Fitch Even News Feedhttps://www.fitcheven.com/?t=39&format=xml&stylesheet=rss&directive=0&records=20en-us25 Oct 2021 00:00:00 -0800firmwisehttp://blogs.law.harvard.edu/tech/rssLeveraging Separate IPR Counsel to Maximize Litigation Successhttps://www.fitcheven.com/https://attendee.gotowebinar.com/register/9076644827648317454&format=xml<p>Please join Fitch Even for a free webinar, &ldquo;<a href="https://attendee.gotowebinar.com/register/9076644827648317454">Leveraging Separate IPR Counsel to Maximize Litigation Success,</a>&rdquo; on November 18 at 9 a.m. PST / 10 a.m. MST / 11 a.m. CST / 12 noon EST.</p> <p>Most patents challenged in <i>inter partes</i> review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) are involved in co-pending litigation. A threshold question is whether litigation counsel will also handle the IPR proceedings. When engaging separate counsel for the IPR proceedings, cooperation between litigation and IPR counsel is paramount to a successful outcome both at the PTAB and in the district court. Numerous issues that require close coordination must be addressed, including whether to engage separate expert witnesses, claim construction, discretionary denial, validity (or invalidity) arguments, stays, discovery, objective evidence of nonobviousness, motions to amend, and estoppel.</p> <p>During this webinar, we will cover these topics and more:</p> <ul> <li>Pros and cons of engaging litigation counsel or separate counsel for IPR proceedings &nbsp;</li> <li>Critical issues common to both litigation and IPR proceedings that require close coordination</li> <li>Practical guidance when working with separate litigation or IPR counsel</li> <li>Strategies for improving cooperation between litigation and IPR counsel</li> </ul> <p>Our speakers will be Fitch Even partners <a href="https://www.fitcheven.com/?t=3&amp;A=2601&amp;format=xml&amp;p=5482">Timothy P. Maloney</a> and <a href="https://www.fitcheven.com/?t=3&amp;A=2587&amp;format=xml&amp;p=5482">Paul B. Henkelmann</a>.</p> <p>Tim has had a primary role in over 100 PTAB trial proceedings emanating from high-stakes patent litigations, developing a notably strong track record. Tim was recognized in an independent study as the #3 best performing attorney nationwide representing patent owners in IPR proceedings in 2017, consistently achieving favorable outcomes.</p> <p>Paul focuses his practice on PTAB trial proceedings, patent procurement, patent litigation, and IP portfolio management. Nationally recognized for his active practice before the PTAB, he has represented clients in over 60 IPR proceedings.</p> <p>CLE credit has been approved&nbsp;for&nbsp;California, Illinois, and Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but registration is required.</p> <p>To reserve your place, please <a href="https://attendee.gotowebinar.com/register/9076644827648317454">REGISTER HERE</a>.</p>Upcoming Webinars22 Oct 2021 00:00:00 -0800https://www.fitcheven.com/https://attendee.gotowebinar.com/register/9076644827648317454&format=xmlIP Alert: USPTO Abused Discretion by Allowing Further Abuse by <i>Ex Parte</i> Reexaminationhttps://www.fitcheven.com/?t=40&an=119275&format=xml<p>On September 29, in <a href="https://cafc.uscourts.gov/opinions-orders/20-1992.OPINION.9-29-2021_1841724.pdf"><i>In re Vivint, Inc.</i></a>, the Federal Circuit clarified the interplay between petitions for <i>inter partes</i> review (IPR) and a subsequent request for <i>ex parte </i>reexamination. The court held that the USPTO abused its discretion and acted arbitrarily and capriciously by ordering, and subsequently refusing to terminate, reexamination based on nearly identical arguments previously presented by the same party in a petition for IPR, which was denied under 35 USC &sect; 325(d) as abusive by the Patent Trial and Appeal Board (PTAB). The court held this was an abuse of discretion despite agreeing that the USPTO correctly determined that the arguments presented substantial new questions of patentability (SNQs).</p> <p>Vivint Inc. (&ldquo;Vivint&rdquo;) sued Alarm.com for infringement of four patents. While defending itself in district court, Alarm.com filed fourteen IPR petitions, including three successive petitions that challenged the validity of one asserted patent, the &rsquo;513 patent.