Fitch Even News Feed Oct 2020 00:00:00 -0800firmwise Even Launches Back 2 School Illinois Fundraiser<p>Our <a href=""><b>Back 2 School Illinois</b></a> initiative is going virtual this year! Because we aren&rsquo;t able to gather in person to assemble school-supply kits as in past years, we are supporting Back 2 School with a <a href=";aid=HziSSi6EEng">virtual fundraiser</a> running from October 15 to November 19, 2020.</p> <p>In 2019, Back 2 School provided over one million school supplies to nearly 34,000 underprivileged children in Illinois through distribution to government agencies, community organizations, and schools. The COVID pandemic has made the need for school supplies even more urgent, with children attending school remotely and many families struggling with unemployment.</p> <p>Fitch Even is proud to support Back 2 School Illinois in their efforts.We welcome you to join us by accessing Fitch Even&rsquo;s fundraising page <a href=";aid=HziSSi6EEng">here</a><b>. </b></p> <p>We invite you to also consider participating in Back 2 School&rsquo;s <a href=""><b>Notes of Inspiration Program</b></a><b>. </b>This involves writing notes of encouragement that will go into the Back 2 School kits, letting the kids know we are cheering them on! To volunteer, simply go to the program website page <a href=""><b>here</b></a> and follow the instructions.</p> <p><a href="">Back 2 School Illinois</a> is a 501(c)(3) nonprofit whose mission is to create and support educational opportunities that enrich the lives of Illinois children. In addition to its Back 2 School program, the organization offers other programs to fulfill their mission, including a college scholarship program.&nbsp;</p> <p><i>For more information, please view these inspiring videos:</i></p> <ul> <li><a href=""><b>Back 2 School Illinois School Supply Distribution</b></a></li> <li><a href=""><b>Back 2 School Illinois Documentary</b></a></li> </ul> <br type="_moz" />Firm News15 Oct 2020 00:00:00 -0800, Not Afterthought: Patent Strategies for Protecting Aftermarket Parts<p>Please join Fitch Even for a free webinar, &ldquo;<a href="">Aftermarket, Not Afterthought: Patent Strategies for Protecting Aftermarket Parts</a>,&rdquo; on October 29, 2020, at 9 am PDT / 10 am MDT / 11 am CDT / 12 noon EDT.</p> <p>Aftermarket parts for a product such as a vehicle or large machine can provide an important revenue stream for the product manufacturer. Aftermarket parts sales are often highly profitable for the manufacturer, which invites will-fitters to sell their own aftermarket parts. These competing parts may not only negatively impact the manufacturer&rsquo;s sales, but may cause safety and warranty concerns due to potential quality issues.</p> <p>This webinar will provide approaches for cost-effectively protecting aftermarket parts, including these tactics:</p> <ul> <li>Preparing, filing, and prosecuting patent applications to develop a strong portfolio focused on aftermarket parts</li> <li>Integrating business input into the patent life cycle</li> <li>Detecting and stopping will-fitters</li> <li>Creating non-patent challenges for will-fitters</li> </ul> <p>Our presenters will be 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>.</p> <p>Jon focuses his practice on developing and managing patent portfolios in the U.S. and abroad. He works with each client to create a comprehensive patent strategy through skilled patent prosecution, freedom-to-operate opinions, patent design-arounds, competitive technology analysis, and a keen understanding of their business. Jon advises clients in the mining, commercial vehicle, rail, heat transfer, and industrial IoT device fields.</p> <p>Jackie assists clients with patent preparation and prosecution, product clearance and legal opinions, and IP litigation. She leverages her hands-on engineering experience to better serve clients working in the chemical engineering, food science, mechanical engineering, and biomedical engineering industries, among others.</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.</p> <p>To reserve your place, please <a href="">REGISTER HERE</a>.<br /> &nbsp;</p>Upcoming Webinars05 Oct 2020 00:00:00 -0800 Even Partner Catherine Toppin to Speak on NCPP CLE Diversity Panel<p>Fitch Even partner <a href=";A=22010&amp;format=xml&amp;p=5482">Catherine J. Toppin</a> will participate in an online CLE session titled &ldquo;Addressing Diversity Concerns Within the Patent Profession&rdquo; hosted by the National Council on Patent Practicum (NCPP) on October 19 at 10 a.m. CDT.</p> <p>Catherine will join fellow panelists Bill LaFontaine of IBM, Elizabeth Lester of Equifax, Dinesh Melwani of Bookoff McAndrews, and Justin Pierce of Venable to share insights into diversity issues in the patent industry and recommendations for successfully cultivating a diverse, equitable, and inclusive workplace for the long term.