Fitch Even News Feed May 2019 00:00:00 -0800firmwise Even Attorneys Participate in IPLAC 2019 Annual Meeting<p>On May 7, at the <a href="">Intellectual Property Law Association of Chicago</a> (IPLAC) Annual Meeting, Fitch Even partner <a href=";A=2617&amp;format=xml&amp;p=5482">Alisa C. Simmons</a>, current president of the IPLAC Educational Foundation, was on hand as five local high-school graduates were awarded college scholarships. Each year, the IPLAC Educational Foundation awards scholarships to Chicago Public School students planning to study engineering, science, or pre-law in college.</p> <p>Other Fitch Even attorneys in attendance at the meeting included IPLAC members <a href=";A=2609&amp;format=xml&amp;p=5482">Joseph T. Nabor</a>, chair of the Historical Records Committee; <a href=";A=2616&amp;format=xml&amp;p=5482">Joseph E. Shipley</a>, past IPLAC president; <a href=";A=16703&amp;format=xml&amp;p=5482">Evan Kline-Wedeen</a>, co-chair of the Field Day Committee; <a href=";A=13120&amp;format=xml&amp;p=5482">Andrew C. Wood</a>, co-vice chair of the Young Members Committee, and <a href=";A=13638&amp;format=xml&amp;p=5482">Margaret &ldquo;Peggy&rdquo; Herrmann</a>.</p> <p>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.</p>Professional Activities23 May 2019 00:00:00 -0800 Alert: Estoppel and Reduction in Ability to Compete Not Enough to Confer Appellate Standing to a Noninfringing IPR Petitioner<p>Petitioners appealing adverse Patent Trial and Appeal Board (PTAB) decisions must show that they are engaged in, or have nonspeculative plans to engage in, conduct potentially covered by the challenged claims to have sufficient standing for the Federal Circuit to have jurisdiction over the appeal. On May 13, in <a href=""><i>AVX Corp. v. Presidio Components, Inc.</i></a>, the Federal Circuit clarified the requirements for standing. The court also stated that a petitioner who lacked standing to appeal might not face the estoppel that normally attaches to a challenger after a final decision in the PTAB.</p> <p>AVX challenged its competitor Presidio&rsquo;s patent directed to ceramic capacitors in an <i>inter partes</i> review (IPR), and the PTAB found some, but not all, of the challenged claims unpatentable. AVX appealed the decision with regard to the upheld claims. The Federal Circuit had <a href=";an=79510&amp;anc=180&amp;format=xml&amp;p=5486">previously found</a> that &ldquo;in IPR appeals, &lsquo;an appellant must . . . supply the requisite proof of an injury in fact when it seeks review of an agency&rsquo;s final action in a federal court,&rsquo; by creating a necessary record in this court, if the record before the Board does not establish standing.&rdquo; Presidio argued that AVX has not established an injury in fact, and thus lacked Article III standing to appeal the decision.</p> <p>First, AVX argued that an injury in fact was established by the PTAB&rsquo;s rejection of its obviousness challenges to the upheld claims because the statutory estoppel provision, 35 U.S.C. &sect; 315(e), would prevent AVX from asserting the same challenges if the upheld claims were asserted against it in the future. The Federal Circuit disagreed. Specifically, the court found that estoppel under &sect; 315(e) does not constitute an injury in fact when the petitioner is not engaged in activity that would give rise to a possible infringement suit.</p> <p>Notably, the court also declined to decide whether &sect; 315(e) even has an estoppel effect when an IPR petitioner lacks Article III standing to appeal. The court did not decide this issue because the estoppel question was not before the court.</p> <p>Second, AVX argued that an injury in fact was established by the PTAB&rsquo;s decision upholding certain claims because it reduced AVX&rsquo;s ability to compete with Presidio under the competitor standing doctrine. Under this doctrine, the Federal Circuit stated that the appealing party must show that &ldquo;the challenged government action nonspeculatively threatened economic injury to the challenger by the ordinary operation of economic forces.&rdquo; The court previously held that IPR petitioners lacked standing where they had no &ldquo;concrete plans for future activity that creates a substantial risk of future infringement or likely cause the patentee to assert a claim of infringement.