Fitch Even News Feed Mar 2017 00:00:00 -0800firmwise Alert: Supreme Court Confirms Copyright May Protect Elements of Useful Products<p>Last week, in <i><a href="">Star Athletica, L.L.C. v. Varsity Brands, Inc., et al.</a>,</i> the U.S. Supreme Court considered to what extent copyright protection covers artistic elements incorporated into industrial designs. Respondents Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity Spirit Fashions &amp; Supplies, Inc., owned more than 200 U.S. copyright registrations for two-dimensional designs on the surface of cheerleading uniforms and other garments. The designs included various combinations and positions of chevrons, lines, curves, stripes, angles, colors, and shapes. The respondents sued petitioner Star Athletica for copyright infringement of five designs.</p> <p>The Copyright Act defines &ldquo;[p]ictorial, graphic, and sculptural works&rdquo; as including &ldquo;two-dimensional and three-dimensional works for fine, graphic, and applied art . . .&rdquo; and states that &ldquo;[s]uch works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned.&rdquo; The Copyright Act provides copyright protection for &ldquo;pictorial, graphic, or sculptural features&rdquo; of the &ldquo;design of a useful article&rdquo; if those features &ldquo;can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.&rdquo; Star Athletica asserted that Varsity Brands&rsquo; designs served the utilitarian function of identifying the garments as cheerleading uniforms and therefore could not be the subject of a valid copyright.</p> <p>The Court upheld the traditional separability analysis under &sect; 101 for any &ldquo;pictorial, graphic, or sculptural features&rdquo; that are incorporated into a &ldquo;design of a useful article.&rdquo; The Court stated that &ldquo;[t]he ultimate separability question, then, is whether the feature for which copyright protection is claimed would have been eligible for copyright protection as a pictorial, graphic, or sculptural work had it originally been fixed in some tangible medium other than a useful article before being applied to a useful article.&rdquo;</p> <p>The Court divided its task into two prongs: determining whether a feature (1) &ldquo;can be identified separately from&rdquo; and (2) is &ldquo;capable of existing independently of the utilitarian aspects of the article&rdquo; into which the feature is incorporated.</p> <p>For the first prong, the Court stated that the &ldquo;decisionmaker need only be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.&rdquo; The Court found that the decorations could be identified as features having pictorial, graphic, or sculptural qualities.</p> <p>For the second prong, and the more difficult of the two to satisfy, the Court stated that &ldquo;the feature must be able to exist as its own pictorial, graphic, or sculptural work as defined in &sect; 101 once it is imagined apart from the useful article.&rdquo; If not, the feature is a utilitarian aspect. In applying this test, the Court stated that the arrangement of colors, shapes, stripes, and chevrons could be separated from the uniforms and applied in another medium, such as to a painter&rsquo;s canvas, and would qualify as a two-dimensional work of art. Further, the Court stated that removing the decorations from the surface of the uniforms and applying them in another medium would not result in replicating the uniform or an otherwise useful article. Therefore, the Court found that the decorations were separable from the uniforms.</p> <p>The Court concluded that the designs on Varsity Brands&rsquo; cheerleading uniforms satisfied the two-prong approach and were eligible for copyright protection, affirming the judgment of the Court of Appeals for the Sixth Circuit.</p> <p>In doing so, the Court dismissed Star Athletica&rsquo;s argument&mdash;and one that was raised in Justice Breyer&rsquo;s dissent (joined by Justice Kennedy)&mdash;that the uniform decorations were not copyrightable because once extracted from the article, they would retain the outline of a cheerleading uniform. The Court noted that a fresco on a ceiling would not lose copyright eligibility because its design tracked the dimensions of the surface on which it was painted, nor would a design painted on a guitar lose copyright eligibility because the design, once imaginatively removed from the guitar, retained the shape of the guitar&rsquo;s surface.</p> <p>The Court also rejected the argument that a useful article must remain after the artistic feature has been imaginatively separated from the article. In other words, separation of the feature (e.g., a sculptural base of a lamp) need not leave the utilitarian function intact (e.g., after removal, the lamp with no base can no longer function as a lamp).</p> <p>In rendering this decision, the Court has affirmed that protection can be afforded to a wide variety of components for apparel and other useful products so long as they satisfy the separability analysis and the independent&nbsp;existence requirement.