Fitch Even News Feedhttps://www.fitcheven.com/?t=39&format=xml&stylesheet=rss&directive=0&records=20en-us17 Jan 2020 00:00:00 -0800firmwisehttp://blogs.law.harvard.edu/tech/rssFitch Even Partner Sherri Blount Quoted in <i>WWD</i> Article on Celebrity Photo Copyright Infringementhttps://www.fitcheven.com/?t=40&an=101916&format=xml<p>Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2575&amp;format=xml&amp;p=5482">Sherri N. Blount</a> was quoted in the December 9 issue of <i>Women&rsquo;s Wear Daily</i> in an article discussing how brands are facing increased scrutiny over permission rights of celebrity images found online.</p> <p>In the article, &ldquo;Online Celeb Photos and Legal Risks for Brands,&rdquo; Sherri advises, &ldquo;If you&rsquo;re a brand using someone&rsquo;s name, their photo, their likeness, or even the sound of their voice, you should first contact the person or the person&rsquo;s agent and get permission and a license to use it for the purposes you want to use it&mdash;and preferably written permission.&rdquo; She goes on to say, &ldquo;If the brand is trying to use it for a commercial purpose, they may need to get the permission of both: the celebrity and the photographer.&rdquo; The article can be read in its entirety on the <a href="https://wwd.com/business-news/legal/celebrity-photos-risks-for-brands-1203393813/"><i>WWD</i> website</a> (sub. req.).</p> <p>Sherri advises clients on a broad range of promotions, marketing, and advertising issues, as well as entertainment and media matters. She has extensive experience in trademark and brand protection, complex licensing agreements, trade secrets, unfair competition, copyright and infringement issues, work-for hire arrangements, and digital rights management.<br /> <br /> &nbsp;</p>Professional Activities17 Jan 2020 00:00:00 -0800https://www.fitcheven.com/?t=40&an=101916&format=xmlFitch Even Partners Named Illinois Leading Lawyers and Emerging Lawyers for 2020https://www.fitcheven.com/?t=40&an=101848&format=xml<p>We are pleased to announce that nine Fitch Even partners have been named Leading Lawyers and two partners have been named Emerging Lawyers in Illinois for 2020.</p> <p><i>Leading Lawyers:&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=5482">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=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=5482">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=5482">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 to practice 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, 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 News14 Jan 2020 00:00:00 -0800https://www.fitcheven.com/?t=40&an=101848&format=xmlIP Alert: Federal Circuit Revises Guidance on Markush Claim Constructionhttps://www.fitcheven.com/?t=40&an=101754&format=xml<p>When a claim uses both the terms &ldquo;comprising&rdquo; and &ldquo;selected from the group consisting of,&rdquo; how should that claim be construed? More specifically, if the claim specifies a component &ldquo;selected from the group consisting of&rdquo; A, B, or C, and the accused product includes component A and component D, is there infringement? An earlier Federal Circuit case, <i>Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., </i>discussed <a href="https://www.fitcheven.com/?t=40&amp;an=58461&amp;anc=180&amp;format=xml&amp;p=5486">here</a>, suggested that the answer to this question might be &ldquo;no.&rdquo; But on January 7, in a unanimous opinion in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-2414.Opinion.1-7-2020.pdf"><i>Amgen Inc. v. Amneal Pharmaceuticals</i></a>, the Federal Circuit concluded that the answer was &ldquo;yes,&rdquo; at least under the facts before the court.</p> <p>Amgen sued three generic drug manufacturers asserting infringement of U.S. Patent No. 9,375,405, which is directed to Amgen&rsquo;s SENSIPAR<sup>&reg;</sup> medication. Claim 1 of the &rsquo;405 patent recites both a &ldquo;binder&rdquo; and a &ldquo;disintegrant,&rdquo; each defined using Markush groups&mdash;&ldquo;selected from the group consisting of.&rdquo; But the claim is generally drafted as a &ldquo;comprising&rdquo; claim, which is open to other elements. In pertinent part, claim 1 recites as follows:</p> <p style="margin-left: 40px;">A pharmaceutical composition comprising:</p> <p style="margin-left: 80px;">. . .<br /> (c) from about 1% to about 5% by weight of at least one binder selected from the group consisting of povidone, hydroxypropyl methylcellulose, hydroxypropyl cellulose, sodium carboxymethylcellulose, and mixtures thereof; and</p> <p style="margin-left: 80px;">(d) from about 1% to 10% by weight of at least one disintegrant selected from the group consisting of crospovid[o]ne, sodium starch glycolate, croscarmellose sodium, and mixtures thereof,</p> <p style="margin-left: 40px;">wherein the percentage by weight is relative to the total weight of the composition. . . .