</p> <p>The session is part of the NCPP COVID Relief Package CLE Series and is free to attend. For more information on the series and to register, please visit the <a href="">NCPP website.</a></p>Professional Activities05 Oct 2020 00:00:00 -0800 Alert: List of PTAB Sanctions Under 37 CFR ยง 42.12(b) Is Non-Exhaustive<p>On September 25, in <a href=""><i>Apple Inc., v. Inc</i></a>., the Federal Circuit ruled that the Patent Trial and Appeal Board (PTAB) did not commit an Administrative Procedures Act (APA) violation when it issued a sanction not explicitly listed under 37 CFR &sect; 42.12(b).</p> <p>Voip-Pal sued Apple for infringement of two patents in February 2016. Apple initiated two IPR proceedings against Voip-Pal on several claims of the patents in June 2016. During the IPR proceedings, Voip-Pal former Chief Executive Officer Dr. Thomas E. Sawyer sent six letters to various parties that included members of Congress, the president, federal judges, and administrative patent judges at the PTAB. However, Dr. Sawyer did not send copies of these letters to Apple.</p> <p>Apple moved for sanctions against Voip-Pal and argued that the APA and Apple&rsquo;s due process rights were violated by Dr. Sawyer&rsquo;s <i>ex parte</i> communications with the PTAB and the USPTO. Apple requested that PTAB sanction Voip-Pal by entering adverse judgment against Voip-Pal or, alternatively, by vacating the final written decisions and assigning a new panel of judges. The PTAB then entered a final written decision partially in favor of Voip-Pal. Apple then appealed, but the Federal Circuit stayed the appeals and remanded the cases to the PTAB to consider Apple&rsquo;s sanction motions. The PTAB then determined that the <i>ex parte</i> communications of Dr. Sawyer were sanctionable. Instead of granting Apple&rsquo;s request for an adverse judgment, the PTAB &ldquo;fashioned its own sanction.&rdquo; This sanction provided that a new panel of PTAB judges would preside over Apple&rsquo;s petition for rehearing, a sanction that the PTAB stated &ldquo;achieves the most appropriate balance when considering both parties&rsquo; conduct as a whole.&rdquo; After the parties proceeded to panel rehearing briefing, the PTAB denied Apple&rsquo;s petition for rehearing, reasoning that Apple had &ldquo;not met its burden. . . .&rdquo; Apple then moved the Federal Circuit to lift the stay.</p> <p>On appeal, Apple argued that the PTAB&rsquo;s sanctions order and denial of rehearing violated the APA and Apple&rsquo;s due process rights &ldquo;when the [PTAB] imposed non-enumerated sanctions for Voip-Pal&rsquo;s ex parte communications.&rdquo; In particular, Apple argued that PTAB had &ldquo;exceeded its authority under its own sanction regulations&rdquo; under 37 CFR &sect; 42.12(b) by issuing a sanction that is &ldquo;not explicitly provided by Section 42.12(b).&rdquo; The court rejected Apple&rsquo;s argument and reasoned that the use of the term &ldquo;include&rdquo; in Section 42.12(b) &ldquo;signifies a non-exhaustive list of sanctions, . . . [which is] consistent with the context of the [PTAB&rsquo;s] sanctioning regime&rdquo; and further, in the plain reading of Section 42.12(b), &ldquo;allows the [PTAB] to issue sanctions not explicitly provided in the regulation.&rdquo; As such, the court held that PTAB &rdquo;did not commit an APA violation when it issued a sanction not explicitly listed under Section 42.12.&rdquo;</p> <p>Moreover, the Federal Circuit reiterated that a sanction that would terminate a party&rsquo;s patent rights &ldquo;should be used as a weapon of last . . . resort&rdquo; and that &ldquo;[a]s long as the tribunal&rsquo;s choice falls within a reasonable range, it cannot constitute an abuse of discretion.&rdquo;</p> <p>This case is significant to Fitch Even&rsquo;s PTAB clients because it confirms that the PTAB has some discretion to enter sanctions not specifically enumerated in the rules. The case further confirms that case-terminating sanctions should be rarely applied.</p> <p>For more information, please contact Fitch Even attorney <a href=";A=12371&amp;format=xml&amp;p=5482">Jennifer V. Suarez</a>, author of this alert.<br /> <b><br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts01 Oct 2020 00:00:00 -0800 Even Recognized Among Vault's 2021 Top 10 "Best Midsize Law Firms to Work For"<p>Fitch Even is pleased to be included on Vault&rsquo;s 2021 list of the <a href="">25 Best Midsize Law Firms to Work For</a>, ranked at #10 in our first year of participation 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 2021&nbsp;<a href=""><b>Top 150 Under 150 list</b></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;<br /> &nbsp;</p>Firm News23 Sep 2020 00:00:00 -0800 Alert: Sun Sets on the Covered Business Method Review<p>Today, September 16, 2020, is the last day to file a petition for covered business method (CBM) review at the USPTO Patent Trial and Appeal Board (PTAB). The CBM program was enacted as a &ldquo;transitional&rdquo; form of review under section 18 of the America Invents Act (AIA). The AIA provided for CBM review during a window of eight years after the USPTO implemented rules under the AIA, which ultimately occurred on September 16, 2012.