</p> <p>The PTAB declined to institute trial on the first two petitions on the merits, but denied the third petition under &sect;&nbsp;325(d) because it was found to be an abusive, incremental challenge that used the PTAB&rsquo;s prior two denials as a roadmap to correct deficiencies. More than a year after the third denial, Alarm.com filed a request for reexamination of the &rsquo;513 patent, largely based on the same art and arguments raised in the third IPR petition. The USPTO found SNQs and ordered reexamination.</p> <p>Vivint petitioned the USPTO, arguing that the USPTO should have denied reexamination as abusive under &sect;325(d). The USPTO denied the petition, arguing they could not consider petitions filed after reexamination was ordered. Vivint filed a second petition seeking reconsideration, which was also denied. An examiner issued a final rejection of all claims in the &rsquo;513 patent, and the PTAB affirmed. Vivint appealed.</p> <p>On appeal, Vivint first argued that because the patentability questions presented in the request for reexamination had already been presented to the Patent Office in the third IPR petition, there could be no SNQ. The Federal Circuit disagreed, finding that two of the patentability questions with respect to a single claim were new. Two recycled IPR positions, while presented, were never considered and decided on the merits, as the third IPR petition was denied under &sect;325(d). Accordingly, the court agreed that the reexamination request raised four SNQs.</p> <p>Vivint next contended that the USPTO abused its discretion by ordering reexamination based primarily on the same arguments found to be abusive in the third IPR petition and subsequently refusing to terminate the proceeding under &sect;325(d). The Federal Circuit agreed, holding that the USPTO cannot deny an IPR petition for abusive filing practices then grant an almost identical reexamination request. Accordingly, the Federal Circuit vacated the PTAB&rsquo;s decision and remanded with instructions to dismiss the <i>ex parte</i> reexamination.</p> <p>This decision provides guidance to both petitioners filing, and patent owners facing, multiple post-issuance proceedings. Petitioners should be wary of filing a reexamination request based on arguments previously presented in an IPR petition and should address a potential &sect;325(d) challenge in their request. To improve the likelihood of success, a reexamination request should be filed prior to a decision on a similar IPR petition. Patent owners should be aware that they may contest a reexamination request based on the same or similar art or arguments previously presented to the USPTO under &sect;325(d).</p> <p>For more information on this topic, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2587&amp;format=xml&amp;p=5482">Paul B. Henkelmann</a>.</p> <p><i>Fitch Even law clerk Prestin Van Mieghem contributed to this alert</i>.</p> <p><b><br /> Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts22 Oct 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=119275&format=xmlFitch Even Partner Nikki Little to Participate in Roundtable on Workplace Culturehttps://www.fitcheven.com/?t=40&an=119238&format=xml<p>Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2598&amp;format=xml&amp;p=5482">Nikki Little</a> will participate in a virtual roundtable, &ldquo;<a href="https://fantasticworkplacepanel.rsvpify.com/">Creating a Fantastic Workplace Culture</a>&rdquo; on November 4 at 1:00 p.m. CDT. Fitch Even, ranked at #3 on Vault&rsquo;s 2022 list of &ldquo;<a href="https://firsthand.co/blogs/vaults-law-blog-legal-careers-and-industry-news/introducing-vault-laws-2022-best-midsize-law-firms-to-work-for">Best Midsize Law Firms to Work For</a>,&rdquo; is pleased to join leaders from three of the other top ten firms on the list.</p> <p>Nikki will join fellow panelists Brian Donnelly of Farella Braun + Martel, Kirsten Johnson of Bookoff McAndrews, and Ben Klubes of Buckley LLP to share insights into what values their firms promote, what efforts they&rsquo;ve embraced, and how they are able to achieve such great success with their initiatives.</p> <p>The panel will be moderated by Ankit Aggarwal of Bookoff McAndrews.</p> <p>To register, please click <a href="https://fantasticworkplacepanel.rsvpify.com/">here</a>.