</p> <p>Amneal&rsquo;s accused formulation includes hydroxypropyl methylcellulose, one of the binders that is listed under claim 1&rsquo;s Markush group, but also polyethylene glycol 400 and polyethylene glycol 8000, which are binders not listed under the Markush group. In district court, Amgen argued that the Markush groups in parts (c) and (d) should be open to non-recited elements. The district court held Amneal not to infringe, relying on the <i>Multilayer </i>decision to rule that Amgen had not overcome the very strong presumption that claimed Markush groups are &ldquo;closed to unrecited binders and disintegrants.&rdquo; Similar issues were presented for the other defendants&rsquo; products.</p> <p>On appeal, Amgen challenged the district court&rsquo;s &ldquo;closed&rdquo; interpretation of the (c) binder and (d) disintegrant limitations of claim 1. More specifically, Amgen argued that the &ldquo;consisting of&rdquo; Markush groups in (c) and (d) do not foreclose inclusion of unclaimed binders and disintegrants because the preamble of claim 1 includes the term &ldquo;comprising,&rdquo; and the term &ldquo;consisting of&rdquo; restricts only the scope of a particular Markush group.&nbsp;Conversely, relying on both <i>Multilayer</i> and another case, <i>Shire Development, LLC v. Watson Pharmaceuticals,</i> Amneal and the other generic manufacturers argued that the district court&rsquo;s construction was correct because Amgen had not overcome the strong presumption that a claim term set off with &ldquo;consisting of&rdquo; is closed to unrecited terms.</p> <p>The Federal Circuit began by holding that <i>Multilayer</i> and <i>Shire </i>do not address the question of interpretation of a claim including a &ldquo;comprising&rdquo; transitional phrase followed by a &ldquo;consisting of&rdquo; Markush limitation. The court noted that <i>Multilayer</i> and <i>Shire </i>addressed the question of interpreting a Markush group itself as open or closed.</p> <p>The court then held that claim 1 of the &rsquo;405 patent did not preclude binders and disintegrants not meeting the claimed Markush groups in parts (c) and (d). More generally, the court held that a claim including a &ldquo;comprising&rdquo; transitional phrase followed by one or more &ldquo;consisting of&rdquo; Markush groups is met by an accused product containing components meeting the Markush groups. But such a claim does not preclude infringement by products including additional components functionally similar to the Markush limitations, unless the claim language or intrinsic evidence precludes construction including the additional components.&nbsp;</p> <p>After observing that the claim recites &ldquo;at least one&rdquo; binder or disintegrant &ldquo;selected from the group consisting of&rdquo; various excipients, the court concluded that &ldquo;the limitations merely require that those particular binders or disintegrants meet the specified weight-percentage requirements, which is not inconsistent with the overall composition containing other binders or disintegrants.&rdquo; Additionally, &ldquo;[t]he plain language of this claim requires &lsquo;at least one&rsquo; of the Markush members and certainly does not indicate that the only binders and disintegrants in the claimed formulation&nbsp; are those listed in the groups.&rdquo;&nbsp;&nbsp;&nbsp;</p> <p>Put another way, so long as the specified binder or disintegrant was within the specified weight range, the claim permitted the presence of other binders and disintegrants. &ldquo;Without more,&rdquo; the court concluded, &ldquo;such language is satisfied when an accused product contains a component that is from the Markush group and that meets the limitation&rsquo;s requirements for the component. It does not forbid infringement of the claim if an additional component is present and functionally similar to the component identified in the Markush group limitation, unless there is a further basis in the claim language or other intrinsic evidence for precluding the presence of such additional components.&rdquo;</p> <p>In a secondary holding, the court rejected Amgen&rsquo;s attempt to avoid the estoppel effect of a claim amendment during prosecution via reliance on general disclaimer language. Specifically, after an examiner&rsquo;s amendment, Amgen relied on its own boilerplate language, submitted eight months after the examiner&rsquo;s amendment, stating &ldquo;[t]hese amendments have not been made in response to a prior art rejection but rather to place the claims in proper format and to better define the claimed subject matter, including equivalents.