Fitch Even News Feed May 2017 00:00:00 -0800firmwise USA 2017 Recognizes Fitch Even and Partner Tim Maloney<p>Fitch, Even, Tabin and Flannery LLP has been ranked as a leading intellectual property law firm in Illinois in the 2017 edition of<i> Chambers USA: America&rsquo;s Leading Lawyers for Business</i>, a prestigious research-based directory and one of the most widely cited referral sources for legal services in the U.S.</p> <p>In the listing,<em> Chambers</em> notes in part that the Fitch Even team is known for its &ldquo;strong reputation for work in the contentious and noncontentious spheres of patent, trademark and copyright law&rdquo; and the firm&rsquo;s &ldquo;substantial experience handling post-grant, re-examination and <i>inter partes</i> reviews at the USPTO.&rdquo; <em>Chambers</em> also quotes clients remarking that <i>&quot;the way they went about the case and how they integrated into the team was fantastic. They just put us in the best possible position to win.&quot; </i> Another client observed,<i> &quot;They provide excellent legal analysis and show a lot of good&nbsp;judgment in their approaches to our matters.&quot;</i></p> <p>In addition, partner <a href=";A=2601&amp;format=xml&amp;p=5482">Timothy P. Maloney</a> was once again singled out by <i>Chambers</i> as a notable practitioner in the field of intellectual property law in Illinois. <em>Chambers</em> reports that clients observed that Tim <i>&quot;brings a lot of wisdom on litigation matters.&quot; </i>Others pointed out that he is &ldquo;<i>very levelheaded and gives good practical advice that is appropriately cautious without being obstructive.&quot;</i> Tim&rsquo;s practice entails all aspects of intellectual property enforcement and defense, with an emphasis on representing plaintiffs in patent litigation, often multi-party complex litigation. He is an established trial lawyer with a strong track record in numerous jury and bench trials, including cases involving patent, trade secret, antitrust, trademark, unfair competition, and professional malpractice matters. Tim has handled over 50 litigation-related patent post-issuance proceedings in the USPTO, succeeding over 90% of the time. He has also successfully argued several cases before the U.S. Court of Appeals for the Federal Circuit.</p> <p>Published annually by London-based Chambers &amp; Partners, <i><a href="">Chambers USA</a></i> determines its rankings through confidential, in-depth interviews with clients and attorneys as well as 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 legal knowledge and experience, capability and effectiveness, professional conduct, client service, commercial astuteness, diligence, commitment, and other qualities most valued by clients.</p> <p>&nbsp;</p> <br />Firm News26 May 2017 00:00:00 -0800 Even Sponsors National Inventors Hall of Fame Induction Ceremony<p>Fitch, Even, Tabin &amp; Flannery LLP was proud to once again serve as a sponsor of the 45th Annual National Inventors Hall of Fame Induction Ceremony. The induction ceremony took place on May 4, 2017, at the National Building Museum in Washington, D.C. Fitch Even partners <a href=";A=2586&amp;format=xml&amp;p=5482">Edward W. Gray, Jr</a>., Past Chair of the National Inventors Hall of Fame Board of Directors, and <a href=";A=2575&amp;format=xml&amp;p=5482">Sherri N. Blount</a> were among the attendees.</p> <p>The criterion for induction into the Hall of Fame requires candidates to hold a U.S. patent that has contributed significantly to the nation&rsquo;s welfare and the advancement of science and the useful arts. This year's 15 inductees include these illustrious inventors:</p> <ul type="disc"> <li>Iver Anderson, who invented lead-free solder, a revolutionary alternative to traditional solder that has reduced environmental hazards and transformed electronic packaging and is now widely used throughout the manufacturing industry</li> <li>Donald Arney, who created The Bambi Bucket, a lightweight, fully collapsible aerial firefighting bucket, now used worldwide in over 95% of the market</li> <li>Carolyn Bertozzi, who invented the field of bioorthogonal chemistry, which allows researchers to chemically modify molecules within living systems</li> <li>Earle Dickson, who invented the BAND-AID<sup>&reg;</sup> Brand adhesive bandage, the first commercial dressing for small wounds that could be easily used by consumers</li> <li>Harold Froehlich, who