Fitch Even News Feed Apr 2019 00:00:00 -0800firmwise Copyright Protection in a Changing Legal Landscape<p>Please join Fitch, Even, Tabin &amp; Flannery LLP for a free webinar, <a href="">&ldquo;Ensuring Copyright Protection in a Changing Legal Landscape</a>,&rdquo; on Thursday, May 2, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.</p> <p>The recent Supreme Court decision in <i>Fourth Estate Public Benefit Corp. v., LLC, </i>established that a copyright owner may not file an infringement suit until the U.S. Copyright Office has acted on the copyright owner&rsquo;s application to register its copyright in the work. Moving quickly to register copyrights is now an important step in safeguarding your rights.</p> <p>During this webinar, our presenters will share insights on the following:</p> <ul> <li>The practical effects of the <i>Fourth Estate Public Benefit Corp. v.</i> decision and other benefits of early registration</li> <li>Strategies for protecting copyright rights in work product produced by employees</li> <li>Strategies for obtaining and maintaining necessary permissions to use third-party materials in advertisements and promotions</li> <li>Recent updates enacted by Congress to benefit music publishers through the Music Modernization Act</li> </ul> <p>Our speakers will be Fitch Even attorneys <a href=";A=2617&amp;format=xml&amp;p=5482">Alisa C. Simmons</a> and <a href=";A=16851&amp;format=xml&amp;p=5482">Kerianne A. Strachan</a>.</p> <p>Alisa has extensive experience in U.S. and foreign trademark prosecution, trademark litigation, and brand selection. She also provides counsel on copyright registration and enforcement, advertising review, and sweepstakes and promotions.</p> <p>Kerianne focuses her practice on domestic and foreign trademark prosecution, clearance, enforcement, and brand protection. She counsels clients in industry sectors including consumer products, household appliances, retail, and educational services. &nbsp;</p> <p>CLE credit has been approved for California and Illinois and is pending in Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but please note registration is required. To reserve your place, please <a href="">REGISTER HERE</a>.<br /> <br /> <br /> &nbsp;</p>Upcoming Webinars17 Apr 2019 00:00:00 -0800 Even Welcomes Attorney Brett Smith to Chicago Office<p>Fitch, Even, Tabin &amp; Flannery is pleased to announce that <a href=";A=2618&amp;format=xml&amp;p=5482">Brett J. Smith</a> has rejoined the firm&rsquo;s Chicago office as a partner. A registered patent attorney, Brett has a diverse practice encompassing patent prosecution and preparation, product clearance and legal opinions, patent portfolio management, patent licensing, and IP litigation. He has counseled clients ranging from startups to multinational corporations, working with industry sectors that include automotive technologies, medical devices, electronic products, industrial systems, and packaging.</p> <p>Brett originally joined Fitch Even as an associate after passing the bar in 2009. After moving his family to Michigan in 2016, he joined a midsized IP law firm based in Southfield where he focused his practice on domestic and foreign patent prosecution in the mechanical and electromechanical arts, primarily working with clients in the automotive industry.</p> <p>Brett earned his J.D. from Chicago-Kent College of Law. He holds a B.S. in Mechanical Engineering from Michigan State University.</p> <p>We are delighted to welcome Brett back to the Fitch Even team!<br /> &nbsp;</p>Firm News16 Apr 2019 00:00:00 -0800 Even Andrew Wood Speaks at ISBA Event at Loyola University<p>On April 9, Fitch Even attorney <a href=";A=13120&amp;format=xml&amp;p=5482">Andrew C. Wood</a> served on a panel of three attorneys who shared their insight on legal practice with law students during an event sponsored by the Illinois State Bar Association Law Student Division and hosted by Loyola University Chicago School of Law in Chicago.</p> <p>During the interactive program, titled &ldquo;Behind the Curtain,&rdquo; Andrew and his copresenters discussed what law students should know prior to beginning their first jobs following graduation, answering questions and offering advice based on the presenters&rsquo; own experience in their varied practices.</p>Professional Activities15 Apr 2019 00:00:00 -0800 Even Partner Alisa Simmons to Speak on ABA Panel on Brexit<p>Fitch Even partner <a href=";A=2617&amp;format=xml&amp;p=5482">Alisa C. Simmons</a> will be a featured panelist at an ABA CLE program on &ldquo;Brexit: What You Now Need to Know to Protect and Enforce Your IP Rights in the EU and UK,&rdquo; taking place on April 12 in Arlington, Virginia, during the 2019 ABA-IPL Annual Meeting and 34th Intellectual Property Law Conference.