Fitch Even News Feedhttps://www.fitcheven.com/?t=39&format=xml&stylesheet=rss&directive=0&records=20en-us20 Mar 2019 00:00:00 -0800firmwisehttp://blogs.law.harvard.edu/tech/rssIP Alert: Federal Circuit Finds Claims Containing Natural Product Are Not Directed to a Judicial Exceptionhttps://www.fitcheven.com/?t=40&an=90077&format=xml<p>On March 15, in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1295.Opinion.3-15-2019.pdf"><i>Natural Alternatives Int&rsquo;l., Inc. v. Creative Compounds, LLC</i></a>, the Federal Circuit rejected a &ldquo;law of nature&rdquo; challenge to claims to a dietary supplement containing a naturally occurring amino acid and a method for treatment of a patient using the dietary supplement.</p> <p>Because the claims specified &ldquo;using a natural product in unnatural quantities to alter a patient&rsquo;s natural state, to treat a patient with specific dosages outlined in the patents,&rdquo; the court determined that&mdash;at least under the initial claim construction applied by the district court&mdash;the claims were not drawn to a patent-ineligible law of nature. The court further held that claims to a method of manufacture of the supplement likewise were not directed toward a law of nature.</p> <p>Natural Alternatives owns patents directed to a dietary supplement containing beta-alanine and methods for its use and manufacture. Beta-alanine is a naturally occurring amino acid that assists with alleviating muscle contraction. When Natural Alternatives sued Creative Compounds, Creative Compounds moved for immediate judgment of invalidity under Rule 12(c), asserting that the claims were directed to a natural law and therefore not patent-eligible under section 101 of the Patent Act.</p> <p>Accepting Natural Alternatives&rsquo;s claim construction, the district court applied the two-part <i>Alice/Mayo</i> test: Laws of nature, natural phenomena, and abstract ideas are not patent-eligible (step one) unless &ldquo;additional elements &lsquo;transform the nature of the claim&rsquo; into a patent-eligible application, i.e., whether there is an &lsquo;inventive concept&rsquo;&rdquo; (step two). After considering this test, the district court granted Creative Compound&rsquo;s 12(c) motion, concluding without discovery or trial that the claims to the supplement, the patient treatment method, and the method of manufacture were all directed to natural laws and therefore patent-ineligible.</p> <p>On appeal, the Federal Circuit reversed and held that when Natural Alternatives&rsquo;s proposed claim constructions were applied with the factual allegations of the complaint and all reasonable inferences, the patent eligibility of the supplement and treatment method claims was plausibly established. For this reason, the court determined that it was improper for the district court to have summarily held the claims invalid under section 101.</p> <p>The asserted treatment method claims were directed to a method of regulating hydronium ion concentrations in human tissue and increasing anabolic working capacity in a human, respectively, &ldquo;by providing an amount of beta-alanine to blood or blood plasma effective to increase beta-alanylhistidine dipeptide synthesis&rdquo; in human tissue. The Federal Circuit held that on the record before it these claimed methods were &ldquo;directed to patent eligible new ways of using an existing product, beta-alanine,&rdquo; which is permitted as a &ldquo;new and useful process&rdquo; under section&nbsp;101. Further, the Federal Circuit found that even though the active ingredient &ldquo;occurs in nature and is consumed as part of a human diet,&rdquo; the claims did more, in fact, than utilize a natural law. They required specific steps, such as specifying a compound to be administered to accomplish the claimed result, and contained a dosage limitation, which did not exist in nature and exceeded natural levels. Thus, on the record before it, the Federal Circuit held that the method claims covered &ldquo;using a natural product in unnatural quantities to alter a patient&rsquo;s natural state, to treat a patient with specific dosages outlined in the patents.&rdquo;</p> <p>Turning to the asserted product claims, these were &ldquo;directed to specific treatment formulations that incorporate natural products, but . . . have different characteristics and can be used in a manner that beta-alanine as it appears in nature cannot.&rdquo; One patent claimed a combination of glycine and beta-alanine with a synergistic effect that the individual amino acids did not have. Also, the question whether the &ldquo;dietary supplement&rdquo; in the claims was well-understood, routine, and conventional was still a fact at issue.</p> <p>With respect to the manufacturing claims, the Federal Circuit held that the representative claim of the &rsquo;610 patent, which claims the manufacture of a dietary supplement with beta-alanine, was also not directed to natural law or product of nature but to &ldquo;the manufacture of a human dietary supplement with certain characteristics.