Fitch Even News Feed Jan 2023 00:00:00 -0800firmwise Even Associate Mary Fetsco Quoted in Law360 Article on the Volume of Counterfeiting Cases in the N.D. of IL<p>Fitch Even associate <a href=";A=28222&amp;format=xml&amp;p=5482">Mary F. Fetsco</a> was quoted in the January 24 issue of Law360 in an article discussing the volume of counterfeiting cases filed in the Northern District of Illinois, and how it has become the venue of choice for brands looking to enforce their trademarks.</p> <p>In the article, &ldquo;Northern Ill. A Surprise Magnet For Counterfeiting Suits,&rdquo; Mary explains that after a decade seeing these types of cases, the Northern District of Illinois is intimately familiar with the issues involved and the types of relief often sought. She comments that predictability is key for brand owners: &ldquo;It's to a point where the judges look at [a new counterfeiting complaint] and go, 'Oh, it's another one of these,' and that is very appealing to a brand.&rdquo; While the increasing volume of cases has at least one judge reconsidering his typical damages-awarding practice, she goes on to say that &quot;lowering the judgment is probably not going to deter brand owners in a significant way.&quot;</p> <p>The article can be read in its entirety on the <a href=""><i>Law360 website</i></a> (sub. req.).</p>Professional Activities26 Jan 2023 00:00:00 -0800 Even Attorneys to Present Strafford Webinar on Patent Strategies for Protecting Aftermarket Parts<p>Fitch Even attorneys <a href=";A=2622&amp;format=xml&amp;p=5482">Jonathan H. Urbanek</a> and <a href=";A=19278&amp;format=xml&amp;p=5482">Jacqueline L. Thompson</a> will present a Strafford Publications&rsquo; CLE webinar, &ldquo;<a href=";utm_medium=email&amp;utm_content=&amp;utm_source=exacttarget&amp;pid=994455&amp;trk=PL6X62-89PLAY&amp;mid=271881&amp;rd=sp04">Patent Strategies for Protecting Aftermarket Parts: Strengthening the Portfolio, Implementing Enforcement Program</a>,&rdquo; on February 8 from 12 noon to 1:30 p.m. CST.</p> <p>During this webinar, the presenters will provide patent counsel with guidance on patent strategies for protecting aftermarket parts. In particular, the presenters will discuss leveraging IP to protect aftermarket parts and create obstacles for will-fitters. The panel will also discuss claiming tactics to block will-fitters and offer guidance on detecting and stopping will-fitters once a portfolio is in place.</p> <p>CLE credit will be available for multiple states. For more information and to register, please visit the Strafford <a href="">website</a>.</p>Professional Activities24 Jan 2023 00:00:00 -0800 Even Attorneys Named to Illinois Super Lawyers and Illinois Rising Stars Lists for 2023<p>Eight Fitch Even partners have been selected for inclusion in the 2023 list of Illinois Super Lawyers and two associates have been selected for inclusion in the 2023 list of Illinois Rising Stars.</p> <p><a href=";A=2581&amp;format=xml&amp;p=5482">Karl R. Fink</a>, <a href=";A=2598&amp;format=xml&amp;p=5482">Nikki Little</a>, <a href=";A=2601&amp;format=xml&amp;p=5482">Timothy P. Maloney</a>, and <a href=";A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a> were once again recognized as top attorneys in Intellectual Property Litigation in Illinois. In addition, <a href=";A=2580&amp;format=xml&amp;p=5482">Stephen S. Favakeh</a>, <a href=";A=2588&amp;format=xml&amp;p=5482">Mark W. Hetzler</a>, <a href=";A=2589&amp;format=xml&amp;p=5482">Allen E. Hoover</a>, and <a href=";A=2609&amp;format=xml&amp;p=5482">Joseph T. Nabor</a> were once again recognized as top attorneys in Intellectual Property Law in Illinois. No more than 5 percent of all lawyers in the state are selected by the research team at Super Lawyers to receive this honor each year.</p> <p><a href=";A=28222&amp;format=xml&amp;p=5482">Mary F. Fetsco</a> was named to this year&rsquo;s Illinois Rising Stars list as a top-rated attorney in Intellectual Property Litigation. <a href=";A=16851&amp;format=xml&amp;p=5482">Kerianne A. Strachan</a> was named to this year&rsquo;s Illinois Rising Stars list as a top-rated attorney in Intellectual Property Law. They were included among the top up-and-coming attorneys in the state who are 40 years old or younger or who have been practicing for 10 years or less. No more than 2.5 percent of Illinois lawyers receive this honor each year.