led the development of <i>Alvin</i>, a deep-sea submersible that was small, independently maneuverable, and able to withstand the crushing pressure of the deep ocean, allowing previously unavailable access to the ocean's depths and enabling groundbreaking research</li> <li>Haren Gandhi, whose work in automotive catalyst technology improved the quality of exhaust by converting pollutants to harmless emissions, enabling the catalytic converter to be more effective than ever before</li> <li>Eli Harari, who invented the Floating Gate EEPROM, which paved the way for today's flash memory industry</li> <li>Howard Head, whose technical revolutions impacted the playing, performance, and economics of two major sports industries: skiing and tennis. He first designed a stronger, faster, and more flexible laminate ski that became the leading brand in North America and Europe by 1955. In the 1970s, he designed a wider and more effective tennis racket that became a standard by 1980.</li> <li>Beatrice Hicks, who invented a gas density sensor for use in devices that relied on gas-phase materials as insulators or fuels, an innovation that made possible the development of advanced technologies of the time and was a critical breakthrough to enabling space travel</li> <li>Allene Jeanes, whose development of dextran into a blood plasma extender saved many lives and is still used today. She also discovered xanthan gum, now widely used as a food thickener, stabilizer, and emulsifier, as well as in the petroleum and cosmetics industries.</li> <li>Marshall G. Jones, who pioneered the use of lasers for industrial materials processing through the novel methods he invented to weld dissimilar metals and through his development of fiber optic systems</li> <li>Tom Leighton and Daniel Lewin, who invented the methods needed to intelligently replicate and deliver content over a large network of distributed servers, technology that ultimately solved the problem of Internet congestion</li> <li>Frances Ligler, who developed portable optical biosensors, now used in food production plants, clinics in developing countries, pollutant cleanup sites, and areas of concern for military and homeland security</li> <li>Augustine Sackett, who invented the prototype for drywall, transforming the construction industry forever</li> </ul> <p>More information on the 2017 honorees can be found on the <a href="">Invent Now website</a>.</p> <p>The <a href="">National Inventors Hall of Fame</a>, a subsidiary of Invent Now, is a nonprofit organization established in 1973 in partnership between the National Council of Intellectual Property Law Associations and the U.S. Patent and Trademark Office. The Hall of Fame currently has 547 esteemed members.<br /> <br /> &nbsp;</p>Professional Activities24 May 2017 00:00:00 -0800 Alert: Supreme Court to Consider PTAB’s IPR Policy in <i>SAS Institute v. Lee</i><p>Today the U.S. Supreme Court granted a writ of certiorari in <i>SAS Institute Inc. v. Lee, </i>agreeing to consider whether the American Invents Act (AIA) allows the Patent Trial and Appeal Board (PTAB) to review only some rather than all patent claims in an <i>inter partes</i> review.</p> <p>SAS Institute filed the petition in January, arguing that the Federal Circuit&rsquo;s ruling that the PTAB need not address every claim that SAS had challenged when requesting a review of ComplementSoft LLC&rsquo;s software patent was in contradiction of the AIA&rsquo;s purpose and federal law. SAS points to the provision in Section 318(a) of the Patent Act stating that if a post-grant review is instituted, the PTAB &ldquo;shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added&rdquo; during the proceeding.</p> <p>The Court will consider the following question:</p> <p style="margin-left: 40px;">Whether, in a case in which the PTO agrees to review the patentability of only a subset of the claims in a patent, the Board may address in its final written decision only the patentability of those claims the agency agreed to review.</p> <p>Fitch Even attorneys are monitoring the SAS case and will report on the Court&rsquo;s decision in a future alert.</p> <p><b><br /> Fitch Even IP Alert</b><b><sup>&reg;</sup></b></p>IP Alerts22 May 2017 00:00:00 -0800 Alert: Supreme Court Issues Significant Interpretation of Patent Venue Statute<p>Today the U.S. Supreme Court decided the case of <i>TC Hartland LLC v. Kraft Foods Group Brands LLC</i>. It did so following consideration of the interplay between two patent venue statutes. The first is 28 U.S.C. &sect; 1400(b), which provides a &ldquo;[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.