&rdquo; While the court remanded the eligibility question for the claims to the supplement and the treatment method, it appears that the court reversed altogether the patent-ineligibility holding for the method of manufacture claims, stating &ldquo;[w]e do not see, therefore, how a claim to the manufacture of a non-natural supplement would be directed to the law of nature or natural product.&rdquo;</p> <p>The judgment, however, was not unanimous. Judge Reyna concurred with the majority to remand, but dissented on the reason for doing so. Specifically, Judge Reyna stated that the majority opinion &ldquo;relies on a construction that improperly imports limitations into the claims and is contradicted by the written description.&rdquo; In addressing claim 1 of the &rsquo;084 patent (one of the product claims), Judge Reyna held that the claim is a &ldquo;natural substance . . . applied by wholly conventional and natural means.&rdquo; Further, he concluded that Natural Alternatives&rsquo;s proposed construction of &ldquo;dietary supplement&rdquo; was contrary to its plain meaning. However, Judge Reyna surmised that a proper claim construction will take place on remand and pondered whether &ldquo;the time has come for [the Federal Circuit] to reconsider whether a Rule 12(c) motion based on &sect;&nbsp;101 should be decided before claim construction.&rdquo;</p> <p>A takeaway from this decision is that a claim that specifies quantities or specific treatment may allow a product, method, or manufacture that utilizes a natural product to overcome a patent-eligibility challenge. The decision also provides guidance on how district courts and litigants should address Rule 12(c) and other similar challenges to patent eligibility.</p> <p>For more information on this case, please contact Fitch Even attorney <a href="https://www.fitcheven.com/?t=3&amp;A=13638&amp;format=xml&amp;p=5482">Margaret A. Herrmann</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts20 Mar 2019 00:00:00 -0800https://www.fitcheven.com/?t=40&an=90077&format=xmlIP Alert: USPTO Gives Patent Owners New Claim Amendment Options in AIA Trialshttps://www.fitcheven.com/?t=40&an=90051&format=xml<p>On March 15, the USPTO initiated <a href="https://www.federalregister.gov/documents/2019/03/15/2019-04897/new-pilot-program-concerning-motion-to-amend-practice-and-procedures-in-trial-proceedings-under-the">a new pilot program</a> for motions to amend filed during America Invents Act trial proceedings before the Patent Trial and Appeal Board (PTAB). The program provides new procedural options for patent owners attempting to amend claims during <i>inter partes</i> review, covered business method review, or post-grant review proceedings.</p> <p>The USPTO enacted the pilot program in response to the perception that amending claims in AIA proceedings is too difficult. In <a href="https://www.uspto.gov/sites/default/files/documents/ptab_%20mta_study_%28installment_5_-_%20update_through_fy2018%29.pdf">data</a> recently published by the USPTO, out of 3,600 completed AIA trials, only 205 motions to amend were decided, with only 8 <a href="https://www.fitcheven.com/?t=40&amp;an=58274&amp;anc=93&amp;format=xml&amp;p=5485">granted</a>. Under the pilot program, effective for AIA trials instituted on or after March 15, patent owners have two new options: (1) to request preliminary guidance from the PTAB regarding their motion to amend, and (2) to file a revised motion to amend after receiving the preliminary guidance and/or after receiving the petitioner&rsquo;s opposition.</p> <p>If a patent owner requests preliminary guidance in its motion to amend, the PTAB will issue a short paper (or in some cases hold a conference call) after the petitioner files its opposition to the motion. The nonbinding guidance will address both whether the motion to amend is reasonably likely to meet the statutory and regulatory requirements and whether the petitioner has established a reasonable likelihood that the substitute claims presented in the motion are unpatentable.</p> <p>Patent owners will also have the option to file a revised motion to amend after receiving the petitioner&rsquo;s opposition and/or receiving the PTAB&rsquo;s preliminary guidance. The revised motion to amend must include one or more new substitute claims in place of previously presented substitute claims. Patent owners may also rely on new arguments and evidence in the revised motion, so long as they are responsive to issues raised in the PTAB&rsquo;s preliminary guidance or the petitioner&rsquo;s opposition. After the patent owner files a revised motion to amend, the PTAB will issue a new scheduling order to accommodate the additional briefing. Parties and practitioners should note that the briefing after a revised motion to amend will proceed rapidly, and any depositions of declarants will require significant cooperation between the parties.