</p> <p>During the program, Alisa and IP lawyers from the UK and Canada will provide up-to-date guidance on the UK's anticipated exit from the European Union. The panel will explore the agreements that may be put into place and the resulting questions regarding the protection and enforcement of EU-based IP rights including trademarks, copyrights, registered designs, and geographical indications.</p> <p>To learn more about the conference and its offerings, please visit the <a href="">ABA website</a>.</p> <p>&nbsp;</p>Professional Activities11 Apr 2019 00:00:00 -0800 Even Partner John Lyhus Published in AIPPI Japan Journal<p>An article written by Fitch Even partner <a href=";A=2600&amp;format=xml&amp;p=5482">John E. Lyhus</a>, with contributions from Fitch Even law clerk Zachary Van Engen, is featured in the Japanese version of the March 2019 edition of <i>A.I.P.P.I.</i>, the journal of the International Association for the Protection of Intellectual Property in Japan.</p> <p>In the article, &ldquo;<a href="">Federal Circuit Clarifies Secondary Meaning and Infringement Issues for Product Design Trade Dress</a>,&rdquo; John discusses the importance of the Federal Circuit&rsquo;s decision in <i>Converse, Inc. v. ITC</i> and explains how it provides clarity on how the Federal Circuit analyzes secondary meaning and trademark infringement issues for product design trade dress.</p>Professional Activities11 Apr 2019 00:00:00 -0800 Even Attorney Peggy Hermann to Speak at Chicago-Kent College of Law<p>Fitch Even attorney <a href=";A=13638&amp;format=xml&amp;p=5482">Margaret &ldquo;Peggy&rdquo; Hermann</a> will co-facilitate an &ldquo;IP Law Boot Camp for Non-IP Attorneys&rdquo; on April 25 at Chicago-Kent College of Law in Chicago. The program is part of a CLE series jointly presented by the school&rsquo;s Office of Alumni Relations and the Alumni Board in partnership with the Office of Continuing Legal Education.</p> <p>Peggy and her copresenters will provide a practical overview of the four basic areas of intellectual property law: copyrights, patents, trademarks, and trade secrets. The CLE program is offered free of charge to Chicago-Kent alumni and guests. For more information and to register, please visit the Chicago-Kent <a href="">website</a>.</p>Professional Activities11 Apr 2019 00:00:00 -0800 Even Attorneys Assist with INTA Regional Moot Court Competition<p>Fitch Even partner <a href=";A=2617&amp;format=xml&amp;p=3131">Alisa C. Simmons</a> served as Chair of the 2019 Saul Lefkowitz Chicago Regional Moot Court Competition, held on February 9, which featured 14 student teams participating from 11 law schools located in Chicago and other cities in the Midwest. This is the second year Alisa has served in this role, and she has participated in the Chicago Regional Committee since 2009.</p> <p>Fitch Even partner <a href=";A=2609&amp;format=xml&amp;p=3131">Joseph T. Nabor</a> served as a brief-reading judge and member of the Chicago Regional Committee for the competition, and he was last year&rsquo;s National Committee Chair. Fitch Even partner <a href=";A=2600&amp;format=xml&amp;p=5482">John E. Lyhus</a> also served as a brief-reading judge, as he has each year since 2008. In addition, Fitch Even attorney <a href=";A=13120&amp;format=xml&amp;p=5482">Andrew C. Wood</a> acted as bailiff during the Chicago Regional for the second straight year. Fitch Even law clerk Zachary Van Engen was a member of the Chicago-Kent College of Law team that competed at the Chicago Regional.</p> <p>The National Final Competition was held at the U.S. Court of Appeals for the Federal Circuit in Washington, D.C., on March 17.</p> <p>This <a href="">annual moot court competition</a> was established in 1990 by the <a href="">International Trademark Association</a> (INTA) in honor of <a href="">Saul Lefkowitz</a>, past chair of the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. It is the only moot court competition in the U.S. with a focus on trademark and unfair competition law. The late <a href="">Dolores K. Hanna</a>, former Fitch Even partner and the first woman to serve as an INTA president, was instrumental in the creation of this competition. Its objective is to introduce law students to important issues arising in U.S. trademark and unfair competition law.&nbsp;<br /> &nbsp;</p>Professional Activities05 Apr 2019 00:00:00 -0800 Even Patent Agent Tom James Serves as CIPA Judge at CPS Student Science Fair<p>On March 22, Fitch Even patent agent <a href=";A=12841&amp;format=xml&amp;p=5482">Thomas A. James</a> served as a special judge at the <a href="">69th Annual Chicago Public Schools Student Science Fair</a> at the Illinois Institute of Technology. Designated as the 2019 Exhibition of Student Science, Technology, Engineering, and Mathematics (STEM) Research, this year&rsquo;s theme was &ldquo;Exploring the Unexplored Through STEM.