&rdquo; Here, the court found that AVX had not shown that it was engaging in, or had plans to engage in, any conduct covered by the upheld claims. As a result, the court dismissed the appeal for lack of jurisdiction.</p> <p>This decision is relevant to any party who is considering challenging a patent in an IPR but does not currently practice, or have any plans to practice, any claims of the patent. Under those circumstances, petitioners may not have standing to appeal an adverse decision from the PTAB and may wish to reconsider whether to proceed with filing an IPR. Conversely, as noted above, the Federal Circuit has not yet addressed whether the &sect; 315(e) IPR estoppel provisions will apply in a later proceeding.</p> <p>For more information on this decision, please contact Fitch Even partner <a href=";A=2587&amp;format=xml&amp;p=5482">Paul B. Henkelmann</a>, author of this alert.</p> <p><i>Fitch Even associate </i><a href=";A=16703&amp;format=xml&amp;p=5482"><i>Evan Kline-Wedeen</i></a><i> contributed to this alert.</i>&nbsp;<br /> <b><br /> <br /> Fitch Even IP Alert<sup>&reg;</sup></b>&nbsp;</p>IP Alerts20 May 2019 00:00:00 -0800 Alert: Federal Circuit Affirms CBM Jurisdiction and Patent Ineligibility of Invention for "Improving the Trader"<p>On April 30, in <i><a href="">Trading Technologies Int&rsquo;l, Inc. v. IBG LLC, Interactive Brokers LLC<span>,</span></a></i> the Federal Circuit issued a decision clarifying the scope of covered business method (CBM) review proceedings. Holding that the challenged patents do not meet the criteria for the technological invention exception to the CBM review criteria, the court affirmed the Patent Trial and Appeal Board (PTAB) holding that a patent owned by Trading Technologies met the criteria for CBM review and also held that the challenged claims are patent ineligible under 35 U.S.C. &sect; 101.</p> <p>The challenged patent relates to a graphical user interface for electronic trading, which was the subject of a petition for CBM review filed by IBG and a related entity, Interactive Brokers.</p> <p>To be eligible for CBM review, the patent must be a &ldquo;CBM patent.&rdquo; This is defined in section 18(d)(1) of the America Invents Act as &ldquo;a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, <i>except that the term does not include patents for technological inventions</i>&rdquo; (emphasis added). The only issue of CBM eligibility that Trading Technologies contested is whether its patents were for technological inventions. Under the relevant USPTO regulation, when evaluating whether a patent is for a technological invention, the PTAB must evaluate two questions: (1) whether the claimed subject matter as a whole recites a technological feature that is novel and nonobvious over the prior art and (2) whether it solves a technical problem using a technical solution.</p> <p>The Federal Circuit declined to consider whether the first question should apply, refusing to decide whether its recent holding in <i>Versata Development Group, Inc.</i> set aside the novelty and nonobviousness language of the regulation. Instead, the court reasoned that regardless of whether the first prong should apply, the claims do not solve a technical problem using a technical solution under the second consideration. Trading Technologies argued that the claims addressed problems related to aspects such as speed, efficiency, usability, intuitiveness, and visualization. The Federal Circuit, agreeing with the PTAB, explained that although the patents solve the problem of displaying trading information &ldquo;in an easy to see and interpret graphical format,&rdquo; this makes the <i>trader</i> faster and more efficient&mdash;not the computer. The court explained they did not need to review the PTAB&rsquo;s analysis under the first consideration since they agreed with the PTAB on the second consideration.