Fitch Even News Feed Sep 2020 00:00:00 -0800firmwise Alert: Sun Sets on the Covered Business Method Review<p>Today, September 16, 2020, is the last day to file a petition for covered business method (CBM) review at the USPTO Patent Trial and Appeal Board (PTAB). The CBM program was enacted as a &ldquo;transitional&rdquo; form of review under section 18 of the America Invents Act (AIA). The AIA provided for CBM review during a window of eight years after the USPTO implemented rules under the AIA, which ultimately occurred on September 16, 2012.</p> <p>CBM proceedings were only available for a certain technological subset of patents, including any 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, but excludes patents for &ldquo;technological inventions.&rdquo; In addition to restrictions on subject matter, CBM proceedings were only available to parties who had been sued for infringement of the patent. Advantageously, however, CBM proceedings were available for the entire life of a patent, were not subject to any litigation time bar, and were expansive in scope. A CBM petition could assert any ground of unpatentability, including lack of patent-eligible subject matter under section 101, indefiniteness or written description under section 112, and anticipation or obviousness under sections 102 and 103 of the U.S. Patent Act using a much broader range of prior art relative to the popular <i>inter partes</i> review (IPR) proceeding. In contrast, IPR proceedings are only available for one year after the petitioner has been served with a patent infringement complaint and are limited to grounds of invalidity under sections 102 and 103&mdash;and only based on patents and printed publications.</p> <p>The CBM program was intended as an efficient way to weed out low-quality business method patents in the financial services industry. As shown below, the CBM program has been relatively infrequently used, and the number of CBM petition filings has <a href="" target="_blank">trended consistently downward over the last several years</a>. This may explain why Congress has not taken any steps to extend the CBM program, although several lobbying groups have recently pushed to extend the program.</p> <p style="text-align: center;"><img src=" Petitions.jpg" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="350" height="200" /><br /> <a href="">Source</a></p> <p>As illustrated above, at its peak popularity in the USPTO&rsquo;s fiscal year 2014 (ending on August 31, 2014), the PTAB received 177 CBM petitions. Filings have declined steadily since then. The PTAB received only 22 CBM petitioners in fiscal year 2019, and only 12 CBM petitions in fiscal year 2020. Even a significant uptick in last-minute filings this year likely would not drive the total number of CBM proceedings above 2019 levels.</p> <p>Both IPR and post-grant review (PGR) proceedings remain available as avenues to challenge patent validity at the PTAB. IPR remains a popular proceeding, particularly for parties who have been sued for patent infringement. PGR offers the same expansive scope as CBM review, except that PGR is only available during the first nine months after a patent is issued.</p> <p>For more information on AIA review procedures and cases or on trial practice at the PTAB, please contact any member of Fitch Even&rsquo;s <a href=";LPA=7733&amp;format=xml&amp;p=5480">PTAB Trial Practice group</a>.<br /> <b><br /> Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts16 Sep 2020 00:00:00 -0800 Developments in the Patentability of AI- and Software-Based Inventions<p>Please join Fitch Even for a free webinar, &ldquo;<a href="">Latest Developments in the Patentability of AI- and Software-Based Inventions</a>,&rdquo; on September 24, 2020, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.</p> <p>The changes in subject matter eligibility prompted by the Supreme Court&rsquo;s decision in <i>Alice v. CLS Bank</i> and subsequent Federal Circuit and district court cases have continued to make it challenging to patent inventions tied to artificial intelligence and other types of software. The legal analysis often turns on how the software interacts with the outside world and the nature of the problems it solves.</p> <p>During this webinar, we will provide an update on the latest legal developments in computer software patentability along with guidance on best practices for protecting software-related innovations, covering these topics and more:</p> <ul type="disc"> <li>Ramifications of recent post-<i>Alice</i> Federal Circuit cases</li> <li>Updated USPTO guidelines</li> <li>Tips for patent application drafting</li> <li>Tips for responding to office actions</li> </ul> <p>Our presenters will be Fitch Even attorneys <a href=";A=2596&amp;format=xml&amp;p=5482">Thomas F. Lebens</a> and <a href=";A=19279&amp;format=xml&amp;p=5482">Zachary Van Engen</a>.