&rdquo; The court rejected this effort, concluding that &ldquo;[i]t is unclear what, if any, insight this conventional boilerplate statement provides into the reasons for the Examiner&rsquo;s Amendment.&rdquo;</p> <p>The <i>Amgen</i> decision highlights the importance of carefully drafting and interpreting Markush claim limitations and also indicates some lack of clarity in the law for interpretation of such claims. It is uncertain, for example, what &ldquo;further basis in the claim language&rdquo; or &ldquo;other intrinsic evidence&rdquo; might cause the claim to be construed more narrowly. It is likely that further case law development will be necessary to elucidate this concept. Via the secondary holding, the court also signaled that it is inclined to view substance over form when considering amendments to claim scope during prosecution.</p> <p>For more information on this decision, please contact Fitch Even attorney <a href="https://www.fitcheven.com/?t=3&amp;A=8909&amp;format=xml&amp;p=5482">Giles N. Turner</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg; </sup></b></p>IP Alerts09 Jan 2020 00:00:00 -0800https://www.fitcheven.com/?t=40&an=101754&format=xml<i>American Axle</i>: Does Patent Subject Matter Eligibility Depend on Enablement?https://www.fitcheven.com/https://attendee.gotowebinar.com/register/5744294449806448139&format=xml<p>Please join Fitch Even for a free webinar, &ldquo;<i><a href="https://register.gotowebinar.com/register/5744294449806448139">American Axle: Does Patent Subject Matter Eligibility Depend on Enablement?</a></i>,&rdquo; on January 30, 2020, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12 noon EST.</p> <p>In <i>American Axle &amp; Mfg. Inc. v. Neapco Holdings LLC,</i> the Federal Circuit affirmed a district court ruling that American Axle&rsquo;s drive shaft patent is ineligible under 35 U.S.C. &sect; 101 because the claims covered an application of a law of nature. American Axle&rsquo;s petition for rehearing en banc has attracted several amicus briefs, some of which argue that this decision places in jeopardy the validity of many process patents for making physical structures and adds a &sect; 112 enablement requirement to &sect; 101 subject matter eligibility. In general, the decision has created further uncertainty about what a patentee needs to do to meet the requirements of &sect; 101.</p> <p>During this webinar, our presenters will discuss the following:</p> <ul> <li>The district court and Federal Circuit decisions in this case</li> <li>Arguments presented in the amici briefs</li> <li>How <i>American Axle</i> comports with the USPTO&rsquo;s patent eligibility guidance</li> <li>Strategies for litigators and prosecutors regarding <i>Alice</i> in view of <i>American Axle</i></li> </ul> <p>Our speakers will be Fitch Even attorneys <a href="https://www.fitcheven.com/?t=3&amp;A=18289&amp;format=xml&amp;p=5482">Stanley A. Schlitter</a> and <a href="https://www.fitcheven.com/?t=3&amp;A=13120&amp;format=xml&amp;p=5482">Andrew C. Wood</a>.</p> <p>Stan has represented clients in numerous patent infringement suits in the federal courts and at the ITC, as well as in IPR proceedings before the Patent Trial and Appeal Board. In addition, he has successfully litigated disputes involving trademark and copyright infringement, unfair competition, trade secret misappropriation, and breach of contract.</p> <p>Andrew focuses his practice on patent and trademark litigation, legal opinions, and patent portfolio management. His litigation experience spans a variety of areas including building materials, medical devices, semiconductor devices, GPS electronics, pharmaceuticals, and food and beverage packaging.</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 registration is required.<br /> <br /> To reserve your place, please&nbsp;<a href="https://register.gotowebinar.com/register/5744294449806448139">REGISTER HERE</a>.</p> <p>&nbsp;</p>Upcoming Webinars08 Jan 2020 00:00:00 -0800https://www.fitcheven.com/https://attendee.gotowebinar.com/register/5744294449806448139&format=xmlIP Alert: Federal Circuit Decides Issue of First Impression Under Section 271(g)https://www.fitcheven.com/?t=40&an=101439&format=xml<p>Yesterday, in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1614.Opinion.12-18-2019.pdf"><i>Syngenta Crop Protection v. Willowood LLC et al</i></a>., the Federal Circuit addressed an issue of first impression under 35 U.S.C. 271(g), stating &ldquo;the focus is only on acts with respect to <i>products</i> resulting from the patented process&rdquo; for purposes of section 271(g), and practice or direction of all the patented process steps by a single entity is not required under that statute.