</p> <p>Next, the Federal Circuit reviewed the PTAB&rsquo;s conclusions regarding patent eligibility, applying the Supreme Court&rsquo;s two-step framework by first evaluating whether the claims are directed to a patent-ineligible concept and, second, if so, determining whether the additional elements transform the nature of the claim into a patent-eligible application. </p> <p>Focusing on the first step, the court evaluated differences between the claimed invention and the admitted prior art disclosed by the patent. The court concluded that the only difference between prior art Figure 2 and the claims is that the claimed graphical display includes P&amp;L values instead of the prior art price values. According to the court, calculating P&amp;L values from price is nothing more than an abstract idea&mdash;thus, a patent-ineligible concept. The court discounted Trading Technologies&rsquo; arguments to the contrary, noting that &ldquo;arranging information along an axis does not improve the functioning of the computer, make it operate more efficiently, or solve any technological problem.&rdquo; </p> <p>Under the second step, the court likewise concluded that the application of the P&amp;L calculation to a trading screen could not supply an inventive concept, and therefore affirmed the PTAB&rsquo;s holding that the challenged claims are patent ineligible.</p> <p>This case emphasizes the intertwined relationship between CBM eligibility and patent eligibility and perhaps expands CBM eligibility by broadening the interpretation of &ldquo;technological invention.&rdquo;</p> <p>For more information on this ruling, please contact Fitch Even partner <a href=";A=2596&amp;format=xml&amp;p=5482">Thomas F. Lebens</a>, author of this alert.</p> <p><i>Fitch Even law clerk Zachary Van Engen contributed to this alert. </i></p> <p><b><br /> </b></p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts10 May 2019 00:00:00 -0800 Even Attorney Peggy Herrmann Named Alumna of the Year by Chicago-Kent College of Law SBA<p>On April 25, Fitch Even attorney <a href=";A=13638&amp;format=xml&amp;p=5482">Margaret &ldquo;Peggy&rdquo; Herrmann</a> was honored with the Alumna of the Year award by the Student Bar Association of Chicago-Kent College of Law. Peggy was recognized for her outstanding dedication to Chicago-Kent, which includes speaking on career panels at the law school and mentoring law students. In addition, she is a member of the Chicago-Kent Young Alumni Council and recently copresented an &ldquo;IP Bootcamp&rdquo; as part of the alumni CLE programming.</p> <p>This latest recognition follows several service awards Peggy earned while a student at Chicago-Kent. During her years there, she was honored with the Dean&rsquo;s Distinguished Public Service Award, Clinton E. Stryker Distinguished Service Award, the Chicago-Kent Certificate of Service, and the Clinton E. Stryker Outstanding Commitment to Service.</p> <p>Peggy joined Fitch Even as an associate in September 2017. She is a registered patent attorney whose practice currently encompasses patent preparation and prosecution, patent post-issuance proceedings, and product clearance and legal opinions.</p>Professional Activities02 May 2019 00:00:00 -0800 Alert: No Section 101 Appeal from an IPR<p>Today, in <i><a href=";%20Company.pdf">Neptune Generics, LLC v. Eli Lilly &amp; Company</a></i>, the Federal Circuit held that patent eligibility may not be attacked on appeal by an unsuccessful petitioner who has lost an <i>inter partes</i> review (IPR) proceeding. This decision answers an open question concerning IPR practice and procedure.</p> <p>Eli Lilly owns a patent directed toward a method for administering a drug compound known as pemetrexed. Two generic drug companies and an entity called Neptune Generics collectively brought nine petitions for <i>inter partes</i> review of the patent, attacking the patent on various grounds of obviousness. The Patent Trial and Appeal Board (PTAB) held in favor of the patent owner in each case, and the petitioners appealed.</p> <p>On appeal, the court first discussed the petitioners&rsquo; obviousness challenges to the patent, and concluded that the PTAB had not erred in holding the claims not to have been proven obvious. The petitioners then argued that the claims were not directed to patent-eligible subject matter, asserting that this issue is &ldquo;properly raised because eligibility is a question of law and in this appeal, there are no factual issues that must be decided.