&rdquo; The second venue statute considered, 28 U.S.C. &sect; 1391(c), provides that &ldquo;[f]or all venue purposes,&rdquo; a corporation &ldquo;shall be deemed to reside, if a defendant, in any judicial district in which such defendant is subject to the court&rsquo;s personal jurisdiction with respect to the civil action in question.&rdquo;</p> <p>The Court addressed whether the general venue statute 1391(c) &ldquo;allows a plaintiff to bring a patent infringement lawsuit against a corporation in any district in which the corporation is subject to personal jurisdiction.&rdquo; In an 8&ndash;0 decision, the Court answered that question in the negative, holding that &ldquo;a domestic corporation &lsquo;resides&rsquo; only in its State of incorporation for purposes of the patent venue statute.&rdquo; (Justice Neil Gorsuch did not participate in this case.)</p> <p>Please contact any member of Fitch Even&rsquo;s litigation team with questions concerning this decision.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts22 May 2017 00:00:00 -0800 Scope of AIA’s Estoppel Provision: Are We Still Flying Blind Six Years Later?<p>Please join Fitch, Even, Tabin &amp; Flannery LLP for a complimentary webinar, &ldquo;<a href="">The Scope of AIA&rsquo;s Estoppel Provision: Are We Still Flying Blind Six Years Later?</a>,&rdquo; on Wednesday, May 31, 2017, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.</p> <p>Congress drafted the &ldquo;estoppel&rdquo; provision in the American Invents Act (AIA) to ensure that petitioners did not abuse the post-grant review procedure established by the USPTO. The estoppel provision precludes the petitioner from later challenging the same patent claim, either in the USPTO or in civil litigation, on any ground that the petitioner &ldquo;raised&rdquo; or &ldquo;reasonably could have raised&rdquo; during the post-grant review. Almost since its enactment, there has been a debate over the appropriate scope of this provision. Given that the estoppel effect was largely untested, the first participants in these proceedings flew blind to some extent. Now, roughly six years later, rulings regarding the application of the estoppel are inconsistent and tend to leave practitioners more confused and no better off than the first post-grant review trailblazers.</p> <p>This webinar will provide information on what you need to know about this provision, including these topics:</p> <ul type="disc"> <li>Overview of the estoppel provision</li> <li>The provision&rsquo;s legislative history</li> <li>The impact of recent decisions applying the provision</li> <li>Why the provision is not scaring off petitioners of post-grant reviews &nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;</li> </ul> <p>Our speaker will be Fitch Even partner <a href=";A=3589&amp;format=xml&amp;p=5482">Eric L. Broxterman</a>. Eric&rsquo;s unique blend of experience covers the entire spectrum of intellectual property law, including patent procurement, risk avoidance (invalidity and freedom-to-operate opinions), monetization (portfolio management, including licensing and transactions), and enforcement (litigation, post-grant reviews, and settlement agreements).&nbsp;</p> <p>CLE credit has been approved for California and Illinois and is pending in Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but please note registration is required.&nbsp;To reserve your place, please <a href="">REGISTER HERE</a>.</p>Upcoming Webinars12 May 2017 00:00:00 -0800 Even Ranked Top Firm for Successful PTAB Results on Behalf of Patent Owners<p>Fitch, Even, Tabin &amp; Flannery was ranked as the top law firm representing patent owners at the Patent Trial and Appeal Board according to research conducted by Unified Patents and reported in an <i><a href="">Intellectual Asset Management (IAM) article</a></i> on May 9, 2017. Unified Patents calculated the standings through its institutional success index (ISIX),&nbsp;a new scoring mechanism that ranks law firms&rsquo; success on behalf of their clients based on institution and final written decisions on the merits.</p> <p>Fitch Even has handled well over 60 IPR petitions to date on behalf of patent owners in a wide variety of industries.