Fitch Even News Feedhttps://www.fitcheven.com/?t=39&format=xml&stylesheet=rss&directive=0&records=20en-us30 Jul 2021 00:00:00 -0800firmwisehttp://blogs.law.harvard.edu/tech/rssFitch Even Partner David Kogan Speaks at International Economic and Venture Forumshttps://www.fitcheven.com/?t=40&an=118230&format=xml<p>In recent months, Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=4141&amp;format=xml&amp;p=5482">David M. Kogan</a> was an invited speaker at two conferences, the <a href="https://www.ivfrt.ru/en/events/russian-venture-forum-2021/">Russian Venture Forum</a> and the <a href="https://forumspb.com/en/about/?lang=en">St. Petersburg International Economic Forum</a>. In both cases, David was the sole U.S. intellectual property law attorney serving as a panelist for the given programs.</p> <p>On April 8, during the Russian Venture Forum, David participated in &ldquo;<a href="https://russianventureforum.ru/en/program/31">A Deal with Intelligence: Heading for Capitalized IP</a>,&rdquo; a 90-minute panel discussion on the importance of IP protection to start-up companies in ensuring the core technology of the start-up is protected against its competition and attracting potential investors through a comprehensive patent portfolio.&nbsp;David and the other panelists also reviewed the differences between Russian and U.S. patent law, as well as the steps involved in the patenting process and their related costs.</p> <p>On June 5, during the St. Petersburg International Economic Forum, David participated in &ldquo;<a href="https://forumspb.com/en/programme/business-programme/94255/">Intellectual Property: New Opportunities for Young Entrepreneurs</a>,&rdquo; a panel discussion on the burgeoning role of intellectual property in the high-tech sector and in the science and technology industry in general. The panelists explored how best to encourage and support young innovators from a wider range of backgrounds and educate them on the patent process and its importance to entrepreneurs.&nbsp;<br /> &nbsp;</p>Professional Activities23 Jul 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=118230&format=xmlChicago Attorney Tiffany Cunningham Appointed to Federal Circuit in Historic Votehttps://www.fitcheven.com/?t=40&an=118184&format=xml<p>Yesterday the U.S. Senate confirmed the appointment of Chicago-based patent litigator Tiffany P. Cunningham to the U.S. Court of Appeals for the Federal Circuit in a bipartisan 63 to 33 vote. Notably, Ms. Cunningham makes history as the first Black judge to sit on the Federal Circuit bench. She will be filling the seat of Judge Evan J. Wallach, who took senior status at the end of June. In doing so, the 12 active Federal Circuit judgeships will now be split evenly between men and women for the first time.</p> <p>President Joe Biden announced his intent to nominate Cunningham on March 30 and sent her nomination for the Federal Circuit seat to the Senate on April 19. On May 26, the Senate Judiciary Committee questioned Cunningham during a brief nomination hearing. During the hearing, Sen. Cory Booker reflected on the historic nature of Cunningham&rsquo;s nomination, concluding &ldquo;[W]e have to mark these moments where we are making extraordinary progress&mdash;the witness before us today is an extraordinary human being, by any measure.&rdquo;</p> <p>Cunningham, currently a partner at the Chicago office of Perkins Coie, is a native of Detroit. She earned a bachelor's degree in chemical engineering from the Massachusetts Institute of Technology in 1998 and graduated from Harvard Law School in 2001. During her nomination hearing, Sen. Dick Durbin asked Cunningham why she wanted to step away from her highly successful litigation practice to serve on the bench. She responded that &ldquo;this is literally my dream job,&rdquo; recalling how during her first days of clerking for Federal Circuit Judge Timothy Dyk in 2001, she noticed pictures of the judges on the walls&mdash;&quot;a court that had fine, fine jurists,&rdquo; but all were white and only two were women. &quot;At that point in time,&rdquo; Cunningham explained, &ldquo;I kind of pinned my mental vision board that I hoped that one day, I could be a judge at that court. So I'm truly humbled to be sitting here before you today, and it's really a dream job that I&rsquo;ve aspired to.&rdquo;</p> <p>Fitch Even congratulates Tiffany Cunningham and joins the chorus of IP professionals welcoming her appointment to the Federal Circuit. We are excited to witness this significant milestone and applaud the opportunity for her to bring her substantial experience and impressive scope of knowledge to the court.