</p> <p>If a patent owner declines to pursue either of these new options, the current motion to amend practice during AIA trials remains unchanged, with the exception that the due dates for certain later-filed papers will be extended slightly.</p> <p>Although there is no set duration for the pilot program, the USPTO has indicated that it will likely reassess the program after one year.</p> <p>This new pilot program is relevant to parties and practitioners engaged in, or expecting to be engaged in, AIA trial proceedings. The program generally will benefit patent owners by providing meaningful feedback and the ability to correct defects in a patent owner&rsquo;s motion to amend.</p> <p>For more information on this program, 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>, author of this alert.</p> <p><i>Fitch Even associate </i><a href="https://www.fitcheven.com/?t=3&amp;A=16703&amp;format=xml&amp;p=5482"><i>Evan Kline-Wedeen</i></a><i> contributed to this alert.</i>&nbsp;<br /> <br /> <b><br /> Fitch Even IP Alert<sup>&reg;</sup></b>&nbsp;</p>IP Alerts19 Mar 2019 00:00:00 -0800https://www.fitcheven.com/?t=40&an=90051&format=xmlIP Alert: PTAB Precedential Opinion Panel Issues First Decision, Allowing Same-Party Joinder in IPR Proceedingshttps://www.fitcheven.com/?t=40&an=90019&format=xml<p>On March 12, in <a href="https://www.fitcheven.com/2E8FB4/assets/files/documents/Proppant%20Express%20v.%20Oren%20Technologies.pdf"><i>Proppant Express Investments, LLC v. Oren Technologies, LLC</i></a>, the Patent Trial and Appeal Board (PTAB) Precedential Opinion Panel (POP) decided that the PTAB has discretion to allow same-party joinder of new issues into an existing proceeding. Notably, this is the first precedential decision the POP has issued since its inception.</p> <p>Under this ruling, joinder may be allowed even beyond the one-year time bar that would normally preclude a litigation defendant from filing additional petitions for <i>inter partes</i> review (IPR). The decision is binding precedent allowing PTAB administrative patent judges to decide whether to join new issues raised by a petitioner in a second-filed petition into a previously instituted proceeding. The decision emphasizes that the PTAB will exercise this discretion only in limited circumstances. Indeed, on the facts of this particular case the decision denies the request for joinder.</p> <p>The decision addresses three issues, holding first that a petitioner may be joined to a proceeding in which it is already a party. The POP notes that the language of the statute at issue, 35 U.S.C. &sect; 315(c), provides discretion to &ldquo;join as a party . . . <i>any person</i> who properly files a petition under section 311 that . . . warrants the institution of an inter partes review under section 314&rdquo; (emphasis added). The expansive use of &ldquo;any person&rdquo; in the statute persuaded the POP that it has discretion to join every person&mdash;even one who is already a party to the proceeding. The POP also reasons that &ldquo;person&rdquo; should be read consistent with other sections in the statute, which are not limited. The POP rejected several contrary arguments advanced in amicus briefs, in particular noting that allowing discretionary same-party joinder under section 315(c) is less likely to promote gamesmanship than a <i>per se</i> prohibition, which would allow a district court plaintiff to strategically wait to alter or add patent claims until after the one-year bar date for IPR petition.</p> <p>Second, the decision holds that section 315(c) permits joinder of new issues into an existing proceeding. In similar reasoning, the POP decides this issue by concluding that the statutory language does not limit the issues that can be raised in a joinder petition. Specifically, although section 315(c) requires the person requesting joinder to &ldquo;properly file[] a petition under section 311&rdquo; and also that such a petition must &ldquo;warrant[] the institution of an inter partes review under section 314,&rdquo; the POP concludes that neither section 311 nor section 314 restricts a petitioner from adding new issues through its joinder motion. The decision distinguishes recent Federal Circuit precedent from the <i>Nidec v. Zhongshan</i> case, noting that in that case the question was whether a time-barred party could circumvent the time-bar by filing a motion for joinder under section 315(c), not whether issue joinder is allowed generally under section 315(c).