Fitch Even Client The Chamberlain Group Wins Trademark Opposition Trial

Fitch Even Partner Featured Speaker On The Supreme Court's KSR Decision

Fitch Even Partner Presents Program On Mediation Strategies At AIPLA Annual Meeting

Fitch Even Partner Appointed As Chair Of AIPLA's IP Law Associations Committee

Fitch Even Attorneys Prepare For Proposed Rule Changes

New Associates In Chicago Office

New Book Features Contributions By Two Fitch Even Partners

Fitch Even Partner Presents Trade Secret Seminar

Fitch Even Client Chamberlain Defeats Motion To Stay Preliminary Injunction Pending Appeal

Fitch Even Recognized As A Top Trademark Firm

Fitch Even Presents Patent Litigation Seminar In Finland

Fitch Even Welcomes New Associates

Bronze Tablet Award For Fitch Even Intern

Fitch Even Client Chamberlain Wins Preliminary Injunction

Fitch Even Client Chamberlain Wins Award Of Attorneys' Fees

Fitch Even Celebrates Women In The Legal Profession

Fitch Even Partner Presents AIPLA Program On Trademark Dilution

Fitch Even Partner Recognized By National IP Taskforce

Three Fitch Even Attorneys Named Illinois Super Lawyers For 2007

Fitch Even Partner Quoted In Chicago Daily Law Bulletin

Fitch Even Welcomes New Partner To Its Litigation Practice

Fitch Even Partners Present Trade Secret Seminar In China

Fitch Even Partner Named Vice Chairman Of National IP Task Force

December 14, 2007

On December 14th, 2007, the Trademark Trial and Appeal Board ruled in favor of The Chamberlain Group, Inc. in the trademark opposition trial The Chamberlain Group, Inc. v. Lynx Industries, Inc. Opp. No. 91160673 (TTAB). Chamberlain is the world's largest manufacture of garage door openers. In this case, Chamberlain opposed Lynx's proposed registration of the trademark "Lynx Master" for electronic garage door openers.

The TTAB ruled that the trial evidence established a likelihood of confusion between the Lynx Master mark and Chamberlain's Liftmaster® trademark. The TTAB based its finding on several factors, including the fame and strength of Chamberlain's trademark resulting from Chamberlain's extensive use and promotion of the mark; the similarity in sound, appearance and commercial impression of the marks; the use of the trademarks at issue on identical goods; and the similarity between the parties' channels of trade and customers.

Chamberlain Group, Inc. was represented in this matter by Joseph Nabor.

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November 16, 2007

Partner Steve Parmelee was a featured speaker in the two-day forum on intellectual property issues sponsored and arranged by the Center for Business Intelligence in Washington, DC on November 16, 2007. Mr. Parmelee explored in depth the holdings and implications of the Supreme Court's recent landmark decision on the issue of "obviousness" under the patent law in KSR International Co. v. Teleflex Inc. Mr. Parmelee discussed the historical perspective of the Supreme Court's rulings on the "obviousness" standard in patenting inventions and the particular patent involved in the KSR case. Mr. Parmelee also summarized the reactions to the KSR decision by patent attorneys, the Patent Office, and the federal courts.

The Center for Business Intelligence serves the pharmacological and medical devices industries with current and state-of-the-art information regarding various matters of business interest.

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October 19, 2007

Partner Phil Petti helped organize and also moderated a program titled "A Practicum on Mediation Training" at the October 2007 Annual Meeting of the American Intellectual Property Law Association in Washington, D.C. The program featured strategies for mediation clauses in contracts and licenses, mediation of disputes before litigation, early mediation before discovery in lawsuits, and mediation before the Court of Appeals for the Federal Circuit. The speakers included the Chief Circuit Mediator from the Federal Circuit's Mediation Office, as well as leading private practioners with experience as mediators and participants in mediations.

The Annual Meeting is the AIPLA's largest meeting of the year. The AIPLA is the nation's largest bar association focusing on intellectual property law, with more than 17,000 members. Its members include owners and users of intellectual property, and lawyers in private and corporate practice, government service, and the academic community.

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October 18, 2007

Partner Phil Petti has been appointed to serve for a second year as Chair of The American Intellectual Property Law Association's IP Law Association Committee for 2007-2008. The IP Law Association Committee works with regional and local IP law associations across the United States to encourage sponsoring and promoting educational programs, IP law advocacy and information sharing.

Mr. Petti served as the Chair of the committee for 2006-2007 and Vice-Chair for 2005-2006. Mr. Petti also is active on AIPLA's Programs Committee and On-line Education Committee. The AIPLA is the nation's largest bar association focusing on intellectual property law, with more than 17,000 members. Its members includes owners and users of intellectual property, and lawyers in private and corporate practice, government service, and the academic community.

