Fitch Even News Feed Jul 2020 00:00:00 -0800firmwise Alert: USPTO Launches Fast-Track Appeals Pilot Program Today<p>The USPTO has announced that beginning today the Patent Trial and Appeal Board (PTAB) will begin accepting petitions for expedited resolution of <i>ex parte</i> appeals under the newly launched Fast-Track Appeals Pilot Program. An appellant who files an <i>ex parte</i> appeal and subsequently receives notice that the appeal has been docketed may now file a petition, accompanied by a $400 fee, to expedite the review of the appeal.</p> <p>The standard fee to file an <i>ex parte</i> appeal is $800, and the fee to submit the briefs to the PTAB is $2,240 for so-called large entities (the fees are halved for small entities). A few years ago the PTAB suffered a large backlog, and it was not unusual for two to three years to pass before the PTAB rendered its decision. In more recent times the USPTO has calculated that the average pendency is now down to 14 months. The USPTO estimates that petitioners using the Fast-Track Appeals Pilot Program will garner an appeals decision in about six months. The pilot program will be available until 500 appeals have been granted fast-track status or until July 2, 2021, whichever happens first.</p> <p>For more information on this program, please see the USPTO&rsquo;s <a href="" target="_blank">Federal Register Notice</a> and the PTAB's <a href=";utm_content=&amp;utm_medium=email&amp;utm_name=&amp;utm_source=govdelivery&amp;utm_term=">webpage</a> on the USPTO website. If you have questions on the program, please contact Fitch Even partner <a href=";A=2610&amp;format=xml&amp;p=5482">Steven G. Parmelee</a>, author of this alert, or any member of Fitch Even&rsquo;s PTAB Practice team.<br /> <b><br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts02 Jul 2020 00:00:00 -0800 Alert: Supreme Court Rules Can Trademark Name<p>Today, in <a href=""><i>United States Patent and Trademark Office et al. v.</i></a><i>, </i>the U.S. Supreme Court held that a generic word can be granted trademark protection when it is part of a &ldquo;.com&rdquo; domain name, ruling in favor of in its petition to trademark its name.</p> <p>The USPTO had previously refused registration, maintaining that &ldquo;; was a generic term for online reservation services. Upon review, the District Court for the Eastern District of Virginia determined that &ldquo;; was not a generic term, unlike the standalone term &ldquo;booking.&rdquo; The Court of Appeals for the Fourth Circuit agreed, saying &ldquo;; is not generic because consumers would primarily understand the term to be a specific business. The USPTO then appealed to the Supreme Court, citing serious anticompetitive consequences if web addresses containing generic terms could be trademarked.</p> <p>In an 8 to 1 vote, the Court affirmed the Fourth Circuit&rsquo;s ruling, holding &ldquo;A term styled &lsquo;; is a generic name for a class of goods or services only if the term has that meaning to consumers. . . . In circumstances like those this case presents, a '' term is not generic and can be eligible for federal trademark registration.&rdquo;</p> <p>Further analysis including the probable effects of this ruling will be provided in an upcoming alert.<br /> <b><br /> Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts30 Jun 2020 00:00:00 -0800 Even Welcomes 2020 Summer Associates<p>We are pleased to welcome law students Irfan Hassam-Malani and Prestin Van Mieghem as our summer associates for 2020. Irfan is attending the University of Illinois College of Law, with an expected graduation date of May 2021. Prestin is a student at Chicago-Kent College of Law and is also working toward a May 2021 graduation.</p> <p>Although our summer looks different this year, we truly appreciate that Irfan and Prestin can join us, and we look forward to working with them in the months ahead!</p>Firm News30 Jun 2020 00:00:00 -0800 Commitment to Social Justice<p><em>A Message from Managing Partner Mark Hetzler</em></p> <p>Fitch Even is deeply saddened and shares the collective outrage felt across our country and around the world following the recent deaths of George Floyd, Breonna Taylor, and Ahmaud Arbery. We recognize these tragic losses are only the most recent instances of countless systemic injustices perpetrated against people of color. At this pivotal moment in history, we reflect on our ongoing responsibilities as legal professionals and citizens to work harder to create the world we wish to see.</p> <p>At the firm, our objective is to promote a culture of inclusion and to attract and retain diverse professionals because of that culture. Outside our firm, our people actively volunteer in our local communities to attempt to redress the effects of the injustices that permeate our society.