</p> <p>Third, the decision holds that the PTAB should exercise discretion only &ldquo;where fairness requires it and to prevent undue prejudice to a party&rdquo;&mdash;with the existence of a time bar under section 315(b) being one of several factors to be considered. While the decision again notes that a <i>per se</i> prohibition on same-party joinder would promote gamesmanship, it holds that the exception allowed by section 315(c) should not swallow the general one-year time limit imposed by section 315(b). Specifically, this time limitation is important to ensure &ldquo;quiet title to patent owners&rdquo; and to prevent IPR from being &ldquo;used as [a] tool[] for harassment,&rdquo; as noted in legislative history of the statute. The decision does not enumerate a specific list of factors for consideration, but notes that certain actions taken by a patent owner in co-pending litigation, such as adding newly asserted claims, might justify joinder. Other factors, such as the factors enumerated in the PTAB&rsquo;s precedential <i>General Plastic</i> case, might make joinder inappropriate. The POP specifically notes that a petitioner&rsquo;s mistakes or omissions would not generally justify joinder outside the one-year bar.</p> <p>Finally, on the specific facts of this case, the POP declined to exercise its discretion to join the late-filed petition. Here, petitioner Proppant Express timely filed a first petition for IPR upon being sued for patent infringement. Proppant subsequently filed a second petition more than a year after it was served with the complaint, which would have been time-barred under section 315(b). Seeking to avoid the time bar, Proppant moved for joinder of the second petition with the instituted first petition, arguing that the time bar should not apply because joinder of parties is permitted.</p> <p>The decision holds that Proppant&rsquo;s own conduct created the need for it to request joinder, and that this case therefore does not involve &ldquo;one of the limited circumstances in which the Board will exercise its discretion to allow same party and/or issue joinder.&rdquo; The decision notes that Proppant&rsquo;s first petition erroneously failed to make out a proper case against one of the claims, and Proppant acknowledged that it filed the second petition to correct that error. According to the POP, granting this motion would &ldquo;obviate the careful balance the statute and legislative history contemplate.&rdquo;</p> <p>As mentioned above, in addition to setting new precedent for the PTAB, this opinion is notable as the first precedential review since the Precedential Opinion Panel was established in September 2018. The revised Standard Operating Procedures that created the Precedential Opinion Panel explain that the panel would hear issues of &ldquo;exceptional importance.&rdquo; Either party to a decision can request precedential review by emailing the PTAB and including a request for rehearing. The revised procedures replace prior procedures that required a majority vote of administrative patent judges to establish precedential cases. The prior procedures had proven unwieldy and therefore set very little precedent in the first years of the PTAB&rsquo;s existence. The decision here resolves a series of conflicting decisions relating to same-party joinder and illustrates how the Director of the USPTO can use the POP procedure to establish policy for the PTAB.</p> <p>This precedential review is relevant to individuals and companies engaged in, or expecting to be engaged in, proceedings at the PTAB. Under this decision, petitioners have one less way to correct errors in their petition. However, patent owners should be aware that their litigation conduct could open the door to follow-on IPR petitions that could be instituted by the PTAB.</p> <p>For more information on this decision, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a>, author of this alert.&nbsp;<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b>&nbsp;</p>IP Alerts18 Mar 2019 00:00:00 -0800https://www.fitcheven.com/?t=40&an=90019&format=xmlFitch Even Partner Paul Henkelmann Quoted in Law360 Article on AIA Time Barshttps://www.fitcheven.com/?t=40&an=89774&format=xml<p>Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2587&amp;format=xml&amp;p=5482">Paul B. Henkelmann</a> was quoted in today&rsquo;s issue of <i>Law360</i> in an article discussing the various questions the Patent Trial and Appeal Board has addressed since the Federal Circuit decision in <i>Click-to-Call v. Ingenio</i> that the voluntary dismissal of an infringement complaint without prejudice does not stop the one-year time limit to file an i<i>nter partes</i> review.</p> <p>In the article, &ldquo;What The PTAB Has Said About Time-Bars After Click-To-Call,&rdquo; Paul notes in part, &ldquo;If you&rsquo;ve been sued for infringement, whether that complaint gets dismissed voluntarily or involuntarily, you&rsquo;ve got to be aware that you have a time-bar issue.&rdquo; Paul also commented on the PTAB&rsquo;s decision that the one-year time bar can be triggered only by a patent owner&rsquo;s complaint, cautioning against that assumption since the Federal Circuit has not yet weighed in on this issue.</p> <p>The article can be read in its entirety on the <a href="https://www.law360.com/ip/articles/1137048/what-the-ptab-has-said-about-time-bars-after-click-to-call?nl_pk=71c6336d-d1ca-4871-b9d2-c8a45f72d60b&amp;utm_source=newsletter&amp;utm_medium=email&amp;utm_campaign=ip"><i>Law360</i> website</a> (sub. req.).