&rdquo;</p> <p>Tom joined other patent practitioners and local law school students to review the exhibits and select the recipients of special awards sponsored by the Chicago Intellectual Property Alliance (CIPA). For the sixteenth consecutive year, CIPA awarded cash prizes for the three &ldquo;Most Inventive&rdquo; entries, as well as assistance with the preparation and filing of a patent application to one of the winning students.</p> <p>Over 300 middle-school and high-school students were previously selected from a field of thousands of local participants in nine regional science fairs to present their projects and accompanying papers at the citywide science fair. The CIPA judges sought out the most innovative projects among these, interviewing many of the student exhibitors as part of the judging process.</p> <p>After evaluating many noteworthy contenders, the CIPA judges awarded the prizes to the following students:</p> <ul> <li>First place went to Aneesh Anagha from Walter Payton College Prep for her project &ldquo;Nanomedicine: a Study of Exosomal Endocytosis.&rdquo;</li> <li>Second place was awarded to Sofia Rogel from Von Steuben High School for the second year running, this year for her project &ldquo;Thermo-Dynamic Joint Contracture Brace.&rdquo;</li> <li>Third place went to Abhishek Joshi from Lane Tech High School for his project &ldquo;Effect of Temperature on Algal Photosynthesis.&rdquo;</li> </ul> <p>For more information on this annual event, please visit the Chicago Public Schools Student Science Fair <a href="">website</a>.</p> <p>Fitch, Even, Tabin &amp; Flannery is a cofounder of CIPA. Fitch Even partner <a href=";A=2609&amp;format=xml&amp;p=5482">Joseph T. Nabor</a> is a current CIPA board member and partner <a href=";A=2610&amp;format=xml&amp;p=5482">Steven G. Parmelee</a> served as co-chair of the Science Fair Committee from 2006 to 2017.<br /> <br /> &nbsp;</p>Professional Activities01 Apr 2019 00:00:00 -0800 Alert: Federal Circuit Reaffirms Claim Preambles May Not Be Limiting<p>On March 26, in <i><a href="">Arctic Cat Inc. v. GEP Power Products, Inc.</a></i>, the Federal Circuit rejected an argument that intended use statements in claim preambles were limitations on those claims. In so doing, the Federal Circuit reaffirmed the principle that claim preambles sometimes may be given no weight in claim construction. This decision provides guidance for patent applicants who seek to rely on intended use statements contained in the preambles of claims. Because the practice in many other countries differs somewhat, this decision is of particular interest to Fitch Even patent prosecution clients who are filing applications in the United States based on a priority application drafted elsewhere.</p> <p>GEP challenged two patents owned by Arctic Cat via <i>inter partes</i> review at the USPTO. Both patents related to electrical distribution systems intended for snowmobiles and similar small recreational vehicles. Two sets of claims included preambles with the language &ldquo;personal recreational vehicle,&rdquo; indicating that a potential use of the claimed subject matter was in a personal recreational vehicle. Neither set of claims, however, recited any other parts of a personal recreational vehicle, such as, for example, a motor or a chassis. The claims did not refer to a vehicle beyond the preamble.</p> <p>GEP&rsquo;s challenge to these claims was based on prior art references that described electrical distribution systems. Although the prior art references included a general reference to vehicles, none of them disclosed personal recreational vehicles. Arctic Cat therefore argued that the references did not disclose all the limitations of the claims, based on the lack of this disclosure of personal recreational vehicles. The USPTO, however, agreed with GEP and invalidated these claims.</p> <p>On appeal, the Federal Circuit affirmed this part of the USPTO&rsquo;s decision. The court observed the general rule that &ldquo;a preamble is not limiting &lsquo;where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.&rsquo;&rdquo; For one set of claims, the court held that the preamble&rsquo;s recitation of &ldquo;[a] power distribution module for a personal recreational vehicle&rdquo; merely identified an intended use for the claimed power distribution module and therefore did not require a personal recreational vehicle. The court further found that the electrical components specified in the claims themselves constituted a structurally complete invention.</p> <p>The court reached the same conclusion for the other set of claims, in which the preamble recited &ldquo;[a] personal recreational vehicle comprising. . . .