&nbsp;Producers of useful articles should consider the risk of copyright infringement in addition to design patent infringement. Similarly, in the creation of such useful articles, producers should recognize that components of their useful products may be entitled to copyright protection.</p> <p>For more information on this decision, please contact Fitch Even partners <a href=";A=2607&amp;format=xml&amp;p=5482">Calista J. Mitchell</a> or <a href=";A=2609&amp;format=xml&amp;p=5482">Joseph T. Nabor</a>, authors of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts29 Mar 2017 00:00:00 -0800 Even Partners Steve Favakeh and Al Schiavelli to Present AIPPI Japan Program<p>Fitch Even partners <a href=";A=2580&amp;format=xml&amp;p=5482">Stephen S. Favakeh</a> and <a href=";A=8389&amp;format=xml&amp;p=5482">Alan E. Schiavelli</a> will present a half-day seminar, &ldquo;Practical Advice for Overcoming Hurdles in U.S. Prosecution, and Strategies for Creating Prosecution Hurdles for Competitors,&rdquo; on April 6, 2017, at the Kanazawa Institute of Technology in Tokyo, Japan. The seminar will be presented in conjunction with AIPPI Japan, a national group of AIPPI (the International Association for the Protection of Intellectual Property).</p> <p>During the seminar, Steve and Al will discuss the following topics, drawing from Fitch Even&rsquo;s experience in these areas:</p> <ul> <li>Amending patent application claims: A comparison of U.S. and European Practices</li> <li>Practical advice for overcoming prior art rejections under 35 U.S.C. &sect; 103</li> <li>Understanding 35 U.S.C. &sect; 102 post-AIA: Prior art exceptions and declaration practice</li> <li>Filing third-party submissions with the USPTO</li> <li>Important developments in U.S. case law</li> </ul> <p>The presentation will be followed by a question-and-answer session and a networking reception.</p> <p>For more information on the seminar, or to learn more about Fitch Even&rsquo;s Japanese practice, please contact <a href=";A=2580&amp;format=xml&amp;p=5482">Steve Favakeh</a> or <a href=";A=8389&amp;format=xml&amp;p=5482">Al Schiavelli</a>.<br /> &nbsp;</p>Professional Activities28 Mar 2017 00:00:00 -0800 Alert: Supreme Court Clarifies Copyright Eligibility<p>Yesterday, in <i><a href="">Star Athletica LLC v. Varsity Brands, Inc.</a></i>, the U.S. Supreme Court ruled on a significant copyright issue. The Court held that &ldquo;a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work&mdash;either on its own or fixed in some other tangible medium of expression&mdash;if it were imagined separately from the useful article into which it is incorporated.&rdquo;</p> <p>Fitch Even attorneys are studying the opinion and will provide more detail in a forthcoming alert.<br /> <strong><br /> <br /> Fitch Even IP Alert<sup>&reg;</sup></strong></p>IP Alerts23 Mar 2017 00:00:00 -0800 Alert: Supreme Court Bars Laches Defense Within Six Years<p>Today, in <i><a href="">SCA Hygiene Products A.G. v. First Quality Baby Products, LLC</a></i>, the U.S. Supreme Court held that the defense of laches is inapplicable in patent cases for damages claims for acts of infringement occurring more than six years prior to the filing date of the lawsuit. In other words, the Court ruled that a defendant cannot assert a laches defense to a damages claim for acts of infringement occurring more than six years prior to the filing of the lawsuit. Title 35 U.S.C. &sect; 286 bars damages claims for acts of infringement occurring more than six years prior to the filing of the lawsuit, so today&rsquo;s decision appears to mostly negate the defense of laches, at least insofar as claims for damages are concerned. The Court did not directly address the applicability of laches as a defense to a demand for an injunction.</p> <p>The Court had previously ruled the same way under the copyright laws in <i>Petrella v. Metro-Goldwyn-Mayer, Inc</i>., discussed in our earlier alert <a href=";an=30290&amp;anc=180&amp;format=xml&amp;p=5486">here</a>. As in <i>Petrella</i>, the Court today reasoned that the applicable statute&mdash;in this case 35 U.S.C. &sect; 286&mdash;specifies a time limit for bringing a damages claim, and that the specification of a statutory deadline overrides the equitable laches defense. Today&rsquo;s decision was 7-1, with only Justice Breyer dissenting.<br /> <b><br /> <br /> Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts21 Mar 2017 00:00:00 -0800 Even Partner Nikki Little to Speak at Intellectual Property Law Symposium<p>Fitch Even partner<a href=";A=2598&amp;format=xml&amp;p=5482"> Nikki L. Little</a> will serve on a panel during the Federal Circuit Bar Association&rsquo;s Intellectual Property Law Symposium, taking place on March 15, 2017, at the University Club in Chicago.</p> <p>Nikki will participate in a program on &ldquo;Is Your Data Safe? Cybersecurity and Protection of Trade Secrets Under the Defend Trade Secrets Act.&rdquo; Panelists will discuss best practices for protecting data and remedies for data breaches, including trade secret litigation under the DTSA. They will also explore mechanisms that may exist for protecting sensitive client data from discovery, and whether protective orders provide sufficient protection.