Fitch Even News Feedhttp://www.fitcheven.com/?t=39&format=xml&stylesheet=rss&directive=0&records=20en-us18 Jan 2018 00:00:00 -0800firmwisehttp://blogs.law.harvard.edu/tech/rssIP Alert UPDATE: Supreme Court to Consider Whether Restriction of Lost Profits Was Properhttp://www.fitcheven.com/?t=40&an=73136&format=xml<p>UPDATE: Last week, the U.S. Supreme Court granted a writ of certiorari in <i>WesternGeco LLC v. ION Geophysical Corp. </i>The Court will address the following question involving the recovery of lost profits in patent infringement cases:</p> <p>&ldquo;Whether the U.S. Court of Appeals for the Federal Circuit erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases in which patent infringement is proven under 35 U.S.C. &sect; 271(f).&rdquo;</p> <p>Our alert summarizing the Federal Circuit&rsquo;s July 2015 ruling in this case can be found <a href="http://www.fitcheven.com/?t=40&amp;an=41796&amp;anc=180&amp;format=xml&amp;p=5486">here</a>. The Supreme Court vacated the 2015 ruling for reconsideration of the issue of enhanced damages, but the Federal Circuit subsequently reinstated that portion of its 2015 ruling that addressed lost profits.</p> <p>Fitch Even attorneys will report once the Court has issued its opinion.<br /> <br /> <b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts16 Jan 2018 00:00:00 -0800http://www.fitcheven.com/?t=40&an=73136&format=xmlIP Alert: Finding “Shenanigans” at the PTAB, Federal Circuit Says Time-Bar Rulings Can Be Appealedhttp://www.fitcheven.com/?t=40&an=73077&format=xml<p>On January 8, 2018, in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1944.Opinion.1-4-2018.1.PDF"><i>Wi-Fi One, LLC v. Broadcom Corp.</i></a>, the Federal Circuit ruled en banc that decisions by the Patent Trial and Appeal Board (PTAB) on whether the one-year statutory bar of 35 U.S.C. &sect; 315(b) applies can be appealed.</p> <p>Specifically, the court had been tasked with interpreting the relationship between three statutory provisions: (1) section 315(b), which prohibits institution of <i>inter partes</i> review (IPR) petitions filed more than one year after a defendant is served with a patent infringement complaint; (2) section 314(a), which identifies the USPTO Director&rsquo;s discretion to institute or deny institution of IPR proceedings based on the determination of whether there is a reasonable likelihood of unpatentability of at least one challenged claim after weighing arguments articulated in the petition and preliminary response; and (3) section 314(d), which provides that the determination by the Director whether to institute or deny institution of IPR is final and nonappealable. In <i>Cuozzo </i><i>Speed Technologies, LLC v. Lee</i>, the Supreme Court held that section 314(d) precludes appeal of the PTAB&rsquo;s discretion articulated in section 314(a). In W<i>iFi One</i>, the Federal Circuit addressed whether section 314(d) extends to the PTAB&rsquo;s decision regarding section 315(b).</p> <p>The majority opinion explicitly holds that the decision of the PTAB as to whether the one-year statutory bar prevents institution of IPR is appealable. The opinion interprets <i>Cuozzo </i>narrowly and leaves the door open for additional appeals related to institution decisions of IPR.</p> <p>The patents-at-issue were the subject of a district court proceeding in 2010 involving a predecessor-in-interest to appellant Wi-Fi One and several third parties. In the earlier district court litigation, the Eastern District of Texas found the patents valid and infringed. In 2013, appellee Broadcom filed three petitions seeking IPR of the same patents from the prior district court litigation. Wi-Fi responded that institution was prohibited because Broadcom was in privity with the third-party defendants served in the prior litigation, and the IPR petitions were therefore barred by the one-year time bar of section 315(b).</p> <p>The PTAB instituted IPR and found the challenged claims unpatentable, holding that Wi-Fi failed to show Broadcom was in privity with the earlier defendants. Wi-Fi appealed, arguing that the Federal Circuit should reverse or vacate the PTAB&rsquo;s time-bar determinations. A panel of the Federal Circuit concluded that <i>Cuozzo </i>precluded the appealability of Wi-Fi&rsquo;s time-bar challenge. Wi-Fi then sought and received a rehearing en banc.