&rdquo;</p> <p>The Federal Circuit disagreed, reasoning that Congress had expressly limited the scope of IPR to certain prior art challenges that arise under sections 102 and 103 of the Patent Act. Patent eligibility is an issue that arises under section 101 of the Patent Act. Because a petitioner cannot attack patent eligibility in an IPR, the court concluded that likewise the petitioner could not raise patent eligibility issues on appeal.</p> <p>Today&rsquo;s decision is important for parties concerned with patent eligibility in IPR proceedings. For more information, please contact Fitch Even partner <a href=";A=2589&amp;format=xml&amp;p=5482">Allen E. Hoover</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts26 Apr 2019 00:00:00 -0800 USA 2019 Recognizes Fitch Even and Partner Tim Maloney<p>Fitch, Even, Tabin and Flannery LLP has once again been ranked as a leading intellectual property law firm in Illinois in the 2019 edition of<i> Chambers USA: America&rsquo;s Leading Lawyers for Business</i>, a prestigious research-based directory and one of the most widely cited referral sources for legal services in the U.S.</p> <p>In this year&rsquo;s listing, <i>Chambers</i> notes in part that the Fitch Even team is known for its &ldquo;strong reputation for work in the contentious and noncontentious spheres of patent, trademark and copyright law&rdquo; and the firm&rsquo;s &ldquo;substantial experience handling post-grant, reexamination and <i>inter partes</i> reviews at the USPTO.&rdquo; One client is quoted as saying, &ldquo;<i>They are great; they have a deep understanding of our business and the technologies. They give the best service possible.&quot; </i>Another source shared, &ldquo;<i>The team is excellent; they are very good at what they do, [in] how accessible they are, and [in] their communication.&quot;</i></p> <p>In addition, partner <a href=";A=2601&amp;format=xml&amp;p=5482">Timothy P. Maloney</a> was once again singled out by <i>Chambers</i> as a notable practitioner in the field of intellectual property law in Illinois. <i>Chambers</i> reports that clients observed that Tim is<i> &ldquo;a great litigator&rdquo; </i>who is<i> &quot;very analytical and thoughtful.&rdquo; </i>Tim&rsquo;s practice entails all aspects of intellectual property enforcement and defense, with an emphasis on representing plaintiffs in patent litigation, often multi-party complex litigation. He is an established trial lawyer with a strong track record in numerous jury and bench trials. Tim has handled over 100 litigation-related patent post-issuance proceedings in the USPTO, consistently achieving favorable outcomes.</p> <p>Published annually by London-based Chambers &amp; Partners, <i><a href="">Chambers USA</a></i> determines its rankings through confidential, in-depth interviews with clients and outside attorneys as well as through independent research and assessment of recent work done. Inclusion in the guide is based solely on the findings of the Chambers research team. Criteria used includes legal ability and experience, capability and effectiveness, client service, commercial vision and business understanding, diligence, value for money, strength and depth of the firm at every level, standards of professional conduct, and other qualities most valued by clients.&nbsp;<br /> &nbsp;</p>Firm News25 Apr 2019 00:00:00 -0800 Copyright Protection in a Changing Legal Landscape<p>Please join Fitch, Even, Tabin &amp; Flannery LLP for a free webinar, &ldquo;<a href="">Ensuring Copyright Protection in a Changing Legal Landscape</a>,&rdquo; on Thursday, May 2, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.</p> <p>The recent Supreme Court decision in <i>Fourth Estate Public Benefit Corp. v., LLC, </i>established that a copyright owner may not file an infringement suit until the U.S. Copyright Office has acted on the copyright owner&rsquo;s application to register its copyright in the work. Moving quickly to register copyrights is now an important step in safeguarding your rights.</p> <p>During this webinar, our presenters will share insights on the following:</p> <ul> <li>The practical effects of the <i>Fourth Estate Public Benefit Corp. v.