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October 10, 2007

On October 5 and October 9, 2007, Fitch, Even partner Stephen Favakeh and senior associate Joel Bootzin conducted an in-house seminar for the firm's attorneys to explain and provide strategies for addressing the new U.S. Patent and Trademark Office rules that were to go into effect on November 1, 2007. The new rules are directed to continuation practice, claim number limits, requests for continued examinations, and the filing of multiple applications for an invention. In a lawsuit against the USPTO, the United States District Court for the Eastern District Court of Virginia issued a preliminary injunction on October 31, 2007 that blocks implementation of the new rules pending further judicial review of their legality. Fitch, Even will continue to monitor the litigation and other developments relating to the proposed rules.

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September 4, 2007

Fitch Even is pleased to welcome three new associates to the firm's Chicago office. Brian Michalek holds a degree in Electrical Engineering and is a recent graduate of the University of San Diego School of Law. Shane Delsman earned his technical degree in Civil Enginering and Chad Sullivan in Chemical Engineering. Shane and Chad are each recent graduates of the University of Wisconsin Law School. With these additions, Fitch Even continues to expand its capacity to provide intellectual property legal services to enterprises operating in a variety of technical fields.

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August 8, 2007

Karl Fink and Steve Parmelee contributed two chapters of the recently published book Business Power - Creating New Wealth From IP Assets, which is the result of a collaborative effort of several members of the National Knowledge and Intellectual Property Management Taskforce. This book presents a series of essays that are framed and intended to assist and inform both the experienced and those who are new to the nuances of intellectual property as it relates to business strategies and value.

The chapter authored by Mr. Fink, entitled "Value-Added Litigation," addresses patent litigation decision making as a component of normal business strategy and explains how patent enforcement can dramatically strengthen and also protect a company's market position. Mr. Fink identifies several factors that are central to the development of effective enforcement strategies, while emphasizing that patent litigation is not a layman's game or something to be done on the cheap.

Mr. Parmelee's contribution, entitled "How to Turn White Space Dark for Fun and Profit," discusses the business benefits of a patent portfolio that leaves no "white space" (holes) in the protective blanket. It explains how white spaces represent a vulnerability and business threat which, if not repaired, can create disruptive patenting opportunities for competitors. This chapter goes on to provide instructions and tips on how to prepare for, conduct, and profit from white space patenting activities. Mr. Parmelee reveals a process, built over decades of experience, by which a proactive enterprise can successfully capitalize on white space inventing opportunities while avoiding the pitfalls that frequently frustrate such initiatives.

Other authors address topics such as the impact of intellectual property on corporate financial management, gaining competitive power through integrated intellectual property strategy, capturing the value of trade secrets, and defining brand and reputational value.

Business Power - Creating New Wealth From IP Assets is published by John Wiley & Sons and is available through various booksellers including Amazon and the Practicing Law Institute.

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June 14, 2007

Fitch Even Partner Joe Nabor lectured on trade secret law essentials to a group of Chicago area members of the Illinois State Bar Association. The lecture was a component of an ISBA program entitled What Every Lawyer Should Know About Intellectual Property. More than seventy-five lawyers were in attendance, and a lively discussion and question and answers session followed the program.

Mr. Nabor is a frequent speaker at ISBA sponsored events, and has presented on a variety of Intellectual Property topics in the organization's professional development programs. He will speak again as the Intellectual Property program is conducted in Bloomington, Illinois on June 28.

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June 6, 2007

In a June 6, 2007 order, the United States Court of Appeals for the Federal Circuit denied a motion by Lear Corporation to stay a preliminary injunction entered by Judge James B. Moran of the United States District Court for the Northern District of Illinois in favor of Fitch Even client, The Chamberlain Group, Inc., the nation's leading garage door opener manufacturer, and co-plaintiff Johnson Controls Interiors, LLC.

Chamberlain and JCI sued Lear for infringement relating to patented technology for controlling garage door operators under Chamberlain's U.S. Patent No. 6,154,544. Following extensive briefing and patent claim construction proceedings, the District Court granted a motion for preliminary injunction filed by Chamberlain and JCI in a March 30, 2006 opinion and order. The court entered the preliminary injunction in an April 25, 2006 order enjoining Lear from making, using or selling its accused device (although permitting Lear to continue to make deliveries for certain vehicle programs currently incorporating the accused device). As part of its order in support of the preliminary injunction, the District Court found that Chamberlain and JCI established a strong likelihood that Lear's device infringed Chamberlain's patent and that the infringement is causing irreparable harm to Chamberlain and JCI.