</p> <p>The majority found that the Supreme Court&rsquo;s holding that the Director&rsquo;s decision to institute is nonreviewable in <i>Cuozzo</i> is limited to the &ldquo;reasonable likelihood&rdquo; criteria of section 314(a) and matters &ldquo;closely related&rdquo; to the reasonable likelihood decision. The opinion explains that the one-year time bar of section 315(b) is unrelated to the Director&rsquo;s ability to weigh the merits of the petition and preliminary response, and therefore outside the category of preliminary procedural requirements more &ldquo;closely related&rdquo; to the Director&rsquo;s section 314(a) decision. According to the majority, this falls into the category of &ldquo;shenanigans&rdquo; that are properly reviewable.</p> <p>Judge O&rsquo;Malley&rsquo;s concurrence reflects that the distinction between <i>Cuozzo </i>and the matter at hand is much simpler: &ldquo;it turns on the distinction between the Director&rsquo;s authority to exercise discretion when reviewing the adequacy of a petition to institute <i>inter partes</i> review . . . and authority to undertake such a review in the first instance.&rdquo; Meanwhile, Judge Hughes&rsquo;s dissent reflects the belief that the court interprets <i>Cuozzo </i>and Congress&rsquo;s intent for section 314(d) too narrowly.</p> <p>This decision may receive attention from the Supreme Court. At least for the time being, the case provides both petitioners and respondents a foothold to appeal institution decisions to the Federal Circuit on grounds unrelated to the Director&rsquo;s discretion to weigh the merits of the petition and preliminary response in reaching an institution decision.</p> <p>For more information on this ruling, please contact Fitch Even partner <a href="http://www.fitcheven.com/?t=3&amp;A=2611&amp;format=xml&amp;p=5482">Nicholas T. Peters</a>.</p> <p><i>--Written by Fitch Even attorney </i><a href="http://www.fitcheven.com/?t=3&amp;A=13120&amp;format=xml&amp;p=5482"><i>Andrew C. Wood</i></a></p> <p><b><br /> Fitch Even IP Alert<sup>&reg;<br /> <br type="_moz" /> </sup></b></p>IP Alerts12 Jan 2018 00:00:00 -0800http://www.fitcheven.com/?t=40&an=73077&format=xmlFitch Even Partner Karl Fink to Speak at Indiana Universityhttp://www.fitcheven.com/?t=40&an=73039&format=xml<p>On January 23, Fitch Even partner <a href="http://www.fitcheven.com/?t=3&amp;A=2581&amp;format=xml&amp;p=5482">Karl R. Fink</a> will spend the day at Indiana University in Bloomington as part of the Maurer School of Law&rsquo;s IP Practitioner-in-Residence program. In addition to being present at intellectual property law classes that day, Karl will present a lunch program at noon and will be available to meet with law students one-on-one throughout the day to provide career advice and answer questions about the practice of IP law.</p> <p>Karl has been a trial lawyer since 1981, handling hundreds of lawsuits in state and federal courts across the U.S. His practice includes all aspects of IP litigation, creation, management, enforcement, and licensing, with particular emphasis on patent litigation.</p>Professional Activities10 Jan 2018 00:00:00 -0800http://www.fitcheven.com/?t=40&an=73039&format=xmlIP Alert: PTAB Holds a State University Waives Its Sovereign Immunity by Initiating District Court Litigationhttp://www.fitcheven.com/?t=40&an=72998&format=xml<p>On December 19, in<i> <a href="/2E8FB4/assets/files/Documents/Ericsson, Inc. v. Regents of the University of Minnesota.pdf">Ericsson, Inc. v. Regents of the University of Minnesota</a></i>, an expanded panel of the Patent Trial and Appeal Board (PTAB) agreed that the Regents of the University of Minnesota may assert Eleventh Amendment immunity, but ruled that the university waived that immunity by filing a patent infringement action in federal court. This decision is significant to state-affiliated entities that rely on sovereign immunity under the Eleventh Amendment. In particular, this case has notable significance to universities that are considering filing patent infringement suits.</p> <p>The PTAB relied heavily on an analogy to <i>Regents of the University of New Mexico v. Knight,</i> where the Federal Circuit held that &ldquo;because a state as plaintiff can surely anticipate that a defendant will have to file any compulsory counterclaims or be <i>forever barred from doing so</i>, it is not unreasonable to view the state as having consented to such counterclaims&rdquo; (emphasis added). The PTAB inferred in its reasoning that the same consent arises because of the one-year statutory bar set forth in 35 U.S.C. &sect; 315(b). The PTAB contended that &ldquo;a party served with a patent infringement complaint in federal court must request an <i>inter partes</i> review of the asserted patent within one year of service of that complaint or <i>be forever barred from doing so</i>.&rdquo; From this, the PTAB found that the patent owner consented to being subject to an <i>inter partes</i> review when the patent infringement action was filed in federal court.