<br /> &nbsp;</p>Firm News20 Jul 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=118184&format=xmlFitch Even Partner Tom Lebens to Moderate AIPLA Webinar on PTAB <i>Fintiv</i> Factorshttps://www.fitcheven.com/?t=40&an=118160&format=xml<p>Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2596&amp;format=xml&amp;p=5482">Thomas F. Lebens</a> will moderate the AIPLA CLE webinar &ldquo;Discretionary Denials Revisited: The New Politics of <i>Fintiv</i>&rdquo; on July 20 from 11:30 a.m. to 1:00 p.m. CDT.</p> <p>The webinar, also featuring Scott McKeown of Ropes &amp; Gray, will discuss the Patent Trial and Appeal Board's <i>Fintiv</i> factors, which the PTAB uses to decide whether to decline instituting <i>inter partes</i> review under 35 U.S.C. &sect; 314(a) based on parallel federal court litigation. The webinar will explore current trends in the relevant law, as well as what to expect going forward as the USPTO awaits a new Senate-appointed director.</p> <p>For more information and to register, please visit the <a href="https://www.aipla.org/detail/event/2021/07/20/default-calendar/aipla-cle-webinar-discretionary-denials-revisited-the-new-politics-of-fintiv">AIPLA website</a>.<br /> &nbsp;</p>Professional Activities19 Jul 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=118160&format=xmlIP Alert: Federal Circuit Reaffirms Patent Owners Need Not Prove Infringement at the Pleading Stagehttps://www.fitcheven.com/?t=40&an=118144&format=xml<p>On July 13, in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-2218.OPINION.7-13-2021_1803327.pdf"><i>Bot M8 LLC v. Sony Corporation of America</i></a>, the Federal Circuit reaffirmed the pleading standards for patent owners. A complaint does not need to set forth facts proving infringement; instead it is sufficient if it puts the alleged infringer on notice of what activity is accused of infringement. Notably, this does not require an element-by-element pleading of infringement. The relevant inquiry is whether the factual allegations are sufficient to show a plausible claim for relief. Even where proof of the facts pled is improbable or a recovery unlikely, a pleading may still be sufficient. Applying this standard, the Federal Circuit reversed the dismissal of two of the patent owner&rsquo;s four causes of action alleging patent infringement.</p> <p>Patent owner Bot M8 LLC originally brought suit against Sony in the Southern District of New York, alleging infringement of five patents. The action was transferred to the Northern District of California, where the district court, of its own volition, ordered Bot M8 to amend its complaint. Upon receiving the amended complaint, Sony moved to dismiss for failure to state a claim, alleging that the amended allegations were conclusory and unsupported by factual allegations sufficient to show a plausible claim for relief. The district court granted the motion regarding four of the patents and denied Bot M8 a second opportunity to supplement its allegations. On the fifth patent, the district court granted summary judgment after finding it directed to an abstract idea and thus invalid under 35 U.S.C. &sect; 101.</p> <p>On appeal, the Federal Circuit affirmed the district court&rsquo;s dismissal on two of Bot M8&rsquo;s asserted patents but reversed as to the other two. In reversing, the Federal Circuit found the district court erred by requiring Bot M8 to &ldquo;explain in [the] complaint every element of every claim&rdquo; for which Bot M8 alleged infringement, or to otherwise explain why such an element-by-element explanation could not be done. The Federal Circuit reiterated that the Federal Rules of Civil Procedure do not require a plaintiff to &ldquo;plead facts establishing that each element of an asserted claim is met.&rdquo; Instead, a plaintiff must provide sufficient notice of the activity accused of infringing and support its grounds with sufficient factual content. While this requires more than reciting claim elements and concluding the accused method or device meets such elements, the factual content need not rise to the level of demonstrating infringement by a probability. The court acknowledged that the level of detail required for such allegations will vary based upon factors such as the complexity of the technology, the materiality of any given element to practicing the asserted claims, and the nature of the allegedly infringing device.