Fitch Even News Feed

IP Alert: Medtronic, Inc. v. Boston Scientific Corp.

20 May 2013 00:00:00 -0800

Today, the U.S. Supreme Court granted a writ of certiorari in Medtronic, Inc. v. Boston Scientific Corp. In this case, the Court will address the question of which party has the burden of proof in a declaratory judgment action brought by a licensee that is seeking a declaration that the underlined patent is not infringed. The Court of Appeals for the Federal Circuit held that the licensee, as the party seeking relief, bears the burden of proof.

Fitch Even attorneys are monitoring the Medtronic case and will report further when the Court has issued this opinion.

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IP Alert: Don’t Blame the Bean—U.S. Supreme Court Clarifies Patent Exhaustion Doctrine

14 May 2013 00:00:00 -0800

As previously reported, yesterday the U. S. Supreme Court issued an opinion clarifying the doctrine of patent exhaustion. In Bowman v. Monsanto Co., a unanimous Court held that patent rights were not exhausted in soybeans harvested from genetically modified seeds sold by Monsanto.

Glyphosate is the active ingredient in several herbicides used to kill weeds, including Monsanto’s Roundup herbicide. Monsanto developed genetically modified soybean seeds that can withstand exposure to glyphosate, and markets these seeds as “Roundup Ready.” Monsanto sells the Roundup Ready seed only to purchasers who agree not to save any harvested seeds for replanting in a subsequent growing season. Absent the agreement, a farmer could harvest and replant glyphosate-resistant seeds because glyphosate resistance is passed on from the planted seed to the harvested soy bean.

Monsanto received a number of patents relating to the Roundup Ready technology, including two patents directed toward glyphosate-resistant seeds.

The petitioner, Bowman, purchased harvested soybeans that had been grown by other farmers using Roundup Ready seeds and sold to a grain elevator. The seeds were intended for consumption and not replanting. Bowman nonetheless planted these seeds in his fields and later harvested glyphosate-resistant soybeans, which he continued to replant and harvest over the course of the next eight years. After discovering this practice, Monsanto sued Bowman for patent infringement.

Bowman raised the defense of patent exhaustion, asserting that Monsanto could not control his use of the soybeans because they were the subject of a prior authorized sale. The district court rejected this argument and awarded damages to Monsanto. On appeal, the Federal Circuit held that patent exhaustion did not protect Bowman because he had “created a newly infringing article” rather than use an article sold by Monsanto. The Federal Circuit further explained that the right to use a patented article “does not include the right to construct an essentially new article on the template of the original.” The Supreme Court granted certiorari on the issue of patent exhaustion.

The Court began by explaining that the doctrine of patent exhaustion limits a patentee’s right to control what others can do with an article embodying or containing an invention. Under the doctrine, “the initial authorized sale of a patented item terminates all patent rights to that item.” The doctrine, however, “restricts a patentee’s rights only as to the ‘particular article sold; it leaves untouched the patentee’s ability to prevent a buyer from making new copies of the patented item.” For example, observed the Court, “the purchaser of the patented machine . . . does not acquire any right to construct another machine either for his own use or to be vended to another. . . . That is because the patent holder has ‘received his reward’ only for the actual article sold and not for subsequent recreations of it. . . . If the purchaser of that article could make and sell endless copies, the patent would effectively protect the invention for just a single sale.”

Based on this analysis, the Court held that the harvested soybeans did not constitute the actual article sold by Monsanto, and rejected Bowman’s arguments of patent exhaustion. The Court observed that Bowman could resell the patented soybeans he purchased, could consume the beans himself, or could feed them to his animals. “But,” held the Court, “the exhaustion doctrine does not enable Bowman to make additional patented soybeans without Monsanto’s permission (either express or implied).” The Court also held that this conclusion applied irrespective of how Bowman had acquired the seeds.

Bowman then asserted that because the seeds naturally self-replicate or “sprout” unless stored in a controlled manner, it was the planted soybean, and not Bowman “that made replicas of Monsanto’s patented invention.” The Court stated that the “blame-the-bean defense” was “tough to credit.” It noted that Bowman was not a passive observer, and that eight successive soybean crops did not happen on their own. Bowman purchased the seeds from the grain elevator, planted the seeds, tended and treated them, and also harvested them. “In all this, the bean surely figured. But it was Bowman, and not the bean, who controlled the reproduction (unto the eighth generation) of Monsanto’s patented invention.”