</p> <p>To learn more about the conference, which is presented in conjunction with the Intellectual Property Law Association of Chicago, please visit the <a href="">Federal Circuit Bar Association website</a>.<br /> <br /> &nbsp;</p>Professional Activities02 Mar 2017 00:00:00 -0800 Even Partner Tom Lebens Speaks on Cybersecurity at San Luis Obispo Chamber of Commerce Program<p>Fitch Even partner <a href=";A=2596&amp;format=xml&amp;p=5482">Thomas F. Lebens</a> was a featured speaker at a San Luis Obispo Chamber of Commerce program on February 23, 2017. During the program, Tom addressed the security and privacy issues surrounding Internet-connected devices increasingly used in businesses and residences, including surveillance equipment, wearables, automobiles, thermostats, lighting, appliances, televisions, DVRs, and more.</p> <p>Tom is a frequent speaker on cybersecurity issues. He focuses his practice on the preparation and prosecution of patent, trademark, and copyright applications, including appeals, post-grant review, and interferences, in addition to counseling clients on IP and business strategy, licensing, and infringement issues.<br /> <br /> &nbsp;</p>Community Activities01 Mar 2017 00:00:00 -0800 Your Business Strategy with Patents<p>Please join Fitch, Even, Tabin &amp; Flannery LLP for a complimentary webinar, &ldquo;Fueling Your Business Strategy with Patents,&rdquo; on Wednesday, March 15, 2017, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.</p> <p>Do you know why your competitors are obtaining all those patents? What value does a patent bring, and how do you leverage it? Patents can provide a wide range of potential benefits, from market protection to licensing to defensive value&mdash;as well as other key benefits you may not be aware of. Geared toward IP practitioners as well as business owners, our webinar will cover the following topics and more:</p> <ul type="disc"> <li>What a patent is, and why, when, and how to get one</li> <li>The many potential benefits of patent protection</li> <li>Why and how to enforce a patent, and what to expect</li> <li>Timetable and costs</li> </ul> <p>Our speakers will be Fitch Even attorneys <a href=";A=2589&amp;format=xml&amp;p=5482">Allen E. Hoover</a> and <a href=";A=8536&amp;format=xml&amp;p=5482">George N. Dandalides</a>. Allen focuses his practice on patent litigation, frequently serving as lead counsel on complex infringement cases involving a broad spectrum of technologies. He also assists clients with patent portfolio management, licensing and other issues. George currently focuses his IP law practice on domestic and international patent preparation and prosecution, leveraging his background in physics and computer technology to assist clients in a variety of high-tech industries including telecommunications, electronics, and computer hardware, software, and architecture.</p> <p>A recording of this webinar is available through March 14, 2018.</p>Past Webinars23 Feb 2017 00:00:00 -0800 Alert: SCOTUS Holds Export of Single Component Insufficient to Trigger 271(f) Liability<p>To infringe a United States patent, the accused activity must take place in the United States. That infringing activity generally includes making, using, selling, or offering to sell an invention covered by a U.S. patent. The U.S. Patent Code offers limited remedies to patent owners where infringing activity occurs on foreign soil, if at least some of the infringing activity is supported by activity performed in the United States. One such remedy is provided by 35 U.S.C. &sect; 271(f)(1), which reads as follows:</p> <p style="margin-left: 40px; text-align: justify;">Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.</p> <p>That is, &sect; 271(f) gives a U.S. patent owner a remedy against a party that actively induces the combination of components in a manner that results in an infringing product, even where that combination occurs outside of the United States. However, the statute only applies where &ldquo;all or a substantial portion of the components of a patented invention&rdquo; are supplied from within the United States.</p> <p>In the recent case of <i><a href="">Life Technologies Corp. v. Promega Corp</a>.</i>, the U.S. Supreme Court addressed this statutory provision. In particular, the Court considered whether the supply of a single component can qualify as &ldquo;all or a substantial portion of the components of a patented invention&rdquo; sufficient to invoke infringement under &sect; 271(f)(1). The Court held that it cannot.</p> <p>The facts of the case are relatively straightforward. The respondent and patentee, Promega Corporation, was the exclusive licensee of U.S. Reissue Patent No. RE 37,984. The &rsquo;984 patent claims a toolkit that takes small samples of genetic material and generates DNA profiles for forensic identification. It was undisputed that the claims required a kit with five discrete components, including a special enzyme known as <i>Taq</i> polymerase and four other components.