<br /> &nbsp;</p>Professional Activities20 Oct 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=119238&format=xmlIP Alert: "Words Matter" Trend Continues, Applying to Design Patent's Prosecution Prior Arthttps://www.fitcheven.com/?t=40&an=119221&format=xml<p>On October 4, in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1940.OPINION.10-4-2021_1843781.pdf"><i>In re: SurgiSil</i></a>, the Federal Circuit continued its trend of using the language of a design patent to limit the design. Unlike past cases, however, language in <i>SurgiSil</i> was used to limit the effectiveness of a reference cited against the design application. Further, the Federal Circuit considered both the language used in the cited reference and in the design application itself.&nbsp;</p> <p>In<i> SurgiSil</i>, the Federal Circuit tackled the issue of whether a design patent related to the configuration or shape of an article should be permitted to cover a design <i>per se</i>, or whether the scope of a design patent should be limited to the identified article of manufacture. The Federal Circuit chose the latter: i.e., designs do not cover designs <i>per se</i>, but rather are limited to specific articles of manufacture.</p> <p>The design application at issue covered a medical-grade lip implant (first image below) and was rejected based on allegedly anticipating art tool used for shading pastels and charcoal called the Gray Paper Stump as illustrated in a catalog called &ldquo;Dick Blick Art Materials&rdquo; (second image below).&nbsp;</p> <br /> <div style="text-align: center;"><img src="https://www.fitcheven.com/2E8FB4/assets/images/SurgiSil Pic1.png.jpg" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="208" height="128" /><br /> Design App. No. 29/491,550<br /> <br /> <br /> <img src="https://www.fitcheven.com/2E8FB4/assets/images/SurgiSil Pic2.png.jpg" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="215" height="129" /><br /> Gray Paper Stumps<br /> Dick Blick Art Materials catalog</div> <p><br /> In the initial appeal, the Patent Trial and Appeal Board (PTAB) affirmed the examiner&rsquo;s rejection of the design application, noting that whether a reference is analogous art is irrelevant to whether that reference anticipates. The issue before the Federal Circuit was whether the PTAB&rsquo;s reliance on such a wholly unrelated reference (i.e., an art tool) was proper in the anticipation context for a design patent covering a lip implant. The Federal Circuit reversed the PTAB and, in doing so, noted that a design claim is limited to the article of manufacture identified in the claim and does not broadly cover the design in the abstract.</p> <p>This case tracks the trend the Federal Circuit started in the 2019 <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-2214.Opinion.9-12-2019.pdf"><i>Home Expressions</i></a> case, in which the Federal Circuit held that claim language specifying a particular article of manufacture limited the scope of the design patent. In that case, the Federal Circuit noted that the asserted design was for a &ldquo;Pattern for a Chair&rdquo; (first image below) and did not cover a similar Y-pattern design used in a basket (second image below).</p> <p style="text-align: center;"><img src="https://www.fitcheven.com/2E8FB4/assets/images/SurgiSil Pic3.png.jpg" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="150" height="117" /><br /> US Design Pat. No. D677946<br /> <br /> <img src="https://www.fitcheven.com/2E8FB4/assets/images/SurgiSil Pic4.png.jpg" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="150" height="153" /><br /> Accused Infringing Basket</p> <p>The moral of these stories remains: be careful what you state in your patent applications. Design patent applicants will want to make sure to use broad enough language for enforcement but must understand that too much breadth opens the door to more prior art being used against their application during examination.</p> <p>For more information on this topic, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2578&amp;format=xml&amp;p=5482">Edward E. Clair</a>, author of this alert.<br /> <b><br /> Fitch Even IP Alert</b><b><sup>&reg;</sup></b></p>IP Alerts19 Oct 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=119221&format=xmlFitch Even Partners Joe Nabor and Alisa Simmons Appointed to INTA Committeeshttps://www.fitcheven.com/?t=40&an=119026&format=xml<p>Fitch Even partners <a href="https://www.fitcheven.com/?t=3&amp;A=2609&amp;format=xml&amp;p=5482">Joseph T. Nabor</a> and <a href="https://www.fitcheven.com/?t=3&amp;A=2617&amp;format=xml&amp;p=5482">Alisa C. Simmons</a> were recently appointed to <a href="https://www.inta.org/">International Trademark Association</a> (INTA) committees for the 2022&ndash;2023 term.