The Court stated that its opinion was “limited—addressing the situation before us, rather than every one involving a self replicating product.” The Court also recognized that related inventions were becoming “ever more prevalent, complex, and diverse” and that other situations might resolve differently. Nonetheless, the Bowman decision provides some clarification of the doctrine of patent exhaustion.

For more information on this decision, please contact Fitch Even partner Eric L. Broxterman, the author of this alert.

Fitch Even IP Alert

IP Alert: U.S. Supreme Court Issues Decision in Bowman v. Monsanto Co.

13 May 2013 00:00:00 -0800

Today the U.S. Supreme Court released their decision in Bowman v. Monsanto Co., a closely watched case involving the issue of patent exhaustion. A unanimous Supreme Court, siding with Monsanto, held that the doctrine of patent exhaustion did not apply to seed purchases from Monsanto under the circumstances presented.

Fitch Even attorneys are reviewing the decision and will provide further comments in an upcoming IP Alert.

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Third Federal Jury Upholds Validity of Alexsam Gift Card Activation Patents

13 May 2013 00:00:00 -0800

On Friday, May 3, 2013, a federal jury returned a verdict rejecting the contentions of seven major retailers that claims of U.S. Patent Nos. 6,000,608 and 6,189,787, issued to gift card pioneer Robert E. Dorf and his company Alexsam, Inc., were invalid. The patents cover technology for activating gift cards and other prepaid card products using the standard credit card terminals deployed at retail point-of-sale locations. The verdict rebuffed the defendants’ arguments that alleged prior art systems, including the earliest point-of –sale activation (POSA) system designed by industry giant Ceridian Stored Value Systems (SVS) for Kmart, predated the novel system that Mr. Dorf made and patented. This is the third jury verdict upholding the validity of the Alexsam patents.

Fitch Even partner and Alexsam counsel Timothy P. Maloney provided these comments:

This is another important milestone in our efforts to defend and enforce Alexsam’s patent rights for this fundamental technology. In addition to the two original prosecutions in the U.S. Patent and Trademark Office (USPTO) and six subsequent reexaminations initiated in the USPTO by various industry players, the validity of Alexsam’s patents has now been reconfirmed by three separate federal juries. This result puts an end to the invalidity challenges in this court, and permits Alexsam to focus on infringement and damages.

Mr. Dorf proved out his inventions in the Fall of 1996 in a POSA system for prepaid cards that he designed and built for telecom giant MCI, Meijer, and Michigan National Bank. As the jury found, work on an equivalent POSA system built by Ceridian/SVS for Kmart did not begin until after Mr. Dorf’s system was operating successfully in the marketplace, and was not reduced to practice until at least August 1997. SVS lost the inventive race by a year. Mr. Dorf introduced this technology to the industry, not SVS or anyone else.

The jury also rejected a separate assertion that the technology of the Alexsam patents emanated from former prepaid phone card provider WorldDial Network Services, Inc. The evidence showed that Mr. Dorf conceived and developed his inventions on his own after recognizing the serious commercial drawbacks of earlier POSA offerings such as WorldDial’s.

A third challenge alleging that a software programmer was improperly omitted as a co-inventor on the Alexsam patents was also rejected. The verdict confirmed Alexsam’s position that programmer Jay Levenson of SSTi had performed only routine, non-inventive programming tasks at Mr. Dorf’s direction. Levenson’s trial testimony regarding his alleged contributions was also contradicted by SSTi’s own business records, which identified another SSTi programmer as having performed the work in question.

With the Alexsam patents having again been found valid, the litigation now shifts to seven upcoming infringement trials against the named defendants, which are Best Buy Co., Inc., Barnes & Noble, Inc., J. C. Penney Company, Inc., Toys “R” Us Inc., McDonald’s Corporation, The Gap Inc., and The Home Depot, Inc. SVS, which described itself during the trial as “one of the world’s largest processors of gift cards,” has contractual indemnity obligations to four of the defendants. According to an SVS witness who testified during public aspects of last week’s trial, Kmart—SVS’s second gift card customer—ordered over 10 million cards at the “very beginning” of its program in 1997, and SVS now provides prepaid card processing services for over 650 other customers. The Alexsam patents will not expire until July 2017.

Alexsam’s lead trial attorneys were Steven C. Schroer and Timothy P. Maloney of Fitch, Even, Tabin & Flannery and Harry “Gil” Gillam and Melissa R. Smith of Gillam & Smith in Marshall, Texas, along with Fitch Even attorneys Alison A. Richards, Joseph F. Marinelli, David A. Gosse, and Nicole L. Little.

