Fitch Even News Feed Feb 2017 00:00:00 -0800firmwise Your Business Strategy with Patents<p>Please join Fitch, Even, Tabin &amp; Flannery LLP for a complimentary webinar, &ldquo;<a href="">Fueling Your Business Strategy with Patents</a>,&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>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. To reserve your place, please <a href="">REGISTER HERE</a>.<br /> &nbsp;</p>Upcoming 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 Even Partner Ken Colton Quoted in ACS Chemical & Engineering News<p>Fitch Even partner <a href=";A=2568&amp;format=xml&amp;p=3131">Kendrew H. Colton</a> was quoted in an article published in this week&rsquo;s issue of <i>Chemical &amp; Engineering News</i>, a publication of the American Chemical Society.</p> <p>The article, titled &quot;<a href="">Dispute Over the Legal Rights to an Anticancer Agent Continues</a>,&quot; discusses the ongoing dispute between Scripps Research Institute California and Oncoceutics, Inc., a clinical-stage drug discovery and development company, involving the patent for an anticancer agent.</p> <p>Ken has been practicing intellectual property law for over 30 years. His primary practice focus is counseling clients on a wide range of IP matters involving established and emerging chemical and biochemical technologies. Ken has been a member of the <i>Chemical &amp; Engineering News</i> Advisory Board since 2012.<br /> &nbsp;</p>Professional Activities13 Feb 2017 00:00:00 -0800 Even Partner Steve Parmelee Serves as Judge at Invent Idaho Regional Finals<p>On January 21, 2017, Fitch Even partner <a href=";A=2610&amp;format=xml&amp;p=5482">Steven G. Parmelee</a> served as a judge at the Invent Idaho Regional Finals, held in Coeur d&rsquo;Alene, Idaho. The competition was open to students ranging from grades 1 through 8, split into four divisions by grade level. Individuals or teams of students entered inventions of their own conception and design into one of five project categories. Judging was based on a number of criteria including originality, inventing process, accomplishment of goal or objective, research and documentation, and visual presentation. Following the competition, Steve noted, &ldquo;Not only were the inventions themselves quite remarkable, but the documented brainstorming, researching, testing, and redesigning that these kids accomplished was inspiring.&rdquo;</p> <p>The regional competition winners will advance to the state finals on March 3&ndash;4. The top winners of the state finals will participate in the <a href="">National Invention Convention</a> at the U.S. Patent and Trademark Office headquarters in Washington, D.C., on June 1&ndash;3.</p> <p><a href="">Invent Idaho</a> was founded in 1989 by two educators with the goal of fostering innovative thinking by challenging students to invent solutions to everyday problems. Since then, the program has succeeded in its mission to inspire, encourage, and recognize thousands of students for their inventions, designs, and innovations.<br /> <br /> <br /> &nbsp;</p>Community Activities09 Feb 2017 00:00:00 -0800 Even Welcomes Patent Agent Tom James to Chicago Office<p>Fitch, Even, Tabin &amp; Flannery is pleased to announce that <a href=";A=12841&amp;format=xml&amp;p=5482">Thomas A. James</a> recently joined the firm&rsquo;s Chicago office as a patent agent. Tom previously was a patent examiner with the U.S. Patent and Trademark Office, where he expedited prosecution of patent applications, working primarily in the field of electrical engineering, with a focus on image analysis. In addition to his work at the USPTO, Tom has experience in transactional IP, advising clients regarding potential patent acquisitions and sales. He has worked extensively with electronics, software, semiconductor, and telecommunications technologies.</p> <p>Tom earned a B.S. in Electrical Engineering from the University of North Dakota, where he founded the Society for Engineering and Entrepreneurial Development and served as its president. During his last year at the university, he was a researcher at its Unmanned Aircraft Systems Engineering Lab and a teaching assistant for an Electrical Engineering Embedded Systems course.