</p> <p>Tom has served clients in preparing and prosecuting patent and trademark applications, including appeals, post-grant review, and interferences, since 1991. He often assists clients with a wide variety of software-based and software-implemented inventions, many involving artificial intelligence. Tom also offers counsel in IP and business strategy, licensing issues, validity analysis and opinions, and copyright matters.</p> <p>Zach&rsquo;s IP law practice encompasses patent preparation and prosecution, product clearance studies, freedom-to-operate and infringement analysis, and IP-related due diligence and transactions. He works with clients in high-tech areas including electronics, computer technology, mechanical engineering, and medical devices.</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.</p> <p>To reserve your place, please <a href="">REGISTER HERE</a>.</p>Upcoming Webinars02 Sep 2020 00:00:00 -0800 Even Partner Tom Lebens to Speak on AI-Based Software Patentability at Embedded Vision Summit<p>Fitch Even partner <a href=";A=2596&amp;format=xml&amp;p=5482">Thomas F. Lebens</a> will be a featured speaker during the 2020 Embedded Vision Summit, taking place online September 15&ndash;25, 2020.</p> <p>Tom&rsquo;s presentation, <a href="">&ldquo;Can You Patent Your AI-Based Invention?,&rdquo;</a> will provide an update on the latest developments in software patentability and will help attendees understand how to best protect AI-based vision and embedded vision inventions. This session is scheduled for September 17 at 1:30 pm PDT.</p> <p>For more information on the conference and to register, please visit the <a href="">Embedded Vision Summit website.</a></p>Professional Activities27 Aug 2020 00:00:00 -0800 Even Partner Steve Parmelee Coauthors ABA Book on Japanese Patent Practice<p>Fitch Even partner <a href=";A=2610&amp;format=xml&amp;p=5482">Steven G. Parmelee</a> is coauthor of the newly released book <a href=""><em>The Essentials of Japanese Patent Prosecution</em></a><em>, </em>published by the ABA Section of Intellectual Property Law. Steve worked with Japanese patent attorney Shinsuke Ohnuki and patent attorney/translator Hideko Yamamoto to update and expand the best-selling Japanese version of the book of the same title, which was written by Shinsuke and is now in its fourth edition.</p> <p>The book is a comprehensive and practical examination of the Japanese patent prosecution process. As Steve writes in the book&rsquo;s <a href="">preface</a>, &ldquo;There is both law and sage practical counsel here. There are definitions, explanations, historical context, examples, and a rich offering of well-chosen court decisions that guide, inform, and exemplify [Shinsuke&rsquo;s] points.&rdquo; Topics include how to work with the Japan Patent Office (JPO), reasons the JPO rejects applications, and how to respond to JPO official actions to patent practitioners.</p> <p>In addition, Steve provides detailed commentary interspersed throughout the text that compares and contrasts various points of Japanese procedure with U.S. patent practice. These insertions provide guidance for situations when Japanese practice tracks with and when it departs from what is familiar to U.S. practitioners. Understanding how the Japanese patent system operates can greatly help U.S. practitioners to assist their Japanese counterparts in obtaining better results, in less time, and at reduced cost.</p> <p>To learn more about this book and review a detailed table of contents and sample chapter, please visit the <a href="">ABA bookstore</a>.</p> <p>&nbsp;</p> <p>&nbsp;</p>Professional Activities14 Aug 2020 00:00:00 -0800 Even Partner Nikki Little Quoted in ALA's <i>Legal Management</i> Magazine<p>Fitch Even partner <a href=";A=2598&amp;format=xml&amp;p=5482">Nikki Little</a> was quoted in an article in the July/August 2020 issue of <i>Legal Management</i>, published by the Association of Legal Administrators.</p> <p>The article, &ldquo;<a href="">Back to Basics</a>,&rdquo; describes the basic business skills recent law school grads need to successfully transition from law student to practicing lawyer. Nikki comments on the challenges young women attorneys may continue to face, particularly in the courtroom. She advises, &ldquo;Remember that by pushing forward, and up, you&rsquo;re creating a path that is making it easier for those following behind you. So lift as you climb.&rdquo;</p> <p>Nikki is an IP litigator who has participated in numerous jury and bench trials on behalf of clients ranging from individual inventors to multinational corporations. She is cofounder and chair of Chicago Women in IP, a networking and mentoring organization committed to the connection, promotion, and success of Chicagoland-area women working in the field of intellectual property law. <br /> &nbsp;</p>Professional Activities04 Aug 2020 00:00:00 -0800 Alert: Substitute Claims in IPR Proceedings Can Be Rejected Under § 101<p>On July 22, in <a href=""><i>Uniloc 2017 LLC v. Hulu, Inc.