Fitch Even News Feed

Fitch Even Welcomes Patent Agent Joshua Devorkin to Chicago Office

25 Jul 2024 00:00:00 -0800

Fitch Even is pleased to announce that Joshua Devorkin recently joined the firm’s Chicago office as a patent agent.

Prior to joining Fitch Even, Josh served as an Intellectual Property Engineer at a Japanese multinational corporation that manufactures construction, mining, forestry and military equipment, as well as diesel engines and industrial equipment like press machines, lasers and thermoelectric generators. He also was a patent examiner with the U.S. Patent and Trademark Office, where he worked primarily in the field of power generation systems, heating and cooling systems, fluid control devices, wireless transmitters, and radioisotope production devices. In addition, he was a Patent Analyst for a chemical manufacturing company at the forefront of developing advanced materials for lithium-ion batteries.

Josh earned an M.S. in Law from Northwestern Pritzker School of Law and a B.S. in Plasma Engineering from the University of Illinois.

We are happy to welcome Josh to the Fitch Even team!

IP Alert: Are Terminal Disclaimers Destined for Termination?

17 Jul 2024 00:00:00 -0800

Applicant-submitted terminal disclaimers tie similar co-owned patents to a common expiration date and typically serve to ensure that a later-filed continuation application lives no longer than its parent. The USPTO recently proposed changing terminal disclaimer practice in a very substantive way. Simply put, the new approach would essentially render unenforceable all of the claims of any patent having a terminal disclaimer to a patent that itself had any claims invalidated in view of prior art. The request for comment period recently closed and reputedly drew a lot of negative public commentary.

After issuing this request for comment, the Supreme Court issued their decision in Loper Bright Enterprises v. Raimondo, effectively overruling Chevron, a 40-year-old precedent that prompted courts to offer deference to government agencies with respect to their rule-making power. The Loper Bright decision confers power on the courts to exercise independent judgment when interpreting ambiguous federal statutes and to no longer defer to the agencies that administer them for guidance in such regards.

What does this mean for the USPTO and this proposed new rule for terminal disclaimers? To be sure, if the rule is adopted and later challenged, the agency cannot turn to Chevron for support. In general, the Federal Circuit has not granted the USPTO deference for substantive patent law, which includes issues such as patentability, novelty, and obviousness. However, the court has previously given deference to the USPTO under some circumstances, namely related to procedural rules. For example, in Cooper Technologies Co. v. Dudas, the Federal Circuit deferred to the USPTO’s interpretation of the phrase “original application” in the statute concerning inter partes reexamination.

If the USPTO moves forward with the proposed changes regarding terminal disclaimer practice, and those changes are deemed substantive rather than merely procedural, the courts will have their usual latitude to consider how well the new rule squares with applicable statutory provisions. If the proposed changes are deemed to be only procedural, however, the agency will not have the same interpretive largess that existed at the time of publishing the rule change for public comment – now, procedural or not, the courts can weigh in to assess whether the USPTO went too far.

How this significant change in administrative law practice may impact these recently proposed changes to terminal disclaimer practice remains to be seen. At the very least, this decision should give the USPTO one more shoulder over which they need to be looking.

For more information on this topic, please contact Fitch Even summer associate Lindsay Boehme or partner Steven G. Parmelee, authors of this alert.

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Fitch Even Partner Amanda Lowerre O'Donnell to Speak at ChiWIP's IP Case Review

13 Jun 2024 00:00:00 -0800

Fitch Even partner Amanda Lowerre O'Donnell will be a speaker at the IP Case Review panel hosted by Chicago Women in IP (“ChiWIP”). This virtual event is scheduled for June 20 at 12:00 p.m. CDT.

Amanda will be a co-panelist discussing the most recent and impactful cases on patent, trademark, copyright, and tradesecret law from the last past year, and cases and rules to watch this year.

CLE credit is pending. For more information and to register, please visit here.

Fitch Even Partner Alisa Simmons Honored with IPLAC's Distinguished Member Service Award

07 Jun 2024 00:00:00 -0800

Fitch Even partner Alisa C. Simmons was honored with IPLAC’s 2024 Distinguished Member Service Award at IPLAC’s Annual Meeting & Dinner on May 8, 2024.

This award is presented to an IPLAC member who has dedicated their time, resources, wisdom and more to IPLAC and its members. IPLAC noted “Alisa has embodied every aspect of the award for many years through her service as IPLAC President, long-time Chair of the Dinner Committee, and President of the Educational Foundation.”

The Intellectual Property Law Association of Chicago (IPLAC) is the oldest intellectual property law association in the United States. It was founded in 1884 and has since been at the forefront of shaping the development of intellectual property law. IPLAC's mission is to bring together professionals interested in intellectual property issues to promote high standards of professional ethics, deliver exceptional legal education, and foster a community among its members.

Chambers USA 2024 Recognizes Fitch Even

06 Jun 2024 00:00:00 -0800

Fitch, Even, Tabin and Flannery has again been ranked a leading intellectual property law firm in Illinois in the 2024 edition of Chambers USA, a prestigious research-based directory and one of the most widely cited referral sources for legal services in the U.S.