</p> <p>Super Lawyers<sup>&reg;</sup>, a Thomson Reuters business, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. Attorneys are selected using a multiphase process that includes independent research, peer nominations, and peer evaluations. For more information, please visit <a href=""></a>.</p>Firm News24 Jan 2023 00:00:00 -0800 Alert: Federal Circuit Finds RFID Tagging Claims Patentable Under 35 U.S.C § 101<p>On December 16, in <i><a href="">Adasa Inc. v. Avery Dennison Corporation</a></i>, the Federal Circuit upheld patentability of claims reciting an RFID transponder with storage for a particular type of serial number&mdash;affirming the district court&rsquo;s summary judgment that claim 1 of U.S. Patent No. 9,798,967 satisfies 35 U.S.C &sect; 101. The decision is among a handful of cases where the court has found improvements in data indexing and data structures to be patent-eligible subject matter and not unpatentable abstract ideas.</p> <p>Adasa&rsquo;s &rsquo;967 patent relates to methods and systems for commissioning radio-frequency identification transponders (RFID tags). Commissioning refers to the process of encoding RFID tags with unique object-associated information, similar to barcodes, that facilitates the object&rsquo;s identification and tracking in commerce. To ensure each RFID tag is commissioned to a unique code, the RFID industry assigns each tag a serialized object number (Electronic Product Code or EPC) in accordance with global formatting standards. Each EPC comprises object class information and a serial number. To ensure serial number uniqueness, a central authority issues EPC numbers from a central database for manufacturers, products, and items based on a strategic serialization that avoids duplication.</p> <p>One of the drawbacks with commissioning RFID tags from a central database is that it requires encoders to maintain a continuous network connection with the central database. The &rsquo;967 patent overcomes this connectivity limitation through a system and method that commissions RFID tags without requiring external authorization from the central authority on a transponder-by-transponder basis. The &rsquo;967 patent teaches subdividing serial number ranges into blocks that are defined by a fixed number of &ldquo;Most Significant Bits&rdquo; (MSBs). This subdivision of serial numbers into blocks based on MSBs allows individual encoders to commission unique serial numbers within their respectively assigned blocks without the need to reconnect to a central database, or at least until all numbers in the assigned block have been exhausted.</p> <p>At issue on appeal was whether the claim was directed to the abstract idea of mentally assigning meaning to a sub-section of a data field, as argued by Avery Dennison, or to &ldquo;an encoded RFID transponder implemented with a memory structure accommodating a specific hardware-based number scheme,&rdquo; as held by the district court. The Federal Circuit reviewed the decision <i>de novo</i> and applied the two-step <i>Alice</i> framework. Under <i>Alice</i>, courts apply a first step that determines whether a claim is directed to a &ldquo;patent-ineligible concept,&rdquo; such as an abstract idea. If it is not, the inquiry stops, and the subject matter is deemed eligible. If the claim is directed to a patent-ineligible concept, the court then moves to a second step and considers the claim elements, individually and as an ordered combination, to determine whether the additional elements transform the nature of the claim into a patent-eligible subject matter.</p> <p>Applying the first step of the <i>Alice</i> framework, the court determined that claim 1 was directed to patent-eligible subject matter. In reaching this determination, the court considered how the claim focused on the hardware-based data structure of the serial number space and required the space to include a serial number selected from an allocated block. The court also considered how the serial number necessarily comprised (1) a limited, predefined sequence of higher order bits at the leading end of the serial number (the MSB block) and (2) the remaining bits of lesser significance. The court noted how the claimed MSBs functioned as an additional data field that uniquely identified the allocated block from which it came and emphasized how the resulting improvements came from the unique correspondence between the physically encoded data on the claimed RFID tags and the pre-authorized blocks of serial numbers, which were hardware-based data structure improvements to the technological process and not mere mental processes.