</i></a>, the Federal Circuit ruled that the Patent Trial and Appeal Board (PTAB) may analyze 35 U.S.C. &sect; 101 patent eligibility for proposed substitute claims in an <i>inter partes</i> review (IPR) proceeding.</p> <p>Hulu initiated an IPR against a Uniloc patent that resulted in the original claims being found unpatentable over prior art. During the proceeding, Uniloc submitted a motion to amend to enter a set of substitute claims. Hulu opposed the motion to amend, arguing, among other things, that the substitute claims are directed to patent-ineligible subject matter. In its final written decision, the PTAB denied Uniloc&rsquo;s motion to amend on the sole ground that the substitute claims are directed to patent-ineligible subject matter. Uniloc requested a rehearing, arguing that it is impermissible in an IPR proceeding for the PTAB to consider a section 101 challenge. The PTAB denied Uniloc&rsquo;s request, and Uniloc appealed.</p> <p>On appeal, the Federal Circuit agreed with the PTAB, finding that the text, structure, and legislative history of the IPR statutes confirm that the PTAB may review proposed substitute claims for patent eligibility. This was notwithstanding that 35 USC &sect; 311(b) limits petitioners to grounds &ldquo;that could be raised under section 102 or 103.&rdquo; In the court&rsquo;s view, section 311(b) relates only to cancellation of claims, and the review of substitute claims is governed by a separate adjudication-stage provision, section 316. The court reasoned that this interpretation parallels case law relating to the prior <i>inter partes</i> reexamination proceedings in which substitute claims were subject to patentability review, including section 101, by the USPTO.</p> <p>In a colorful dissent, Judge O&rsquo;Malley opined that section 311 sets the parameters of what may be considered throughout an IPR proceeding, and the legislative history is clear that substitute claims serve to preserve for the patentee the narrower patent right that is merited in view of the art. Since substitute claims are required to be narrower in scope than the original claims, Judge O&rsquo;Malley argued that the substitute claims had been examined during the prosecution of the original claims, including on section 101 grounds. She further noted that moving a claim into patent ineligibility by narrowing it is so unlikely that it should not be of concern.</p> <p>This case is an interesting companion to <a href=";an=109957&amp;format=xml&amp;p=5486"><i>Hunting Titan, Inc. v. Dynaenergetics Europe GmbH</i></a>, issued by the PTAB&rsquo;s Precedential Opinion Panel (POP) merely 16 days prior. In <i>Hunting Titan</i>, the POP constrained the PTAB from asserting new grounds against amended claims only to situations where the petitioner has ceased to participate in the proceedings. The combined effect of these two cases is that the PTAB can reject substitute claims in an IPR proceeding under section 101 as long as the petitioner raises the ground first.</p> <p>This decision is particularly relevant to parties involved in an AIA trial proceeding. Patent owners should be aware that substitute claims can be rejected under section 101 and should therefore draft substitute claims with potential patent-eligibility challenges in mind. Petitioners should be sure to assert section 101 grounds where applicable when opposing motions to amend.</p> <p>For more information regarding this decision, please contact Fitch Even partner <a href=";A=3766&amp;format=xml&amp;p=5482">Karen J. Wang</a>, author of this alert.<br /> <b><br /> Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts03 Aug 2020 00:00:00 -0800 Even Welcomes Partner Catherine Toppin to Chicago Office<p>Fitch, Even, Tabin &amp; Flannery is pleased to announce that <a href=";A=22010&amp;format=xml&amp;p=5482">Catherine J. Toppin</a> has joined the firm&rsquo;s Chicago office as partner. She brings with her a distinctive blend of private practice and in-house intellectual property law experience.</p> <p>Catherine&rsquo;s IP practice encompasses preparation and prosecution of utility and design patents in the electrical/mechanical arts, global patent and trademark portfolio management, due diligence, opinion work, trademark prosecution, and licensing and other transactional matters. She has provided strategic IP counsel to clients ranging from startups and small businesses to venture capital firms, global corporations, and nonprofit organizations.</p> <p>After establishing her IP law practice at a large Boston-based firm, Catherine spent seven years working in a leadership capacity in varying roles with the corporate legal department at General Electric. Among other responsibilities, she provided extensive IP counsel and managed global patent portfolios for multiple business divisions.