</p> <p>Indeed, the PTAB was unpersuaded by the University of Minnesota&rsquo;s insistence that any waiver is limited to the forum in which the state entity brought suit. Instead, the PTAB cites a Federal Circuit case that interprets an earlier Supreme Court precedent explaining that &ldquo;a state should not reap litigation advantages through its selection of a forum and subsequent assertion of sovereign immunity as a defense.&rdquo; In addition to filing suit, the University of Minnesota previously went back to the USPTO to file reissue patents on two of the six patents at issue. In effect, the University of Minnesota availed itself of the government&rsquo;s ability to correct the university&rsquo;s mistakes post grant, but argued that the government is not permitted to correct the USPTO&rsquo;s mistakes.</p> <p>An appeal to the Federal Circuit is expected. Fitch Even is monitoring the progress of this case and will report on any future developments. If you have questions regarding this decision, please contact Fitch Even partner <a href="http://www.fitcheven.com/?t=3&amp;A=2933&amp;format=xml&amp;p=5482">Joseph H. Herron</a>, author of this alert.</p> <p><i>--Cowritten by Fitch Even patent agent <a href="http://www.fitcheven.com/?t=3&amp;A=12841&amp;format=xml&amp;p=5482">Thomas A. James</a><br /> </i></p> <p><br /> <b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts09 Jan 2018 00:00:00 -0800http://www.fitcheven.com/?t=40&an=72998&format=xmlIP Alert: PTAB Provides Guidance on Conditional Claim Languagehttp://www.fitcheven.com/?t=40&an=72957&format=xml<p>In October 2016, the Patent Trial and Appeal Board (PTAB) took the rare step of declaring its April 2016 decision in <a href="https://www.uspto.gov/sites/default/files/documents/Ex%20parte%20Schulhauser%202016_04_28.pdf"><i>Ex parte Schulhauser</i></a> precedential, the first <i>ex parte</i> appeal designated as such since 2013. In this decision, the PTAB provided clarification on how to interpret and differentiate the patentable weights of conditional language in method claims and system claims, respectively.&nbsp;The particular facts of this case and its treatment by the PTAB set the case apart, and it has since been cited in over 110 <em>ex parte</em> PTAB decisions.</p> <p>Claim 1 of the Schulhauser application was deemed representative by the PTAB:</p> <p style="margin-left: 40px;">1. A method for monitoring of cardiac conditions incorporating an implantable medical device in a subject, the method comprising the steps of:</p> <p style="margin-left: 40px;">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;collecting physiological data associated with the subject from the implantable device at preset time intervals, wherein the collected data includes real-time electrocardiac signal data, heart sound data, activity level data and tissue perfusion data;</p> <p style="margin-left: 40px;">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;comparing the electrocardiac signal data with a threshold electrocardiac criteria for indicating a strong likelihood of a cardiac event;</p> <p style="margin-left: 40px;">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;triggering an alarm state if the electro cardiac signal data is not within the threshold electrocardiac criteria;</p> <p style="margin-left: 40px;">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria;</p> <p style="margin-left: 40px;">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;determining whether the current activity level is below a threshold activity level;</p> <p style="margin-left: 40px;">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;comparing the tissue perfusion data with a threshold tissue perfusion criteria for indicating a strong likelihood of a cardiac event if the current activity level is determined to be below a threshold activity level;</p> <p style="margin-left: 40px;">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;triggering an alarm state if the threshold tissue perfusion data is not within the threshold tissue perfusion criteria; and</p> <p style="margin-left: 40px;">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;triggering an alarm state if the threshold tissue perfusion data is within the threshold tissue perfusion criteria and the heart sound data indicates that S3 and S4 heart sounds are detected,</p> <p style="margin-left: 40px;">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;wherein if an alarm state is not triggered, the physiological data associated with the subject is collected at the expiration of the preset time interval.