</p> <p>CBM proceedings were only available for a certain technological subset of patents, including any 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, but excludes patents for &ldquo;technological inventions.&rdquo; In addition to restrictions on subject matter, CBM proceedings were only available to parties who had been sued for infringement of the patent. Advantageously, however, CBM proceedings were available for the entire life of a patent, were not subject to any litigation time bar, and were expansive in scope. A CBM petition could assert any ground of unpatentability, including lack of patent-eligible subject matter under section 101, indefiniteness or written description under section 112, and anticipation or obviousness under sections 102 and 103 of the U.S. Patent Act using a much broader range of prior art relative to the popular <i>inter partes</i> review (IPR) proceeding. In contrast, IPR proceedings are only available for one year after the petitioner has been served with a patent infringement complaint and are limited to grounds of invalidity under sections 102 and 103&mdash;and only based on patents and printed publications.</p> <p>The CBM program was intended as an efficient way to weed out low-quality business method patents in the financial services industry. As shown below, the CBM program has been relatively infrequently used, and the number of CBM petition filings has <a href="" target="_blank">trended consistently downward over the last several years</a>. This may explain why Congress has not taken any steps to extend the CBM program, although several lobbying groups have recently pushed to extend the program.</p> <p style="text-align: center;"><img src=" Petitions.jpg" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="350" height="200" /><br /> <a href="">Source</a></p> <p>As illustrated above, at its peak popularity in the USPTO&rsquo;s fiscal year 2014 (ending on August 31, 2014), the PTAB received 177 CBM petitions. Filings have declined steadily since then. The PTAB received only 22 CBM petitioners in fiscal year 2019, and only 12 CBM petitions in fiscal year 2020. Even a significant uptick in last-minute filings this year likely would not drive the total number of CBM proceedings above 2019 levels.</p> <p>Both IPR and post-grant review (PGR) proceedings remain available as avenues to challenge patent validity at the PTAB. IPR remains a popular proceeding, particularly for parties who have been sued for patent infringement. PGR offers the same expansive scope as CBM review, except that PGR is only available during the first nine months after a patent is issued.</p> <p>For more information on AIA review procedures and cases or on trial practice at the PTAB, please contact any member of Fitch Even&rsquo;s <a href=";LPA=7733&amp;format=xml&amp;p=5480">PTAB Trial Practice group</a>.<br /> <b><br /> Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts16 Sep 2020 00:00:00 -0800 Developments in the Patentability of AI- and Software-Based Inventions<p>Please join Fitch Even for a free webinar, &ldquo;<a href="">Latest Developments in the Patentability of AI- and Software-Based Inventions</a>,&rdquo; on September 24, 2020, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.</p> <p>The changes in subject matter eligibility prompted by the Supreme Court&rsquo;s decision in <i>Alice v. CLS Bank</i> and subsequent Federal Circuit and district court cases have continued to make it challenging to patent inventions tied to artificial intelligence and other types of software. The legal analysis often turns on how the software interacts with the outside world and the nature of the problems it solves.</p> <p>During this webinar, we will provide an update on the latest legal developments in computer software patentability along with guidance on best practices for protecting software-related innovations, covering these topics and more:</p> <ul type="disc"> <li>Ramifications of recent post-<i>Alice</i> Federal Circuit cases</li> <li>Updated USPTO guidelines</li> <li>Tips for patent application drafting</li> <li>Tips for responding to office actions</li> </ul> <p>Our presenters will be Fitch Even attorneys <a href=";A=2596&amp;format=xml&amp;p=5482">Thomas F. Lebens</a> and <a href=";A=19279&amp;format=xml&amp;p=5482">Zachary Van Engen</a>.