</p>Firm News11 May 2017 00:00:00 -0800 Alert: Statements Made by Patent Owner During IPR Proceeding Can Support Prosecution Disclaimer<p>Today, in <i><a href="">Aylus Networks, Inc. v. Apple Inc.</a>, </i>the Federal Circuit decided an issue of the first impression&mdash;whether statements made by a patent owner during an <i>inter partes</i> review proceeding can be subsequently relied upon to support a finding of prosecution disclaimer during claim construction. The court answered this question in the affirmative.</p> <p>After Aylus sued Apple for infringement of U.S. Patent RE44,412, Apple petitioned for <i>inter partes </i>review. Aylus, in its preliminary response, made certain statements that Apple sought to rely on for prosecution disclaimer in the district court. The district court accepted Apple&rsquo;s argument that Aylus&rsquo;s statements were operative to disclaim certain subject matter and that Apple was entitled to summary judgment of noninfringement.</p> <p>On appeal, the Federal Circuit affirmed. The court held that statements made by the patentee in an IPR proceeding, as in other types of post-grant proceedings, could operate as a disclaimer. The court explained that this rule ensures that claims are not argued one way in order to maintain their patentability before the U.S. Patent and Trademark Office and in a different way against accused infringers.</p> <p>Aylus argued that statements made during an IPR proceeding are unlike those made during other types of post-grant proceedings because of the &ldquo;adjudicative&rdquo; nature of an IPR proceeding. The court rejected this contention, observing that an IPR proceeding involves reexamination of an earlier administrative grant of the patent. Aylus also argued that its statements were not part of the IPR proceeding because they were made in a preliminary response. The court rejected this contention as well, holding that the public was entitled to rely on Aylus&rsquo;s representations regardless of when those statements were made during the course of the proceeding.</p> <p>The court went on to agree with the district court that Aylus&rsquo;s statements did operate as a disclaimer, and affirmed the grant of summary judgment in favor of Apple.</p> <p>Today&rsquo;s decision is not surprising, but serves as an important reminder to patentees when making arguments before the Patent Trial and Appeal Board in post-grant proceedings.</p> <p>&nbsp;</p> <p><b>Fitch Even IP Alert</b><sup><b>&reg;<br /> </b></sup></p>IP Alerts10 May 2017 00:00:00 -0800 Even Welcomes Attorney Andrew Wood to Chicago Office<p>Fitch, Even, Tabin &amp; Flannery LLP is pleased to announce that Andrew C. Wood has joined the firm&rsquo;s Chicago office as an associate. Andrew is focusing his practice primarily on patent litigation, legal opinions, and patent portfolio management. His litigation experience spans fields including GPS electronics, pharmaceuticals, food and beverage packaging, and building materials.</p> <p>Before joining Fitch Even, Andrew worked as an associate at a Midwest-based litigation defense law firm. He earned his J.D. from the DePaul University School of Law, graduating <i>cum laude</i> in May 2016. While attending law school, he served as a patent extern to the Honorable Amy St. Eve of the U.S. District Court for the Northern District of Illinois. Andrew holds both a B.S. in Biology and a B.A. in Chemistry from Indiana University.</p> We are happy to welcome Andrew to the Fitch Even team! <br /> <br /> <br type="_moz" />Firm News03 May 2017 00:00:00 -0800 Alert: Federal Circuit Interprets AIA “On Sale” Bar for the First Time<p>On May 1, 2017, in <i><a href="">Helsinn Healthcare S.A. v Teva Pharmaceuticals USA, Inc.</a>,</i> the Federal Circuit interpreted the &ldquo;on sale&rdquo; bar under AIA 35 U.S.C. 102(a)(1), holding that patent claims may be invalidated by &ldquo;on sale&rdquo; activity that does not make details of an invention available to the public.</p> <p>The statute provides, in pertinent part,</p> <p style="margin-left: 40px;">(a) NOVELTY; PRIOR ART.&mdash;A person shall be entitled to a patent unless&mdash;</p> <p style="margin-left: 80px;">(1) the claimed invention was patented, described in a printed publication, or in public use, <b>on sale, or otherwise available to the public</b> before the effective filing date of the claimed invention; . . . (emphasis added)</p> <p>The Federal Circuit declined to decide whether the AIA&rsquo;s inclusion of the words &ldquo;or otherwise available to the public&rdquo; has changed the scope of the on-sale bar to prevent secret sales from serving as prior art, instead addressing the specific issue of whether a sale prior to the critical date was invalidating when details of the invention were not disclosed to the public prior to the critical date.