</p> <p>Syngenta, a manufacturer of fungicides, holds patents drawn to a process for preparation of a chemical component used in fungicide production. Willowood, a competitor, imported the chemical component, and Syngenta sued Willowood and related foreign Willowood entities for patent infringement. Under section 271(g) of the Patent Act, an importer of &ldquo;a product which is made by a process patented in the United States&rdquo; is liable for patent infringement. Willowood defended on the ground that no single entity had itself practiced the steps of the patented process or had controlled the practice of these steps, as would generally be necessary to hold an infringer liable for practice of a process patent within the U.S. The district court agreed and granted judgment in favor of Willowood.</p> <p>On appeal, Syngenta contended that the district court&rsquo;s interpretation of section 271(g) was &ldquo;contrary to the plain language of the statute and Congress&rsquo;s intent expressed in the legislative history.&rdquo; The Federal Circuit held that this was an issue of first impression and concluded that the district court erred by imposing a single-entity requirement under section 271(g).</p> <p>The Federal Circuit reasoned that the resolution of this issue turns on the nature of the infringing acts covered by section 271(g), which provides that &ldquo;[w]hoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer.&rdquo; The court stated,</p> <p style="margin-left: 40px;">This language makes clear that the acts that give rise to liability under &sect; 271(g) are the importation, offer for sale, sale, or use within this country of a product that was made by a process patented in the United States. Nothing in this statutory language suggests that liability arises from <i>practicing</i> the patented process abroad. Rather, the focus is only on acts with respect to <i>products</i> resulting from the patented process. Thus, because the statutory language as a whole is clear that practicing a patented process abroad cannot create liability under &sect; 271(g), whether that process is practiced by a single entity is immaterial to the infringement analysis under that section.</p> <p>In light of the Federal Circuit&rsquo;s conclusion as stated above, exporters of products made outside the U.S., importers of such products, and U.S. customers for such products would be well-advised to give close attention to the <i>Syngenta</i> decision and its interpretation of 35 U.S.C. 271(g).</p> <p>If you have questions regarding this decision, please contact <a href="https://www.fitcheven.com/?t=3&amp;A=2568&amp;format=xml&amp;p=5482">Kendrew H. Colton</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts19 Dec 2019 00:00:00 -0800https://www.fitcheven.com/?t=40&an=101439&format=xmlFitch Even Partner Nikki Little Moderates ChiWIP Webinarshttps://www.fitcheven.com/?t=40&an=101416&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> recently co-moderated two educational programs presented by Chicago Women in IP (&ldquo;ChiWIP&rdquo;).</p> <p>On November 6, she co-moderated a webinar on &ldquo;In-House Attorney Self-Promotion,&rdquo; during which a panel of in-house counsel advised women attorneys on raising their profiles and those of other women within their organization through various means.</p> <p>On December 10, Nikki co-moderated a live panel discussion and webinar on &ldquo;Litigation Financing.&rdquo; Panelists including executives at Burford Capital explained the pros and cons of litigation financing, how it can help in-house legal departments offload risk and provide budget certainty, and how private practitioners can benefit from unique fee structures and leverage financing at various stages of a case.</p> <p>Nikki is a cofounder of ChiWIP and currently serves as Chair of its Board of Directors, as well as Co-Chair of its Annual Dinner and Special Events Committees. <a href="https://www.chiwip.org/">ChiWIP</a> is a vibrant networking and mentoring organization committed to the connection, promotion, and success of Chicagoland-area women working in the field of intellectual property law.&nbsp;<br /> &nbsp;</p>Professional Activities18 Dec 2019 00:00:00 -0800https://www.fitcheven.com/?t=40&an=101416&format=xmlFitch Even Welcomes Dean Anita Krug of Chicago-Kent College of Lawhttps://www.fitcheven.com/?t=40&an=101420&format=xml<p>On December 11, Fitch Even hosted a breakfast reception at our Chicago office for Anita K. Krug, who joined Chicago-Kent College of Law as dean in August. Fitch Even attorneys, including several Chicago-Kent alumni, gathered to welcome Dean Krug to Chicago, learn about the latest happenings at Chicago-Kent, and discuss trends and developments in legal education in the Midwest region.</p> <p>Dean Krug is the first woman to be named permanent dean in Chicago-Kent history. She came to Chicago-Kent from the University of Washington School of Law, where she began her academic career in 2010. She is an accomplished securities law scholar, an experienced leader in higher education, and a former law firm partner.