</p> <p>The question of particular interest to the PTAB and in the following discussion is whether the elements of &ldquo;triggering an alarm state if the electrocardiac signal data is not within the threshold electrocardiac criteria&rdquo; and &ldquo;determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria&rdquo; should both be given patentable weight for purposes of applying the broadest reasonable interpretation standard under <i>Phillips v. AWH Corp</i>., 415 F.3d 1303, 1316 (Fed. Cir. 2005).</p> <p>The examiner cited U.S. Patent Publication 2007/0150014 (Kramer) in rejecting claim 1, stating that Kramer discloses the method for monitoring cardiac conditions of claim 1, except that &quot;Kramer . . . does not disclose monitoring tissue perfusion, and does not explicitly state triggering an alarm when signal data indicates a strong likelihood of [a] cardiac event.&quot; The examiner cited two other references as teaching these two missing aspects of claim 1.</p> <p>Appellants contended that the combined teachings of Kramer and the two other references do not disclose &quot;comparing the tissue perfusion data with a threshold tissue perfusion criteria for indicating a strong likelihood of a cardiac event if the current activity level is determined to be below a threshold activity level,&quot; as recited in claim 1. Appellants also contended that &ldquo;the combination of references fails to disclose &rsquo;the particular order and conditions imposed on the various comparing, determining and triggering steps by the limitations of independent claim 1.&rsquo;&quot;</p> <p>The PTAB, in analyzing claim 1, reasoned that &ldquo;[d]ue to the language in the &lsquo;triggering&rsquo; and &lsquo;determining&rsquo; steps, logically, the &lsquo;triggering&rsquo; and &lsquo;determining&rsquo; steps do not need to be performed, after the &lsquo;comparing&rsquo; step if the condition precedent recited in each step is not met. More specifically, the &lsquo;triggering&rsquo; and &lsquo;determining&rsquo; steps of this claim are mutually exclusive.&rdquo;</p> <p>&ldquo;In other words,&rdquo; the PTAB reasoned, &ldquo;claim 1 as written covers at least two methods, one in which the prerequisite condition for the triggering step is met and one in which the prerequisite condition for the determining step is met.&rdquo;</p> <p>However, the &ldquo;determining&rdquo; step and the steps that follow it are each dependent in some way on the prerequisite conditions in the &ldquo;determining&rdquo; step. For example, &ldquo;the current activity level&rdquo; (the product of the &ldquo;determining&rdquo; step) is utilized in the next two steps and &ldquo;tissue perfusion data&rdquo; is introduced in the second of these next two steps (the &ldquo;comparing&rdquo; step) and utilized in the final two steps of the method. As such, the PTAB reasoned, when circumstances are such that the &ldquo;determining&rdquo; step is not performed, the last five steps of the method are not performed, and are therefore not given patentable weight in the second of the &ldquo;two methods&rdquo; identified by the PTAB.</p> <p>&ldquo;Thus,&rdquo; the PTAB concluded, &ldquo;the broadest reasonable interpretation encompasses a method where only the steps of &lsquo;collecting physiological data . . . comparing the electrocardiac signal data with a threshold electrocardiac criteria . . .&rsquo; and &lsquo;triggering an alarm state if the electrocardiac signal data is not within the threshold electrocardiac criteria&rsquo; are performed.&rdquo;</p> <p>As such, the PTAB reasoned that the examiner, having presented prior art showing the &ldquo;collecting,&rdquo; &ldquo;comparing,&rdquo; and &ldquo;triggering&rdquo; steps, had presented a prima facie case of obviousness, and therefore, under the broadest reasonable interpretation standard, did not need to present prior art teaching the remaining steps of the claim. In the absence of a rebuttal to this prima facie case of obviousness, the PTAB upheld the examiner&rsquo;s rejection.</p> <p>Similar logic was the basis for the PTAB&rsquo;s affirmation of the claims dependent on claim 1.</p> <p>Claim 11, while similar to claim 1, is written as a system claim (as opposed to a method claim like claim 1) in means-plus-function form. As such, the PTAB reasoned:</p> <p style="margin-left: 40px;">Although claim 11 recites functions that are substantially similar to the steps recited in the method of claim 1, . . . claim 11 is directed to a system. The broadest reasonable interpretation of a system claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure for performing the function should the condition occur. This interpretation of the system claim differs from the method claim because the structure (i.e., a processor programmed to perform an algorithm for carrying out the recited function should the recited condition be met) <i>is present in the system regardless</i> of whether the condition is met and the function is actually performed.