</i> decision and other benefits of early registration</li> <li>Strategies for protecting copyright rights in work product produced by employees</li> <li>Strategies for obtaining and maintaining necessary permissions to use third-party materials in advertisements and promotions</li> <li>Recent updates enacted by Congress to benefit music publishers through the Music Modernization Act</li> </ul> <p>Our speakers will be Fitch Even attorneys <a href=";A=2617&amp;format=xml&amp;p=5482">Alisa C. Simmons</a> and <a href=";A=16851&amp;format=xml&amp;p=5482">Kerianne A. Strachan</a>.</p> <p>Alisa has extensive experience in U.S. and foreign trademark prosecution, trademark litigation, and brand selection. She also provides counsel on copyright registration and enforcement, advertising review, and sweepstakes and promotions.</p> <p>Kerianne focuses her practice on domestic and foreign trademark prosecution, clearance, enforcement, and brand protection. She counsels clients in industry sectors including consumer products, household appliances, retail, and educational services. &nbsp;</p> <p>A recording of this webinar is available through May 1, 2020.<br /> &nbsp;</p>Past Webinars17 Apr 2019 00:00:00 -0800 Even Welcomes Attorney Brett Smith to Chicago Office<p>Fitch, Even, Tabin &amp; Flannery is pleased to announce that <a href=";A=2618&amp;format=xml&amp;p=5482">Brett J. Smith</a> has rejoined the firm&rsquo;s Chicago office as a partner. A registered patent attorney, Brett has a diverse practice encompassing patent prosecution and preparation, product clearance and legal opinions, patent portfolio management, patent licensing, and IP litigation. He has counseled clients ranging from startups to multinational corporations, working with industry sectors that include automotive technologies, medical devices, electronic products, industrial systems, and packaging.</p> <p>Brett originally joined Fitch Even as an associate after passing the bar in 2009. After moving his family to Michigan in 2016, he joined a midsized IP law firm based in Southfield where he focused his practice on domestic and foreign patent prosecution in the mechanical and electromechanical arts, primarily working with clients in the automotive industry.</p> <p>Brett earned his J.D. from Chicago-Kent College of Law. He holds a B.S. in Mechanical Engineering from Michigan State University.</p> <p>We are delighted to welcome Brett back to the Fitch Even team!<br /> &nbsp;</p>Firm News16 Apr 2019 00:00:00 -0800 Even Andrew Wood Speaks at ISBA Event at Loyola University<p>On April 9, Fitch Even attorney <a href=";A=13120&amp;format=xml&amp;p=5482">Andrew C. Wood</a> served on a panel of three attorneys who shared their insight on legal practice with law students during an event sponsored by the Illinois State Bar Association Law Student Division and hosted by Loyola University Chicago School of Law in Chicago.</p> <p>During the interactive program, titled &ldquo;Behind the Curtain,&rdquo; Andrew and his copresenters discussed what law students should know prior to beginning their first jobs following graduation, answering questions and offering advice based on the presenters&rsquo; own experience in their varied practices.</p>Professional Activities15 Apr 2019 00:00:00 -0800 Even Partner Alisa Simmons to Speak on ABA Panel on Brexit<p>Fitch Even partner <a href=";A=2617&amp;format=xml&amp;p=5482">Alisa C. Simmons</a> will be a featured panelist at an ABA CLE program on &ldquo;Brexit: What You Now Need to Know to Protect and Enforce Your IP Rights in the EU and UK,&rdquo; taking place on April 12 in Arlington, Virginia, during the 2019 ABA-IPL Annual Meeting and 34th Intellectual Property Law Conference.</p> <p>During the program, Alisa and IP lawyers from the UK and Canada will provide up-to-date guidance on the UK's anticipated exit from the European Union. The panel will explore the agreements that may be put into place and the resulting questions regarding the protection and enforcement of EU-based IP rights including trademarks, copyrights, registered designs, and geographical indications.</p> <p>To learn more about the conference and its offerings, please visit the <a href="">ABA website</a>.</p> <p>&nbsp;</p>Professional Activities11 Apr 2019 00:00:00 -0800