</p>Community Activities18 Dec 2019 00:00:00 -0800https://www.fitcheven.com/?t=40&an=101420&format=xmlFitch Even Participates in Direct Effect Charities' Letters to Santa Programhttps://www.fitcheven.com/?t=40&an=101393&format=xml<p>This year Fitch Even Chicago office attorneys and legal professionals once again responded to letters to Santa written by needy Chicago students attending pre-Kindergarten through sixth grade. The letters were collected from a participating school and distributed by Chicago-based nonprofit <a href="http://www.directeffectcharities.org/about.html">Direct Effect Charities</a> through their <a href="http://www.directeffectcharities.org/letterstosanta.html">Letters to Santa program</a>.</p> <p>Fitch Even participants claimed one or more letters, purchased the requested toys and other items, and brought them to the office where volunteers spent a few hours packing and wrapping all the gifts before delivering them to Direct Effect for distribution at the designated school. We were moved by the dozens of brightly illustrated handwritten letters we received and grateful for the opportunity to add to Direct Effect&rsquo;s total of well over 100 thousand letters answered in the past 18 years.</p> <p>For more information on Direct Effect Charities and their programs supporting underprivileged children, please visit their <a href="http://www.directeffectcharities.org/index.html">website</a>.</p>Community Activities17 Dec 2019 00:00:00 -0800https://www.fitcheven.com/?t=40&an=101393&format=xmlIP Alert: Federal Circuit Rules Release Payment in FRAND Dispute Must Be Jury's Decisionhttps://www.fitcheven.com/?t=40&an=101376&format=xml<p>On December 5, in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1363.Opinion.12-5-2019.pdf"><i>TCL Communication Technology Holdings Ltd. et al. v. Telefonaktiebolaget LM Ericsson</i>, </a>the Federal Circuit held that Ericsson had a constitutional right to a jury trial with respect to the calculation of a release payment amount under fair, reasonable, and nondiscriminatory (FRAND) terms in a licensing agreement.</p> <p>TCL sued Ericsson in March 2014 seeking declaratory judgment that Ericsson had failed to offer TCL a FRAND rate under certain Ericsson 2G, 3G, and 4G standard-essential patents. Ericsson responded with an action for patent infringement. The parties agreed to court adjudication of the terms for a worldwide portfolio license, including a &ldquo;release payment&rdquo; for past patent infringement. Ericsson argued that it was entitled to a jury trial on the amount of the release payment because the release payment was to compensate Ericsson for past patent infringement and therefore was legal in nature. The district court disagreed and held a bench trial, at the conclusion of which the court imposed FRAND rates in a binding worldwide license for Ericsson&rsquo;s patents. The court determined a release payment for TCL&rsquo;s past unlicensed sales as well as a prospective FRAND royalty rate to be paid by TCL going forward.</p> <p>Ericsson appealed, arguing that it should have been entitled to a jury trial on the amount of the release payment. Ericsson also argued that the district erred in concluding that Ericsson&rsquo;s proposed terms were not FRAND, in setting the prospective FRAND royalty rate, and in ordering the dismissal of Ericsson&rsquo;s patent infringement claims. Specifically, Ericsson argued these four determinations were flawed because they should have been determined by a jury at least in part and because they were based on errors in the district court&rsquo;s FRAND analysis.&nbsp;</p> <p>The Federal Circuit agreed that denial of Ericsson&rsquo;s right to a jury trial with respect to determination of the release payment was a sufficient basis for overturning all four determinations and, as such, did not need to address the court&rsquo;s FRAND analysis or the other bases for arguing it was wrongly denied a jury trial. The Federal Circuit began its analysis of Ericsson&rsquo;s right to a jury trial by noting the &ldquo;Seventh Amendment provides that &lsquo;[i]n Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved.&rsquo;&rdquo; The law had historically distinguished between legal claims, in which there exists a right to jury determination, and equitable claims, in which there is no right to a jury trial. The court noted that in situations involving both legal and equitable claims and having issues common to both, a court must allow for a jury trial of any legal issues if properly demanded.