&rdquo;</p> <p>As such, the PTAB gave patentable weight to all the &ldquo;means&rdquo; recited in claim 11 and concluded that the examiner had failed to show these teachings were all present in a proper combination for performing the recited functions in the recited order in the prior art cited. Thus, the PTAB overturned the examiner&rsquo;s rejection of claim 11.</p> <p>In <i>Schulhauser</i>, the PTAB provides important guidance to patent practitioners for drafting conditional method claims and makes clear that similarly structured system claims (including claims in means-plus-function form) will be interpreted under the broadest reasonable interpretation standard as requiring every element of the recited system, regardless of whether such elements are utilized only on a conditional basis.</p> <p>With regard to conditional method claims, however, the PTAB makes clear in this decision that conditional method claims can be interpreted under the broadest reasonable interpretation standard as reciting two or more separate methods, dependent on the recited conditions, only one of which methods needs to be shown in the prior art to sustain a prima facie case of obviousness. And, in particular, when subsequent steps recite antecedent elements presented in conditional elements, such subsequent steps are considered only as part of the method that ensues when the conditional elements are present (and such subsequent steps can be disregarded when considering another method that ensues when the conditional elements are not present). Thus, practitioners would do well to carefully consider the introduction of antecedent terms in conditional elements (and not in other conditional elements) and the potential impact of such a claim structure on claim scope under the broadest reasonable interpretation standard.</p> <p>For further information on this case, please contact Fitch Even partner <a href="http://www.fitcheven.com/?t=3&amp;A=2596&amp;format=xml&amp;p=5482">Thomas E. Lebens</a>, author of this alert.</p> <p><b><br /> </b></p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p> <p><b><sup><br /> </sup></b></p>IP Alerts08 Jan 2018 00:00:00 -0800http://www.fitcheven.com/?t=40&an=72957&format=xmlFitch Even Partner Joe Marinelli Published in ABA's Business Law Todayhttp://www.fitcheven.com/?t=40&an=72943&format=xml<p>An IP litigation update written by Fitch Even partner <a href="http://www.fitcheven.com/?t=3&amp;A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a> is featured in the December 2017 issue of <i>Business Law Today</i>, published by the ABA Business Law Section. In the briefing, &ldquo;Federal Circuit Declares Lanham Act&rsquo;s Bar on Registration of Scandalous and Immoral Trademarks Unconstitutional,&rdquo; Joe reports on the recent Federal Circuit ruling in <em>In re Brunetti.</em></p> <p>To access the article online, please visit the <a href="https://businesslawtoday.org/month-in-brief/december-brief-business-regulation-regulated-industries-2017/">ABA website.</a><a href="https://businesslawtoday.org/month-in-brief/december-brief-business-regulation-regulated-industries-2017/"><br /> </a></p>Professional Activities05 Jan 2018 00:00:00 -0800http://www.fitcheven.com/?t=40&an=72943&format=xmlIP Alert: Federal Circuit Clarifies “Two-Prong” Step for Proving Divided Infringementhttp://www.fitcheven.com/?t=40&an=72635&format=xml<p>Under 35 U.S.C. &sect; 271(a), direct infringement occurs when all steps of a claimed method are performed by or attributable to a single entity. If a third party performs some of the steps under an obligation to the accused infringer, then the third-party actions may be attributed to the accused infringer. An accused infringer, however, does not avoid liability merely because a third party is under no obligation to perform the patented steps. Rather, so long as the third party must perform the patented steps to receive value from the accused infringer, the accused infringer may be liable in part because of the third-party actions. On December 19, the Federal Circuit,&nbsp;in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2386.Opinion.12-18-2017.1.PDF"><i>Travel Sentry, Inc. v. David A. Tropp</i></a>, further clarified the two-prong test used to determine whether multiple parties jointly infringe a patent.