</p> <p>We are happy to welcome Tom to the Fitch Even team!</p>Firm News06 Feb 2017 00:00:00 -0800 Alert: PTAB Holds Sovereign Immunity Applicable to IPR Proceedings<p>On January 25, 2017, in<i> <a href="/2E8FB4/assets/files/Documents/Covidien LP v. University of Florida Research Foundation 02 02 17.pdf">Covidien LP v. University of Florida Research Foundation, Inc</a></i><a href="/2E8FB4/assets/files/Documents/Covidien LP v. University of Florida Research Foundation 02 02 17.pdf">.</a>, the Patent Trial and Appeal Board (PTAB) granted the motion of the University of Florida Research Foundation (UFRF) to dismiss <i>inter partes</i> review (IPR) proceedings. The PTAB concluded that the &ldquo;UFRF, as an arm of the State of Florida, is entitled to a sovereign immunity defense in the institution of an <i>inter partes</i> review.&rdquo; This decision is significant where state-owned patents are concerned.</p> <p>The Eleventh Amendment prevents federal courts from exercising their jurisdiction over states in suits brought by private citizens or subjects of a foreign state. In <i>Hans v. Louisiana</i>, an 1890 Supreme Court case, the Court held that the states&rsquo; sovereign immunity is expansive and that a state must consent to being sued in order for federal courts to exercise jurisdiction in suits brought by any citizen. Subsequently, in <i>Federal Maritime Commission v. South Carolina State Ports Authority</i>, a 2002 case, the Supreme Court affirmed an agency dismissal of a complaint filed against a South Carolina state entity. The Court analogized the function and purpose of the agency action to an action in the federal courts, observing that the complaint sought to initiate proceedings that were overwhelmingly similar to civil litigation, and that the role of the administrative law judge at the Federal Maritime Commission was similar to that of a federal Article III judge. These similarities led the Court to hold that sovereign immunity barred the agency adjudication of a claim against the nonconsenting state entity.</p> <p>Subsequently, however, in <i>Vas-Cath, Inc. v. Curators of the University of Missouri</i>, the Federal Circuit denied the University of Missouri&rsquo;s motion to dismiss an appeal from an interference proceeding before the Board of Patent Appeals and Interference based on Eleventh Amendment sovereign immunity. The court reasoned that the university had consented to federal jurisdiction when it initiated and participated the interference proceedings, and therefore could not avail itself of Eleventh Amendment protections.</p> <p>In <i>Covidien</i>, UFRF brought an Eleventh Amendment motion to dismiss. The PTAB considered both the Supreme Court&rsquo;s reasoning in <i>Federal Maritime Commission</i> and the Federal Circuit&rsquo;s <i>Vas-Cath</i> decision in its analysis. Observing that there exist some differences between pleadings, discovery, relief, standards, and jurisdictional and standing requirements in <i>inter partes</i> review and civil litigation, the PTAB nonetheless concluded that the UFRF retained sovereign immunity. The PTAB determined that the agency procedure sought by Covidien was analogous to the agency relief sought in <i>South Carolina State Ports Auth.,</i> such that the &ldquo;considerable resemblance&rdquo; between an IPR and civil litigation was sufficient to implicate Eleventh Amendment immunity. Also, the PTAB rejected Covidien&rsquo;s argument that the UFRF had consented to participation in the IPR merely by virtue of having obtained patent rights.</p> <p>The PTAB did not address whether a third party may request <i>ex parte</i> reexamination of a state-owned patent. <i>Ex parte</i> proceedings are by their nature very different from contested litigation proceedings, and on initial review it seems that the PTAB&rsquo;s Eleventh Amendment analysis would not apply to such proceedings.