</p> <p>Catherine earned her J.D. from the University of Maryland Francis King Carey School of Law and holds a B.S.E. in Electrical Engineering from Princeton University. She remains a dedicated member of the Princeton community, serving on the Leadership Advisory Council of the Princeton School of Engineering and Applied Sciences and on the board of the Association of Black Princeton Alumni. Catherine has received several awards for her professional and public service contributions, including the National Bar Association&rsquo;s Diversity in Tech Award and the <i>Network Journal</i>&rsquo;s 40 Under Forty Achievement Award.</p> <p>Catherine&rsquo;s diverse experience in IP law combined with her notable management and leadership skills make her a welcome addition to the Fitch Even team.<br /> &nbsp;</p>Firm News31 Jul 2020 00:00:00 -0800 Alert: Supreme Court Expands Trademark Protection for Domain Names<p>As previously <a href=";an=109723&amp;anc=180&amp;format=xml&amp;p=5486">reported</a>, on June 30 in <a href=""><i>United States Patent and Trademark Office et al. v.</i></a>, 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> filed four applications to register the mark for a variety of travel-related services.&nbsp;Each of the applications were comprised significantly of the mark. During examination, the USPTO held that each application was not entitled to registration because the mark is generic, identifying the genus of the services identified in each application. This decision was affirmed by the Trademark Trial and Appeal Board. The applicant then sought review before the District Court for the Eastern District of Virginia.</p> <p>The District Court reviewed evidence of the consumer&rsquo;s perception of the mark and held that the mark does not identify the genus of the services, but because of the consumer&rsquo;s perception, the mark is descriptive of the services of the applicant. Because the applicant also provided evidence of secondary meaning, the court held that the descriptive mark was entitled to protection by the applicant in view of its acquired distinctiveness as a trademark of the applicant. This decision was affirmed by the Court of Appeals for the Fourth Circuit.</p> <p>On review before the Supreme Court, the USPTO argued for a per se rule that would render any generic term when combined with a generic top-level domain such as &ldquo;; to be generic, regardless of consumer perceptions. The Court here distinguished the prior ruling in <i>Goodyear&rsquo;s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co.</i>, which essentially held that adding a corporate designation such as &ldquo;Company&rdquo; to an otherwise generic term renders the entire phrase generic. The circumstances with a domain name are fundamentally different in that only one holder can occupy any specific domain name. As a result, the domain name refers to a specific entity.</p> <p>The Court went on to question the holding in <i>Goodyear</i> that as a matter of law, any generic term when combined only with a corporate identifier would be fully generic regardless of consumer impression. The Court recognized that under the Lanham Act, whether a term is generic depends upon the understanding attached to that term by consumers, stating, &ldquo;Whether any given &lsquo;; term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.&rdquo;</p> <p>In order to determine the meaning that consumers attach to a particular term, the Court recognized that the evidence can consist of consumer surveys, dictionaries, usage by consumers and competitors, or &ldquo;any other evidence bearing on how consumers perceive a term&rsquo;s meaning.&rdquo;</p> <p>With respect to the scope of protection, the Court addressed the concern of the USPTO that protection of &ldquo;; would hinder competitors from using terms such as &ldquo;; or &ldquo;; The Court recognized that this is addressed by existing trademark law such as the scope of protection afforded to descriptive marks. Additionally, the doctrine of classic fair use can protect competitor&rsquo;s use of generic terms in a fair-use manner.</p> <p>The ultimate result is that the Supreme Court has expressly rejected the concept of a per se rule against registration of a &ldquo;; Instead the Court teaches to look to the perception afforded to that term by the consumer of those goods and services. With this decision, trademark applicants are entitled to a broader basis of argument for protection of any domain name mark that would otherwise be considered generic.</p> <p>Time will tell the extent of the application of these principles beyond the domain name space; however, the application to the protection of domain names under trademark law will be considered significant. As a result, trademark owners, domain name owners, and even trade name owners are encouraged to review their existing trademark protection and consider expansion of those assets by obtaining registration protection. The members of Fitch Even&rsquo;s Trademark and Brand Protection practice group are available to assist in this review.