IP Alert: Federal Circuit Issues En Banc Decision in CLS Bank v. Alice Corp.

11 May 2013 00:00:00 -0800

Today the Federal Circuit issued a highly anticipated en banc decision in CLS Bank v. Alice Corp. The court’s decision, issued per curium, was very short and merely affirmed the judgment of the district court. Collectively, the ten judges of the Federal Circuit wrote six different opinions and one commentary.

Fitch Even attorneys are reviewing the CLS Bank decision and the various opinions issued by the Federal Circuit judges and will provide commentary in an upcoming IP Alert.

Fitch Even IP Alert

Fitch Even Partner Steve Parmelee Speaks at Northern Illinois University Program

10 May 2013 00:00:00 -0800

Fitch Even partner Steven G. Parmelee was a presenter at the Northern Illinois University-Enhancing Engineering Pathways (NIU-EEP) Saturday Engineering Workshop held on April 20, 2013, at the NIU Naperville campus, attended by over 80 Chicago-area middle-school girls and their high-school mentors. Steve’s presentation, “Inventing Happens to Everyone,” covered the basics of both the concept of innovation and the patent system and emphasized that creativity knows no boundaries with respect to age or gender. Photos from the workshop can be viewed on the NIU website.

NIU-EEP is a program funded by the Motorola Foundation to establish a sustainable pathway to the field of engineering for middle- and high-school girls. Representatives of the NIU College of Engineering and Engineering Technology, the Collegiate section of the Society of Women Engineers, the Girl Scouts of Greater Chicago and Northwest Indiana Council, and the Girl Scouts of Northern Illinois have worked together to develop this ongoing initiative to introduce engineering to participating Senior Girl Scouts and Cadettes.

Fitch Even Sponsors Music of the Baroque Gala Benefit 2013

09 May 2013 00:00:00 -0800

Fitch, Even, Tabin & Flannery LLP is proud to be an underwriter of the Gala Benefit 2013 of Music of the Baroque, which will take place on May 31 at the Fairmont Chicago.

The gala is a fundraising event to support Music of the Baroque, a premier professional chorus and orchestra specializing in the performance of eighteenth-century works. For the past 20 years, this nonprofit organization has also offered “Strong Voices,” an arts education program that supports and enhances choral programs at Chicago public high schools, providing individual and group vocal instruction and mentoring by Music of the Baroque chorus members to students who lack the resources to pursue music studies.

For more information regarding the Music of the Baroque gala, please visit their website.

IP Alert: Florida Plaintiffs Lack Standing to Challenge the America Invents Act

09 May 2013 00:00:00 -0800

Yesterday, the U.S. District Court for the Middle District of Florida entered an order dismissing a lawsuit in which the plaintiffs challenged the constitutionality of the Leahy-Smith America Invents Act (AIA). The case is Madstad Engineering, Inc. v. U.S. Patent and Trademark Office.

The plaintiffs, Madstad Engineering, Inc., and Mark Stadnyk, sued the U.S. Patent and Trademark Office (USPTO) and others, alleging that the AIA was unconstitutional. More specifically, the plaintiffs alleged that the AIA was incompatible with the Intellectual Property Clause of the United States Constitution. This clause provides Congress with the power “to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to the respective Writings and Discoveries.” Plaintiffs contended that the Constitution requires patents to be granted to the first to invent, not to the first inventor to file as the AIA largely contemplates.

The court did not directly reach the merits of the Constitutional challenge. Rather, on the UPSTO’s motion to dismiss, the court held that the plaintiffs lacked standing to maintain suit. The court dismissed the case on this basis.

Fitch Even attorneys will continue to monitor the Madstad Engineering case for any appeal.

Fitch Even IP Alert

Fitch Even Sponsors National Inventors Hall of Fame Induction Ceremony

07 May 2013 00:00:00 -0800

Fitch, Even, Tabin & Flannery LLP was proud to serve as a sponsor of the 41st Annual National Inventors Hall of Fame Induction Ceremony honoring the 2013 inductees. The induction ceremony took place on May 1, 2013, at the U.S. Patent and Trademark Office in Alexandria, Virginia.