</p> <p>Plaintiff David A. Tropp, through his company Safe Skies, LLC, administers a lock system that permits TSA employees to unlock, inspect, and relock checked baggage. The asserted patents, U.S. Patents Nos. 7,021,537 and 7,036,728, contain method claims that require both (1) supplying the special lock, and (2) using a master key that locks and unlocks the special lock. The claims specify that step 2 is performed by a &ldquo;luggage screening entity.&rdquo; Defendant Travel Sentry administers a similar system that enables TSA employees to open the lock, search the bag as needed, and then relock it.</p> <p>At the district court, the parties did not dispute that Travel Sentry supplies locks and that Travel Sentry was not itself a &ldquo;luggage screening entity.&rdquo; Travel Sentry moved for summary judgment of no direct infringement on this basis, and the patentee opposed, citing a Memorandum of Understanding between the TSA and Travel Sentry that provided certain stipulations for each party. The district court granted Travel Sentry&rsquo;s motion, finding that &ldquo;no evidence&rdquo; that Travel Sentry had any influence on the TSA&rsquo;s operating procedures.</p> <p>The primary issue on appeal was if there was a genuine dispute over whether Travel Sentry &ldquo;directs or controls the performance of certain steps of the claimed methods.&rdquo;&nbsp;The Federal Circuit vacated and found that a reasonable jury could conclude that the TSA&rsquo;s performance of the patented steps are attributable to Travel Sentry.&nbsp;In reaching its decision, the court reiterated its previous holding from its 2015 <i>en banc</i> holding in <a href="http://www.fitcheven.com/?t=40&amp;an=42961&amp;anc=180&amp;format=xml&amp;p=5486"><i>Akamai Technologies, Inc. v. Limelight Networks, Inc.</i></a>(&ldquo;<i>Akamai V</i>&rdquo;) that an entity will be liable for the &ldquo;others&rsquo; performance of method steps&rdquo; under two circumstances: (1) where that entity directs or controls others&rsquo; performance, and (2) where the actors form a joint enterprise.</p> <p>In clarifying this two-prong test, the court explained that liability under &sect; 271(a) could be found when an alleged infringer &ldquo;conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.&rdquo; The court further underscored the importance of identifying the relevant activity performed by the third party, the types of benefits received by the third party, and what is required to condition the third party&rsquo;s conduct.&nbsp;In applying this legal framework, the court held that a reasonable jury could find that (1) the TSA derived a benefit from employing Travel Sentry&rsquo;s luggage system; (2) this benefit was conditioned upon the TSA&rsquo;s performance of the patented method; and (3) the Memorandum of Understanding demonstrates that Travel Sentry established the manner or timing of the performance by the TSA.&nbsp;</p> <p>The court further considered its prior holding in <i>Eli Lilly and Co. v. Teva Parenteral Medicines, Inc</i>., where the court determined that physicians were liable for a three-step drug administration routine in which one of the steps was performed by the patient under the physicians&rsquo; guidance. The court noted that there was a common thread that connects the present case, <i>Akamai V,</i> and <i>Eli Lilly</i>: &ldquo;evidence that a third party hoping to obtain access to certain benefits can only do so if it performs certain steps identified by the defendant, and does so under terms prescribed by the defendant.&rdquo;&nbsp;</p> <p>The Federal Circuit thus vacated the district court&rsquo;s summary judgment in favor of Travel Sentry and remanded.</p> <p>This case is relevant for those Fitch Even clients concerned with divided infringement, and may also be of interest to parties who obtain patents. For more information, please contact Fitch Even partner <a href="http://www.fitcheven.com/?t=3&amp;A=3589&amp;format=xml&amp;p=5482">Eric L. Broxterman</a>, author of this alert.</p> <p><b><br /> Fitch Even IP Alert<sup>&reg;<br /> <br type="_moz" /> </sup></b></p>IP Alerts21 Dec 2017 00:00:00 -0800http://www.fitcheven.com/?t=40&an=72635&format=xmlFitch Even Partners Named Illinois Leading Lawyers and Emerging Lawyers for 2018http://www.fitcheven.com/?t=40&an=72592&format=xml<p>Nine Fitch Even partners have been named Leading Lawyers and four partners have been named Emerging Lawyers in Illinois for 2018.