The Court of Appeals for the Federal Circuit, in denying Lear's motion for a stay of the preliminary injunction pending appeal, found that Lear failed to meet its burden to establish either 1) a strong likelihood of success on the merits, or 2) a substantial case on the merits provided that the harm factors militate in its favor.

Chamberlain is represented by Karl Fink, Rudy Kratz, Nick Peters and John Flannery.

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May 24, 2007

Fitch Even is pleased to announce that the firm has been recognized in the Trademark Insider, a quarterly publication that tracks the U.S. Trademark Industry. In the 2006 Annual Edition, Fitch Even was included among the most active trademark firms in the country and was named the Top Trademark Firm in Chicago based on the number of applications filed. Chicago is the fourth largest market in the country. Joseph Nabor, a partner and head of the firm's Trademark Department, received special recognition as a leading trademark attorney and the fourth most active filer of U.S. applications in the country.

Congratulations to Mr. Nabor and to all of the members of Fitch Even's Trademark Department whose hard work, expertise and dedication made this accomplishment possible!

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May 17, 2007

Tim Maloney and Tim Levstik, each Partners in the firm's Litigation Practice Group, were invited speakers at a seminar held on May 15 in Helsinki, Finland. The seminar, which drew executives from many European food companies, addressed various intellectual property issues relating to the globalization of the food industry. Mr. Maloney and Mr. Levstik spoke regarding patent litigation procedures and strategies in the United States, the implementation of effective licensing programs, and the avoidance of patent rights of competitors. They were asked to participate in recognition of the firm's considerable experience handling patent litigation and licensing matters relating to food and beverage technologies.

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May 15, 2007

Fitch Even is pleased to welcome Paul Henkelmann and Ted Li as associates in the firm's Chicago office. Paul has a B.S. in General Engineering and graduated from the Chicago-Kent College of Law this year. Ted has practiced as a commercial litigation attorney since receiving his Juris Doctor from the University of Chicago Law School in 2003, and will now focus primarily on intellectual property litigation.

Welcome aboard!

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April 24, 2007

Fitch Even intern Reed McBride will be traveling to the University of Illinois in Champaign on Monday, April 30 to be honored as a Bronze Tablet Graduate. This is the highest academic recognition given to undergraduates, granted to those graduating in the top 3% of each college at the University. Each year, the recipients have their names cast into a bronze tablet with other honorees for that year, and the tablet is placed on permanent display in the University Library. Reed's tablet will hang alongside those of his grandfather, Frank M. Shappert (1953) and Fitch Even partners Timothy Maloney (1988) and Rudy Kratz (1990). Reed completed his degree in seven semesters and graduated from Illinois in December 2006 with a B.S. in Mechanical Engineering summa cum laude.

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April 2, 2007

In a March 30, 2007 memorandum opinion and order, Judge James B. Moran of the United States District Court for the Northern District of Illinois granted the joint motion of Fitch Even client, The Chamberlain Group, Inc., the nation's leading garage door opener manufacturer, and co-plaintiff Johnson Controls Interiors, LLC, for a preliminary injunction against Lear Corporation. Chamberlain and JCI sued Lear for infringement relating to patented technology for controlling garage door operators. Following extensive briefing and patent claim construction proceedings, the District Court granted Chamberlain and JCI's request for a preliminary injunction.

The District Court found a substantial likelihood that Chamberlain and JCI will prevail on their claim that Lear's technology infringes Chamberlain's U.S. Patent No. 6,154,544. As part of its ruling, the District Court also found that Lear's activities are causing irreparable harm to Chamberlain and JCI.

Chamberlain is represented by Karl Fink, Rudy Kratz, Nick Peters and John Flannery.

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March 29, 2007

In a March 29, 2007 order, Judge Susan R. Bolton of the United States District Court for the District of Arizona awarded $185,369.75 to Fitch Even client, The Chamberlain Group, Inc., the nation's leading garage door opener manufacturer. The award was in response to Chamberlain's request for attorney's fees arising out of litigation with Microchip Technology Incorporated. Microchip sued Chamberlain for declaratory judgment of non-infringement, invalidity, and breach of a license agreement regarding several of Chamberlain's patents protecting its remote control technology. Chamberlain denied all allegations, and further denied that there was any justiciable controversy between the parties. The Court of Appeals for the Federal Circuit vacated a revious entry of summary judgment for Microchip, remanding the action to the district court with instructions to dismiss the action for lack of subject matter jurisdiction based on the lack of a justiciable controversy.

Following the appeal, Chamberlain sought its attorneys' fees according to the terms of the license agreement between Chamberlain and Microchip. The District Court found that Chamberlain was entitled to a portion of its attorneys' fees as a prevailing party in the litigation. The district court ultimately awarded Chamberlain $185,369.75 in costs and fees incurred during the litigation.