In attendance were Fitch Even partners Edward W. Gray, Jr., Past Chair of the National Inventors Hall of Fame Board of Directors, Sherri N. Blount, Kendrew H. Colton, and Nicholas T. Peters, along with Mary Kennard, Vice President and General Counsel of American University, and John G. Gloster, Jr., Senior Associate General Counsel of Howard University.

This year's 17 honorees included Arthur Ashkin, who invented optical trapping; Donald Bitzer, Robert Willson, and the late Gene Slottow, who together created the first plasma display; Joseph Lechleider, whose work led to the Digital Subscriber Line (DSL); Leonard Flom and the late Aran Safir, who conceived the iris identification system; and John Daugman, who invented iris recognition biometric algorithms. Additional honorees who were inducted posthumously included Robert Moog, who invented the revolutionary Moog synthesizer, and Samuel Alderson, who developed the crash test dummy. The complete list of 2013 honorees can be found on the Invent Now website.

The National Inventors Hall of Fame, 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 honors individuals holding U.S. patents whose extraordinary innovations and creations have made significant contributions to our nation’s welfare and to the advancement of science and the useful arts. The Hall of Fame currently has 487 esteemed members.

Fitch Even Attorney Selena Spritz Appointed to Women 2.0 Committee

15 Apr 2013 00:00:00 -0800

Fitch Even attorney Selena M. Spritz recently accepted a position on the Founder Friday Chicago committee of Women 2.0, a media organization offering content, community, and conferences for aspiring and current women innovators in technology. Founder Friday events promote the creation of new networks among entrepreneurs, technologists, and investors in cities across the globe. The Founder Friday committee is responsible for organizing, promoting, and moderating each event.

The inaugural Founder Friday Chicago event launched on April 5, 2013, with an impressive 215 people in attendance. Featured speakers included Bryn McCoy, CTO and co-founder of Citizen Made; Elizabeth Salcedo, CEO and co-founder of Everpurse; and Bill Ready, CEO of Braintree.

Selena focuses her intellectual property law practice on advertising, copyrights, trademarks, Internet-related issues, privacy, and social media.

IP Alert: USPTO Initiates Incentives for Examiners to Reduce RCE Backlog

15 Apr 2013 00:00:00 -0800

On April 1, 2013, Deputy Commissioner Faile sent an email message to all U. S. Patent and Trademark Office (USPTO) patent examiners regarding a Memorandum of Understanding (MOU) between the Patent Office Professional Association (POPA), the union that represents patent examiners, and USPTO management. Part of this MOU is directed to changes in request for continued examination (RCE) production work credit for the remaining fiscal year 2013 (ending on September 30, 2013) to incentivize examiners in an effort to reduce the backlog of RCEs. Under the new MOU, patent examiners will receive the same distribution of work credit for first action examination in all RCEs as for other new unexamined applications.

Initially, the USPTO’s examiner production system provided equal credit for first actions on the merits (FAOM) in a new unexamined application and for each first action after the filing of an RCE. In other words, the examiner would receive the same work production credit for a first action, irrespective of whether the first action was after an RCE or issued in a new unexamined application. However, the backlog of new unexamined applications has continued to grow. A few years ago, USPTO management changed the patent examiner production system to trim down the incentive for examiners to force applicants to file RCEs. The modified production system provides a larger amount of work credit for the FAOM in a new unexamined application than for a first action after the filing of the first RCE, and even less work credit for the first action after the filing of any subsequent RCE. Additionally, RCEs were no longer placed on the examiner’s Regular Amended docket, which meant the examiner did not have a defined “management deadline” wherein an RCE must be examined. These actions effectively disincentivized examination after an RCE was filed. Consequently, the backlog of RCE applications has swelled in the last few years with no sign of abatement.

In March 2013, the USPTO conducted roundtable meetings with the public in an effort to identify changes in USPTO practices to reduce the ever-growing RCE backlog. The resulting MOU presents patent applicants with the opportunity to reach out to examiners with corresponding RCEs within this fiscal year while the examiner is incentivized to examine and identify allowable subject matter. It is unclear how RCEs will be examined after September 30, 2013.

For more information, please contact Fitch Even partner Kendrew H. Colton.

--Written by Fitch Even patent agent Eggerton A. Campbell

Fitch Even IP Alert

IP Alert: USPTO Proposes New Rules to Implement Patent Law Treaty

12 Apr 2013 00:00:00 -0800

The U.S. Patent and Trademark Office (USPTO) has published proposed rules to implement a portion of the Patent Law Treaty Implementation Act (PLTIA). (For more information on this Act, please see our IP Alert of December 30, 2012.)