</p> <p>If you have questions regarding the <i></i> ruling, please contact Fitch Even partner <a href=";A=2609&amp;format=xml&amp;p=5482">Joseph T. Nabor</a>, author of this alert.<br /> <b><br /> Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts14 Jul 2020 00:00:00 -0800 Alert: PTAB's Authority to Assert New Grounds Against Amended Claims Constrained<p>On July 6, in <i><a href="">Hunting Titan, Inc. v. Dynaenergetics Europe GmbH</a></i>, the Patent Trial and Appeal Board&rsquo;s (PTAB&rsquo;s) Precedential Opinion Panel (POP) held that only under rare circumstances may the PTAB raise a ground of unpatentability that a petitioner does not raise or sufficiently develop against a claim proposed in a motion to amend. These circumstances are limited to situations &ldquo;where the petitioner has ceased to participate in the proceeding or where certain evidence of unpatentability . . . is readily identifiable and so persuasive that the Board should take it up in the interest of supporting the integrity of the patent system.&rdquo; The POP found that this was not such a case.</p> <p>After trial was instituted, patent owner Dynaenergetics filed a motion to amend, presenting substitute claims. In response, petitioner Hunting Titan argued that the proposed substitute claims were obvious over the prior art of record. The PTAB issued a final written decision finding the original claims were anticipated, and also denied Dynaenergetic&rsquo;s motion to amend, finding the proposed substitute claims were also anticipated by the same reference, despite the fact that Hunting Titan had not alleged the substitute claims were anticipated. Dynaenergetics requested rehearing and POP review, which was granted.</p> <p>The POP noted that the PTAB &ldquo;should not be constrained to arguments and theories raised by the petitioner&rdquo; because this would leave the PTAB with no ability to examine the new claims if a petitioner simply decided not to oppose the motion to amend. However, the PTAB may only exercise this authority under rare circumstances when the adversarial system has failed, such as when the petitioner fails to participate. The POP further noted that a rule mandating the PTAB to evaluate all possible arguments that may be supported by the record would diminish the incentives for the petitioner to participate fully in the adversarial briefing by the parties and reduce the efficiency of AIA proceedings. The POP also held that in the situation where the PTAB raises a ground of unpatentability sua sponte, it must give the patent owner sufficient notice and an opportunity to respond, such as via further briefing or during an oral hearing.</p> <p>This decision is particularly relevant to parties involved in an AIA trial proceeding where a motion to amend has been filed. Petitioners should be sure to assert and fully develop the strongest grounds against the proposed substitute claims and should not expect the PTAB to rely on any unasserted or undeveloped arguments. Further, a ground asserted against the original claims in the petition that may also apply to a substitute claim must be explicitly reasserted in the petitioner&rsquo;s opposition to the motion to amend for it to be considered. Patent owners should be aware of the possibility of the PTAB raising a new ground of unpatentability, and in such a case the patent owner must be allowed an opportunity to respond to the new ground. This case also provides a basis to challenge (particularly via a rehearing request) a final written decision that finds a substitute claim unpatentable for any reason not asserted by the petitioner in its opposition to the motion to amend.</p> <p>For more information on this&nbsp;decision, please contact Fitch Even partner<span>&nbsp;</span><a href=";A=2587&amp;format=xml&amp;p=5482" target="_blank">Paul B. Henkelmann</a>.</p> <p><i>Fitch Even summer associate Irfan Hassam-Malani contributed to this alert.<br /> <br /> </i><b>Fitch Even IP Alert<sup>&reg;</sup></b>  <br /> &nbsp;</p>IP Alerts12 Jul 2020 00:00:00 -0800 Even Partner Tom Lebens to Copresent AIPLA Webinar on Trade Secrets<p>Fitch Even partner <a href=";A=2596&amp;format=xml&amp;p=5482">Thomas F. Lebens</a> will copresent the AIPLA CLE webinar &ldquo;What You Need to Know About Trade Secret Protection&rdquo; on July 28 from 11:30 a.m. to 1:00 p.m. CDT.</p> <p>Directed to IP owners and their counsel, the webinar will cover best practices for identifying and classifying trade secrets, how to set up an effective program for protecting trade secrets, and the need for ongoing internal education of company leaders and employees on the topic.</p> <p>For more information and to register, please visit the <a href="">AIPLA website</a>.</p>Professional Activities06 Jul 2020 00:00:00 -0800