</p> <p><b>Background</b></p> <p>The case involves patent claims covering intravenous formulations of a pharmaceutical composition, specifically covering particular dosages. The composition was known in the prior art, but the dosages were purportedly novel. Prior to the critical date, Helsinn, the patent owner, had entered into a Supply and Purchase Agreement with a third party, MGI Pharma, Inc., in which Helsinn agreed to sell the pharmaceutical composition to MGI in the particular dosage amounts specified in the patent claims. Helsinn and MGI publicly disclosed the existence of the Supply and Purchase Agreement, but did not disclose that the agreement specified the particular dosages at issue.</p> <p><b>District Court Decision</b></p> <p>The district court held that the AIA changed the on-sale bar, and that section 102(a)(1) now requires a <i>public </i>sale or offer for sale of the claimed invention. The court concluded that to be &ldquo;public&rdquo; under the AIA, a sale must publicly disclose the details of the invention. Because there was no public disclosure of the purportedly novel dosages, the court concluded that there was no on-sale bar here.</p> <p><b>Federal Circuit Decision</b></p> <p>The Federal Circuit reversed, stating,</p> <p style="margin-left: 40px;">We conclude that, after the AIA, if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale. For the reasons already stated, the Supply and Purchase Agreement . . . constituted a sale of the claimed invention&mdash;the 0.25 mg dose&mdash;before the critical date, and therefore both the pre-AIA and AIA on-sale bars apply.</p> <p>The Federal Circuit decision provides a bit of long-awaited guidance on how the AIA on-sale bar will be interpreted, but its holding is narrow. As to the broader open question of how to construe &ldquo;otherwise available to the public,&rdquo; the Federal Circuit declined to rule. The court acknowledged floor statements made by individual members of Congress during deliberations on the AIA, indicating, e.g., that the AIA was intended to do away with precedent holding that private or secret offers for sale may be invalidating. The court left open the possibility that it may interpret the AIA&rsquo;s inclusion of &ldquo;otherwise available to the public&rdquo; as changing the scope of the on-sale bar in future cases. In this case, however, the court expressly declined to decide the case more broadly than necessary, simply holding that a sale that is publicly disclosed can be invalidating without public disclosure of the invention&rsquo;s details.</p> <p>For more information on this decision, please contact Fitch Even partner <a href=";A=2616&amp;format=xml&amp;p=5482">Joseph E. Shipley</a>, author of this alert.<br /> <b><br /> <br /> Fitch Even IP Alert<sup>&reg;</sup><br /> </b></p>IP Alerts02 May 2017 00:00:00 -0800 Alert: Federal Circuit Affirms Denial of Injunction in <i>Nichia Corp. v. Everlight Americas, Inc.</i><p>On April 28, 2017, in <a href=""><i>Nichia Corp. v. Everlight Americas, Inc.</i></a>, the Federal Circuit issued an important decision concerning the availability of injunctive relief at the conclusion of an infringement case. The court affirmed the district court&rsquo;s holdings that the three patents in suit were infringed and that Everlight had failed to prove the patents invalid. Nonetheless, and significantly, the court affirmed the district court&rsquo;s denial of a permanent injunction against Everlight.</p> <p>Nichia manufactures and supplies LED lights worldwide. Everlight is an assembler of LEDs, which it sells in the United States directly to customers and through subsidiaries. Nichia sued Everlight for patent infringement, asserting that Everlight infringed three Nichia patents directed toward designs and methods of manufacturing LEDs. At the conclusion of a bench trial, the district court held that Everlight infringed the patents and had failed to prove the patents invalid. Nichia moved for a permanent injunction, which the district court denied. Both parties appealed.