The proposed rules will implement title II of the PLTIA. More specifically, the rules create new provisions relating to the filing date requirements for a patent application and to the restoration of patent right provisions of the PLTIA, and effectuate certain changes concerning patent term adjustment and incorporation by reference. The proposal also removes provisions relating to the "unavoidable" standard for revival of patent applications and lapsed patents. The USPTO will accept written comments on the proposed rules until June 10, 2013.

For more information, please contact Fitch Even partner Edward E. Clair.

Fitch Even IP Alert

Fitch Even Partner Kendrew Colton Reelected to American Chemical Society Position

11 Apr 2013 00:00:00 -0800

Fitch Even partner Kendrew H. Colton was recently reelected to the 2013 Executive Committee of the Chemistry and the Law Division (CHAL) of the American Chemical Society. Ken will be serving as Alternate Councilor for the committee, a position he has been elected to every year beginning in 2005. He has also served as Intellectual Property Secretariat for CHAL every year since 2004, and was Chair of the CHAL Executive Committee in 2003.

Ken has been practicing intellectual property law for over 30 years. His primary practice specialty is counseling clients on a wide range of IP matters involving established and emerging chemical and biochemical technologies. In addition, he is frequently called upon to render patentability, validity, and infringement opinions.

The American Chemical Society is the world’s largest scientific society and one of the world’s leading sources of authoritative scientific information. A nonprofit organization, chartered by Congress, the Society is at the forefront of the evolving worldwide chemical enterprise and the premier professional home for chemists, chemical engineers, and related professions around the globe.

Fitch Even Attorney Selena Spritz Organizes IPLAC Women in IP Event

10 Apr 2013 00:00:00 -0800

The Women in IP Committee of the Intellectual Property Law Association of Chicago (IPLAC) will host their second annual Progressive Networking Dinner on April 24, 2013, at 5:30 to 7:30 pm at Trattoria No. 10 in Chicago. This event was organized by Fitch Even attorney Selena M. Spritz, Chair of the Women in IP Committee.

During each course, attendees will rotate among the tables to interact with a different group of dynamic intellectual property professionals. Attendees will have the opportunity to network with colleagues and discuss issues relating to women in the law, all while enjoying a fine-dining experience. For more information and to register, please visit the IPLAC website.

Selena focuses her IP practice on advertising, copyrights, trademarks, Internet-related issues, privacy, and social media. Fitch Even attorneys have been involved with IPLAC as leaders and members since its inaugural organizational meeting in 1884.

IP Alert: USPTO Releases Final Rule Regarding Inter Partes Review

02 Apr 2013 00:00:00 -0800

On March 25, 2013, the U.S. Patent and Trademark Office (USPTO) published a rule to implement the changes to the inter partes review procedures that were signed into law on January 14, 2013. The new rule eliminates the nine-month waiting period for filing an inter partes review petition challenging patents that were filed under the pre-America Invents Act (AIA) “first-to-invent” system. The rule clarifies that first-to-invent patents and reissue patents are eligible for inter partes review immediately upon issuance.

For patents filed under the pre-AIA first-to-invent system, the nine-month period after the issuance of the patent was previously termed a “dead zone.” The law formerly provided for inter partes reexamination of such patents. On September 16, 2012, however, the law changed to disallow inter partes reexamination requests filed after that date, and instead provided for inter partes review of such patents. But because inter partes review was not available until nine months after the issuance of the patent, third parties were unable to raise challenges within the USPTO during those nine months—hence, the "dead zone." A similar "dead zone" existed for reissue patents.

The new rule implements procedural mechanisms for the elimination of these "dead zones." The USPTO now allows third parties to seek inter partes review during the first nine months after issuance of a first-to-invent patent or reissue patent. The new rule also provides that if post-grant review proceedings have been implemented, inter partes review proceedings may not begin until the termination of the post-grant review proceedings.

The Federal Register rulemaking notice may be found here. For more information on the post-grant and inter partes review proceedings, please see our IP Alert of September 18, 2012.

--Written by Fitch Even attorney Amanda Lowerre O'Donnell

Fitch Even IP Alert

IP Alert: Supreme Court Rules First Sale Doctrine Applies to Foreign-Made Goods in Kirtsaeng v. John Wiley & Sons

01 Apr 2013 00:00:00 -0800

As previously reported, on March 19, in Kirtsaeng v. John Wiley & Sons, Inc., the U.S. Supreme Court ruled that the “first sale” doctrine of the Copyright Act applied to products made abroad. This 6-3 decision authored by Justice Breyer reversed rulings by the district court and Second Circuit that the first sale doctrine did not apply to foreign-made products.

