Fitch Even News Feedhttp://www.fitcheven.com/?t=39&format=xml&stylesheet=rss&directive=0&records=20en-us20 Jul 2017 00:00:00 -0800firmwisehttp://blogs.law.harvard.edu/tech/rssFitch Even Partners Named to IPLAC Leadership Postshttp://www.fitcheven.com/?t=40&an=67703&format=xml<p><font color="#000000">Three Fitch Even partners were recently appointed to </font><a href="http://iplac.org/" data-cke-saved-href="http://iplac.org/"><font color="#0000ff">Intellectual Property Law Association of Chicago</font></a><font color="#000000"> (IPLAC) leadership roles&nbsp;for 2017&ndash;18. </font></p> <p><a href="http://www.fitcheven.com/?t=3&amp;A=2617&amp;format=xml&amp;p=5482" data-cke-saved-href="http://www.fitcheven.com/?t=3&amp;A=2617&amp;format=xml&amp;p=5482"><font color="#0000ff">Alisa C. Simmons</font></a><font color="#000000">, who served as IPLAC President in 2015&ndash;16, was appointed President of the IPLAC Educational Foundation, which has been awarding scholarships since 1991 to Chicago Public School students who plan to study engineering, science, or pre-law in college. Alisa was also appointed Vice-Chair of the Historical Records Committee, and Vice-Chair of the Dinner Planning Committee. <font color="#000000">&nbsp;&nbsp;</font></font></p> <p><a href="http://www.fitcheven.com/?t=3&amp;A=2609&amp;format=xml&amp;p=5482" data-cke-saved-href="http://www.fitcheven.com/?t=3&amp;A=2609&amp;format=xml&amp;p=5482"><font color="#0000ff">Joseph T. Nabor</font></a><font color="#000000"> will continue as Chair of the Historical Records Committee. Joe has been active in IPLAC since 1994 in a variety of leadership roles. </font></p> <p><a href="http://www.fitcheven.com/?t=3&amp;A=2587&amp;format=xml&amp;p=5482" data-cke-saved-href="http://www.fitcheven.com/?t=3&amp;A=2587&amp;format=xml&amp;p=5482"><font color="#0000ff">Paul B. Henkelmann</font></a><font color="#000000"> was appointed IPLAC&rsquo;s delegate to the U.S. Bar&ndash;EPO Liaison Council and was reappointed Co-Chair of the Field Day Committee.</font></p> <p><font color="#000000">Founded in 1884, IPLAC is the oldest intellectual property law association in the United States. Fitch Even attorneys have served as leaders and members of the organization since its inaugural meeting. </font><br /> &nbsp;</p>Professional Activities20 Jul 2017 00:00:00 -0800http://www.fitcheven.com/?t=40&an=67703&format=xmlIP Alert: IPR Challenge May Proceed Even If Not All Patent Owners Participatehttp://www.fitcheven.com/?t=40&an=67664&format=xml<p>On July 13, 2017, the Patent Trial and Appeal Board (PTAB) considered a challenge to a patent held collectively by Toyota Motor Corporation and the Regents of the University of Minnesota. The case at issue is <i><a href="/2E8FB4/assets/files/Documents/Reactive Surfaces Ltd. LLP v. Toyota Motor Corp.pdf">Reactive Surfaces Ltd. LLP v. Toyota Motor Corp.</a></i> On a preliminary motion to dismiss, the PTAB held that (1) the University of Minnesota has sovereign immunity under the Eleventh Amendment, but that (2) the challenge to the patent&rsquo;s validity may continue even in the absence of the university. That is because (3) Toyota is a private company that does not enjoy Eleventh Amendment immunity, and Toyota &ldquo;would adequately represent the interests of the [University] in the challenged patent.&rdquo; This decision serves as a reminder that parties who jointly own a patent should have an agreement that allocates rights and responsibilities for the patent, including which party controls strategic decisions made when the patent is challenged.</p> <p>This is the third decision at the PTAB to answer whether sovereign immunity under the Eleventh Amendment may be asserted in IPR proceedings. In two earlier decisions, <a href="http://www.fitcheven.com/?t=40&amp;an=66512&amp;anc=180&amp;format=xml&amp;p=5486"><i>NeoChord, Inc. v. University of Maryland, Baltimore</i><i>and Harpoon Medical, Inc.</i></a>and <a href="http://www.fitcheven.com/?t=40&amp;an=63278&amp;anc=180&amp;format=xml&amp;p=5486"><i>Covidien LP v. University of Florida Research Foundation, Inc.</i></a>, the PTAB concluded that state actors indeed may invoke Eleventh Amendment immunity in IPR proceedings. In the current case, while noting that &ldquo;neither of those decisions is binding on us,&rdquo; this panel of the PTAB adopted the identical conclusion. The PTAB observed that the quasi-judicial nature of IPR proceedings accords Eleventh Amendment immunity to states and state entities and that the university (and the regents of the university, which are &ldquo;interchangeable&rdquo;) are state actors under the Eleventh Amendment analysis.