&rdquo; The court found that the electrical components specified in the claims themselves again constituted a structurally complete invention, and the claims did not refer to the vehicle stated in the preamble. The court also observed that the specification disclosed nothing about any claimed vehicle beyond the general idea that the electrical components could be used in a power distribution module.</p> <p>For these reasons, even though the claim preambles included the language &ldquo;personal recreational vehicle,&rdquo; prior art references could be applied that did not disclose a personal recreational vehicle. Based on this conclusion, the court affirmed the invalidity of one of the patents. For the second patent, the court disqualified as prior art one of the references that the USPTO used to invalidate the claims. The court remanded the proceedings for this patent for reconsideration of invalidity with the disqualified reference removed from consideration.</p> <p>Note that the outcome likely would have been different if the claim specified something that relied on the preamble. For example, instead of &ldquo;A personal recreational vehicle comprising [an electrical system],&rdquo; the claim might have read &ldquo;A personal recreational vehicle including a chassis, a light, and an electrical system powering said light, said electrical system comprising. . . .&rdquo; The reasoning in the <i>Arctic Cat</i> decision suggests that this alternative language, which is expressly tied to the claim preamble, might more likely result in the preamble being deemed limiting.</p> <p>This decision provides guidance for applicants during the application drafting and prosecution process. It shows that intended use statements included in the preamble of a claim may not limit that claim and may leave it vulnerable to challenge from a broader range of prior art than might be otherwise expected. Applicants may therefore prefer to avoid routinely including such intended use statements in the preambles of claims or, at minimum, take care when doing so. Applicants may also prefer to include desired limitations expressly in the body of the claim or in dependent claims.</p> <p>This guidance is likely to be useful for applications originating outside of the U.S. Such applications are often pursued in the U.S, either as a national phase entry of a PCT application or as a U.S. application claiming priority to a non-U.S. application. In many countries, intended use statements may be routinely recited in the preamble of a claim and may constitute limitations on the claim. Accordingly, claims should be reviewed when pursued in the U.S., and applicants should consider appropriate amendments at that time.</p> <p>For more information on this case, please contact Fitch Even partner <a href=";A=2593&amp;format=xml&amp;p=5482">Rudy I. Kratz</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts01 Apr 2019 00:00:00 -0800 Alert: Federal Circuit Finds Claims Containing Natural Product Are Not Directed to a Judicial Exception<p>On March 15, in <a href=""><i>Natural Alternatives Int&rsquo;l., Inc. v. Creative Compounds, LLC</i></a>, the Federal Circuit rejected a &ldquo;law of nature&rdquo; challenge to claims to a dietary supplement containing a naturally occurring amino acid and a method for treatment of a patient using the dietary supplement.</p> <p>Because the claims specified &ldquo;using a natural product in unnatural quantities to alter a patient&rsquo;s natural state, to treat a patient with specific dosages outlined in the patents,&rdquo; the court determined that&mdash;at least under the initial claim construction applied by the district court&mdash;the claims were not drawn to a patent-ineligible law of nature. The court further held that claims to a method of manufacture of the supplement likewise were not directed toward a law of nature.</p> <p>Natural Alternatives owns patents directed to a dietary supplement containing beta-alanine and methods for its use and manufacture. Beta-alanine is a naturally occurring amino acid that assists with alleviating muscle contraction. When Natural Alternatives sued Creative Compounds, Creative Compounds moved for immediate judgment of invalidity under Rule 12(c), asserting that the claims were directed to a natural law and therefore not patent-eligible under section 101 of the Patent Act.</p> <p>Accepting Natural Alternatives&rsquo;s claim construction, the district court applied the two-part <i>Alice/Mayo</i> test: Laws of nature, natural phenomena, and abstract ideas are not patent-eligible (step one) unless &ldquo;additional elements &lsquo;transform the nature of the claim&rsquo; into a patent-eligible application, i.e., whether there is an &lsquo;inventive concept&rsquo;&rdquo; (step two). After considering this test, the district court granted Creative Compound&rsquo;s 12(c) motion, concluding without discovery or trial that the claims to the supplement, the patient treatment method, and the method of manufacture were all directed to natural laws and therefore patent-ineligible.