</p> <p>In support of its decision, the court cited two earlier decisions, <a href=""><i>Enfish</i> <i>v. Microsoft</i></a> and <a href=""><i>Uniloc v. LG</i></a><i>,</i>where it likewise held that claims directed at data structures were not abstract ideas despite also having a mental processing component. In <i>Enfish</i>, the court highlighted improvements in a computer&rsquo;s ability to process data in holding that claims reciting the storing and retrieving of data using a self-referential database were eligible subject matter. In <i>Uniloc</i>, the court focused on improvements in latency reduction in computers and held that claims reciting the appending of an additional data field to a prior art data structure used for polling stations in a communication system were eligible subject matter.</p> <p>This decision represents further development in the post-<i>Alice</i> analysis of claims under &sect;&nbsp;101, and in particular with respect to claims directed to improvements in computer-related technologies. In evaluating the eligibility of patent claims under &sect;&nbsp;101, the Federal Circuit has compared claims to analogous claims it evaluated in earlier cases. This case along with <i>Enfish</i> and <i>Uniloc </i>provides practitioners a useful roadmap for claiming inventions involving data structures in a manner that bolsters their status as patent-eligible subject matter under &sect; 101 and step 1 of the <i>Alice</i> framework.</p> <p>For more information on this holding, please contact Fitch Even partner <a href=";A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a> or associate <a href=";A=29533&amp;format=xml&amp;p=5482">Alvaro Cure Dominguez</a>, authors of this alert.<br /> <b><br /> <br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts24 Jan 2023 00:00:00 -0800 Even Partner Dave Gosse to Copresent Strafford Webinar on Expectation of Success<p>Fitch Even partner <a href=";A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a> will copresent a Strafford Publications&rsquo; CLE webinar &ldquo;<a href="">Patents and the Expectation of Success Doctrine</a>&rdquo; on January 31 from 12 noon to 1:30 p.m. CST.</p> <p>During this webinar, the panelists will provide patent counsel with guidance on the reasonable expectation of success doctrine. In particular, the panel will examine the degree of predictability required, and the tension between expectation of success and enablement. The panel will discuss recent cases and will offer best practices for patent drafting and patent prosecution.</p> <p>CLE credit will be available for multiple states. For more information and to register, please visit the Strafford <a href="">website</a>.</p>Professional Activities23 Jan 2023 00:00:00 -0800 Alert: Federal Circuit Shrinks Venue Loophole for Foreign Defendants<p>On January 9, in <a href=""><i>In re: Stingray IP Solutions, LLC</i></a>, the Federal Circuit vacated a transfer order issued by the Eastern District of Texas, thereby limiting a foreign defendant&rsquo;s ability to negate venue in one court simply by unilaterally consenting, post-suit, to personal jurisdiction in a different, preferred court.</p> <p>Patent owner Stingray filed two patent infringement lawsuits against TP-Link Technologies Co., Ltd. (organized and headquartered in China) and TP-Link Corporation Limited (organized and headquartered in Hong Kong) (collectively &ldquo;TP-Link&rdquo;) in the Eastern District of Texas. TP-Link asserted personal jurisdiction in the Eastern District of Texas was improper, and moved to transfer the case to the Central District of California, arguing they would be amenable to suit in that court. The Eastern District of Texas agreed, citing Federal Rule of Civil Procedure 4(k)(2), and ordered the case transferred to the Central District of California. Stingray sought a writ of mandamus from the Federal Circuit seeking to undo the Eastern District of Texas&rsquo; order.