</p> <p>Finally, the PTAB determined that the IPR may continue even in the absence of the university. Toyota and the University of Minnesota (who were represented by the same law firm) argued for a rule requiring automatic termination of a proceeding upon the dismissal of one patent owner on the grounds of the sovereign immunity. The patent owners relied on <i>Republic of Philippines v. Pimentel</i>, a 2008 Supreme Court case holding that &ldquo;where sovereign immunity is asserted, and the claims of the sovereign are not frivolous, dismissal of the action must be ordered where there is a potential for injury to the interests of the absent sovereign.&rdquo;</p> <p>The PTAB rejected this contention. In its analysis, the PTAB relied in part on <a href="http://www.fitcheven.com/?t=40&amp;an=23444&amp;anc=180&amp;format=xml&amp;p=5486"><i>University of Utah v. Max-Planck-Gesellschaft et al.</i></a><i>,</i> observing that the Federal Circuit does not always find all patent owners to be indispensable parties to litigation involving the patent. In this case, Toyota and the University of Minnesota were co-owners of the patent, each apparently holding an identical interest. Under this circumstance, the PTAB held that upon dismissal of the university, the remaining party (Toyota) can adequately represent the interests of the sovereign party. Here, the PTAB determined that the adequacy of that representation was even stronger because the parties at issue were themselves patent owners, all of the patent owners except the absent sovereign were present in the action, and all of the patent owners were represented by the same legal counsel.</p> <p>Because Toyota and the University of Minnesota were represented by the same counsel, it does appear that their strategic interests were identical or closely aligned. That is not always the case, however. In defending against an IPR or other patent challenge, it is conceivable that two patent owners might have divergent interests, particularly where one of the patent owners is obligated to pay an ongoing fee or royalty to the other (e.g., when one patent owner does not want to contest the IPR). Patent co-owners should have an agreement that allocates rights and responsibilities, particularly concerning what happens when a patent is challenged, including which party will control the challenge and which party will pay the fees and expenses.</p> <p>It is also now fairly certain that the PTAB will find state universities and other state actors to enjoy sovereign immunity, which, absent a waiver or other exception, will preclude PTAB challenges to state-owned patents.</p> <p>For more information please contact Fitch Even partner <a href="http://www.fitcheven.com/?t=3&amp;A=2589&amp;format=xml&amp;p=5482">Allen E. Hoover</a>, author of this alert.</p> <p><br /> <b>Fitch Even IP Alert<sup>&reg;</sup></b></p> IP Alerts17 Jul 2017 00:00:00 -0800http://www.fitcheven.com/?t=40&an=67664&format=xmlFitch Even Partner Joe Marinelli to Speak on Ethics in IP Licensinghttp://www.fitcheven.com/?t=40&an=67532&format=xml<p>Fitch Even partner <a href="http://www.fitcheven.com/?t=3&amp;A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a> will copresent &ldquo;Ethics in IP Licensing,&rdquo; a CLE course offered by the Licensing Executives Society (LES) on July 20, 2017, in Chicago.</p> <p>During this LES University program, Joe and his copresenters will lead course participants in an interactive workshop exploring the various ethics questions that can arise during the negotiation of an intellectual property transaction. The topics discussed and analyzed will include conflicts of interest; attorneys&rsquo; confidentiality obligations to clients; conflicts arising from an attorney&rsquo;s representation of an organization; truthfulness in statements to others; and conduct during litigation.</p> <p>Attorneys and business professionals are invited to attend. For more information and to register, please visit the <a href="http://www.lesusacanada.org/?page=lesu">LES University website</a>.</p> <br /> <br />Professional Activities07 Jul 2017 00:00:00 -0800http://www.fitcheven.com/?t=40&an=67532&format=xmlIP Alert UPDATE: Justice Department Concedes Defeat in Redskins Trademark Battlehttp://www.fitcheven.com/?t=40&an=67455&format=xml<p>In light of the U.S. Supreme Court&rsquo;s recent decision in <i>Matal v. Tam</i> (as reported <a href="http://www.fitcheven.com/?t=40&amp;an=66929&amp;anc=180&amp;format=xml&amp;p=5486">here</a>), the U.S. Department of Justice has conceded defeat in <i>Pro Football Inc. v. Amanda Blackhorse</i>, the case involving trademarks for the Washington Redskins football team.