</p> <p>Applying these standards, the Federal Circuit held that the district court properly dismissed two of the plaintiff&rsquo;s causes of action but required &ldquo;too much&rdquo; with respect to the remaining two.</p> <p>The Federal Circuit upheld dismissal of the first cause of action, finding that Bot M8&rsquo;s allegations were inconsistent with its infringement theories. The court noted that Bot M8&rsquo;s amended complaint contained &ldquo;too much rather than too little&rdquo; detail such that it had &ldquo;essentially pleaded itself out of court.&rdquo; In particular, the court found inconsistencies in Bot M8&rsquo;s &ldquo;kitchen sink&rdquo; approach that rendered Bot M8&rsquo;s infringement claim impossible, holding that &ldquo;factual allegations [that] are actually <i>inconsistent</i> with and contradict infringement are . . . insufficient to state a plausible claim.&rdquo;</p> <p>For the second cause of action, the Federal Circuit upheld dismissal even though Bot M8 had argued that the district court erred by requiring it to provide source code in support of its allegations. The Federal Circuit agreed that source code is not required at the pleading stage and that it would have been error to dismiss on this basis. However, it nonetheless found the dismissal proper because Bot M8 had merely recited the claim elements and corresponding conclusions without supporting factual allegations. It is unclear whether factual allegations other than source code could have been provided in support of the claims.</p> <p>The Federal Circuit reversed as to the remaining two causes of action, rejecting the district court&rsquo;s finding that Bot M8&rsquo;s allegations &ldquo;track the claim language too closely&rdquo; to support a plausible inference of infringement. The Federal Circuit found the amended complaint plausibly alleged infringement in a manner that put Sony on sufficient notice, reiterating that Bot M8 was not required to prove its case at the pleading stage.</p> <p>Patent owners preparing complaints, or alleged infringers assessing the sufficiency of a complaint filed against them, should take careful note of the guideposts reiterated by the Federal Circuit in this case. Patent owners need to walk the line between parroting claim language with conclusory allegations that the accused method or device meets a particular claim and providing over-inclusive contentions that could be held inconsistent with their infringement allegations. For their part, alleged infringers should take a close look at the complaint for any allegations that remain conclusory or that could be inconsistent with the claim requirements.</p> <p>For more information on this topic, please contact Fitch Even attorney <a href="https://www.fitcheven.com/?t=3&amp;A=2598&amp;format=xml&amp;p=5482">Nikki Little</a>, author of this alert.<br /> <b><br /> Fitch Even IP Alert<sup>&reg;</sup>&nbsp; &nbsp;</b></p>IP Alerts15 Jul 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=118144&format=xmlIP Alert: USPTO Issues Guidance on Prophetic Exampleshttps://www.fitcheven.com/?t=40&an=118147&format=xml<p>On July 1, the USPTO published a <a href="https://www.govinfo.gov/content/pkg/FR-2021-07-01/pdf/2021-14034.pdf">notice</a> in the Federal Register with guidance regarding the proper presentation of prophetic and working examples in a patent application. Prophetic examples (sometimes referred to as &ldquo;paper examples&rdquo;) describe experiments that have not been performed and may also describe predicted or simulated results. A working example, in contrast, is one that describes work actually performed or experimental results actually achieved.</p> <p>The guidance requires that examples be described to clearly distinguish between prophetic and working examples. According to MPEP 608.01(p), prophetic examples may be written in future or present tense but not in past tense. The guidance advises that the proper tense should be used when describing experiments and results to avoid ambiguity in their interpretation.</p> <p>A description that results in ambiguity as to whether the example is a working or prophetic example may result in a rejection under 35 U.S.C. &sect; 112 for lack of enablement and/or written description. According to the guidance, the examiner may make such a rejection &ldquo;[i]f the characterization of the results, when taken in light of the disclosure as a whole, reasonably raises any questions as to whether the results from the examples are actual.