</p> <p>Joe was appointed to INTA&rsquo;s <a href="https://www.inta.org/committees/brands-for-a-better-society-committee/">Brands for a Better Society Committee</a>, which researches and analyzes brand involvement in advancing corporate social responsibility principles in business and brand development and protection. Joe also continues to serve on the Saul Lefkowitz Moot Court Competition Project Team.</p> <p>Alisa was appointed to INTA&rsquo;s <a href="https://www.inta.org/committees/building-bridges-committee/">Building Bridges Committee</a>, which focuses on fostering strategic partnerships with non-intellectual property and non-legal organizations, including advertising and marketing associations; associations that develop and promote sustainability and ethical standards; associations that support the development of small- to medium-sized enterprises; consumer associations; financial and standard-setting associations; licensing associations; and retail and manufacturing associations. Alisa also continues to serve on the Saul Lefkowitz Moot Court Competition Project Team.</p> <p>Founded in 1878 and now serving professionals from 185 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.</p>Professional Activities04 Oct 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=119026&format=xmlFitch Even Again Ranked Among Top Firms in IPR Practicehttps://www.fitcheven.com/?t=40&an=118924&format=xml<p>Fitch Even was recently recognized as being among the top 100 best-performing law firms nationwide in <i>inter partes</i> review (IPR) proceedings in Patexia&rsquo;s 2021 IPR Intelligence Report. Fitch Even was also ranked among the top 50 most-active law firms representing patent owners. In addition, Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2611&amp;format=xml&amp;p=5482">Nicholas T. Peters</a> was ranked among the top 50 most-active attorneys representing patent owners in IPR proceedings, and partners <a href="https://www.fitcheven.com/?t=3&amp;A=2601&amp;format=xml&amp;p=5482">Timothy P. Maloney</a> and <a href="https://www.fitcheven.com/?t=3&amp;A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a> were ranked among the top 100 most-active attorneys representing patent owners.</p> <p>Using data from over 7,500 IPR challenges filed from July 2016 through June 2021, Patexia evaluated the performance of more than 900 law firms and over 5,000 attorneys. More information about this annual report and its methodology can be found <a href="https://www.patexia.com/pressrelease/view/id/42">here</a>.</p> <p>Fitch Even has represented both patent owners and petitioners in a wide variety of industries in over 130 IPR proceedings to date. The continuing recognition of our extensive experience and strong track record on behalf of our clients reflects the contributions of the firm&rsquo;s entire PTAB Trial practice group and validates our approach of leveraging the skills of both patent litigators and patent prosecution attorneys.<br /> &nbsp;</p>Firm News23 Sep 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=118924&format=xmlIP Alert: Federal Circuit Affirms Inequitable Conduct Without Direct Evidence of Deceptive Intenthttps://www.fitcheven.com/?t=40&an=118788&format=xml<p>On September 1, in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1799.OPINION.9-1-2021_1828017.pdf"><i>Belcher Pharmaceuticals, LLC v. Hospira, Inc.</i></a>, the Federal Circuit affirmed the unenforceability of a patent on grounds the patentee engaged in inequitable conduct during prosecution before the USPTO, based on circumstantial evidence showing intent to deceive the USPTO. This case represents the latest guidance from the Federal Circuit on the standard for inequitable conduct set forth in&nbsp;<i>Therasense, Inc. v. Becton, Dickinson &amp; Co</i>., previously reported <a href="https://www.fitcheven.com/?t=40&amp;an=7992&amp;format=xml&amp;p=3134">here</a>.</p> <p>The claims at issue in <i>Belcher</i> cover adrenaline formulations having a pH between 2.8 and 3.3. Prior to filing the application for the patent-in-suit, Belcher submitted a New Drug Application to the U.S. Food and Drug Administration (FDA). In communications with the FDA, Belcher represented that a 2.8 to 3.3 pH range for an adrenaline formulation was an &ldquo;old&rdquo; range.