</p> <p>Rule 4(k)(2) was introduced in 1993 to <i>close</i> a gap in personal jurisdiction whereby a non-resident defendant who did not have minimum contacts with any individual state (but did have sufficient contacts with the U.S. as a whole) could escape jurisdiction in all fifty states. Specifically, Rule 4(k)(2) allows any district court to exercise personal jurisdiction over that same non-resident defendant if the plaintiff&rsquo;s claim arises under federal law, and: (A) the defendant is not subject to personal jurisdiction in any specific state, and (B) the exercise of jurisdiction satisfies due process requirements.&nbsp;</p> <p>However, since its introduction, Rule 4(k)(2)(A), the so-called &ldquo;negation requirement,&rdquo; has also <i>opened</i> a loophole for foreign defendants: what if the foreign defendant <b>consents, post-suit,</b> to personal jurisdiction in a specific jurisdiction? Is Rule 4(k)(2) defeated&mdash;forcing plaintiffs to litigate in a forum of the defendant&rsquo;s choosing? As the Federal Circuit notes in this case, the answer to that question has left both district and circuit courts deeply divided.</p> <p>In an effort to resolve the disagreement between district courts, the Federal Circuit confirmed that to achieve transfer into a forum it considers more convenient, a defendant must identify a forum where jurisdiction would have been proper <i>at the time of filing</i>, regardless of consent. The Court, relying and expanding upon its 2012 decision in <i>Merial Ltd. v. Cipla Ltd.</i>, emphasized that a defendant cannot simply rely on its own statement of consent to defeat application of Rule 4(k)(2) and transfer the case into a forum it considers more convenient.</p> <p>The Federal Circuit&rsquo;s decision could potentially eliminate the loophole that some courts have allowed to remain open. As noted above, district and circuit courts remain split as to whether a defendant can simply negate Rule 4(k)(2)(A) by conceding to jurisdiction in a state forum. But, while district courts remain split, this decision affirms the Federal Circuit&rsquo;s prior holdings and appears to also follow recent trends in other federal appellate courts.&nbsp;</p> <p>For more information on this decision, please contact Fitch Even attorney <a href=";A=28222&amp;format=xml&amp;p=5482">Mary F. Fetsco</a>, author of this alert.<br /> <b><br /> <br /> Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts17 Jan 2023 00:00:00 -0800 Disclosure About Non-Disclosure Agreements<p>Please join Fitch Even for a free webinar, &ldquo;<a href="" target="_blank">Full Disclosure About Non-Disclosure Agreements</a>,&rdquo; on January 31, 2023 at 9:00 a.m. PST / 10:00 a.m. MST / 11:00 a.m. CST / 12 noon EST.&nbsp;&nbsp;</p> <p>Non-disclosure agreements (NDA) are often perceived as the simplest and easiest of agreements. Many practitioners have their one favorite form and observe a &ldquo;one size fits all&rdquo; approach to its use. NDA&rsquo;s, however, serve to protect secrets, and the great variability of characterizing facts in a given application setting can greatly impact how well, or how poorly, a given NDA performs that seemingly simple purpose.&nbsp;&nbsp;&nbsp;</p> <p>During this webinar, our presenters will address these topics and more:&nbsp;</p> <ul> <li>Building the best NDA for a given situation&nbsp;</li> <li>The reason for an NDA (this may be more complicated than you think)</li> <li>How information can be disclosed&nbsp;</li> <li>Why is the information being disclosed&nbsp;</li> <li>Practice tips&nbsp;&nbsp;</li> </ul> <p>Our presenters will be Fitch Even attorneys <a href=";A=2610&amp;format=xml&amp;p=5482" target="_blank">Steven G. Parmelee</a> and <a href=";A=28223&amp;format=xml&amp;p=5482" target="_blank">Michael R. Anderson</a>.&nbsp;</p> <p>Steve has extensive experience in complex patent preparation and prosecution in the U.S. and abroad. He has assisted clients with patent portfolio management, freedom-to-operate issues, and transactions for over 45 years.&nbsp;</p> <p>Michael has experience assisting clients with patent preparation and prosecution, opinions on invalidity, and non-infringement issues relating to patent clearance and diligence matters.&nbsp;</p> <p>CLE credit has been approved for California, Illinois, and Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but please note registration is required.&nbsp;&nbsp;</p> <p>To reserve your place, please <a href="" target="_blank">REGISTER HERE</a>.