</p> <p>On appeal, the Federal Circuit reversed and held that when Natural Alternatives&rsquo;s proposed claim constructions were applied with the factual allegations of the complaint and all reasonable inferences, the patent eligibility of the supplement and treatment method claims was plausibly established. For this reason, the court determined that it was improper for the district court to have summarily held the claims invalid under section 101.</p> <p>The asserted treatment method claims were directed to a method of regulating hydronium ion concentrations in human tissue and increasing anabolic working capacity in a human, respectively, &ldquo;by providing an amount of beta-alanine to blood or blood plasma effective to increase beta-alanylhistidine dipeptide synthesis&rdquo; in human tissue. The Federal Circuit held that on the record before it these claimed methods were &ldquo;directed to patent eligible new ways of using an existing product, beta-alanine,&rdquo; which is permitted as a &ldquo;new and useful process&rdquo; under section&nbsp;101. Further, the Federal Circuit found that even though the active ingredient &ldquo;occurs in nature and is consumed as part of a human diet,&rdquo; the claims did more, in fact, than utilize a natural law. They required specific steps, such as specifying a compound to be administered to accomplish the claimed result, and contained a dosage limitation, which did not exist in nature and exceeded natural levels. Thus, on the record before it, the Federal Circuit held that the method claims covered &ldquo;using a natural product in unnatural quantities to alter a patient&rsquo;s natural state, to treat a patient with specific dosages outlined in the patents.&rdquo;</p> <p>Turning to the asserted product claims, these were &ldquo;directed to specific treatment formulations that incorporate natural products, but . . . have different characteristics and can be used in a manner that beta-alanine as it appears in nature cannot.&rdquo; One patent claimed a combination of glycine and beta-alanine with a synergistic effect that the individual amino acids did not have. Also, the question whether the &ldquo;dietary supplement&rdquo; in the claims was well-understood, routine, and conventional was still a fact at issue.</p> <p>With respect to the manufacturing claims, the Federal Circuit held that the representative claim of the &rsquo;610 patent, which claims the manufacture of a dietary supplement with beta-alanine, was also not directed to natural law or product of nature but to &ldquo;the manufacture of a human dietary supplement with certain characteristics.&rdquo; While the court remanded the eligibility question for the claims to the supplement and the treatment method, it appears that the court reversed altogether the patent-ineligibility holding for the method of manufacture claims, stating &ldquo;[w]e do not see, therefore, how a claim to the manufacture of a non-natural supplement would be directed to the law of nature or natural product.&rdquo;</p> <p>The judgment, however, was not unanimous. Judge Reyna concurred with the majority to remand, but dissented on the reason for doing so. Specifically, Judge Reyna stated that the majority opinion &ldquo;relies on a construction that improperly imports limitations into the claims and is contradicted by the written description.&rdquo; In addressing claim 1 of the &rsquo;084 patent (one of the product claims), Judge Reyna held that the claim is a &ldquo;natural substance . . . applied by wholly conventional and natural means.&rdquo; Further, he concluded that Natural Alternatives&rsquo;s proposed construction of &ldquo;dietary supplement&rdquo; was contrary to its plain meaning. However, Judge Reyna surmised that a proper claim construction will take place on remand and pondered whether &ldquo;the time has come for [the Federal Circuit] to reconsider whether a Rule 12(c) motion based on &sect;&nbsp;101 should be decided before claim construction.&rdquo;</p> <p>A takeaway from this decision is that a claim that specifies quantities or specific treatment may allow a product, method, or manufacture that utilizes a natural product to overcome a patent-eligibility challenge. The decision also provides guidance on how district courts and litigants should address Rule 12(c) and other similar challenges to patent eligibility.</p> <p>For more information on this case, please contact Fitch Even attorney <a href=";A=13638&amp;format=xml&amp;p=5482">Margaret A. Herrmann</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts20 Mar 2019 00:00:00 -0800