</p> <p>With respect to the release payment, the Federal Circuit agreed with Ericsson that the relief was legal in nature because this payment was, in substance, compensation for past patent infringement. Further, the court held that that would be the result even if the release payment were characterized as restitution for TCL&rsquo;s past unlicensed sales. The court rejected TCL&rsquo;s argument that the release payment was equitable because it was included in an injunction order, holding &ldquo;[t]hat the release payment was ordered in the form of an injunction does not necessarily make it equitable.&rdquo; Further, the Federal Circuit found the district court&rsquo;s use of the label &ldquo;equitable relief&rdquo; unpersuasive, given the court&rsquo;s own characterization of the release payment as a release for past infringement.</p> <p>TCL also argued that Ericsson had waived its right to a jury trial in view of it stating, in response to an interrogatory, that the release payment &ldquo;will be determined by the Court at the conclusion of this litigation.&rdquo; The Federal Circuit rejected this contention in view of the record as a whole, concluding that a more reasonable interpretation was that the statement was conditioned upon a jury first determining whether Ericsson&rsquo;s offers were FRAND. The court noted a joint report, filed on the same day as the interrogatory response, set out that a jury would decide whether Ericsson&rsquo;s offers were FRAND. Also, the district court had explicitly acknowledged in a final pre-trial conference order that Ericsson had requested a jury trial and preserved its request, and Ericsson had renewed its objection to the bench trial just before it began.</p> <p>Accordingly, the Federal Circuit vacated the district court&rsquo;s release payment determination. The Federal Circuit also vacated the court&rsquo;s determination that Ericsson&rsquo;s offers were not FRAND and its determination of prospective FRAND royalty rates, given both were predicated on issues common to the release payment. From these holdings, the court also reversed the dismissal of Ericsson&rsquo;s patent infringement claims and TCL&rsquo;s counterclaims as no longer being moot.</p> <p>The TCL decision is significant for companies concerned with FRAND licenses. The fact that a patentee is entitled to a jury trial for past unlicensed conduct can markedly change the negotiating posture between the patentee and a potential FRAND licensee.</p> <p>Fitch Even senior licensing specialist and patent analyst <a href="https://www.fitcheven.com/?t=3&amp;A=13815&amp;format=xml&amp;p=5482">Curtis S. Dodd</a> (not a U.S.-licensed attorney) prepared this alert. For more information on this case, please contact Curtis or a member of Fitch Even&rsquo;s <a href="https://www.fitcheven.com/?t=5&amp;LPA=985&amp;format=xml&amp;p=5480">IP Transactions practice</a>.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts16 Dec 2019 00:00:00 -0800https://www.fitcheven.com/?t=40&an=101376&format=xmlIP Alert: Supreme Court Rules USPTO Can't Recover Attorneys' Fees from Applicants as "Expenses"https://www.fitcheven.com/?t=40&an=101339&format=xml<p>Today, in <a href="https://www.google.com/url?sa=t&amp;rct=j&amp;q=&amp;esrc=s&amp;source=web&amp;cd=1&amp;cad=rja&amp;uact=8&amp;ved=2ahUKEwiE2ujqza7mAhWJWc0KHbUNDWAQFjAAegQIARAC&amp;url=http%3A%2F%2Fwww.supremecourt.gov%2Fopinions%2F19pdf%2F18-801_o758.pdf&amp;usg=AOvVaw0v68eF1afPmsBobxoAePIQ"><em>Peter v. NantKwest, Inc.</em></a>, the U.S. Supreme Court held in a short unanimous opinion that the party who brings a civil action against the USPTO under 35 U.S.C. 145 <b>need not</b> pay the USPTO&rsquo;s attorneys&rsquo; fees as part of the cost of the proceeding. The Court affirmed the 2018 en banc Federal Circuit decision in <i>NantKwest, Inc. v. Iancu, </i>previously discussed <a href="https://www.fitcheven.com/?t=40&amp;an=79210&amp;format=xml&amp;p=5486">here</a><i>.</i></p> <p>As had the Federal Circuit, the Court invoked the &ldquo;American Rule,&rdquo; under which parties to any litigation proceeding are presumed to be required to pay their own attorneys. While Congress may overturn the American Rule by statute, this is only the case when Congress so mandates clearly and unequivocally. In this case, the wording of 35 U.S.C. 145 refers to &ldquo;expense of the litigation,&rdquo; which the Court determined &ldquo;has long referred to a class of expenses commonly recovered in litigation to which attorney&rsquo;s fees did not traditionally belong.&rdquo;</p> <p>Today&rsquo;s decision affirms the longstanding and conventional understanding of the operation of 35 U.S.C. 145 and makes the option of proceeding under this statute more viable than under the USPTO&rsquo;s interpretation of the statute.</p> <p>For more information on this case, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2589&amp;format=xml&amp;p=5482">Allen E. Hoover</a>.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts11 Dec 2019 00:00:00 -0800https://www.fitcheven.com/?t=40&an=101339&format=xml