&nbsp;</p>Upcoming Webinars11 Jan 2023 00:00:00 -0800 Alert: Federal Circuit Looks to Expert Testimony to Construe Patent with Ambiguous Intrinsic Record<p>On December 15, in <i><a href="">Uniloc 2017 LLC v. Netflix, Inc</a>.</i> (nonprecedential), the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) determination that a claim of Uniloc&rsquo;s U.S. 6,584,229 patent was unpatentable as obvious. In the appeal, Uniloc contended that the PTAB erred by relying on the testimony of Netflix&rsquo;s technical expert leading to an incorrect claim construction. The Federal Circuit disagreed with Uniloc and upheld the PTAB&rsquo;s claim construction. The Federal Circuit found that the PTAB&rsquo;s reliance on the testimony of Netflix&rsquo;s technical expert, albeit extrinsic evidence, was proper because the patent itself was ambiguous. The decision is notable because it is an example where the court found it proper to look beyond the intrinsic record (i.e. beyond the patent&rsquo;s claims, specification, and prosecution history) to consider extrinsic evidence, such as expert testimony, to guide claim construction.</p> <p>The &rsquo;229 patent is directed to a method for encoding videos, which are a sequence of moving frames. According to the &rsquo;229 patent, frames can be divided into macroblocks, each of which is made up of hundreds of pixels. To digitally store or transmit videos, the frame data is encoded and compressed. The &rsquo;229 patent claims a coding method that improved coding efficiency by encoding at the macroblock-level rather than the individual pixel-level. The &rsquo;229 patent teaches dividing frames into two macroblock-based regions. One region is a stationary background region containing a portion of the frame that remains unchanged in a video sequence. The other region is a moving object region that contains the changing portion of the frame. The &rsquo;229 patent teaches using pixel-level coding only on the moving object region and macroblock-level coding on the background region, thus achieving more efficient coding.</p> <p>In relevant part, the &rsquo;229 patent recites:</p> <blockquote> <p>1. A method, for use in an macroblock-based object oriented coding of a image signal, wherein the image signal has a stationary background region and an object region and contains a current frame and a previous frame, each frame including a plurality of macroblocks, comprising the steps of:</p> <p>a) dividing the stationary background region and the object region from an inputted video in a macroblock-by-macroblock basis by using a difference between the previous frame and the current frame;</p> </blockquote> <p>Uniloc argued that &ldquo;dividing on a macroblock-by-macroblock basis&rdquo; requires the dividing to be performed macroblock-by-macroblock (i.e., comparing the difference between the previous and current frame one macroblock at a time). Netflix argued that the claim requires only that the dividing result in separate macroblock-based regions, regardless of whether the difference between the previous and current frame is determined on a macroblock-by-macroblock basis.</p> <p>Looking first at the patent claim, the court found the disputed claim language was ambiguous because it could be read to support either construction equally. In reaching this conclusion, the court rejected Uniloc&rsquo;s argument that the preamble clarified that the dividing was done one macroblock at a time because &ldquo;each frame included[ed] a plurality of macroblocks.&rdquo; The court reasoned that the preamble&rsquo;s reference to a frame including macroblocks did not require the dividing to be done one macroblock at a time.</p> <p>Uniloc also argued that its construction was proper because the specification provided an example in which the dividing was done by macroblocks, not by another criteria. The court disagreed, noting that claim language is not to be limited by preferred embodiments or specific examples in the specification. Instead, the court emphasized that the term &ldquo;macroblock-by-macroblock basis&rdquo; was not used anywhere else in the specification. The court found that other language in the specification describing frames divided into a &ldquo;background region and a foreground object region by unit of macroblock&rdquo; did not clarify the disputed claim language. According to the court, the meaning of &ldquo;macroblock-by-macroblock&rdquo; was not dispositively clarified by the intrinsic evidence, and thus the term remained ambiguous.