</p> <p><i>Leading Lawyers:&nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp; &nbsp;&nbsp;</i></p> <ul> <li><a href="http://www.fitcheven.com/?t=3&amp;A=2580&amp;format=xml&amp;p=5482">Stephen S. Favakeh</a>&mdash;Intellectual Property Law, International Business &amp; Trade Law, Patent Law</li> <li><a href="http://www.fitcheven.com/?t=3&amp;A=2581&amp;format=xml&amp;p=3130">Karl R. Fink</a>&mdash;Intellectual Property Law, Patent Law</li> <li><a href="http://www.fitcheven.com/?t=3&amp;A=2588&amp;format=xml&amp;p=5482">Mark W. Hetzler</a>&mdash;Intellectual Property Law, Trade Secrets/Unfair Competition Law, Copyright &amp; Trademark Law</li> <li><a href="http://www.fitcheven.com/?t=3&amp;A=2597&amp;format=xml&amp;p=5482">Timothy E. Levstik</a>&mdash;Intellectual Property Law, Patent Law</li> <li><a href="http://www.fitcheven.com/?t=3&amp;A=2600&amp;format=xml&amp;p=5482">John E. Lyhus</a>&mdash;Advertising &amp; Media Law, Copyright &amp; Trademark Law, Intellectual Property Law, International Business &amp; Trade Law, Trade Secrets/Unfair Competition Law</li> <li><a href="http://www.fitcheven.com/?t=3&amp;A=2601&amp;format=xml&amp;p=3130">Timothy P. Maloney</a>&mdash;Intellectual Property Law, Patent Law, Trade Secrets/Unfair Competition Law, Copyright &amp; Trademark Law</li> <li><a href="http://www.fitcheven.com/?t=3&amp;A=2609&amp;format=xml&amp;p=5482">Joseph T. Nabor</a>&mdash;Advertising &amp; Media Law, Copyright &amp; Trademark Law, Intellectual Property Law</li> <li><a href="http://www.fitcheven.com/?t=3&amp;A=2610&amp;format=xml&amp;p=5482">Steven G. Parmelee</a>&mdash;Intellectual Property Law, Patent Law</li> <li><a href="http://www.fitcheven.com/?t=3&amp;A=2616&amp;format=xml&amp;p=3130">Joseph E. Shipley</a>&mdash;Intellectual Property Law, Patent Law, Trade Secrets/Unfair Competition Law, Copyright &amp; Trademark Law</li> </ul> <p>Those who are designated Leading Lawyers were recommended by their peers to be among the top lawyers in Illinois. Less than five percent of all lawyers licensed in Illinois have received the distinction of being a Leading Lawyer.<br /> <i><br /> Emerging Lawyers:</i></p> <ul> <li><a href="http://www.fitcheven.com/?t=3&amp;A=2933&amp;format=xml&amp;p=5482">Joseph H. Herron</a>&mdash;Intellectual Property Law, Patent Law</li> <li><a href="http://www.fitcheven.com/?t=3&amp;A=2598&amp;format=xml&amp;p=5482">Nicole L. Little</a>&mdash;Intellectual Property Law, Patent Law</li> <li><a href="http://www.fitcheven.com/?t=3&amp;A=2607&amp;format=xml&amp;p=5482">Calista J. Mitchell</a>&mdash;Intellectual Property Law, Patent Law</li> <li><a href="http://www.fitcheven.com/?t=3&amp;A=2599&amp;format=xml&amp;p=5482">Amanda Lowerre O&rsquo;Donnell</a>&mdash;Intellectual Property Law, Patent Law</li> </ul> <p>Emerging Lawyers have been identified by Leading Lawyers throughout the state to be among the top lawyers who are age 40 or younger unless they have practiced for no more than 10 years. Less than 2% of all lawyers licensed in Illinois have received the distinction of Emerging Lawyer.</p> <p>The entity Leading Lawyers is a division of Law Bulletin Media. Law Bulletin Media is a diversified print and electronic information company that has been serving the Chicago legal and business communities since 1854. For more information, please visit <a href="http://www.leadinglawyers.com/">www.leadinglawyers.com</a>.<br /> &nbsp;</p>Firm News20 Dec 2017 00:00:00 -0800http://www.fitcheven.com/?t=40&an=72592&format=xmlIP Alert: Federal Circuit Declares “Immoral” and “Scandalous” Exceptions to Trademark Registration Unconstitutionalhttp://www.fitcheven.com/?t=40&an=72525&format=xml<p>On December 15, the Federal Circuit, in the wake of the U.S. Supreme Court&rsquo;s recent decision in <i>Matal v. Tam</i>, concluded in <i><a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1109.Opinion.12-13-2017.1.PDF">In re Brunetti</a></i> that the provision of the Lanham Act that prohibits registration for &ldquo;immoral&rdquo; or &ldquo;scandalous&rdquo; matters is unconstitutional. Like <i>Matal v. Tam</i>, this decision erases substantial jurisprudence in this area and opens the door for registration of many marks that would not have been previously registrable.</p> <p>Section 2(a) of the Lanham Act has long prohibited registration of certain types of trademarks, including any mark that &ldquo;consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.&rdquo; In <i>Matal v. Tam</i>, the Supreme Court held that the &ldquo;disparage&rdquo; provision of Section 2(a) is unconstitutional on First Amendment grounds. In that case, the Trademark Office had refused registration of the mark &ldquo;The Slants,&rdquo; a band name devised ostensibly as a protest against the use of ethnic slurs. The Supreme Court concluded that this refusal could not be sustained in light of applicant Tam&rsquo;s First Amendment rights.