</p> <p>For more information on cases discussed in this article, please see these related Fitch Even IP Alerts written by Paul:</p> <ul type="disc"> <li><a href="https://www.fitcheven.com/?t=40&amp;an=79823&amp;format=xml&amp;p=5486">Voluntary Dismissal of Infringement Complaint Doesn't Stop 1-Year Time Limit to File IPR Petition</a></li> <li><a href="https://www.fitcheven.com/?t=40&amp;an=80816&amp;format=xml&amp;p=5486">Involuntary Dismissal of Infringement Complaint Doesn't Stop 1-Year Time Limit to File IPR Petition</a></li> <li><a href="https://www.fitcheven.com/?t=40&amp;an=88998&amp;format=xml&amp;p=5486">PTAB Says Weekend Grace Period Applies to the Deadline for Filing an IPR</a></li> </ul> <br type="_moz" />Professional Activities11 Mar 2019 00:00:00 -0800https://www.fitcheven.com/?t=40&an=89774&format=xmlIP Alert: Supreme Court Rejects "Application Approach" for Copyright Registration Requirementhttps://www.fitcheven.com/?t=40&an=89760&format=xml<p>A copyright holder generally must register its copyright before bringing an infringement action. But can the copyright holder bring suit immediately upon applying for registration, or does it have to wait until the U.S. Copyright Office has issued the registration, which may be several months later? Appellate courts have been split on this question. On March 4, in <i><a href="https://www.supremecourt.gov/opinions/18pdf/17-571_e29f.pdf">Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC,</a>&nbsp;</i>the U.S. Supreme Court resolved the split, holding that the copyright holder may bring suit only after registration; merely having applied for registration is not sufficient.</p> <p>Fourth Estate, a news organization, had entered into an agreement to license certain journalism works to Wall-Street.com, a news website. Upon cancellation of the agreement, Wall-Street continued to display Fourth Estate&rsquo;s articles on its site.</p> <p>Fourth Estate sued for copyright infringement, alleging that it had filed applications to register the disputed content with the Copyright Office. The district court dismissed the complaint, finding that the Copyright Office had not acted on Fourth Estate&rsquo;s applications as required to file an infringement lawsuit. The Eleventh Circuit Court of Appeals affirmed, holding that merely applying for registration is not sufficient. The Supreme Court granted Fourth Estate&rsquo;s petition for a writ of certiorari to resolve a circuit split on this question.</p> <p>According to 17 U.S.C. &sect; 411(a), with some exceptions, &ldquo;no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.&rdquo; Fourth Estate argued for an &ldquo;application approach&rdquo; to registration, asserting that the statute allowed a copyright owner to file suit once it applies for registration. Wall-Street conversely advocated the &ldquo;registration approach&rdquo; and asserted that a party may file suit only after the Copyright Office grants registration.</p> <p>The Court rejected Fourth Estate&rsquo;s &ldquo;application approach,&rdquo; finding support for Wall-Street&rsquo;s &ldquo;registration approach&rdquo; in the plain language, congressional intent, and legislative history of section 411(a). First, the Court noted that the statute provides an exception that allows a copyright owner to bring suit if the Copyright Office has refused registration and is given the option to join the lawsuit. If Fourth Estate were correct, then such provision would be superfluous because a copyright owner would already be able to bring suit immediately upon submission of an application.</p> <p>Additionally, the third sentence of section 411(a) states that the Register may &ldquo;become a party to the action with respect to the issue of registrability of the copyright claim.&rdquo; Again, the Court determined that if an infringement suit could be filed and resolved prior to the Register acting on an application, the aforementioned sentence would not be necessary.</p> <p>The Court then observed that the statute contained several exceptions allowing copyright holders to bring suit without registration, including for live broadcasts and certain works with a history of infringement prior to authorized commercial distribution. These exceptions highlight the need for registration more generally.</p> <p>The Court also found registration to be consistent with the underlying congressional intent of the statute. An earlier Second Circuit case, <i>Vacheron &amp; Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co.</i>, had concluded that a copyright owner had to obtain a registration certificate prior to suing for infringement. A dissenting opinion in that case observed that the Copyright Office had refused registration, leaving the copyright owner with no remedy in court in such instance. Congress subsequently enacted section 411(a), which required registration but addressed the dissenting opinion&rsquo;s concerns by providing a remedy for instances where registration is refused. Such an exception would be unnecessary if a copyright owner could simply sue for infringement upon submitting an application.