&nbsp;Fitch Even directs volunteer efforts to a number of community organizations that support the most vulnerable and resource-starved parts of our population, including <a href="">Direct Effect Charities</a> and <a href="">Back 2 School Illinois</a>/<a href="">Back 2 School America</a>, among others. In addition, our attorneys have represented minority clients on a pro bono basis to battle institutional discrimination for many years.</p> <p>We acknowledge the moral imperative to not only continue these efforts but to explore and implement new ways to make tangible contributions that will make a meaningful difference in the pursuit of justice and equity for all.&nbsp;In support of our hope for a better tomorrow, our pledge is to increase our investment of time and monetary support for organizations that empower and promote equality for the African-American community, including continuing our involvement with local community organizations and donations to the <a href="">United Negro College Fund</a>, as well as identifying and partnering with additional organizations that share our mission.<br /> <br /> Sincerely,<br /> &nbsp;</p> <p><img src=" Signature.jpg" alt="" width="135" vspace="0" hspace="0" height="45" border="0" align="absmiddle" /><br /> <br /> Mark W. Hetzler<br /> Managing Partner<br /> &nbsp;</p>Firm News29 Jun 2020 00:00:00 -0800 Even Attorneys Named to 2020–21 IPLAC Leadership Posts<p>Three Fitch Even attorneys were recently appointed to <a href="">Intellectual Property Law Association of Chicago</a> (IPLAC) leadership roles for 2020&ndash;21.</p> <p><a href=";A=2617&amp;format=xml&amp;p=5482">Alisa C. Simmons</a> was elevated to Chair of the Dinner Planning Committee and reappointed Vice Chair of the Historical Records Committee. Alisa will also continue in her role as President of the IPLAC Educational Foundation, which has been awarding scholarships since 1991 to Chicago Public School students who plan to study engineering, science, or pre-law in college.</p> <p><a href=";A=2609&amp;format=xml&amp;p=5482">Joseph T. Nabor</a> was reappointed Chair of the Historical Records Committee. Joe has been active in IPLAC since 1994 in a variety of leadership roles.</p> <p><a href=";A=16703&amp;format=xml&amp;p=5482">Evan Kline-Wedeen</a> was reappointed Co-Chair of the Field Day Committee. At the recent IPLAC Annual Meeting, the Field Day Committee was recognized as one of two &ldquo;Committees of the Year&rdquo; for their outstanding efforts in making the annual Field Day event a success in terms of attendance, member satisfaction, and financial results.</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.&nbsp;<br /> &nbsp;</p>Professional Activities26 Jun 2020 00:00:00 -0800 Even Attorney Tom James to Copresent Dallas Bar Association Webinar on Trade Secrets<p>Fitch Even attorney <a href=";A=12841&amp;format=xml&amp;p=5482">Thomas A. James</a> will copresent the Dallas Bar Association CLE webinar &ldquo;To Delete or Not to Delete? Minimizing the Landmines of Employees Who Bring Trade Secrets With Them&rdquo; on June 23 from 12 noon to 1:00 p.m. CDT. His copresenter will be Phil Petti, Chief IP Counsel at USG Corporation.</p> <p>Using a hypothetical employee/employer situation, the presenters will address the trade secret issues that can arise when a new employee is hired. They will discuss whether there is a way to stay ahead of the question of &ldquo;to delete or not to delete,&rdquo; where that question can lead, and whether there are guideposts to be followed when each situation is so fact-dependent.</p> <p>For more information and to register, please visit the <a href=";evAction=showDetail&amp;eid=83732&amp;evSubAction=viewMonth&amp;calmonth=202006">Dallas Bar Association website</a>.</p> <p>&nbsp;</p>Professional Activities19 Jun 2020 00:00:00 -0800 Alert: Federal Circuit Finds Claim Preclusion Prevents Second Bite at the Apple with Customer Suits<p>On June 17, the Federal Circuit held in <a href=""><i>In re PersonalWeb Technologies LLC</i></a> that PersonalWeb&rsquo;s attempt to bring eight new cases against Amazon&rsquo;s customers was barred&nbsp;as a result of a previous suit brought by PersonalWeb against Amazon that was later dismissed with prejudice. The court&rsquo;s opinion explicated the rule of claim preclusion as applied to customer suits and included a discussion of the relatively uncommon <i>Kessler</i> doctrine.</p> <p>In an earlier lawsuit, PersonalWeb sued Amazon and one of its customers alleging infringement of five patents directed to a &ldquo;True Name&rdquo; system that created a unique identifier for data items. PersonalWeb alleged that Amazon&rsquo;s &ldquo;S3&rdquo; system and its customer&rsquo;s use of the S3 system infringed each of the patents. However, after claim construction, PersonalWeb stipulated to dismissal with prejudice of its claims against Amazon, and the court entered a final judgment against PersonalWeb.