Fitch Even News Feed

IP Alert: Federal Circuit Rules False Patent Claims Can Trigger Lanham Act Liability

03 Oct 2024 00:00:00 -0800

On October 3, in Crocs, Inc. v. Effervescent, Inc., the Federal Circuit held that a party who falsely alleges that its product is patented and innovative can be liable under the Lanham Act. Specifically, where “a party falsely claims that it possesses a patent on a product feature” and where that party “advertises that product feature in a manner that causes consumers to be misled about the nature, characteristics, or qualities of its product,” a competitor can bring suit under the Lanham Act.

Crocs is the well-known manufacturer of slippers, clogs, and other footwear. Dawgs, Inc., a competitor, asserted that Crocs was falsely advertising its products. Crocs’ footwear products are made of a foamed resin material that Crocs calls “Croslite.” In Crocs’ advertising, the company has marketed this material as “patented,” “proprietary,” and “exclusive.”

In fact, as Crocs conceded, the Croslite material is not patented. The Lanham Act generally allows competitors to sue a company that has made a false statement about the “nature, characteristic, or quality” of its goods that is materially misleading to consumers. Dawgs brought a Lanham Act claim against Crocs based on this false attribution of patented status.

An earlier line of cases has held that the Lanham Act does not apply to claims of authorship or inventorship. In Baden Sports, Inc. v. Molten USA, Inc., for example, the defendant had advertised its product as made of an “innovative” material. The defendant, however, was not in fact the party that had invented the material. The court held that, even if the “innovative” statement might lead consumers to assume that the defendant was the inventor of the material, the identity of the inventor does not relate to the “nature, characteristic, or quality” of the goods as was required to sustain a Lanham Act case.

Based on the above line of cases, the district court dismissed Dawg’s Lanham Act claim. But the Federal Circuit reversed. Here, the allegation was that “Crocs’ statements referring to the closed-cell resin that [it] call[s] ‘Croslite’ as ‘exclusive,’ ‘proprietary,’ and/or ‘patented’” causes customers to believe that “Crocs’ molded footwear is made of a material that is different than any other footwear.” Dawgs also alleged that “Crocs’ statements deceived consumers into believing that its competitors’ molded footwear products are ‘made of inferior material compared to Crocs’ molded footwear.’” The court held that, unlike a false allegation of inventorship, these statements did relate to the “nature, characteristic, or quality” of Crocs’ and Dawgs’ products. So, the court allowed the Lanham Act case to proceed.

In short, a false statement that “we invented this stuff” is likely not actionable under the Lanham Act. But a false statement that “this stuff is patented, unique, and better than anyone else’s stuff” might be actionable. This might be a fine line to draw in some cases. Nonetheless, those Fitch Even clients that use the patented status of their products in marketing materials should take note of this case.

For more information on this ruling, please contact Fitch Even partner Allen E. Hoover, author of this alert.

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Fitch Even Again Achieves Mansfield Rule Certification Plus Status

02 Oct 2024 00:00:00 -0800

Fitch Even is thrilled to announce that the firm has again achieved Mansfield Certification Plus, solidifying our commitment to diversity, equity, and inclusion (DEI).

Mansfield is a year-long, structured certification process that we’ve committed to since 2021 to ensure all talent at our firm has a fair and equal opportunity to advance into leadership. The focus is on opening the door wider and ensuring that opportunities for advancement are transparent and inclusive for everyone. By asking that at least 30% of our talent pools considered for leadership roles consist of underrepresented groups and that our advancement processes are transparent, Mansfield creates a level playing field for all.

To achieve our Plus designation, we voluntarily provided data to Diversity Lab to show our progress and outcomes of our efforts to broaden talent pools and increase the visibility of our advancement processes. This transparency allows us and Diversity Lab to celebrate progress and to identify areas with continued opportunities for improvement.

Data shows that firms that remain committed and accountable to the Mansfield Certification process year-over-year are making substantial progress in creating inclusive talent practices and diversifying their leadership ranks. We have experienced positive progress at our firm since we joined Mansfield, and we remain committed to taking measurable actions to ensure that our processes are—and remain—inclusive.

Fitch Even is pleased to have reached this significant milestone and we will continue to build teams that reflect the diversity of our clients and communities while providing innovative counsel and exceptional service.