</p> <p>Tom has served clients in preparing and prosecuting patent and trademark applications, including appeals, post-grant review, and interferences, since 1991. He often assists clients with a wide variety of software-based and software-implemented inventions, many involving artificial intelligence. Tom also offers counsel in IP and business strategy, licensing issues, validity analysis and opinions, and copyright matters.</p> <p>Zach&rsquo;s IP law practice encompasses patent preparation and prosecution, product clearance studies, freedom-to-operate and infringement analysis, and IP-related due diligence and transactions. He works with clients in high-tech areas including electronics, computer technology, mechanical engineering, and medical devices.</p> A recording of this webinar is available through September 23, 2021.<br /> <br /> <br type="_moz" />Past Webinars02 Sep 2020 00:00:00 -0800 Even Partner Tom Lebens to Speak on AI-Based Software Patentability at Embedded Vision Summit<p>Fitch Even partner <a href=";A=2596&amp;format=xml&amp;p=5482">Thomas F. Lebens</a> will be a featured speaker during the 2020 Embedded Vision Summit, taking place online September 15&ndash;25, 2020.</p> <p>Tom&rsquo;s presentation, <a href="">&ldquo;Can You Patent Your AI-Based Invention?,&rdquo;</a> will provide an update on the latest developments in software patentability and will help attendees understand how to best protect AI-based vision and embedded vision inventions. This session is scheduled for September 17 at 1:30 pm PDT.</p> <p>For more information on the conference and to register, please visit the <a href="">Embedded Vision Summit website.</a></p>Professional Activities27 Aug 2020 00:00:00 -0800 Even Partner Steve Parmelee Coauthors ABA Book on Japanese Patent Practice<p>Fitch Even partner <a href=";A=2610&amp;format=xml&amp;p=5482">Steven G. Parmelee</a> is coauthor of the newly released book <a href=""><em>The Essentials of Japanese Patent Prosecution</em></a><em>, </em>published by the ABA Section of Intellectual Property Law. Steve worked with Japanese patent attorney Shinsuke Ohnuki and patent attorney/translator Hideko Yamamoto to update and expand the best-selling Japanese version of the book of the same title, which was written by Shinsuke and is now in its fourth edition.</p> <p>The book is a comprehensive and practical examination of the Japanese patent prosecution process. As Steve writes in the book&rsquo;s <a href="">preface</a>, &ldquo;There is both law and sage practical counsel here. There are definitions, explanations, historical context, examples, and a rich offering of well-chosen court decisions that guide, inform, and exemplify [Shinsuke&rsquo;s] points.&rdquo; Topics include how to work with the Japan Patent Office (JPO), reasons the JPO rejects applications, and how to respond to JPO official actions to patent practitioners.</p> <p>In addition, Steve provides detailed commentary interspersed throughout the text that compares and contrasts various points of Japanese procedure with U.S. patent practice. These insertions provide guidance for situations when Japanese practice tracks with and when it departs from what is familiar to U.S. practitioners. Understanding how the Japanese patent system operates can greatly help U.S. practitioners to assist their Japanese counterparts in obtaining better results, in less time, and at reduced cost.</p> <p>To learn more about this book and review a detailed table of contents and sample chapter, please visit the <a href="">ABA bookstore</a>.</p> <p>&nbsp;</p> <p>&nbsp;</p>Professional Activities14 Aug 2020 00:00:00 -0800 Even Partner Nikki Little Quoted in ALA's <i>Legal Management</i> Magazine<p>Fitch Even partner <a href=";A=2598&amp;format=xml&amp;p=5482">Nikki Little</a> was quoted in an article in the July/August 2020 issue of <i>Legal Management</i>, published by the Association of Legal Administrators.</p> <p>The article, &ldquo;<a href="">Back to Basics</a>,&rdquo; describes the basic business skills recent law school grads need to successfully transition from law student to practicing lawyer. Nikki comments on the challenges young women attorneys may continue to face, particularly in the courtroom. She advises, &ldquo;Remember that by pushing forward, and up, you&rsquo;re creating a path that is making it easier for those following behind you. So lift as you climb.&rdquo;</p> <p>Nikki is an IP litigator who has participated in numerous jury and bench trials on behalf of clients ranging from individual inventors to multinational corporations. She is cofounder and chair of Chicago Women in IP, a networking and mentoring organization committed to the connection, promotion, and success of Chicagoland-area women working in the field of intellectual property law. <br /> &nbsp;</p>Professional Activities04 Aug 2020 00:00:00 -0800