</p> <p>The U.S. Patent and Trademark Office had <a href="http://www.fitcheven.com/?t=40&amp;an=31149&amp;format=xml&amp;p=5486">canceled</a> the Redskins&rsquo; trademark registrations in June 2014, ruling that the marks were &ldquo;disparaging to Native Americans&rdquo; at the time they were registered. In July 2015, the Virginia district court <a href="http://www.fitcheven.com/?t=40&amp;an=41848&amp;anc=180&amp;format=xml&amp;p=5486">affirmed</a> that ruling, and an appeal has been pending before the Fourth Circuit Court of Appeals.</p> <p>Yesterday, the Department of Justice filed a letter conceding that consistent with the decision in <i>Matal v. Tam</i>, the Supreme Court &ldquo;should reverse the judgment of the district court and remand the case with instructions to enter judgment in favor of [the Redskins].&rdquo;</p> <p>This filing will likely mark the end of this hotly contested and closely watched trademark dispute.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert</b><b><sup>&reg;</sup></b></p>IP Alerts29 Jun 2017 00:00:00 -0800http://www.fitcheven.com/?t=40&an=67455&format=xmlCBF Investing in Justice Campaign 2017 Sets Fundraising Recordhttp://www.fitcheven.com/?t=40&an=67426&format=xml<p>Fitch, Even, Tabin &amp; Flannery is honored to have once again participated in the 11th annual Chicago Bar Foundation (CBF) Investing in Justice Campaign. The CBF recently announced that this year&rsquo;s campaign set new records while raising awareness and much-needed funding for pro bono and legal aid services in the Chicago area. Fitch Even was one of 153 law firms, corporate legal departments, and other law-related organizations that participated in this year&rsquo;s campaign.</p> <p>All told, nearly 5,100 attorneys and legal professionals contributed more than $1.51 million through the campaign, both all-time records.&nbsp;And that&rsquo;s just the start of the impact.</p> <p>This year&rsquo;s campaign will yield more than $2.1 million in grants to more than 30 pro bono and legal aid organizations. Thanks to a number of matching contributions from participating firms and companies, 100% of individual campaign contributions go directly to these grants and leverage more than $600,000 in additional funding from CBF foundation and government partners through the campaign grants process.&nbsp;</p> <p>The campaign grants fund a coordinated network of much-needed legal help in our community. The tens of thousands of people receiving services include the elderly, disabled individuals, veterans, children, domestic violence victims, people at risk of losing their homes, immigrants fleeing persecution and abuse, and many others in need in the Chicago area.</p> <p>The Investing in Justice Campaign is the largest campaign of its type in the country and a real point of pride for our legal community in Chicago. Since 2007, the Campaign has raised nearly $15 million to help people in need get critical legal assistance and leveraged millions more in support for our community&rsquo;s pro bono and legal aid organizations.</p> <p>More information about the Investing in Justice Campaign and the work of the CBF is available on the <a href="http://chicagobarfoundation.org/campaign/">CBF website</a>.<br /> &nbsp;</p>Community Activities28 Jun 2017 00:00:00 -0800http://www.fitcheven.com/?t=40&an=67426&format=xmlIP Alert: License May Not Be Sufficient to Establish Personal Jurisdictionhttp://www.fitcheven.com/?t=40&an=67395&format=xml<p>Before a party can be sued in a court, that court must have personal jurisdiction over the party. To be subject to personal jurisdiction in a court, the party must have certain minimum contacts with the forum in which the court sits such that maintenance of the suit does not offend traditional notions of fair play and substantial justice. Typically, a defendant&rsquo;s minimum contacts in a forum focus on the defendant&rsquo;s activity in that forum. However, when a defendant is a patent holder that has licensed its patents to a third party, in certain situations that patent holder may be subject to personal jurisdiction in the forum due to its licensee&rsquo;s activities in that forum. On June 8, 2017, in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2097.Opinion.6-6-2017.1.PDF"><i>New World International, Inc. v. Ford Global Technologies, LLC</i></a><i>,</i> the Federal Circuit held that patent holder Ford Global Technologies, LLC (&ldquo;FGTL&rdquo;) was not subject to personal jurisdiction in the Northern District of Texas despite its licensee&rsquo;s activities in Texas. The court ruled that under the operative license, FGTL did not have a sufficient obligation to enforce the patents to subject it to specific jurisdiction in Texas, and there were no additional activities in Texas beyond the license that would give rise to jurisdiction.