</p> <p>Belcher&rsquo;s Chief Science Officer participated in drafting Belcher&rsquo;s NDA and, though not a patent attorney or patent agent, was also involved in the drafting and prosecution of the application for the patent-in-suit. During prosecution, this Belcher employee asserted to the USPTO that the 2.8 to 3.3 pH range was a &ldquo;critical&rdquo; innovation that yielded &ldquo;unexpected results.&rdquo; At the time, the employee was in possession of prior art that disclosed the claimed pH range, but did not submit the prior art to the USPTO.</p> <p>The district court held that the Belcher employee engaged in inequitable conduct by withholding prior art from the USPTO, and Belcher appealed to the Federal Circuit. Inequitable conduct is a defense to patent infringement that, if proven, renders the asserted patent unenforceable. In <i>Therasense</i>, the Federal Circuit held that for a defendant to prevail on an inequitable conduct defense, the defendant must establish both 1) the materiality of a withheld reference, and 2) the applicant&rsquo;s intent to deceive the USPTO. Prior to <i>Therasense</i>, the Federal Circuit had endorsed a sliding scale analysis, in which highly material prior art could minimize the need to prove intent.</p> <p>Regarding materiality, the district court had found the asserted claims to be invalid as obvious based on the withheld prior art&mdash;a finding Belcher did not challenge. On appeal, the Federal Circuit held the lower court&rsquo;s determination of invalidity established the withheld prior art as &ldquo;necessarily material&rdquo; to patentability.</p> <p>Turning to the intent prong of the inequitable conduct analysis, the court referenced the Belcher employee&rsquo;s repeated discussion of the prior art with the FDA, and described his characterization of the claimed pH range to the USPTO as an &ldquo;about-face.&rdquo; Therefore, despite no direct evidence of deceptive intent, the court held that the &ldquo;single most reasonable inference&rdquo; is that Belcher&rsquo;s employee possessed the specific intent to deceive the USPTO when withholding the prior art.</p> <p>Having found both materiality of the withheld prior art and that the Belcher employee intended to deceive the USPTO, the court ruled the patent-in-suit unenforceable for inequitable conduct.</p> <p>The <i>Belcher</i> decision is another reminder that patent applicants&mdash; including their non-attorney employees&mdash;are bound by a duty of candor and good faith in dealing with the USPTO. The decision also suggests that the intent prong of the inequitable conduct analysis may remain flexible even after <i>Therasense</i>.</p> <p>For more information on this topic, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2618&amp;format=xml&amp;p=5482">Brett J. Smith</a>, author of this alert.<br /> <br /> <b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts13 Sep 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=118788&format=xmlIP Alert: Federal Circuit Affirms Exclusion of Expert Opinion on Reasonable Royalty Ratehttps://www.fitcheven.com/?t=40&an=118792&format=xml<p>On August 26, in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1413.OPINION.8-26-2021_1825247.pdf"><i>MCL Intellectual Property, LLC</i><i> v. Micron Technology, Inc.</i></a>, the Federal Circuit affirmed exclusion of an expert opinion regarding a reasonable royalty, holding that the district court did not abuse its discretion by excluding the expert&rsquo;s unfounded opinions and late-disclosed damages theories.</p> <p>MLC Intellectual Property, LLC (&ldquo;MLC&rdquo;) had brought the action in district court against Micron Technology, Inc. (&ldquo;Micron&rdquo;) for infringement of a patent covering an apparatus for programming an electrically alterable non-volatile semiconductor memory cell having more than two predetermined memory states. The district court granted a <i>Daubert </i>motion excluding the opinion of MCL&rsquo;s damages expert regarding a reasonable royalty rate on three grounds: 1) the expert&rsquo;s characterization of prior licenses as reflecting a 0.25% royalty rate as factually unfounded, 2) MLC did not adequately disclose its reasonable royalty contentions including the 0.25% royalty rate in fact discovery (prior to expert discovery), and 3) MLC&rsquo;s damages expert did not adequately address apportionment of the patented technology in the accused product. After granting a petition for interlocutory appeal of the <i>Daubert </i>ruling, the Federal Circuit affirmed the exclusion of the expert&rsquo;s opinion on all three grounds.