&rdquo;</p> <p>If such a rejection is made, the applicant may respond by (1) providing actual test results or an example that has been conducted, or (2) providing relevant arguments or a declaration that there is a strong reason to believe the predicted results would be obtained. In doing so, the applicant should not introduce new matter into the application.</p> <p>The guidance advises that proper tense should be used so that readers can readily distinguish between actual and predicted results. Any ambiguities are to be resolved so that a person of ordinary skill reading the disclosure can rely on the application disclosure as an accurate description of the experiments. To help the reader readily distinguish prophetic and working examples, the guidance states that a best practice is to label examples as prophetic or otherwise separate them from working examples to avoid ambiguity in their interpretation.</p> <p>Finally, the guidance states that using past tense when describing prophetic examples may raise duty of disclosure and inequitable conduct issues. As required by MPEP 2004, &ldquo;[c]are should be taken to see that inaccurate statements, inaccurate evidence or inaccurate experiments are not introduced into the record, either inadvertently or intentionally.&rdquo; Inaccurate descriptions may violate the duty of candor and good faith in dealing with the USPTO, in accordance with 37 C.F.R. &sect; 1.56(a).</p> <p>Given the serious threat to the enforceability of patents based on the language used to describe the examples, patent drafters and applicants will want to carefully review any examples included in their applications before filing.</p> <p>For more information regarding this guidance, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2607&amp;format=xml&amp;p=5482">Calista J. Mitchell</a>, author of this alert.<br /> <b><br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts15 Jul 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=118147&format=xmlJohn F. Flannery (1928–2021)https://www.fitcheven.com/?t=40&an=118114&format=xml<p style="text-align: center;">&nbsp;<img src="https://www.fitcheven.com/2E8FB4/assets/images//John_Flannery_180x225_7613.jpg" alt="" width="150" vspace="0" hspace="0" height="195" border="0" align="absmiddle" /><b><br /> <br /> In Memoriam</b></p> <p>It is with great sadness that we report the passing on July 10, 2021, of <b>John F. Flannery</b>, a brilliant trial lawyer, respected colleague, and dear friend. John spent his entire legal career with Fitch Even, starting as a law clerk in 1957 while in law school and joining our firm in 1959 as an associate after passing the bar. With his strong background in engineering, keen aptitude for writing, and knack for persuasive argument, he soon worked his way into becoming a gifted trial lawyer. In 1981, John was made a name partner. He led Fitch Even&rsquo;s litigation practice for much of his 50+ years with the firm, working well into his 80s and inspiring us all with his passion for the law and his unfailingly upbeat nature.</p> <p>John earned a degree in electrical engineering from the University of Illinois in 1950, continuing his studies as a graduate student at Northwestern University. He began his professional career as an engineer and soon set his sights on a management role. To build his credentials for an executive position, John decided to attend law school at Loyola University. Fortunately for Fitch Even and the legal community, he changed course and became an intellectual property lawyer.</p> <p>John came to be one of the most active first-chair trial attorneys in the intellectual property field, using his formidable skills to secure favorable verdicts in a broad range of IP cases. While he advocated fiercely for the firm&rsquo;s clients, John did so in a manner that invariably drew respect and admiration from his adversaries.</p> <p>His extensive experience and stellar reputation led John to be elected as a Fellow of the American College of Trial Lawyers, which limits its membership to no more than 1% of the total lawyer population of any state. Fellowship is extended only by invitation to experienced trial lawyers who have mastered the art of advocacy while maintaining the highest standards of ethical conduct, professionalism, civility, and collegiality throughout their careers. John epitomized those qualities and, by example, taught their meaning and value to lawyers everywhere.