</p> <p>Defendant FGTL is a licensing branch of the Ford Motor Company. FGTL did not make or sell any products; it simply managed and licensed intellectual property for the Ford Motor Company. FGTL did no business in Texas and did not maintain an office or have any employees in Texas. It did, however, license several patents to LKQ Corp., which did do business in Texas. Plaintiff New World International filed suit against FGTL seeking a declaratory judgment of non-infringement and invalidity of the patents licensed to LKQ Corp. FGTL moved to dismiss the complaint for lack of jurisdiction. The district court granted FGTL&rsquo;s motion to dismiss, finding that the license between FGTL and LKQ did not impose continuing obligations on FGTL to enforce or defend the patents in Texas, nor did it give LKQ an independent right to enforce those business operations.</p> <p>On appeal, the Federal Circuit affirmed the district court&rsquo;s dismissal. The Federal Circuit addressed the factors that are considered in determining whether the assertion of personal jurisdiction would comport with &ldquo;fair play and substantial justice,&rdquo; which are (1) whether the defendant purposefully directed its activities at residents of the forum; (2) whether the claim arises out of or relates to the defendant&rsquo;s activities with the forum; and (3) whether assertion of personal jurisdiction is reasonable and fair. The Federal Circuit acknowledged that while a defendant purposefully directs its activities at residents of a forum when the defendant sends a cease and desist letter to a potential plaintiff in that particular forum, that alone is an insufficient basis to find personal jurisdiction without more. Also, the mere existence of an exclusive licensee does not support a finding of personal jurisdiction. For example, a license that establishes no relationship between a patent holder and a licensee beyond the payment and receipt of royalties is not sufficient, because a declaratory judgment action does not typically arise from or relate to a patent holder&rsquo;s efforts to license or commercialize its patents. On the other hand, a license that obligates the patent holder to defend or enforce the patent may be sufficient to establish specific personal jurisdiction, because a declaratory judgment action typically arises from the patent holder&rsquo;s actions to enforce or defend its patent in the forum. What matters, then, is whether the agreement between the patent holder and the exclusive licensee imposes an obligation on the patent holder to enforce or defend the patent on behalf of the licensee that is engaged in exploiting the patent rights in the forum state.</p> <p>Under that framework, the court found that FGTL was not subject to personal jurisdiction in the Northern District of Texas. First, the Federal Circuit rejected New World&rsquo;s argument that the existence of an exclusive licensee in the forum is alone sufficient to establish personal jurisdiction. Second, the court rejected New World&rsquo;s argument that an indemnity provision was alone a sufficient basis for specific jurisdiction. Finally, New World failed to demonstrate that FGTL had assumed a meaningful obligation to enforce or defend the patents under the license provisions regarding infringement suits brought against third parties. There was no question that FGTL retained control over how to handle enforcement of the patents against infringing third parties. New World argued that FGTL had ceded control over whether to initiate enforcement actions to LKQ. The Federal Circuit disagreed, finding that under the license agreement, FGTL retained nearly complete control over the patent enforcement decision, and the license did not impose a sufficient obligation on FGTL to enforce the patents on behalf of LKQ. Therefore, the activities of LKQ in Texas were not sufficient to subject FGTL to personal jurisdiction there.</p> <p>This case provides a useful summary of the case law regarding personal jurisdiction in a patent owner-licensee relationship. The Federal Circuit&rsquo;s decision depended heavily on the specific language of the FGTL-LKQ license. Therefore, when assessing whether a patent owner may be subject to personal jurisdiction in a forum through the activities of one of its licensees, the language of the license is of critical importance.</p> <p>For more information, please contact Fitch Even partner <a href="http://www.fitcheven.com/?t=3&amp;A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a>, author of this alert.