Under the first sale doctrine, the purchaser of a physical copy of a copyrighted work may give or sell that purchased copy to another without infringing the copyright owner's exclusive distribution rights. Specifically, the law provides “the owner of a particular copy . . . lawfully made under this title . . . is entitled without the authority of the copyright owner to sell or otherwise dispose of the possession of that copy . . .” (17 U.S.C. § 109(a)). In Kirtsaeng, the Court held that the phrase “lawfully made under this title” is not geographically limited to first sales in the United States.

John Wiley & Sons, Inc. (“Wiley”), published two versions of its textbooks, an American version printed and sold in the U.S. and a foreign version printed and sold abroad. Wiley authorized its wholly owned foreign subsidiary to publish, print, and distribute its English language textbook abroad. On each copy published abroad by the subsidiary, Wiley included language specifying that such foreign-made copies were authorized only for sale in Europe, Asia, Africa, and the Middle East and could not be exported out of these regions without Wiley’s permission.

Supap Kirtsaeng, a Thai citizen and student, was sent copies of foreign-edition English language textbooks at Thai bookshops. These textbooks sold at lower prices than the versions sold in the U.S. Kirtsaeng resold the textbooks in the U.S. at a profit.

Wiley sued Kirtsaeng for copyright infringement, claiming that his reselling of its foreign-made textbooks in the U.S. violated its exclusive right to distribute its copyrighted textbooks. Kirtsaeng argued that the first sale doctrine permitted him to resell in the U.S. the textbooks published and first purchased in Thailand. The district court rejected this contention and awarded statutory damages. On appeal, the Second Circuit affirmed, holding that the first sale doctrine applies only to copies made in territories where the U.S. Copyright Act is law. The Supreme Court granted Kirtsaeng’s petition for a writ of certiorari on this question.

The Court concluded that “Kirtsaeng’s non-geographical reading [of the first sale doctrine] is the better reading of the Act.” In reaching this conclusion, the Court analyzed several factors, including the text of the current statute, the legislative history of this portion of the Copyright Act, the underlying common law doctrine from which the first sale doctrine arose, and industry practices of book sellers, libraries, museums, and retailers.

The Court considered the current language of the first sale doctrine in Section 109(a) and noted that the statute says nothing about geography. Rejecting the dissent’s interpretation that the wording could be interpreted to mean goods made where the Copyright Act is applicable, the Court determined that “lawfully made under this title” means goods “made ‘in accordance with’ or ‘in compliance with’ the Copyright Act.”

The Court also compared the text of the current and previous versions of the statute and concluded that the changes resulting in the current language were not made to introduce a geographical limitation. The previous version of the statute protected “the transfer of any copy the possession of which has been lawfully obtained.” The current statute reads that, “the owner of a particular copy . . . lawfully made under this title” may sell that copy. The Court reasoned that this change was made to prevent non-owners, such as theater lessees of leased films, from being able to assert the first sale doctrine as a defense in infringement situations. Further, reading a geographical interpretation into the current law would “grant the holder of an American copyright . . . permanent control over the American distribution chain . . . in respect to copies printed abroad but not in respect to copies printed in America.” The Court rejected that Congress would have intended such a result.

The Court also considered the underlying common law first sale doctrine from which the current Section 109(a) arose and found that the common law doctrine made no geographical distinctions: “‘[W]hen a statute covers an issue previously governed by the common law,’ [this Court] must presume that ‘Congress intended to retain the substance of the common law.’”

Finally, the Court considered the practices of book sellers, libraries, museums, and retailers. Such entities are not in the habit of asking copyright owners for permission before selling, lending, or displaying copies of works made abroad. The Court observed that the practices of these entities illustrate how deeply embedded their reliance is upon an interpretation of the first sale doctrine without geographic restrictions.

The Court reversed and remanded the case to the Second Circuit, and subsequently remanded two additional copyright decisions that raised similar issues (Liu v. Pearson Education, Inc., et al. and Kumar v. Pearson Education, Inc., et al.).