</p> <p>On appeal, the Federal Circuit affirmed the district court in its entirety. After first addressing the infringement and invalidity issues, the court turned to the district court&rsquo;s denial of injunctive relief. The court began its analysis by observing that its standard review of a decision to grant or deny an injunction was for abuse of discretion, a standard that is highly deferential to the district court. On this standard, and based on the facts before the court, the Federal Circuit affirmed.</p> <p>The court noted the long-standing rule that a preliminary injunction is an equitable remedy, which is not a remedy that &ldquo;issues as a course.&rdquo; Rather, as established in the U.S. Supreme Court&rsquo;s decision in <i>eBay v. MercExchange</i>, a plaintiff seeking a permanent injunction must satisfy the traditional four-factor test in equity. Specifically, a party seeking an injunction must demonstrate that (1) it has suffered an irreparable injury; (2) remedies available at law would be inadequate to compensate for that injury; (3) considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) the public interest would not be disserved by a permanent injunction.</p> <p>The district court had weighed these factors in favor of Everlight, and the Federal Circuit agreed. First, the court rejected Nichia&rsquo;s argument that the district court had abused its discretion in finding no direct competition between Nichia and Everlight. The district court had found that Nichia and Everlight generally sell to different segments of the market, and there was generally an &ldquo;absence of actual competition&rdquo; between these parties. Also, the district court disagreed with Nichia&rsquo;s contention that it would suffer future or reparable harm because of lost sales, finding that Nichia had &ldquo;failed to establish that [Everlight was] responsible for causing a single lost sale in the U.S.&rdquo; Considering these factors, the Federal Circuit held that Nichia failed to show an abuse of discretion in determining that these factors favored Everlight. &nbsp;</p> <p>Next, Nichia also had alleged that it had suffered price erosion because of Everlight&rsquo;s infringement via a sale to a large customer. Nichia presented evidence that it had lowered its price to compete against Everlight and its infringement, and this infringement had caused this price erosion. The district court disagreed, finding that the customer had required the lower price and, in any event, other competitors had also offered products at similar lower prices. Also, Nichia&rsquo;s expert admitted that he had not attempted a price-erosion analysis. Given these factors, the Federal Circuit again determined that there had been no abuse of discretion in finding for Everlight.</p> <p>Finally, the district court had observed that Nichia was willing to license some of its patents, and this factor weighed against Nichia. The Federal Circuit, while denying that there was a categorical rule against granting of an injunction in cases where the patents have been licensed, nonetheless refused to disturb the district court&rsquo;s judgment, finding that &ldquo;[w]hile evidence of licensing activities cannot establish a lack of irreparable harm per se, that evidence can carry weight in the irreparable-harm inquiry.&rdquo; The Federal Circuit held that Nichia had, on this record, failed to establish irreparable harm, and thus was not entitled to the injunction.</p> <p>This case is significant in that it provides guidance to both patentees and established infringers in the injunction analysis. The Federal Circuit confirmed that courts are not required to grant an injunction at the conclusion of a successful patent infringement lawsuit (notwithstanding the putative status of a patent as a &ldquo;right to exclude&rdquo;). Rather, the patentee must establish proof of all four equitable factors, as in any other type of lawsuit, and it must do so on the merits of its particular case. Moreover, while there is no categorical rule against granting an injunction where there has been licensing activity, this factor will appear to weigh strongly against the patentee in the injunction analysis.</p> <p>For more information on this case, please contact Fitch Even partner <a href=";A=2589&amp;format=xml&amp;p=5482">Allen E. Hoover</a>, the author of this alert.<br /> <b><br /> Fitch Even IP Alert<sup>&reg;<br /> </sup></b></p>IP Alerts01 May 2017 00:00:00 -0800