In this year’s listing, Chambers notes in part that the Fitch Even team is known for its “strong reputation for work in the contentious and noncontentious patent matters” and the firm’s “substantial experience handling post-grant, reexamination, and inter partes reviews at the USPTO.” Chamber also notes that Fitch Even “is often engaged to handle portfolio management, licensing transactions and prosecution needs.”

Clients have commented on the firm's approach, with one noting, "They are excellent in terms of understanding our technology and the market." Another client commended the team's ability to simplify complex legal challenges, stating, "The team has a practical way of boiling down complicated issues into a series of much simpler constructs that aid business decision making."

Moreover, Fitch Even's dedication to detail and comprehensive understanding of patent intricacies and market dynamics have not gone unnoticed. A client highlighted, "The team at Fitch, Even, Tabin & Flannery pay tremendous attention to detail, and has deep patent expertise and patent market knowledge."

Published annually by London-based Chambers & Partners, Chambers USA 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 technical 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.

Fitch Even Welcomes 2024 Summer Associates

29 May 2024 00:00:00 -0800

We're excited to welcome Ethan Tibbs and Lindsay Boehme as our summer associates for 2024. Ethan, a second-year student at Chicago-Kent College of Law with a background in Biomedical Engineering, is also a registered Patent Agent. Lindsay, also in her second year, attends the University of New Hampshire-Franklin Pierce School of Law and has degrees in Chemical Engineering, Biochemistry, and a PhD in Chemical Engineering.

We appreciate having Ethan and Lindsay join us this summer, and we look forward to working with them in the months ahead!

IP Alert: Federal Circuit Overrules Previous Obviousness Rosen-Durling Test for Design Patents

29 May 2024 00:00:00 -0800

On May 21, the Federal Circuit, in an en banc decision of LKQ Corp. v. GM Global Tech. Operations LLC, has overruled the Rosen-Durling test applied in evaluating obviousness of design patents. Instead, the Federal Circuit applied the Graham v. John Deere Co. requirements for obviousness, and further defined by KSR, that is already applied in utility patents.

The Rosen-Durling two-part test provides that (1) a primary reference must be “basically the same” as the challenged design, and (2) that any secondary references must be “so related” to the primary reference that features in one would suggest application of those features to the other. In rejecting the Rosen test, the court asserted that these tests were too rigid and the requirements that limits a primary reference to designs that are “basically the same” as the claimed design imposes limitations “absent from § 103’s broad and flexible standard.” The court continued stating that this “basically the same” requirement is additionally inconsistent with the Supreme Court’s analysis in Whitman Saddle and the general guidance in KSR.

The Court also rejected the second factor under the Rosen-Durling test concluding that the “so related” requirement is similarly at odds with the broad standard for obviousness set forth in § 103 and Supreme Court precedent. Instead, the Federal Circuit confirmed that the Graham factors already being applied in utility patents should apply for design patents based on an analogous art requirement, and that there is no threshold similarity or “basically the same” requirement to qualify as prior art. The Court did acknowledge the difference between utility patents and design patents in determining analogous art. As such, the Federal Circuit concluding that the first part, of the two part test applied in utility patents to determine analogous art, can similarly be applied to determine “whether the art is from the same field of endeavor as the claimed invention.” The court, however, acknowledged differences in applying the second part where “if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” The decision did not define how the “reasonably pertinent” and “analogous art” considerations are to be applied, and instead left it open to be developed through future cases.

For more information on this topic, please contact Fitch Even partner Steven M. Freeland, author of this alert.

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IP Alert: USPTO Proposes New Rules for AIA Trial Practice

08 May 2024 00:00:00 -0800

On April 18, the USPTO announced a Notice of Proposed Rulemaking (“Notice”), which sets forth proposed rules affecting AIA trial proceedings for public comment. These proposed rules relate primarily to how the Patent Trial and Appeal Board (PTAB) will handle discretionary denial of petitions for inter partes review (IPR) and post grant review (PGR). These proposed rules will be of interest to parties that are, or could be, involved in IPR and PGR proceedings.

The proposed rules set forth:

a new separate discretionary denial briefing procedure that:
- requires patent owners to request discretionary denial via a maximum 10-page brief, to be filed within two months from the date the petition has been granted a filing date by the PTAB;
- allows the petitioner to file a 10-page opposition within one month after the patent owner requests discretionary denial; and
- allows the patent owner to file a 5-page sur-reply within two weeks after the filing of the opposition brief; and
- generally disallows discretionary denial issues to be addressed in a patent owner preliminary response absent permission from the PTAB;
requirements for discretionary denial of petitions raising previously addressed prior art or arguments under 35 U.S.C. §325(d);
considerations for discretionary denial of “serial” and “parallel” petitions, including:
- formal definitions for “serial” and “parallel” petitions;
- codification of the first five of the seven factors identified in the precedential General Plastic decision for determining whether to deny institution of a “serial” petition;
- a prohibition against “parallel” petitions absent a showing of good cause by the petitioner, via a nine-factor balancing test, which shall be submitted with the petition or in a separate 5-page paper, and to which the patent owner may submit a 5-page response by the preliminary response deadline;
a prohibition against discretionary denial arguments relating to parallel petitions and previously considered art or arguments under 35 U.S.C. §325(d) when determining whether to allow institution of a petition accompanied by a motion for joinder; and
requiring a joint request for termination of a proceeding before or after institution to be accompanied by a written settlement agreement, if any.