We recognize that our efforts are ongoing. As such, Fitch Even has recommitted to Midsize Mansfield for the 2024–2025 period.

Diversity Lab’s press release can be found here.

Fitch Even Reaffirms Commitment to 2024–2025 Mansfield Rule Certification

16 Aug 2024 00:00:00 -0800

Fitch Even is proud to announce its continued commitment to promoting diversity, equity, and inclusion within the legal profession by participating in the Mansfield Rule Certification Process for the 2024–2025 period.

The Mansfield Rule, facilitated by Diversity Lab, is a pioneering initiative that aims to boost diversity in law firm leadership by broadening the pool of candidates considered for significant roles and opportunities. This includes equity partner promotions, senior leadership positions, formal client pitch opportunities, and attorney recruiting.

Fitch Even's decision to engage once again in this rigorous certification process underscores the firm's dedication to fostering an inclusive environment where attorneys from underrepresented groups are recognized for their talents and have equal opportunities for advancement. By aligning with the Mansfield Rule's standards, Fitch Even aims to not only enhance the diversity of its own team but also to positively influence the legal industry as a whole.

"Participation in the Mansfield Rule Certification process is an essential part of our ongoing efforts to ensure that Fitch Even reflects the rich diversity of the clients and communities we serve," said Mark Hetzler, Managing Partner of Fitch Even.

To achieve Mansfield Certification, Fitch Even will undertake a range of activities throughout the 2024–2025 cycle, including tracking and reporting its consideration process for a broad range of leadership and governance roles, equity partner promotions, and attorney recruiting. The firm will also participate in knowledge sharing and training opportunities offered by Diversity Lab to further embed diversity and inclusion principles into its organizational culture.

"We're excited to build on the progress we've made and to continue to challenge ourselves through the Mansfield Rule Certification process," said Calista Mitchell, Chair of Fitch Even's Diversity Committee. "Our continued participation in this initiative is just one of many steps we are taking to live out our values of diversity and inclusion every day."

Diversity Lab’s press release can be found here.

Fitch Even Partner Dani Muñoz Recognized as WIPR 2024 Leader

12 Aug 2024 00:00:00 -0800

Fitch Even partner Dani K. Muñoz was selected for inclusion in the 2024 list of World Intellectual Property Review (WIPR) Leaders.

WIPR Leaders is a comprehensive guide to the world's leading intellectual property practitioners. The list includes over 2000 lawyers specializing in patent, trademark, and copyright practices. Nominees underwent thorough evaluation by a dedicated research team, which examined their practice history, industry expertise, notable cases, and contributions to the IP field through writing and teaching.

Fitch Even Boosts Litigation Team, Adds Duo of IP Heavyweights & Forges Powerhouse Alliance with MoloLamken

31 Jul 2024 00:00:00 -0800

Fitch Even is thrilled to announce the expansion of our litigation group by welcoming two accomplished IP litigators, Robert (Bob) Whitman and Mark S. Raskin, who have joined the firm’s Chicago office as partners. Fitch Even is further pleased to announce the formation of a strategic alliance with a leading dispute resolution law firm, MoloLamken.

Bob and Mark are top tier dispute resolution attorneys, successfully handling many large stakes patent, trademark, trade secret, and copyright disputes. Their expertise also lends depth to Fitch Even’s highly successful monetization and licensing practice. “Bob and Mark’s extensive practice will undoubtedly serve as a significant asset to Fitch Even,” said Mark Hetzler, Fitch Even’s Managing Partner.

In an extraordinary move, Fitch Even and MoloLamken formed a strategic alliance to bring best-in-class intellectual property litigation services to clients. Founded by courtroom superstars Steven Molo and Jeffrey Lamken, MoloLamken specializes in complex disputes and investigations. Fitch Even’s Managing Partner Mark Hetlzer said, “While the firms remain independent and wholly autonomous, the strategic alliance is a unique way to bring together two of the nation’s most respected law firms in their areas to collaborate and deliver high value services by leveraging the firms’ combined strengths.” MoloLamken represents clients around the world before juries, judges, arbitral forums, and appellate courts, including the Supreme Court of the United States. Learn more about its team and stellar record here.

Fitch Even is a leader in providing a full range of intellectual property legal services.

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.