</p> <p>Given the ambiguity, the Federal Circuit held that the PTAB properly looked beyond the intrinsic record by relying on Netflix&rsquo;s expert witness&rsquo;s testimony. The court noted that where the PTAB looks beyond the intrinsic evidence and consults extrinsic evidence, appellate review of the PTAB&rsquo;s subsidiary factual findings only requires a showing of substantial evidence supporting the PTAB&rsquo;s finding. The substantial evidence standard is satisfied if a reasonable mind might accept the evidence as adequate to support the finding. The court found that Netflix&rsquo;s expert set forth ample evidence that he qualified as a person of ordinary skill in the art and that he reviewed the claim language and specification through that lens. The expert further explained the technology and how a person of ordinary skill in the art would understand the technology in a way that supported Netflix&rsquo;s construction. In contrast, Uniloc did not offer any expert testimony, and the Federal Circuit rejected unsupported technical arguments offered in Uniloc&rsquo;s reply brief on appeal.</p> <p>This decision highlights that where a dispute might turn on claim construction issues, as is often the case, expert testimony may be helpful to support a proposed construction. Expert testimony may be particularly persuasive where there is a risk that intrinsic evidence will be deemed ambiguous with respect to claim construction issues. If so, a party should consider supporting its claim constructions with extrinsic evidence, including testimony from a technical expert.</p> <p>For more information on this holding, please contact Fitch Even partner <a href=";A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a> or associate <a href=";A=29533&amp;format=xml&amp;p=5482">Alvaro Cure Dominguez</a>, authors of this alert.<br /> <b><br /> <br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts27 Dec 2022 00:00:00 -0800 Even Welcomes Partner Danielle Muñoz to Chicago Office<p>Fitch, Even, Tabin &amp; Flannery is pleased to announce that <a href=";A=29546&amp;format=xml&amp;p=5482">Danielle K. Mu&ntilde;oz</a> recently joined the firm&rsquo;s Chicago office as partner. Dani&rsquo;s practice focuses on trademark and copyright clearance and prosecution, brand protection, and general IP counseling.</p> <p>Dani has worked with clients in many different industries, including craft brewing, publishing, insurance, healthcare and pharmacy services and solutions, broadband and Wi-Fi services and software, medical devices, and consumer goods. She has commercial and trademark litigation experience in federal court and the Trademark Trial and Appeal Board (TTAB), and regularly handles cease-and-desist letters and settlement negotiations.</p> <p>Prior to her years in private practice, Dani was a Trademark Examining Attorney at the USPTO, where she gained experience that now helps her provide a unique perspective and efficient approach to counseling clients on prosecution strategy and trademark clearance, resulting in a strong track record of successful brand protection.</p> <p>She graduated from Hope College, <i>summa cum laude</i>, and pursued a Fulbright Scholarship before attending Indiana University Maurer School of Law, where she served as an Editor on the Indiana Law Journal.</p> <p>Dani is committed to providing pro bono legal services and advancing diversity, equity, and inclusion in the legal profession.</p> <p>We are happy to welcome Dani to Fitch Even!</p>Firm News21 Dec 2022 00:00:00 -0800 Even Participates in Back 2 School America Program<p>On December 13, at our Chicago office, a number of Fitch Even attorneys and staff took part in the Back 2 School America &quot;Build-a-Kit&quot; initiative for the fifth year, assembling 100 kits containing school supplies to be distributed to grade-school students from low-income families.</p> <p><a href="">Back 2 School America</a> is a 501(c)(3) nonprofit whose mission is to create and support educational opportunities that enrich the lives of children across the USA. They partner with 49 <a href="">community organizations and governmental agencies</a> to ensure school supplies are effectively distributed to children in need.</p> <p>Fitch Even is proud to support Back 2 School America in their efforts.&nbsp;</p>Professional Activities19 Dec 2022 00:00:00 -0800