Those familiar with the Advanced Notice of Proposed Rulemaking issued in April 2023 by the USPTO, discussed here, may observe that many of the previously proposed changes were not included in this Notice.

In view of the potential effect of the proposed rules on parties involved in IPR and PGR proceedings, all stakeholders are advised to review the Notice and consider submitting comments. The USPTO is accepting public comments through June 18, 2024.

For more information on this topic, please contact Fitch Even partner Paul B. Henkelmann, author of this alert.

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IP Alert: FTC Announces Rule Banning Noncompetes

24 Apr 2024 00:00:00 -0800

The Federal Trade Commission (FTC) recently issued a final rule that bans noncompete clauses (“noncompetes”) nationwide. The FTC believes the new rule will protect the ability of workers to change jobs, increase innovation, and foster new business formation. The new rule will go into effect 120 days after it is published in the Federal Register.

Noncompetes are often used in employment contracts and impose conditions that prevent workers from taking a new job or starting a new business in a certain field. Noncompetes typically force workers to either stay in a job they want to leave or switch to a lower-paying field. The FTC estimates 30 million workers are subject to a noncompete clause.

In the final rule, the Commission determined that noncompetes are an unfair method of competition, and therefore a violation of Section 5 of the FTC Act (ban on unfair methods of competition). The FTC found that noncompetes tend to: negatively affect competitive conditions in labor markets by inhibiting efficient matching between workers and employers; negatively affect competitive conditions in product and service industries, inhibiting new business formation and innovation; and can lead to increased market concentration and higher prices for consumers.

Under the FTC’s new rule, existing noncompetes for the vast majority of workers will no longer be enforceable. Employers will be required to provide notice to workers other than senior executives who are bound by an existing noncompete that they will not be enforcing any noncompetes against them. Existing noncompetes for senior executives can remain in force, but employers are banned from entering into or attempting to enforce any new noncompetes, even if they involve senior executives. The final rule defines senior executives as workers earning more than $151,164 annually and who are in policy-making positions.

One argument in favor of noncompetes is that they protect a company’s investment in their personnel particularly investments made concerning senior executives. Anticipating this sort of argument, the FTC found that employers have several alternatives to noncompetes that still enable firms to protect their investments without having to enforce a noncompete.

More specifically, the FTC argued that trade secret laws and non-disclosure agreements (NDAs) both provide employers with well-established means to protect proprietary and other sensitive information. The FTC also asserted that instead of using noncompetes to lock in workers, employers that wish to retain employees can compete for the worker’s services by improving wages, benefits and/or working conditions.

As mentioned, the new rule is currently scheduled to go into effect 120 days after it is published in the Federal Register. However, several legal challenges are expected to be directed against the new rule in the near future. Given this, the ultimate fate of the new rule is uncertain.

For more information on this topic, please contact Fitch Even partner Timothy R. Baumann.

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IP Alert: USPTO Issues Guidance for Examining Means-Plus-Function and Step-Plus-Function Claim Limitations

10 Apr 2024 00:00:00 -0800

On March 18, the USPTO issued a guidance document on how to examine claims that recite functional limitations without necessarily using the term “means” under 35 U.S.C. § 112. The guidance document aims to improve clarity, consistency, and predictability of examination under § 112 for different technology areas.

The guidelines explain how to determine whether § 112(f) applies using a three-prong analysis based on the presence or absence of the term “means,” the recitation of sufficient structure, and the recitation of a specific function. The guidance document also provides examples of sufficient structure and specific function for different types of computer-implemented inventions, such as software, algorithms, databases, and graphical user interfaces. The document notes that a generic computer component, such as a processor, memory, or display, does not necessarily provide sufficient structure for a specific computer function, unless the specification clearly links or associates the function and the component.

The guidance document provides further guidance on evaluating whether § 112(b) definiteness is met by identifying the corresponding structure, material, or acts in the specification that perform the claimed function and determining whether they are adequate to support the full scope of the claimed function. Examples are provided of corresponding structure, material, or acts for different types of computer-implemented functional claim limitations, such as software modules, algorithms, data structures, and graphical elements. The guidance document explains how to assess the adequacy of the corresponding structure, material, or acts by considering the level of detail, the use of generic terms or overly broad language, and the consistency with the enablement requirement of § 112(a).

The guidance document is not represented as changing current practice. That said, the author suspects that the issuance of this guidance heralds an intention to review patent applications more rigorously in these regards.

For more information on the revised guidelines, please contact Fitch Even partner Steven G. Parmelee, author of this alert.

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