The Court also was presented with a petition for a writ of certiorari in Ninestar Technology Co., Ltd. et al. v. International Trade Commission et al., a patent case in which Ninestar purchased used printer cartridges in Asia and refilled and resold the cartridges in the U.S. In Ninestar, the Federal Circuit held that only initial sales of the printer cartridges in the U.S. (as compared to initial sales abroad) could exhaust U.S. patent rights. While many expected the Court to grant the certiorari petition, the Court denied the petition after issuing its decision in Kirtsaeng.

The Kirtsaeng decision has significant ramifications for publishers and resellers of copyrighted works. For more information, please contact Fitch Even attorney Alisa C. Simmons, the author of this alert.

Fitch Even IP Alert

IP Alert: Federal Circuit Addresses Written Description Requirements for Broadening Design Continuation Applications

27 Mar 2013 00:00:00 -0800

In a recent panel decision, In re Owens, the Federal Circuit addressed the written description requirements for design patents, and explained how the written description requirement should be applied for broadening continuation applications. This decision is of interest to those Fitch Even clients who obtain design patents.

In this decision, Owens, the applicant, had pursued a design patent application for a mouthwash bottle. The design as presented initially was drawn in all solid lines with the exception of the cap. Owens then filed a continuation application and attempted to claim only a portion of the top and sides of the mouthwash bottle. The figures below illustrate the difference between the applications:

Owens did not dispute that the broken line boundary added across the front of the bottle in the continuation application was not present in the original design application:

An examiner at the United States Patent and Trademark Office (USPTO) rejected the application on the grounds that the boundary line constituted new matter. Also, Owens had sold bottles that were similar in design more than one year before the filing date of the continuation application. The examiner rejected the continuation application based on the sale of the bottles. Owens appealed within the USPTO, which affirmed, noting that the correctness of the latter rejection depended on whether the boundary line constituted new matter. Owens then appealed to the Court of Appeals for the Federal Circuit.

On appeal, Owens raised these arguments:

• Boundary lines are not part of the claimed subject matter, and therefore cannot constitute new matter.
• MPEP §1503.02 states “[a]ny broken line boundary other than a straight broken line may constitute new matter…” thereby implying that addition of a straight boundary line is not new matter.
• An earlier case, In re Daniels, held an amendment to remove a portion of the drawing did not add new matter if it was a reasonably identifiable portion of the original disclosure.

A third party, Method Products, filed an amicus brief in support of Owens. Method Products argued that the USPTO has historically allowed such amendments in later continuation design applications, citing specific examples where addition of such boundary lines had been allowed. Method Products also observed that the USPTO’s own “Design Days” conference materials indicate that such an amendment is permissible. Specifically, the USPTO conference materials indicated that the following amendment (on the right) would be allowable in a later case:

Despite the above, the Federal Circuit affirmed. The court held that nothing in the parent application’s disclosure suggested anything uniquely patentable about the top portion of the bottle’s front panel or, perhaps more importantly, made clear that the now-claimed top portion of the front panel might be claimed separately from the remainder of the design. The court disagreed with Owens that the trapezoidal area delineated by the boundary line was not the subject of the claim in the original application.

Distinguishing the Daniels case, the court observed that in that case a continuation application claiming a design for a container was entitled to the effective filing date of its parent application, which claimed the same container decorated with an ornamental floral design. The court reasoned that the underlying container claimed in the continuation was “clearly visible in the earlier design application, demonstrating to the artisan viewing that application that Mr. Daniels had possession at that time of the later claimed design of that article.” In other words, the patentee in Daniels did not introduce any new unclaimed lines, but rather had removed an entire design element. The designs at issue in Daniels are shown below:

The court distinguished the Owens applications from the designs at issue in Daniels, holding “[i]t does not follow from Daniels that an applicant, having been granted a claim to a particular design element, may proceed to subdivide that element in subsequent continuations however he pleases.”

The court then turned to the question of whether, and under what circumstances, Owens could introduce an unclaimed boundary line on his center-front panel and still receive the benefit of the earlier filing date. After some analysis, the court held that “unclaimed boundary lines typically should satisfy the written description requirement only if they make explicit a boundary that already exists, but was unclaimed, in the original disclosure.” The court noted that counsel for the USPTO had conceded at oral argument that he could not reconcile all past allowances under this standard, but had stated that all future applications will be evaluated according to this standard. And under this standard, because “the parent disclosure does not distinguish the now-claimed top trapezoidal portion of the panel from the rest of the pentagon in any way,” the court affirmed the rejection of Owens’s application.