</p> <p>Moreover, despite proposals to eliminate the registration requirement, Congress repeatedly rejected efforts to adopt a scheme in which owners could file suit upon submission of a registration application. To address concerns about predistribution infringement, Congress made the aforementioned preregistration exceptions available in 2005 instead of eliminating the registration requirement altogether.</p> <p>The Court then rejected Fourth Estate&rsquo;s argument that a registration requirement deprives a copyright holder of its exclusive rights. Section 504 of the Copyright Act allows copyright owners to recover preregistration damages, and section 502 allows the copyright owners to seek an injunction against infringers. The registration requirement therefore does not deprive the copyright owner of its legal remedies.</p> <p>Lastly, Fourth Estate raised the concern that the registration requirement might lose its ability to bring suit if the statute of limitations for bringing suit were to expire before the Copyright Office acts on the registration. Rejecting these concerns, the Court noted that the average processing time for copyrights was a period of months, and also stated that it is ultimately up to Congress to resolve such issues through a revision of the statute. Notably, copyright owners should be aware of the registration requirement and should move quickly to register any copyrights that might be the subject of a future lawsuit lest any delays in registration carry past the applicable statute of limitations.</p> <p>In addition to clarifying the pre-suit registration requirement, the Supreme Court&rsquo;s decision instructs that a copyright owner who has not registered its copyright should do so promptly.</p> <p>For more information on this decision, please contact Fitch Even attorney <a href="https://www.fitcheven.com/?t=3&amp;A=16851&amp;format=xml&amp;p=5482">Kerianne A. Strachan</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts08 Mar 2019 00:00:00 -0800https://www.fitcheven.com/?t=40&an=89760&format=xmlBack on Track?: Obtaining Software Patents Using New Patent Office Guidancehttps://www.fitcheven.com/https://register.gotowebinar.com/register/2035521875743174403&format=xml<p>Please join Fitch, Even, Tabin &amp; Flannery LLP for a free webinar, &ldquo;<a href="https://register.gotowebinar.com/register/2035521875743174403">Back on Track?: Obtaining Software Patents Using New Patent Office Guidance</a>,&rdquo; on Wednesday, March 20, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.</p> <p>Obtaining patents for software-related inventions has become more difficult in recent years, in the U.S. and throughout the world. However, recently released USPTO guidance addressing patent eligibility under 35 U.S.C.&nbsp;&sect; 101 and &sect; 112, among other developments, offers some amount of much-needed clarity and direction.</p> <p>During this webinar, our presenters will share information and insights on the following:</p> <ul type="disc"> <li>USPTO&rsquo;s 2019 Revised Patent Subject Matter Eligibility Guidance</li> <li>USPTO&rsquo;s 2019 Guidance on Examining Computer-Implemented Functional Claim Limitations</li> <li>How to use the recent guidance fruitfully, including claim-drafting strategies and evaluation of example claims</li> <li>Drafting strategies for filing software patent applications in foreign jurisdictions</li> <li>What the future may hold for software patentability</li> </ul> <p>Our speakers will be Fitch Even attorneys <a href="https://www.fitcheven.com/?t=3&amp;A=2573&amp;format=xml&amp;p=5482">Timothy R. Baumann</a> and <a href="https://www.fitcheven.com/?t=3&amp;A=8536&amp;format=xml&amp;p=5482">George N. Dandalides</a>.</p> <p>Tim has extensive experience assisting clients in the acquisition, protection, and management of all forms of intellectual property, particularly through complex patent prosecution, infringement and validity opinions, reexamination and IPR proceedings, and patent licensing agreements.</p> <p>George focuses his IP law practice on domestic and international patent preparation and prosecution, leveraging his background in physics and computer technology to assist clients in a variety of high-tech industries including telecommunications, electronics, and computer hardware, software, and architecture.</p> <p>A recording of this webinar is available through March 19, 2020.<br /> &nbsp;</p>Past Webinars06 Mar 2019 00:00:00 -0800https://www.fitcheven.com/https://register.gotowebinar.com/register/2035521875743174403&format=xmlFitch Even Elects Equity Partnershttps://www.fitcheven.com/?t=40&an=89213&format=xml<p>Fitch, Even, Tabin &amp; Flannery is pleased to announce that <a href="https://www.fitcheven.com/?t=3&amp;A=4141&amp;format=xml&amp;p=5482">David M. Kogan</a>, <a href="https://www.fitcheven.com/?t=3&amp;A=2598&amp;format=xml&amp;p=5482">Nicole L. Little</a>, <a href="https://www.fitcheven.com/?t=3&amp;A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a>, and <a href="https://www.fitcheven.com/?t=3&amp;A=2622&amp;format=xml&amp;p=5482">Jonathan H. Urbanek</a> have been made equity partners of the firm.