</p> <p>Regarding the expert&rsquo;s characterization of two prior license agreements as reflecting use of a 0.25% royalty rate, the Federal Circuit noted that the prior license agreements did not disclose a 0.25% royalty rate and the expert did not attempt to derive a rate from the disclosed lump-sum payment amounts and projected sales. The Federal Circuit rejected the expert&rsquo;s opinion that a 0.25% royalty rate in the most favored customer provision in one of the agreements demonstrated that such rate &ldquo;represented&rdquo; the lump sum amounts in the agreements.&nbsp;</p> <p>Next, the Federal Circuit agreed with the district court&rsquo;s ruling that the expert opinion should be excluded because the proposed reasonable royalty rate of 0.25% and factual bases therefor were not previously disclosed in fact discovery and were disclosed for the first time in the expert&rsquo;s report. During fact discovery, Micron served interrogatories requesting MLC&rsquo;s damages contentions and supporting evidence, and MLC responded that the &ldquo;royalty rate will be based on at least the <i>Georgia-Pacific </i>factors, and will include but not [be] limited to consideration of license agreements&rdquo; that were produced in discovery. However, MLC did not disclose the 0.25% royalty rate in its answers to the interrogatories. The Federal Circuit noted that MLC had the agreement and extrinsic evidence &ldquo;in its possession from the outset of the case, largely mitigating any timing and fairness concerns preventing MLC from knowing its contentions about a reasonable royalty until after the close of fact discovery.&rdquo; Thus, the Federal Circuit, citing the Northern District of California, stated that Rule 26(a) disclosures &ldquo;should include a claimed royalty rate .&nbsp;.&nbsp;. &nbsp;&lsquo;even though subsequent discovery may eventually warrant a modification of the calculation.&rsquo;&rdquo; Therefore, the Federal Circuit ruled that since MLC did not disclose the claimed 0.25% royalty during fact discovery, the district court was within its discretion to exclude the royalty rate from the expert&rsquo;s opinions as a sanction for not disclosing the royalty rate during fact discovery.&nbsp;</p> <p>Third, the Federal Circuit agreed with the district court&rsquo;s exclusion of the expert&rsquo;s opinion because the expert did not further apportion the 0.25% royalty rate to account for the relative value of the technology within the accused product. The expert had opined that the prior license agreements were comparable to the hypothetical negotiation of the patent-in-suit wherein apportionment of the technology would already be accounted for in the royalty rate. The expert had opined that comparability is demonstrated because the flash memory market is a commodity market. The court rejected this theory, reasoning that, &ldquo;general characterization of the flash memory market as a whole as a commodity market does not satisfy this requirement of establishing that a license is, in fact, comparable.&rdquo; Further, after noting that of the 41 patents licensed in one of the prior license agreements only one patent was the patent-in-suit, the Federal Circuit stated that the expert &ldquo;conducted no assessment of the licensed technology versus the accused technology to account for any differences.&rdquo; Based on lack of sufficient evidence of comparability, the Federal Circuit held that the expert&rsquo;s &ldquo;comparable license theory does not properly apportion for the value of the patented technology.&rdquo;</p> <p>The Federal Circuit further rejected the argument that the expert need not apportion the value of the technology in the accused product because the royalty base was the smallest single patent practicing unit (&ldquo;SSPPU&rdquo;). The court noted that the claimed technology was &ldquo;not commensurate in scope&rdquo; with the SSPPU which also contained allegedly non-infringing features such as &ldquo;error correction hardware,&rdquo; &ldquo;data clocking hardware,&rdquo; &ldquo;addressing hardware,&rdquo; &ldquo;cache registers,&rdquo; and &ldquo;digital to analog converters,&rdquo; and then affirmed the district court&rsquo;s exclusion order &ldquo;for failure to apportion.