Chamberlain is represented by Karl Fink, Rudy Kratz, and John Flannery.

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March 14, 2007

Fitch Even was proud to be a table sponsor for the Illinois State Bar Association lunch to celebrate women in the legal profession. Attending the event from the Firm were Joseph Nabor, Nada Ardeleanu, Amanda Lowerre, Christine Pompa, Sarah Walkington and Selena Michalowicz. The lunch was hosted by Irene Bahr, president of the ISBA, and the keynote speaker was Karen J. Mathis, President of the American Bar Association.

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March 9, 2007

Joseph Nabor was a co-presenter of the AIPLA On-Line Program "Trademark Dilution: New Angles After The Trademark Dilution Revision Act Of 2006 And Why You Should Care." This program focused on the practical application of the recently revised Trademark Dilution Act, and alternatives to federal trademark dilution claims for those who do not qualify under the revised Act. The program was organized and presented by the AIPLA On-Line Programs Committee and simulcast through a dial-in number and over the internet. Mr. Nabor, a partner at Fitch Even, focuses in the areas of trademark, copyright and unfair competition law.

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March 1, 2007

Fitch Even congratulates Karl Fink on being recognized by the National Knowledge & Intellectual Property Management Taskforce for his guidance to a better understanding and execution of the Taskforce. The Taskforce is an industry-led, industry-funded consortium consisting of business, government and academic institutions committed to improving the creation, recognition, and economic impact of intellectual capital, intellectual property and intangible assets. Mr. Fink, a partner of the firm, has been providing assistance and leadership to the Taskforce since 2001.

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January 17, 2007

Fitch Even is pleased to announce that John Flannery, Tim Maloney and Phil Petti were once again voted Illinois Super Lawyers for 2007. This recognition is based on an annual survey sent to 47,000 active lawyers in Illinois, the results of which are published in the Law & Politics and Chicago magazines. These Fitch Even attorneys were recognized for their accomplishments in the field of intellectual property litigation, where they have been instrumental in many litigation and trial successes of the firm's clients over the years.

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January 9, 2007

On January 9, when the U.S. Supreme Court handed down a ground-breaking decision that makes it easier for licensees to challenge patents, the Chicago Daily Law Bulletin called Fitch Even partner Joe Shipley asking for comment. Mr. Shipley explained that the decision, MedImmune, Inc. v. Genentech, Inc., means that a licensee can now sue the patent holder for a declaratory judgment that the patent is invalid and not infringed while still paying royalties and remaining in "good standing" under the license.

Mr. Shipley is in his 25th year with Fitch Even, where his practice includes licensing, prosecution, counseling and litigation. His recent speaking engagements include lectures on licensing at DePaul University College of Law and Practicing Law Institute (PLI) programs. He is currently vice-president of the Intellectual Property Law Association of Chicago.

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January 5, 2007

Fitch Even is pleased to welcome Charles C. Kinne as a new partner in the firm's Chicago office. Mr. Kinne, an accomplished IP litigation attorney, has served as lead counsel in at least 100 intellectual property cases, including patent, trademark, copyright, trade secret, unfair competition and various business tort disputes. Mr. Kinne brings significant litigation and trial experience to the firm's already substantial IP litigation practice. He has recently participated as lead counsel in numerous dispositive matters, summary judgment motions and Markman claim construction hearings, has appeared in U.S. District Courts throughout the United States, and has numerous reported cases of record. Mr. Kinne is also active in patent prosecution, opinion work and general client counseling.

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January 5, 2007

Fitch Even is pleased to announce that Steve Schroer and Edward Clair will participate as invited guests in meetings with the China Intellectual Property Society in Najning, China. Mr. Schroer will present a seminar on January 12, 2007 regarding U.S. trade secret law to a group of lawyers and judges involved in exploring the enhancement of trade secret protection under Chinese law. Mr. Schroer, a partner at Fitch, Even, focuses exclusively on intellectual property litigation, and particularly in the trial of patent infringement and trade secret actions. Mr. Clair, also a partner of the firm, assists a number of international clients, including several Chinese companies, in a broad range of intellectual property matters. Fitch Even supports a significant international patent prosecution practice, with rapidly growing clientele in China and Korea.

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January 1, 2007

Partner Karl Fink has been name 2007 Vice Chairman of the National Knowledge & Intellectual Property Management Task Force, which is a consortium of companies collaborating to research and develop methods of determining, measuring and enhancing the value of intellectual property. Major participants include Ford, AT&T, USG, American Express, IBM and others.

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