</p> <p><b><a href="https://www.fitcheven.com/?t=3&amp;A=4141&amp;format=xml&amp;p=5482">David M. Kogan</a> </b>has substantial experience in both patent prosecution and IP litigation, representing clients in a wide range of industries including biotechnology, chemistry, pharmaceuticals, computer software, and mechanical, medical, and wireless devices. David also assists start-up, midsized, and large companies with global IP portfolio management, strategic development, and licensing. David earned his J.D. from Loyola Law School. He holds both a B.S. degree in Biological Sciences and an M.S. degree in Molecular Pharmacology &amp; Toxicology from the University of Southern California.</p> <p><b><a href="https://www.fitcheven.com/?t=3&amp;A=2598&amp;format=xml&amp;p=5482">Nicole L. Little</a> </b>focuses her practice primarily on patent litigation, representing clients in cases across a broad spectrum of technologies. She has participated in numerous jury and bench trials on behalf of clients ranging from individual inventors to multinational corporations. Nikki also represents clients in post-issuance proceedings in the USPTO in parallel with ongoing district court proceedings. In addition, her experience extends to IP issues that arise in corporate advertising, marketing, and promotions, including those related to advertising agreements, advertising and labeling claims, and legal compliance with federal and state requirements. Nikki is a graduate of Chicago-Kent College of Law and earned a B.S. in Chemical Engineering, <i>cum laude,</i> from the University of Michigan.</p> <p><b><a href="https://www.fitcheven.com/?t=3&amp;A=2603&amp;format=xml&amp;p=5482">Joseph F. Marinelli</a> </b>has considerable experience litigating complex patent, trade secrets, and trademark cases in a variety of industries. He has represented clients in numerous jury trials relating to patent infringement, validity, and breach of license. Joe&rsquo;s practice also extends to participating in post-issuance proceedings in the USPTO. In addition to his trial work, Joe negotiates and prepares patent, software, and trademark licenses and technology agreements. He also regularly counsels clients on patent infringement avoidance, providing validity opinions and offering IP portfolio valuation and management guidance. Joe earned his J.D., <i>cum laude</i>, from the University of Wisconsin Law School and holds a B.S., in Mechanical Engineering from Purdue University.</p> <p><b><a href="https://www.fitcheven.com/?t=3&amp;A=2622&amp;format=xml&amp;p=5482">Jonathan H. Urbanek</a> </b>focuses his practice on preparation and prosecution of patent applications, advising clients on the development and protection of a strong patent portfolio and other IP-related issues. Jon provides counsel on freedom-to-operate decisions, product design-arounds, competitive technology analysis, and other issues that support an effective patent strategy. He has notable experience working with diverse technologies including medical devices, irrigation, conveyor belt accessories, power systems, earth-moving equipment, packaging, food processing, communications equipment, e-commerce, computer systems, electro-mechanical devices, railcar systems, and manufacturing. Jon is a graduate of DePaul University College of Law and earned a B.S. in Mechanical Engineering from the University of Michigan.</p> <br />Firm News05 Mar 2019 00:00:00 -0800https://www.fitcheven.com/?t=40&an=89213&format=xmlIP Alert UPDATE: Supreme Court Limits Scope of Taxable Costs in Copyright Caseshttps://www.fitcheven.com/?t=40&an=89184&format=xml<p>UPDATE: Today, in <a href="https://www.supremecourt.gov/opinions/18pdf/17-1625_lkhn.pdf"><i>Rimini Street, Inc. v. Oracle USA, Inc.</i></a>, a unanimous Supreme Court held that the &ldquo;full costs&rdquo; language of 17 U.S.C. &sect; 505 is indeed limited to enumerated taxable costs under 28 U.S.C. &sect;&sect; 1920 and 1821. In doing so, the Court overturned a previous ruling in which Remini Street was ordered to pay Oracle $12.8 million in nontaxable litigation expenses, after losing a copyright case brought by Oracle.</p> <p>The Ninth Circuit Court of Appeals had held that the term &ldquo;full costs&rdquo; allows a successful litigant to recover not only the enumerated statutory costs, but also nontaxable litigation costs, such as expert witnesses, e-discovery, and jury consulting expenses. Other appellate courts reached the opposite conclusion. Resolving this dispute, the Supreme Court concluded that the modifier &ldquo;full&rdquo; simply served to confirm that a successful litigant can recover all categories of enumerated costs, but did not pertain to litigation expenses beyond those.