</p> <p>Almost four years later, PersonalWeb initiated a series of new lawsuits across the country, these lawsuits naming many of Amazon&rsquo;s customers that use the S3 system as defendants. Amazon intervened and also filed a declaratory judgment complaint against PersonalWeb seeking an order barring the actions in light of the earlier dismissal with prejudice and judgment. After consolidation of the various lawsuits into a multidistrict litigation, the district court granted a motion for summary judgment brought by Amazon, finding that both claim preclusion and the <i>Kessler</i> doctrine barred PersonalWeb&rsquo;s customer lawsuits.</p> <p>On appeal, the Federal Circuit affirmed. First, the Federal Circuit found that the customer claims could have been brought in the earlier lawsuit and did not involve different causes of action merely because PersonalWeb contended that a different feature of S3 was at issue in the second lawsuit. The court reaffirmed the well-settled claim preclusion principle that different legal theories, including infringement theories, do not create multiple transactions and thus multiple claims that may be separately brought. Instead, the complaints in both lawsuits related to the same set of transactions and the customer suits were precluded.</p> <p>More notably, the Federal Circuit also affirmed the district court&rsquo;s reliance on the less frequently invoked <i>Kessler </i>doctrine, which derives from a 1907 Supreme Court case, <i>Kessler v. Eldred</i>. The <i>Kessler</i> doctrine &ldquo;fills the gap&rdquo; left by the doctrines of claim and issue preclusion by &ldquo;allowing an adjudged <i>non-infringer</i> to avoid repeated harassment for continuing its business as usual post-final judgment in a patent action where circumstances justify that result.&rdquo; PersonalWeb argued that because it stipulated to a dismissal with prejudice against Amazon, Amazon did not qualify as an &ldquo;adjudged non-infringer&rdquo; under the doctrine. </p> <p>The Federal Circuit rejected this argument, finding there is no requirement that an issue such as non-infringement be &ldquo;actually litigated.&rdquo; Instead, the doctrine operates to protect any products to which the manufacturer established a right not to be sued for infringement. When PersonalWeb stipulated to a dismissal without any reservation of its rights, the resulting judgment was an adjudication that Amazon was not liable for infringement as PersonalWeb alleged. This action was operative to grant Amazon a limited trade right to continue producing, using, and selling its S3 system without future suits from PersonalWeb against both Amazon and its customers using the S3 system.</p> <p>Parties that are considering settling their infringement claims with voluntary stipulations of dismissal should take note of this decision. If the patentee wants to be able to sue other parties, such as customers, in the future, such rights must be explicitly preserved in the dismissal order to limit its preclusive effect. Similarly, settling defendants should be aware of the implications of any attempt by a patent owner to reserve such rights.</p> <p>For more information on this case, please contact Fitch Even partner <a href=";A=2598&amp;format=xml&amp;p=5482">Nikki Little</a>, author of this alert.<br /> <b><br /> Fitch Even IP Alert</b><b><sup>&reg;</sup></b></p>IP Alerts19 Jun 2020 00:00:00 -0800 Secret Misappropriation: When and How to Take Action<p>Please join Fitch Even for a free webinar, &ldquo;<a href="">Trade Secret Misappropriation: When and How to Take Action</a>,&rdquo; on July 16, 2020, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.</p> <p>Trade secrets protect many of a company&rsquo;s most valued intellectual assets, such as formulas, fabrication techniques, data compilations, and business intelligence. With the high employee turnover, shortened lifespan and digitization of technology, and complex business structures of today&rsquo;s competitive environment, protecting trade secrets has never been more important. Deciding if, when, and how to litigate a possible misappropriation is a critical part of maintaining trade secret protection and enforcing a robust intellectual property strategy.</p> <p>During this webinar, we will explore the factors that must be considered when bringing a trade secret action, covering these topics and more:</p> <ul> <li>Pre-suit diligence and conduct</li> <li>Filing considerations related to jurisdiction and venue (state court, federal court, ITC)</li> <li>Other causes of action to consider</li> <li>Available relief</li> <li>Protecting trade secrets during litigation</li> </ul> <p>Our presenters will be Fitch Even attorneys <a href=";A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a> and <a href=";A=12841&amp;format=xml&amp;p=5482">Thomas A. James</a>.