</p> <p>The petitioner and accused infringer, Life Technologies Corporation, manufactured genetic test kits pursuant to a sublicense of the &rsquo;984 patent from Promega. Life Technologies manufactured all but one of the five patented components in the United Kingdom, but it made the <i>Taq</i> polymerase enzyme within the United States and subsequently shipped this enzyme to the U.K. Once the enzyme reached the U.K., Life Technologies combined this enzyme with the other four components to form the allegedly infringing kit. When Life Technologies began selling the kits outside the terms of its sublicense, Promega filed suit. Promega alleged that Life Technologies supplied the patented <i>Taq</i> polymerase component from the U.S. and actively induced its combination with the other four components in a manner that infringed the &rsquo;984 patent under &sect; 271(f).</p> <p>It was undisputed that the <i>Taq </i>polymerase component was the only component that Life Technologies supplied from the U.S. Thus, the issue hinged on whether the supply of a single component of a multi-component patented item could fall within the reach of &sect; 271(f)(1).</p> <p>After a trial, the jury returned a verdict in favor of the patent owner Promega, finding that Life Technologies had willfully infringed the &rsquo;984 patent. The district court then granted Life Technologies&rsquo; motion for judgment as a matter of law, holding that &sect; 271(f)(1) did not embrace the supply of a single component. On appeal, the Federal Circuit reversed the district court&rsquo;s ruling, holding that there are circumstances where a single component could constitute a &ldquo;substantial&rdquo; portion of the components of a patented invention. The Federal Circuit relied on a dictionary definition that defined the term &ldquo;substantial&rdquo; to mean &ldquo;important&rdquo; or &ldquo;essential,&rdquo; and concluded that a single component could indeed be a &ldquo;substantial portion of the components&rdquo; of the patented invention if that single component was important.</p> <p>The Supreme Court granted certiorari to answer the question of whether the supply of a single component of a multicomponent invention could be considered an infringing act under &sect; 271(f)(1). As noted above, the Supreme Court held that it could not, and reinstated the district court&rsquo;s judgment in favor of the defendant.</p> <p>In arriving at its conclusion, the Court first addressed whether the term &ldquo;substantial,&rdquo; as it is used in the statute, should be given a quantitative or qualitative definition. The Court entertained the arguments of Life Technologies and the reasoning of the Federal Circuit and acknowledged that the statutory term &ldquo;substantial&rdquo; is ambiguous, and taken in isolation, might refer to qualitative value, such as an &ldquo;important&rdquo; portion of the patented invention as the Federal Circuit held. However, when viewed in the context of the other language of the statute, it was clear that &ldquo;substantial&rdquo; points to a quantitative meaning. The Court noted that the statutory terms that neighbored the word &ldquo;substantial&rdquo;&mdash;namely &ldquo;all&rdquo; and &ldquo;portion&rdquo;&mdash;both convey a quantitative meaning, and that there was no other language in the statute that suggested a qualitative definition. The Court also noted that a qualitative interpretation would render the statutory phrase &ldquo;of the components&rdquo; meaningless, and that if the lawmakers truly intended the statute to have a qualitative meaning, the more natural language to use would have simply referred to &ldquo;a substantial portion of a patented invention,&rdquo; and not to &ldquo;a substantial portion <u>of the components</u> of a patented invention&rdquo; (emphasis added).</p> <p>The Court declined to adopt Promega&rsquo;s suggestion of adopting a case-specific approach, whereby juries would decide on a case-by-case basis whether the components at issue constitute a &ldquo;substantial portion&rdquo; under either a qualitative or quantitative test. The Court reasoned that it is the job of the courts to resolve such ambiguities, and that tasking juries with such an interpretation of statutory language on an ad hoc basis would only compound the issue.</p> <p>Having concluded that the term &ldquo;substantial portion&rdquo; referred to a quantitative measurement, the Court then addressed whether, as a matter of law, a single component can ever constitute a &ldquo;substantial portion&rdquo; so as to trigger liability under &sect; 271(f)(1). The Court answered that it could not. The Court reasoned that the statute itself consistently referred to &ldquo;components&rdquo; in the plural, which suggests that a single component could not, by itself, constitute a &ldquo;substantial portion&rdquo; of the components of a patented invention. The Court compared this use of the plural in &sect; 271(f)(1) with the language of &sect; 271(f)(2), which considers it infringement to supply a single component of a patented invention, if that component is &ldquo;especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use.