</p> <p>While &ldquo;The Slants&rdquo; was created in response to an ethnic slur, no such noble protest was raised in today&rsquo;s case, Here, the appellant, Erik Brunetti, owns a clothing line that is named after a four-letter word, apparently for the shock value of the term. The brand&rsquo;s website describes itself as the &ldquo;predecessor of subversive streetwear.&rdquo; Mr. Brunetti sought registration of the mark, but the examining attorney refused to register the mark under Section 2(a), finding that the mark comprised &ldquo;immoral or scandalous matter.&rdquo; The Trademark Trial and Appeal Board affirmed the examiner, and Mr. Brunetti appealed to the Federal Circuit.</p> <p>On appeal, Mr. Brunetti asserted two grounds of error. First, he argued that his mark did not fall within the category of &ldquo;immoral&rdquo; or &ldquo;scandalous&rdquo; marks, and second, he challenged the constitutionality of Section 2(a) as applied to non-registrability of such marks.</p> <p>Mr. Brunetti&rsquo;s assertion that his mark was not, in fact, an immoral term was contrary to precedent, and the court handily dismissed his argument. Next, the court turned to the question of the constitutionality of Section 2(a) of the Lanham Act. In a lengthy analysis, the court concluded that Section 2(a)&rsquo;s bar on registration of immoral or scandalous marks creates an unconstitutional content-based restriction on speech. The court&rsquo;s decision largely tracked the analysis of <i>Matal v. Tam</i>, which earlier had held that the prohibition on registration of disparaging marks was unconstitutional.</p> <p>The judgment was unanimous, but Judge Dyk entered a concurring opinion stating he would have opted to preserve the constitutionality of Section 2(a) by limiting the scope of the holding. Specifically, Judge Dyk would have narrowed Section 2(a) to prohibit registration of marks that are obscene. Obscene matter is matter that falls outside of the purview of the First Amendment. But because there was &ldquo;no suggestion that Mr. Brunetti&rsquo;s mark is obscene,&rdquo; Judge Dyk agreed that the judgment of the Trademark Trial and Appeal Board must be reversed.</p> <p>Absent a successful appeal to the Supreme Court, going forward the Trademark Office will be unable to refuse registration on &ldquo;immoral&rdquo; or &ldquo;scandalous&rdquo; grounds. This decision will be hailed as a victory by free speech advocates, although it is likely not to be welcomed in certain quarters.</p> <p>For more information on this case, please contact Fitch Even partner <a href="http://www.fitcheven.com/?t=3&amp;A=2609&amp;format=xml&amp;p=5482">Joseph T. Nabor</a>, author of this alert. <br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts18 Dec 2017 00:00:00 -0800http://www.fitcheven.com/?t=40&an=72525&format=xmlFitch Even Partners Joe Nabor and Alisa Simmons Appointed to INTA Committeeshttp://www.fitcheven.com/?t=40&an=72432&format=xml<p>Fitch Even partner <a href="http://www.fitcheven.com/?t=3&amp;A=2609&amp;format=xml&amp;p=3131">Joseph T. Nabor</a> was appointed National Committee Chair of the 27<sup>th</sup> annual <a href="http://www.inta.org/Academics/Pages/SaulLefkowitzCompetition.aspx">Saul Lefkowitz Moot Court Competition</a>, to be presented by the International Trademark Association (<a href="http://www.inta.org/">INTA</a>) in March 2018. This is the eleventh consecutive year Joe has served on this committee. Joe was also appointed to the INTA Enforcement Committee for a two-year term beginning in January 2018. The Enforcement Committee is charged with developing and advocating INTA&rsquo;s policy on the timely and effective enforcement of trademarks and business identifiers.</p> <p>Fitch Even partner <a href="http://www.fitcheven.com/?t=3&amp;A=2617&amp;format=xml&amp;p=3131">Alisa C. Simmons</a> currently serves as Chair of the Midwest Regional Committee for the Lefkowitz competition, which takes place in February 2018 in Chicago. Alisa has worked on this committee since 2009. In addition, Alisa was appointed to INTA&rsquo;s Public Information Committee for the 2018&ndash;19 term. That committee creates and maintains content on INTA's website that educates the general public about trademarks and brands.</p> <p>Founded in 1878 and now serving professionals from 190 countries worldwide, INTA is a not-for-profit membership association dedicated to the support and advancement of trademarks and related intellectual property in order to protect consumers and to promote fair and effective commerce.<br /> <br /> &nbsp;</p>Professional Activities15 Dec 2017 00:00:00 -0800http://www.fitcheven.com/?t=40&an=72432&format=xml