</p> <p>Joe is an IP litigator with over 20 years of hands-on courtroom experience and a diverse intellectual property law practice covering all aspects of IP creation, management, enforcement, and licensing.</p> <p>Tom&rsquo;s IP law practice encompasses both the acquisition and the enforcement of patent rights, with a particular emphasis on high-tech patent litigation and licensing.</p> <p>CLE credit has been approved for California, Illinois, and Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but please note registration is required.<br /> <br /> To reserve your place, please <a href="">REGISTER HERE</a>.<br /> &nbsp;</p>Upcoming Webinars17 Jun 2020 00:00:00 -0800 Alert: PTAB Designates New Precedential and Informative Decisions on Procedural Issues<p>On June 11, the Patent Trial and Appeal Board (PTAB) designated one new precedential opinion and three informative decisions relating to a variety of procedural issues.</p> <p>The PTAB designated as precedential an order in <a href=""><i>DTN, LLC v. Farms Technology, LLC</i></a><i>,</i> regarding the need to include collateral agreements referenced in a settlement agreement when filing a motion to terminate. When filing a motion to terminate IPR proceedings, the parties are obligated under 35 U.S.C. &sect; 317(b) to file a copy of any agreement in connection with the termination including any collateral agreements referred to in such agreement or understanding. In <i>DTN</i> the PTAB held that to fall within the scope of section 317(b) and require disclosure, collateral agreements need not be between the patent owner and the petitioner and, further, that collateral agreements need not be made in connection with, or in contemplation of, terminating an <i>inter partes</i> review.</p> <p>In addition, the PTAB designated three decisions as informative. First, in a post-grant review institution decision in <a href=""><i>Sattler Tech Corp. v. Humancentric Ventures, LLC</i></a>, the PTAB instituted trial on a ground alleging that a design patent was unpatentable because it claimed functional features. The PTAB&rsquo;s analysis addressed whether the petitioner had adequately shown that the claimed portions of a design for a TV mount were primarily functional, not ornamental. The <i>Sattler</i> case provides a useful road map for petitioners seeking to challenge design patents based on unpatentable functional claims.</p> <p>Second, in a termination order in <a href=""><i>Kokusai Electric Corp. v. ASM IP Holding B.V.</i></a>, the PTAB decided that it was unnecessary to reach a decision on the patent owner&rsquo;s motion to amend before terminating the proceeding. The PTAB reasoned that the patent owner may pursue the amended claims in a reissue or reexamination proceeding.</p> <p>Third, in a pre-trial order in <a href=""><i>Curt G. Joa, Inc. v. S.P.A.</i></a>, the PTAB addressed issues relating to the use of confidential information during an oral hearing. The parties were each granted 60 minutes of time for argument, of which no more than 15 minutes could be used for arguments relating to confidential information during a session closed to the public. The PTAB directed the parties to refrain from including information designated as confidential in any demonstrative exhibit, but instead to refer to such information during the closed session by exhibit, page, and line number.</p> <p>These newly designated cases and all of the other cases designated as precedential or informative are available on the PTAB&rsquo;s website <a href="">here</a>. For more information on these cases or on practice at the PTAB, please contact Fitch Even partner <a href=";A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a><span>,</span> author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts15 Jun 2020 00:00:00 -0800 Even Partner Nikki Little Published in ABA's <i>Landslide</i> Magazine<p>An article written by Fitch Even partner <a href=";A=2598&amp;format=xml&amp;p=5482">Nikki Little</a> is featured in the May/June issue of <em><a href="">Landslide </a></em><a href="">magazine</a>, published by the ABA Section of Intellectual Property Law.</p> <p>In her article, &ldquo;<a href="">Working Up Your Patent Infringement Case: How Doing Your Homework Can Keep You One Step Ahead</a>,&rdquo; Nikki outlines the key steps a patent litigator can take to assess and prepare for a case that will lead to greater efficiencies and a better outcome for the client.</p> <p>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.&nbsp;</p>Professional Activities10 Jun 2020 00:00:00 -0800