&rdquo;</p> <p>This case is one of a series of Federal Circuit cases analyzing reasonable royalty awards and evaluating apportionment in the royalty rate and/or royalty base to account for the use of the patented technology. The case reinforces the critical importance of developing concrete evidence of apportionment of the patented technology in the accused product as a foundation for a reasonable royalty damage claim. Further, the case emphasizes the importance of early disclosure of contentions, including quantification of damage contentions and/or a claimed reasonable royalty rate. Disclosing this information during the fact discovery phase of a lawsuit may be necessary to avoid exclusion of contentions that are first asserted in expert reports.&nbsp;</p> <p>For more information on this ruling, please contact Fitch Even partner&nbsp;<a href="https://www.fitcheven.com/?t=3&amp;A=2581&amp;format=xml&amp;p=5482" target="_blank">Karl R. Fink</a>, author of this alert.&nbsp;<br /> <b><br /> Fitch Even IP Alert</b><b><sup>&reg;</sup></b>&nbsp;</p>IP Alerts13 Sep 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=118792&format=xmlFitch Even Recognized Among Vault's 2022 Top 3 "Best Midsize Law Firms to Work For"https://www.fitcheven.com/?t=40&an=118599&format=xml<p>Fitch Even is pleased to be included on Vault&rsquo;s 2022 list of the <a href="https://www.vault.com/blogs/vaults-law-blog-legal-careers-and-industry-news/introducing-vault-laws-2022-best-midsize-law-firms-to-work-for">25 Best Midsize Law Firms to Work For</a>, ranked at #3, moving up seven spots from last year and the top Chicago-based firm on the list.</p> <p>Rankings are derived from Vault&rsquo;s nationwide Law Firm Associate Survey, in which associates at midsize firms of 150 attorneys or fewer rated and commented on various aspects of their work life. The rankings were calculated using a formula that weighed associate ratings in categories including firm culture, quality of work, associate/partner relations, and others.</p> <p>Fitch Even was also named to Vault&rsquo;s 2022 <a href="https://www.vault.com/top-150-best-law-firms-to-work-for-under-150">Top 150 Under 150 list</a>&mdash;Vault&rsquo;s recognition of the leading small and midsize firms in the U.S. with 150 or fewer attorneys. Vault conducts extensive research and assessment of firms of this size and narrows the results to compile its list of 150 firms &ldquo;known for providing top-notch service and delivering big results.&rdquo;</p> <p style="text-align: center;"><a href="https://www.vault.com/blogs/vaults-law-blog-legal-careers-and-industry-news/introducing-vault-laws-2022-best-midsize-law-firms-to-work-for"><img src="https://www.fitcheven.com/2E8FB4/assets/images//TopRanked_VaultSeal_20221.png" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="150" height="139" /></a><br /> &nbsp;</p>Firm News24 Aug 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=118599&format=xmlFitch Even Attorneys Joe Marinelli and Tom James Published in ABA <i>Business Law Today</i>https://www.fitcheven.com/?t=40&an=118491&format=xml<p>An article written by Fitch Even attorneys <a href="https://www.fitcheven.com/?t=3&amp;A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a> and Thomas A. James is featured in <i>Business Law Today</i>, published by the ABA Business Law Section. In the article, &ldquo;<a href="https://businesslawtoday.org/2021/08/federal-circuit-affirms-invalidation-of-digital-camera-patent-as-ineligible-under-%c2%a7-101/">Federal Circuit Affirms Invalidation of Digital Camera Patent as Ineligible Under &sect; 101</a>,&rdquo; Joe and Tom discuss a case in which the Federal Circuit issued a decision finding that a patent for an improved digital camera was directed to an abstract idea and therefore not patent-eligible under 35 U.S.C. &sect; 101.</p> <p>To access the article and other content, please visit the <a href="https://businesslawtoday.org/2021/08/federal-circuit-affirms-invalidation-of-digital-camera-patent-as-ineligible-under-%c2%a7-101/"><i>Business Law Today</i> website</a>.</p>Professional Activities17 Aug 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=118491&format=xml