</p> <p><b>Fitch Even IP Alert<sup>&reg;<br /> <br type="_moz" /> </sup></b></p>IP Alerts27 Jun 2017 00:00:00 -0800http://www.fitcheven.com/?t=40&an=67395&format=xmlIP Alert: Sue the USPTO? You're on the Hook for Their Attorneys’ Feeshttp://www.fitcheven.com/?t=40&an=67156&format=xml<p>Today, in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-1794.Opinion.6-20-2017.1.PDF"><i>Nantkwest, Inc. v. Matal</i></a>, the Court of Appeals for the Federal Circuit held that a party who brings a civil action against the U.S. Patent and Trademark Office (USPTO) under 35 U.S.C. 145 must pay the USPTO&rsquo;s attorneys&rsquo; fees as part of the costs of the proceeding. This somewhat surprising decision gives those contemplating such a civil action something more to consider when deciding their next step.</p> <p>An applicant or patentee dissatisfied with the result of a Patent Trial and Appeal Board appeal can take an appeal to the Federal Circuit or, alternatively, can bring a civil action against the USPTO in federal court. The implementing statute, 35 U.S.C. 145, provides that &ldquo;All the expenses of the proceedings shall be paid by the applicant.&rdquo; In today's case, the District Court for the Eastern District of Virginia had held that this statute did not require the applicant to pay the USPTO&rsquo;s attorneys&rsquo; fees. The USPTO appealed, and the Federal Circuit reversed. The court ruled that attorneys&rsquo; fees, in addition to other expenses of the lawsuit, are properly chargeable to the dissatisfied patent applicant. The USPTO had determined its attorneys&rsquo; fees by calculating the <i>pro rata</i> share of the salaries of the USPTO attorneys and paralegal who worked on the lawsuit, and the applicant had not challenged the statement of hours worked or other aspects of the USPTO&rsquo;s methodology.</p> <p>Judge Stoll dissented, asserting that under the &ldquo;American Rule,&rdquo; each party to a lawsuit normally pays its own attorneys&rsquo; fees, absent an express intent by Congress to deviate from this practice. She pointed out that section 145 &ldquo;neither mentions &lsquo;attorneys&rsquo; fees&rsquo; nor reflects a congressional intent to include them.&rdquo; Further, she concluded that &ldquo;Congress did not view &lsquo;[a]ll the expenses of the proceedings&rsquo; as necessarily including &lsquo;attorneys&rsquo; fees.&rsquo;&rdquo;</p> <p>Today&rsquo;s decision dramatically affects the economic calculus in bringing a 145 civil action, as opposed to continuing USPTO proceedings or filing an appeal to the Federal Circuit. It is left to future cases to decide whether the USPTO&rsquo;s <i>pro rata </i>apportionment is sound. For more information on this ruling, please contact Fitch Even partner <a href="http://www.fitcheven.com/?t=3&amp;A=2589&amp;format=xml&amp;p=5482">Allen E. Hoover</a>, author of this alert.</p> <p>&nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;<br /> </sup></b></p>IP Alerts23 Jun 2017 00:00:00 -0800http://www.fitcheven.com/?t=40&an=67156&format=xmlIP Alert: Supreme Court Rules Barring Registration of "Disparaging" Trademarks Unconstitutionalhttp://www.fitcheven.com/?t=40&an=66929&format=xml<p>Today, in <i>Matal v. Tam</i>, the U.S. Supreme Court ruled that the provisions of the Lanham Act that bars the registration of offensive or disparaging trademarks is unconstitutional. This highly anticipated decision is not only a victory for The Slants, an Asian-American band and the subject of today&rsquo;s case, but also appears to be a victory for the Washington Redskins football team, which is battling a similar trademark issue in the Fourth Circuit Court of Appeals.</p> <p>Fitch Even attorneys are reviewing the opinion of the Court, and further information will be posted in a subsequent alert.</p> <p><br /> <b>Fitch Even IP Alert<sup>&reg;</sup></b></p> <p>&nbsp;</p>IP Alerts19 Jun 2017 00:00:00 -0800http://www.fitcheven.com/?t=40&an=66929&format=xmlFitch Even Counsel Ken Hairston Published in <i>Law360</i>http://www.fitcheven.com/?t=40&an=66895&format=xml<p>An opinion piece written by Fitch Even counsel <a href="http://www.fitcheven.com/?t=3&amp;A=3467&amp;format=xml&amp;p=5482">Kenneth W. Hairston</a> was posted today in the &ldquo;Expert Analysis&rdquo; section of <i>Law360&rsquo;s</i> website and will be published in their e-newsletters on Monday, June 19. In the article, &ldquo;<a href="https://www.law360.com/articles/935159">Why High Court Should Find IPR Constitutional</a>,&rdquo; Ken provides commentary on the U.S. Supreme Court&rsquo;s <a href="http://www.fitcheven.com/?t=40&amp;an=66733&amp;format=xml&amp;p=5486">agreement</a> earlier this week to consider the constitutionality of the IPR process in <i>Oil States Energy Services v. Greene&rsquo;s Energy Group. </i>The full text of Ken&rsquo;s article can be found below.