The Federal Circuit explicitly noted that this decision addressed the addition of broken boundary lines (typically designated with a “dash dot dash” notation) and not broken lines used to illustrate unclaimed environment (typically designated with a “dash dash dash” notation). Thus, the practice of being able to convert solid lines to environmental broken lines and vice versa in later applications is not directly implicated by this ruling.

The Owens decision has certain strategic implications for design patent applicants. For more information, please contact Fitch Even partner Edward E. Clair.

A recent Fitch Even webinar presented by Edward Clair, “How to Get the Most Out of Design Patents,” covers various aspects of design patents and includes a discussion of the Owens case prior to the Federal Circuit’s decision. A recording of the webinar is available for viewing at no charge and can be accessed through our Webinars page here.

Fitch Even IP Alert

Firm Partners Serve as Science Fair Judges for the Chicago Intellectual Property Alliance

26 Mar 2013 00:00:00 -0800

On March 22, 2013, Fitch Even partners Steven G. Parmelee and Nicholas T. Peters served as special judges at the 63rd Annual Chicago Public Schools Student Science Fair at the Museum of Science and Industry.

These attorneys, along with other area legal professionals and several local law students, helped to select the recipients of special awards sponsored by the Chicago Intellectual Property Alliance (CIPA). For the tenth consecutive year, CIPA awarded cash prizes for the three “Most Inventive” entries, as well as assistance with the preparation and filing of a patent application to one of the winning students.

Approximately 300 middle-school and high-school students had been previously selected from a field of 12,000 local participants to present their projects and accompanying papers at the citywide science fair. The CIPA judges sought out the most innovative projects among these, interviewing many of the student exhibitors as part of the judging process. The attorneys also provided students with written materials on the patent process and the importance of intellectual property law.

Fitch, Even, Tabin & Flannery LLP is a co-founder of CIPA. Steve Parmelee has served as co-chair of CIPA’s Science Fair Committee for several years, and many Fitch Even attorneys have also been involved with this initiative over the years. Four-time judge Nick Peters remarked, “This is one of the events I really enjoy because you see the obvious enthusiasm for technology and science that these students have. It’s an honor to be able to interact with these young people and be a part of their education regarding intellectual property rights.”

For more information on the event, please visit the Chicago Public Schools Student Science Fair website at http://www.chicagostudentsciencefair.org.

Fitch Even Partner Kendrew Colton Quoted in ACS Chemical & Engineering News

25 Mar 2013 00:00:00 -0800

Fitch Even partner Kendrew H. Colton was quoted in an article published March 11, 2013, in the online and print editions of Chemical & Engineering News, a weekly publication of the American Chemical Society. The article, titled "Patent Tectonics," discusses the impact of the changes in U.S. patent law from a first-to-invent to a first-inventor-to-file system under the Leahy-Smith America Invents Act.

Ken has extensive intellectual property counseling and litigation experience involving patent infringement, contract licensing disputes, copyrights, unfair competition, and trade secrets. He is a member of the Executive Committee of the Chemistry and the Law Division (CHAL) of the American Chemical Society.

Disruptive Technologies and Patents: A Case Study of Graphene

22 Mar 2013 00:00:00 -0800

Please join Fitch, Even, Tabin & Flannery LLP and IPVision for a complimentary webinar, “Disruptive Technologies and Patents: A Case Study of Graphene,” presented by Steven G. Parmelee and Alex Butler. The webinar will take place on Thursday, April 25, 2013, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

A one-atom-thick sheet of carbon atoms arranged in a regular hexagonal pattern, graphene has earned headlines (e.g., “Graphene: Wonder Material of the 21st Century”) as frequent and breathless as normally staid scientific reporters ever permit. The 2010 Nobel Prize in Physics, enormous government and private sector investments, and countless articles, research papers, and grants have sparked an avalanche of patent filings. Published U.S. filings, for example, increased tenfold over a short five-year window.

This webinar will address the following topics:

• Patenting behaviors that anticipated room-temperature superconductors
• A deep dive into the statistics of graphene patenting to date
• Patenting options available to those currently working in the graphene field
• What those not (yet) working in the graphene field need to know

Our speakers are Fitch Even partner Steven G. Parmelee and Alex Butler, Executive Vice President of IPVision. Steve is a patent attorney with over 30 years of experience and is a published author on white-space inventing. Alex has spent over 15 years advising organizations in creating unique patent strategies across numerous technology areas.