noted above, the Federal Circuit has not yet addressed whether the &sect; 315(e) IPR estoppel provisions will apply in a later proceeding.</p> <p>For more information on this decision, please contact Fitch Even partner <a href=";A=2587&amp;format=xml&amp;p=5482">Paul B. Henkelmann</a>, author of this alert.</p> <p><i>Fitch Even associate </i><a href=";A=16703&amp;format=xml&amp;p=5482"><i>Evan Kline-Wedeen</i></a><i> contributed to this alert.</i>&nbsp;<br /> <b><br /> <br /> Fitch Even IP Alert<sup>&reg;</sup></b>&nbsp;</p>IP Alerts20 May 2019 00:00:00 -0800 Alert: Federal Circuit Affirms CBM Jurisdiction and Patent Ineligibility of Invention for "Improving the Trader"<p>On April 30, in <i><a href="">Trading Technologies Int&rsquo;l, Inc. v. IBG LLC, Interactive Brokers LLC<span>,</span></a></i> the Federal Circuit issued a decision clarifying the scope of covered business method (CBM) review proceedings. Holding that the challenged patents do not meet the criteria for the technological invention exception to the CBM review criteria, the court affirmed the Patent Trial and Appeal Board (PTAB) holding that a patent owned by Trading Technologies met the criteria for CBM review and also held that the challenged claims are patent ineligible under 35 U.S.C. &sect; 101.</p> <p>The challenged patent relates to a graphical user interface for electronic trading, which was the subject of a petition for CBM review filed by IBG and a related entity, Interactive Brokers.</p> <p>To be eligible for CBM review, the patent must be a &ldquo;CBM patent.&rdquo; This is defined in section 18(d)(1) of the America Invents Act as &ldquo;a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, <i>except that the term does not include patents for technological inventions</i>&rdquo; (emphasis added). The only issue of CBM eligibility that Trading Technologies contested is whether its patents were for technological inventions. Under the relevant USPTO regulation, when evaluating whether a patent is for a technological invention, the PTAB must evaluate two questions: (1) whether the claimed subject matter as a whole recites a technological feature that is novel and nonobvious over the prior art and (2) whether it solves a technical problem using a technical solution.</p> <p>The Federal Circuit declined to consider whether the first question should apply, refusing to decide whether its recent holding in <i>Versata Development Group, Inc.</i> set aside the novelty and nonobviousness language of the regulation. Instead, the court reasoned that regardless of whether the first prong should apply, the claims do not solve a technical problem using a technical solution under the second consideration. Trading Technologies argued that the claims addressed problems related to aspects such as speed, efficiency, usability, intuitiveness, and visualization. The Federal Circuit, agreeing with the PTAB, explained that although the patents solve the problem of displaying trading information &ldquo;in an easy to see and interpret graphical format,&rdquo; this makes the <i>trader</i> faster and more efficient&mdash;not the computer. The court explained they did not need to review the PTAB&rsquo;s analysis under the first consideration since they agreed with the PTAB on the second consideration.</p> <p>Next, the Federal Circuit reviewed the PTAB&rsquo;s conclusions regarding patent eligibility, applying the Supreme Court&rsquo;s two-step framework by first evaluating whether the claims are directed to a patent-ineligible concept and, second, if so, determining whether the additional elements transform the nature of the claim into a patent-eligible application.</p> <p>Focusing on the first step, the court evaluated differences between the claimed invention and the admitted prior art disclosed by the patent. The court concluded that the only difference between prior art Figure 2 and the claims is that the claimed graphical display includes P&amp;L values instead of the prior art price values. According to the court, calculating P&amp;L values from price is nothing more than an abstract idea&mdash;thus, a patent-ineligible concept. The court discounted Trading Technologies&rsquo; arguments to the contrary, noting that &ldquo;arranging information along an axis does not improve the functioning of the computer, make it operate more efficiently, or solve any technological problem.&rdquo;</p> <p>Under the second step, the court likewise concluded that the application of the P&amp;L calculation to a trading screen could not supply an inventive concept, and therefore affirmed the PTAB&rsquo;s holding that the challenged claims are patent ineligible.</p> <p>This case emphasizes the intertwined relationship between CBM eligibility and patent eligibility and perhaps expands CBM eligibility by broadening the interpretation of &ldquo;technological invention.&rdquo;</p> <p>For more information on this ruling, please contact Fitch Even partner <a href=";A=2596&amp;format=xml&amp;p=5482">Thomas F. Lebens</a>, author of this alert.</p> <p><i>Fitch Even law clerk Zachary Van Engen contributed to this alert. </i></p> <p><b><br /> </b></p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts10 May 2019 00:00:00 -0800 Even Attorney Peggy Herrmann Named Alumna of the Year by Chicago-Kent College of Law SBA<p>On April 25, Fitch Even attorney <a href=";A=13638&amp;format=xml&amp;p=5482">Margaret &ldquo;Peggy&rdquo; Herrmann</a> was honored with the Alumna of the Year award by the Student Bar Association of Chicago-Kent College of Law. Peggy was recognized for her outstanding dedication to Chicago-Kent, which includes speaking on career panels at the law school and mentoring law students. In addition, she is a member of the Chicago-Kent Young Alumni Council and recently copresented an &ldquo;IP Bootcamp&rdquo; as part of the alumni CLE programming.