</p> <p>Ken, a former longtime Administrative Patent Judge, currently counsels clients on complex patent prosecution matters and patent office appeals, as well as administrative post-grant patent challenges.</p> <p><br /> <strong>Why High Court Should Find IPR Constitutional</strong></p> <p>On June 12, 2017, the U.S. Supreme Court agreed to hear a challenge to the constitutionality of the <em>inter partes</em> review process. The case has provoked much consternation because the resulting decision carries the possibility of disrupting a system currently widely used to challenge patents, throwing into question previous Patent Trial and Appeal Board decisions as well as the PTAB&rsquo;s authority in reviewing future challenges. The underlying facts of the case follow.</p> <p>Oil States Energy Services LLC sued Greene&rsquo;s Energy Group LLC for infringement of a hydraulic fracturing patent. Greene&rsquo;s Energy then challenged that patent in an <em>inter partes</em> review. In the IPR, several of Oil States&rsquo; claims were found to be unpatentable. On appeal, the Federal Circuit affirmed the Patent Trial and Appeal Board decision. As noted above, on June 12 the Supreme Court granted a petition for a writ of certiorari by Oil States to decide the first question, which addresses the constitutionality of determining the validity of a patent in a post-grant proceeding at the PTAB. Oil States argues that their patent rights are private property rights, and that only an Article III federal court can make a determination that their claims are unpatentable. Oil States disagrees with the Federal Circuit&rsquo;s decision that patents are public rights that can be judged by the PTAB in a post-grant proceeding. The grant of the petition excludes the other questions raised by Oil States.</p> <p>Prior to the creation of post-grant proceedings in the America Invents Act, Congress created reexamination via statute so that the U.S. Patent and Trademark Office could re-evaluate the patentability of patent claims. The public versus private property rights issue arose in <em>Patlex Corp. v. Mossinghof</em>.<sup><a href="#1">1</a>&nbsp;</sup>The court recognized that prior to reexamination proceedings, the raising of new questions of patentability and cancellation of claims from an issued patent could only occur in an action in an Article III court. In a discussion of the legislative history of the re-examination statute, the court recognized that Congress was seeking to uphold the important public purpose of strengthening the patent system by restoring confidence in the validity of patents. The court held that the reexamination procedure did not cause the patent owner to suffer a constitutional deprivation of any rights under the Seventh Amendment right to a jury trial by having the agency, as opposed to an Article III court, set aside claims in the patent. The grant of a patent is a public concern, and that publicly granted patent can be corrected by the USPTO in reexamination, even against the will of the patent owner.</p> <p>According to Oil States, the reexamination proceeding usually involves the patent owner and the patent examiner working together to strengthen a patent. Even if the reexamination proceeding rarely invalidated claims and is less adversarial than a post-grant proceeding, it did involve the agency reviewing the patentability of issued claims.</p> <p>Although the public versus private property rights issue has not been directly addressed by the Supreme Court in a patent case, it did arise several years ago in the trademark case of <em>B&amp;B Hardware Inc. v. Hargis Industries Inc</em>.<sup><a href="#2">2</a></sup> The Supreme Court dealt with the issue of whether Hargis was precluded from contesting the Trademark Trial and Appeal Board finding of likelihood of confusion in a later infringement suit in the federal court. The Supreme Court stated that its precedent holds that the Seventh Amendment does not strip competent tribunals of the power to issue judgments with preclusive effect. The dissent discussed public versus private property rights, and indicated that the majority failed to address the distinction between private property rights and public rights or the nature of the power exercised by an administrative agency when adjudicating facts in such disputes.