</p> <p>This case is likely to have a significant impact on state universities and other state entities in contemplation of patent enforcement or litigation. Universities have become increasingly interested in patent enforcement in recent years. Subject to any appeal, the <i>Covidien</i> decision seems to have removed at least some of the tools that are available to an accused infringer facing a state-owned patent. For more information, please contact Fitch Even partner <a href=";A=2933&amp;format=xml&amp;p=5482">Joseph H. Herron</a>.</p> <p><i> </i></p> <p><b>Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts02 Feb 2017 00:00:00 -0800 Even Sponsors Chicago Women in IP Post-Holiday Dinner<p>Fitch Even was proud to be a platinum sponsor of Chicago Women in IP&rsquo;s Second Annual Post-Holiday Dinner, on January 25, 2017, at Maggiano&rsquo;s in Chicago. The sold-out event began with open networking and continued with a lively progressive dinner attended by IP professionals from top Chicago corporations, law firms, law schools, and service providers. For more information on the dinner, please visit the Chicago Women in IP <a href="">website</a>.</p> <p><a href="">Chicago Women in IP</a> (&ldquo;ChiWIP&rdquo;) is a networking and mentoring group for women attorneys working in IP law and women in IP-related businesses. Its mission is to create a community of professionals who share a common interest in the advancement of women within the field of intellectual property law. ChiWIP was cofounded by Fitch Even partner <a href=";A=2598&amp;format=xml&amp;p=5482">Nicole L. Little</a> and four other Chicago-area intellectual property law professionals. Nikki is currently the co-chair of ChiWIP's Career Development Programs Committee and its Marketing &amp; Communications Committee.</p> <p>&nbsp;</p> <p>&nbsp;</p>Professional Activities01 Feb 2017 00:00:00 -0800 Even Partners Named to Illinois Super Lawyers and Illinois Rising Stars Lists for 2017<p>Seven Fitch Even partners have been selected for inclusion in the 2017 list of Illinois Super Lawyers and four partners have been selected for inclusion in the 2017 list of Illinois Rising Stars<i>. </i></p> <p><a href=";A=2581&amp;format=xml&amp;p=3130">Karl R. Fink</a> and <a href=";A=2601&amp;format=xml&amp;p=3130">Timothy P. Maloney</a> were once again recognized as top attorneys in Intellectual Property Litigation and Intellectual Property Law in Illinois, and <a href=";A=2580&amp;format=xml&amp;p=5482">Stephen S. Favakeh</a>, <a href=";A=2588&amp;format=xml&amp;p=5482">Mark W. Hetzler</a>, <a href=";A=2589&amp;format=xml&amp;p=5482">Allen E. Hoover</a>, <a href=";A=2609&amp;format=xml&amp;p=5482">Joseph T. Nabor</a>, and <a href=";A=2616&amp;format=xml&amp;p=3130">Joseph E. Shipley</a> were recognized as top attorneys in Intellectual Property Law in Illinois. No more than 5 percent of all lawyers in the state are selected by the research team at Super Lawyers to receive this honor each year.</p> <p><a href=";A=2567&amp;format=xml&amp;p=3130">Mark A. Borsos</a> (Intellectual Property Law and Intellectual Property Litigation), <a href=";A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a> (Intellectual Property Litigation and Intellectual Property Law), <a href=";A=2598&amp;format=xml&amp;p=5482">Nicole L. Little</a> (Intellectual Property Litigation, Intellectual Property Law, and Media and Advertising Law), and <a href=";A=2607&amp;format=xml&amp;p=5482">Calista J. Mitchell</a> (Intellectual Property Law) were named to this year&rsquo;s <i>Illinois Rising Stars</i> list, included among the top up-and-coming attorneys in the state who are 40 years old or younger or who have been practicing for 10 years or less. No more than 2.5 percent of Illinois lawyers receive this honor each year.</p> <p>Super Lawyers, a Thomas Reuters business, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. Attorneys are selected using a multiphase process that includes a statewide survey of lawyers, independent research evaluation of candidates, and peer reviews by practice area. For more information, please visit <a href=""></a>. <br /> <br /> &nbsp;</p>Firm News27 Jan 2017 00:00:00 -0800