</p> <p>This latest recognition follows several service awards Peggy earned while a student at Chicago-Kent. During her years there, she was honored with the Dean&rsquo;s Distinguished Public Service Award, Clinton E. Stryker Distinguished Service Award, the Chicago-Kent Certificate of Service, and the Clinton E. Stryker Outstanding Commitment to Service.</p> <p>Peggy joined Fitch Even as an associate in September 2017. She is a registered patent attorney whose practice currently encompasses patent preparation and prosecution, patent post-issuance proceedings, and product clearance and legal opinions.</p>Professional Activities02 May 2019 00:00:00 -0800 Alert: No Section 101 Appeal from an IPR<p>Today, in <i><a href=";%20Company.pdf">Neptune Generics, LLC v. Eli Lilly &amp; Company</a></i>, the Federal Circuit held that patent eligibility may not be attacked on appeal by an unsuccessful petitioner who has lost an <i>inter partes</i> review (IPR) proceeding. This decision answers an open question concerning IPR practice and procedure.</p> <p>Eli Lilly owns a patent directed toward a method for administering a drug compound known as pemetrexed. Two generic drug companies and an entity called Neptune Generics collectively brought nine petitions for <i>inter partes</i> review of the patent, attacking the patent on various grounds of obviousness. The Patent Trial and Appeal Board (PTAB) held in favor of the patent owner in each case, and the petitioners appealed.</p> <p>On appeal, the court first discussed the petitioners&rsquo; obviousness challenges to the patent, and concluded that the PTAB had not erred in holding the claims not to have been proven obvious. The petitioners then argued that the claims were not directed to patent-eligible subject matter, asserting that this issue is &ldquo;properly raised because eligibility is a question of law and in this appeal, there are no factual issues that must be decided.&rdquo;</p> <p>The Federal Circuit disagreed, reasoning that Congress had expressly limited the scope of IPR to certain prior art challenges that arise under sections 102 and 103 of the Patent Act. Patent eligibility is an issue that arises under section 101 of the Patent Act. Because a petitioner cannot attack patent eligibility in an IPR, the court concluded that likewise the petitioner could not raise patent eligibility issues on appeal.</p> <p>Today&rsquo;s decision is important for parties concerned with patent eligibility in IPR proceedings. For more information, please contact Fitch Even partner <a href=";A=2589&amp;format=xml&amp;p=5482">Allen E. Hoover</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts26 Apr 2019 00:00:00 -0800 USA 2019 Recognizes Fitch Even and Partner Tim Maloney<p>Fitch, Even, Tabin and Flannery LLP has once again been ranked as a leading intellectual property law firm in Illinois in the 2019 edition of<i> Chambers USA: America&rsquo;s Leading Lawyers for Business</i>, a prestigious research-based directory and one of the most widely cited referral sources for legal services in the U.S.</p> <p>In this year&rsquo;s listing, <i>Chambers</i> notes in part that the Fitch Even team is known for its &ldquo;strong reputation for work in the contentious and noncontentious spheres of patent, trademark and copyright law&rdquo; and the firm&rsquo;s &ldquo;substantial experience handling post-grant, reexamination and <i>inter partes</i> reviews at the USPTO.&rdquo; One client is quoted as saying, &ldquo;<i>They are great; they have a deep understanding of our business and the technologies. They give the best service possible.&quot; </i>Another source shared, &ldquo;<i>The team is excellent; they are very good at what they do, [in] how accessible they are, and [in] their communication.&quot;</i></p> <p>In addition, partner <a href=";A=2601&amp;format=xml&amp;p=5482">Timothy P. Maloney</a> was once again singled out by <i>Chambers</i> as a notable practitioner in the field of intellectual property law in Illinois. <i>Chambers</i> reports that clients observed that Tim is<i> &ldquo;a great litigator&rdquo; </i>who is<i> &quot;very analytical and thoughtful.&rdquo; </i>Tim&rsquo;s practice entails all aspects of intellectual property enforcement and defense, with an emphasis on representing plaintiffs in patent litigation, often multi-party complex litigation. He is an established trial lawyer with a strong track record in numerous jury and bench trials. Tim has handled over 100 litigation-related patent post-issuance proceedings in the USPTO, consistently achieving favorable outcomes.</p> <p>Published annually by London-based Chambers &amp; Partners, <i><a href="">Chambers USA</a></i> determines its rankings through confidential, in-depth interviews with clients and outside attorneys as well as through independent research and assessment of recent work done. Inclusion in the guide is based solely on the findings of the Chambers research team. Criteria used includes legal ability and experience, capability and effectiveness, client service, commercial vision and business understanding, diligence, value for money, strength and depth of the firm at every level, standards of professional conduct, and other qualities most valued by clients.&nbsp;<br /> &nbsp;</p>Firm News25 Apr 2019 00:00:00 -0800