&rdquo; Notably, &sect; 271(f)(2) refers to &ldquo;any component&rdquo; in the singular, thus the Court reasoned that when Congress referred to &ldquo;components&rdquo; plural, it meant plural, and when it referred to &ldquo;component&rdquo; singular, it meant singular. According to the Court, reading &sect; 271(f)(1) to cover any single component would undermine the express reference in &sect; 271(f)(2) to a single component that &ldquo;especially made or especially adapted for use in the invention.&rdquo; &nbsp;</p> <p>Finally, the Court referred to the history of &sect; 271(f) as support for its conclusion that supply of a single component cannot constitute infringement under &sect; 271(f)(1). However, in a concurring opinion, Justices Alito and Thomas disagreed with the majority&rsquo;s reasoning on this particular point, stating that the history of &sect; 271(f) sheds no light on the issue. The concurrence also noted that while the <i>Life Technologies </i>decision makes clear that the supply of a single component, by itself, cannot constitute infringement under &sect; 271(f)(1), it does not address the issue of how many components are necessary in order for the statute to apply.</p> <p>This ruling is quite significant, but the overall impact of the ruling is relatively narrow. The ruling only applies to situations where each of the following is true:</p> <p style="margin-left: 40px;"><span>(1)&nbsp;</span>the infringing product is assembled from multiple components that are combined entirely outside of the United States;</p> <p style="margin-left: 40px;"><span>(2)&nbsp;</span>the assembled infringing product is not subsequently imported, used, sold, or offered for sale within the United States;</p> <p style="margin-left: 40px;"><span>(3)&nbsp;</span>the assembled infringing product includes only a single component that was supplied from the United States; and</p> <p style="margin-left: 40px;"><span>(4)&nbsp;</span>that single component is a staple article or commodity of commerce is suitable for substantial non-infringing use (otherwise &sect; 271(f)(2) would apply).</p> <p>Where any of these factors are not present, the <i>Life Technologies </i>decision would not be directly applicable, and the patent owner may still have a remedy against infringing parties. The Court did not answer the question of whether infringement liability would lie with the shipment of, for example, two or three of the components.</p> <p>For more information on this ruling, please contact Fitch Even partner <a href=";A=7144&amp;format=xml&amp;p=5482">Michael J. Krautner</a>,&nbsp;author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts23 Feb 2017 00:00:00 -0800 Even Partner Steve Parmelee Speaks at University of South Carolina<p>In recent weeks Fitch Even partner <a href=";A=2610&amp;format=xml&amp;p=5482">Steven G. Parmelee</a> served twice as guest lecturer for the Darla Moore School of Business at the University of South Carolina, as part of an MBA-level international business course on &ldquo;International Intellectual Property Strategy and Management.&rdquo; On January 17, Steve presented on &ldquo;Provisional Patent Applications&rdquo; and on February 7, he discussed &ldquo;How to Conduct Patent Searches.&rdquo;</p> <p>Steve has extensive experience in complex patent preparation and prosecution in the U.S. and abroad, and has assisted clients with patent portfolio management, freedom-to-operate issues, and transactions for over 35 years.</p>Professional Activities22 Feb 2017 00:00:00 -0800 Hetzler Named Fitch Even Managing Partner<p>Fitch Even is pleased to announce that <a href=";A=2588&amp;format=xml&amp;p=5482">Mark W. Hetzler</a> has been elected as the firm&rsquo;s managing partner. Mark has spent his entire legal career with Fitch Even, joining the firm as a law clerk in 1990 while attending the Loyola University of Chicago School of Law. After passing the bar in 1993, he continued to work for the firm as an associate. Mark made partner in 1998 and has been a member of Fitch Even&rsquo;s Executive Committee since 2005. In addition to his thriving practice, Mark has served the firm in a number of leadership roles over the years, most recently as its risk management adviser.</p> <p>Mark&rsquo;s practice focuses on developing, managing, and monetizing all aspects of his clients&rsquo; intellectual property, including through procurement, licensing, and litigation. He is particularly adept at counseling clients on worldwide IP portfolio development and management and corporate IP development and clearance policies and programs.</p> <p>Mark succeeds <a href=";A=2601&amp;format=xml&amp;p=5482">Timothy P. Maloney</a>, one of the firm&rsquo;s most active patent litigators, who has served as Fitch Even&rsquo;s managing partner since 2010. Tim, who will continue to serve on the firm&rsquo;s Executive Committee, noted, &ldquo;Having worked side by side with Mark for the past 23 years, I&rsquo;m pleased to pass the baton to him. He&rsquo;s a great fit for this important role, and we look forward to an exciting future under his leadership.&rdquo; <br /> <br /> &nbsp;</p>Firm News15 Feb 2017 00:00:00 -0800