</p> <p>In view of the long-standing practice of bringing patents back into the USPTO for a second look at patentability issues, it appears that this is a perfect opportunity for the justices to exercise judicial restraint and indirectly address the public versus private property rights issue as was done in <em>B&amp;B Hardware</em>, and continue to accommodate the administrative agency in removing invalid claims from challenged patents under a statutorily mandated post-grant proceeding. Using the same approach in both the <em>B&amp;B Hardware</em> trademark case and this patent case would add uniformity<sup><a href="#3">3</a></sup> and certainty to the overall practice of intellectual property.</p> <p>A presumption that post-grant proceedings are constitutional can be drawn from the fact that the court gave its blessing to the overall procedure last year in <em>Cuozzo Speed Technologies, LLC v. Lee</em>.<sup><a href="#4">4</a></sup> In keeping with <em>Cuozzo </em>and with more than three decades of patent post-grant review, the court should continue to find post-grant proceedings to be constitutional. A finding that the proceedings are unconstitutional would upend a well-utilized procedure that has rooted out claims that should not have issued in a patent. No benefit will accrue to a petitioner with parallel litigation in a federal court because the federal judge knows the positions of both parties in the defunct post-grant proceeding. A finding that the proceedings could be made constitutional with minor tweaks to how the proceedings are conducted would be disruptive, but changes to procedure to accommodate a petitioner&rsquo;s due process rights could most likely be accomplished via changes to the rules. Of course, the one-year statutory time period for concluding a trial would be impacted by major changes in trial procedure that would require the judges to conduct the proceeding in a quasi-Article III manner. A finding that the post-grant proceedings are unconstitutional would only benefit applicants with pending <em>ex parte</em> cases, seeing that all of the judges would then be assigned <em>ex parte</em> dockets. Thus, any perceived benefit to Oil States for a win in this case would pale in comparison to the serious issues that would arise for the remainder of the intellectual property community.<br /> <br /> <em>&mdash;Written by </em><a href="http://www.fitcheven.com/?t=3&amp;A=3467&amp;format=xml&amp;p=5482"><em>Kenneth W. Hairston</em></a></p> <hr /> <p><span style="color: rgb(192, 192, 192);"><span style="font-size: x-small;"><span style="font-family: Arial;"><sup><a name="1">1</a></sup>758 F.2d 594 (Fed. Cir. 1985)<br /> <sup><a name="2">2</a></sup>135 S. Ct. 1293 (2015)<br /> <sup><a name="3">3</a></sup><em>In Petrella v. Metro-Goldwyn Mayer</em>, 134 S. Ct. 1962 (2014), the Court held that the equitable doctrine of laches does not impact the statutorily set three-year time period for bringing a copyright action, and in <em>SCA Hygiene Products AB v. First Quality Baby Products LLC</em>, 15-927 (March 21, 2017), the Court held that the equitable doctrine of laches is not a defense to patent infringement damages even if patentee waits the full six-year statutorily set time period to bring suit. <br /> <sup><a name="4">4</a></sup>136 S. Ct. 2131 (2016)<br /> <br /> <br /> <br /> <br type="_moz" /> </span></span></span></p>Professional Activities16 Jun 2017 00:00:00 -0800http://www.fitcheven.com/?t=40&an=66895&format=xmlFitch Even Again Ranked Top-Performing Firm Representing Patent Owners in IPRshttp://www.fitcheven.com/?t=40&an=66843&format=xml<p>Fitch, Even, Tabin &amp; Flannery was ranked as the best-performing law firm representing patent owners in<em> inter partes</em> review (IPR) proceedings from 2012 through 2016, based on analysis conducted by Patexia and reported in their article &quot;<a href="https://www.patexia.com/feed/patexia-chart-36-top-5-performing-law-firms-in-ipr-20170613">Top 5 Performing Law Firms in IPR</a>.&quot;</p> <p>These findings follow on the heels of a previous study released by Unified Patents and reported in an <a href="http://www.iam-media.com/Blog/Detail.aspx?g=56b6a3c6-4b5f-43e6-b450-c0821602ec24">Intellectual Asset Management (IAM) article</a> last month that also named Fitch Even as a top law firm representing patent owners at the Patent Trial and Appeal Board, based on the firm's success on behalf of our clients in IPR proceedings.</p> <p>Fitch Even has handled well over 60 IPR petitions to date on behalf of patent owners in a wide variety of industries.<br /> <br /> <br /> &nbsp;</p> <p>&nbsp;</p> <br type="_moz" />Firm News14 Jun 2017 00:00:00 -0800http://www.fitcheven.com/?t=40&an=66843&format=xml