</p> <p>The decision is significant because it will apply to all copyright cases that are litigated to a final judgment. For more information, please contact any member of Fitch Even&rsquo;s copyrights team.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts04 Mar 2019 00:00:00 -0800https://www.fitcheven.com/?t=40&an=89184&format=xmlIP Alert UPDATE: Supreme Court to Hear <i>Iancu v. NantKwest</i>https://www.fitcheven.com/?t=40&an=89185&format=xml<p>UPDATE: Today the U.S. Supreme Court granted the government&rsquo;s petition for a writ of certiorari in <i>Iancu v. NantKwest, </i>a case discussed in our earlier alert&nbsp;<a href="https://www.fitcheven.com/?t=40&amp;an=79210&amp;format=xml&amp;p=5486">here</a>. The Court will consider the following question: &ldquo;Whether the phrase &lsquo;[a]ll the expenses of the proceedings&rsquo; in 35 U.S.C. &sect; 145 encompasses the personnel expenses the United States Patent and Trademark Office incurs when its employees, including attorneys, defend the agency in Section 145 litigation.&quot;</p> <p>Fitch Even attorneys will monitor the progress of this case and report once the Court has reached a decision on this question.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts04 Mar 2019 00:00:00 -0800https://www.fitcheven.com/?t=40&an=89185&format=xmlFitch Even Partners Named Illinois Leading Lawyers and Emerging Lawyers for 2019https://www.fitcheven.com/?t=40&an=89083&format=xml<p>Ten Fitch Even partners have been named Leading Lawyers and two partners have been named Emerging Lawyers in Illinois for 2019.</p> <p><i>Leading Lawyers:&nbsp;&nbsp;</i></p> <ul> <li><a href="https://www.fitcheven.com/?t=3&amp;A=2580&amp;format=xml&amp;p=5482">Stephen S. Favakeh</a>&mdash;Intellectual Property Law, International Business &amp; Trade Law, Patent Law</li> <li><a href="https://www.fitcheven.com/?t=3&amp;A=2581&amp;format=xml&amp;p=3130">Karl R. Fink</a>&mdash;Intellectual Property Law, Patent Law</li> <li><a href="https://www.fitcheven.com/?t=3&amp;A=2588&amp;format=xml&amp;p=5482">Mark W. Hetzler</a>&mdash;Intellectual Property Law, Trade Secrets/Unfair Competition Law, Copyright &amp; Trademark Law</li> <li><a href="https://www.fitcheven.com/?t=3&amp;A=2597&amp;format=xml&amp;p=5482">Timothy E. Levstik</a>&mdash;Intellectual Property Law, Patent Law</li> <li><a href="https://www.fitcheven.com/?t=3&amp;A=2600&amp;format=xml&amp;p=5482">John E. Lyhus</a>&mdash;Advertising &amp; Media Law, Copyright &amp; Trademark Law, Intellectual Property Law, International Business &amp; Trade Law, Trade Secrets/Unfair Competition Law</li> <li><a href="https://www.fitcheven.com/?t=3&amp;A=2601&amp;format=xml&amp;p=3130">Timothy P. Maloney</a>&mdash; Intellectual Property Law, Patent Law, Trade Secrets/Unfair Competition Law, Copyright &amp; Trademark Law</li> <li><a href="https://www.fitcheven.com/?t=3&amp;A=2609&amp;format=xml&amp;p=5482">Joseph T. Nabor</a>&mdash;Advertising &amp; Media Law, Copyright &amp; Trademark Law, Intellectual Property Law</li> <li><a href="https://www.fitcheven.com/?t=3&amp;A=2610&amp;format=xml&amp;p=5482">Steven G. Parmelee</a>&mdash;Intellectual Property Law, Patent Law</li> <li><a href="https://www.fitcheven.com/?t=3&amp;A=18289&amp;format=xml&amp;p=5482">Stanley A. Schlitter</a>&mdash;Intellectual Property Law, Patent Law</li> <li><a href="https://www.fitcheven.com/?t=3&amp;A=2616&amp;format=xml&amp;p=3130">Joseph E. Shipley</a>&mdash;Intellectual Property Law, Patent Law, Trade Secrets/Unfair Competition Law, Copyright &amp; Trademark Law</li> </ul> <p>Those who are designated Leading Lawyers were recommended by their peers to be among the top lawyers in Illinois. Less than five percent of all lawyers licensed in Illinois have received the distinction of being named a Leading Lawyer.</p> <p><i>Emerging Lawyers:</i></p> <ul> <li><a href="https://www.fitcheven.com/?t=3&amp;A=2598&amp;format=xml&amp;p=5482">Nicole L. Little</a> &mdash;Intellectual Property Law, Patent Law, Biotechnology &amp; Pharmaceutical Law</li> <li><a href="https://www.fitcheven.com/?t=3&amp;A=2599&amp;format=xml&amp;p=5482">Amanda Lowerre O&rsquo;Donnell</a>&mdash;Intellectual Property Law, Patent Law</li> </ul> <p>Emerging Lawyers have been identified by Leading Lawyers throughout the state to be among the top lawyers who are age 40 or younger or have been admitted to the practice of law no longer than 10 years. Less than 2% of all lawyers licensed in Illinois have received the distinction of being named an Emerging Lawyer.</p> <p>The entity Leading Lawyers is a division of Law Bulletin Media. Law Bulletin Media is a diversified print and electronic information company that has been serving the Chicago legal and business communities since 1854. For more information, please visit <a href="http://www.leadinglawyers.com/">www.leadinglawyers.com</a>.&nbsp; &nbsp;<br /> &nbsp;</p>Firm News01 Mar 2019 00:00:00 -0800https://www.fitcheven.com/?t=40&an=89083&format=xml