</p> <p>John accomplished many notable firsts during his legal career. Only a year out of law school, John was able to obtain the patent on the first videotape recorder on behalf of firm client Ampex, after lawyers from other firms had tried and failed. A significant technological breakthrough, this invention became a resounding success within the broadcast and professional community. John went on to enforce the patent in court and lead a successful worldwide licensing campaign, resulting in substantial royalties to the client.</p> <p>John was also the first to sufficiently uphold the patentability of a software-based diagnostic system as lead trial counsel in the landmark case <i>Arrhythmia Research Technology v. Corazonix Corp</i>. This groundbreaking decision was instrumental in the explosion of software-based patents and the creation of a new area for IP practitioners.</p> <p>True to form, John was one of the first patent trial attorneys to try a case to a jury. Until the U.S. Court of Appeals for the Federal Circuit was established in 1982, jury trials had been rare. John&rsquo;s artful ability to explain complex facts and establish rapport proved to work well with juries.</p> <p>Not only respected by his peers, John was also a favorite of the young attorneys he worked with at Fitch Even. He showed a genuine interest in helping them further their careers, always making time to discuss their work product in detail. Those moments remain etched in the memories of many of our now-established lawyers. John&rsquo;s training continues to guide those who were fortunate enough to have had him as a mentor.</p> <p>John&rsquo;s greatest passion was his beloved family, ever devoted to his late wife Catherine and their 13 children, 19 grandchildren, and 12 great-grandchildren. Our heartfelt condolences go out to his surviving family. He leaves quite a legacy, and will surely be missed by all who knew him.&nbsp;<br /> &nbsp;</p>Firm News13 Jul 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=118114&format=xmlFitch Even Partner Paul Henkelmann Published in ABA <i>Business Law Today</i>https://www.fitcheven.com/?t=40&an=118100&format=xml<p>An article written by Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2587&amp;format=xml&amp;p=5482">Paul B. Henkelmann</a> is featured in <i>Business Law Today</i>, published by the ABA Business Law Section. In the article, &ldquo;<a href="https://businesslawtoday.org/2021/06/your-patent-has-been-challenged-in-an-ipr-now-what/">Your Patent Has Been Challenged in an IPR; Now What?</a>,&rdquo; Paul explains what <i>inter partes</i> review entails, the steps a patent owner should take after receiving an IPR petition, and additional issues that need to be considered.</p> <p>Paul has substantial experience in patent post-grant proceedings, IP litigation, U.S. and international patent prosecution, and IP portfolio management. Nationally recognized for his active practice before the Patent Trial and Appeal Board, Paul has represented clients in dozens of IPR proceedings.</p> <p>To access this article, please visit the <a href="https://businesslawtoday.org/2021/06/your-patent-has-been-challenged-in-an-ipr-now-what/"><i>Business Law Today</i> website.</a><br /> &nbsp;</p>Professional Activities12 Jul 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=118100&format=xmlIP Alert: Federal Circuit Mandates Transfer Despite Plaintiff's Attempt to Manipulate Venuehttps://www.fitcheven.com/?t=40&an=118042&format=xml<p>On June 30, in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/21-139.ORDER.6-30-2021_1797987.pdf"><i>In re: Samsung Electronics Co., Ltd., et al.</i></a><i>, </i>the Federal Circuit held that it was not bound by the plaintiffs&rsquo; attempts to manipulate venue and granted petitions for writs of mandamus filed by defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., LG Electronics Co., Ltd. and LG Electronics USA, Inc. The writs order the U.S. District Court for the Western District of Texas (Judge Albright presiding) to transfer venue to the Northern District of California in patent infringement actions brought by plaintiffs Ikorongo Texas LLC and Ikorongo Technology LLC regarding four patents. The Federal Circuit discounted certain prelitigation transactions, through which the plaintiff attempted to exclude the Northern District of California as a venue where the suit &ldquo;might have been brought&rdquo; and to sway the merits of the private and public interest factors against transfer under 28 U.S.C. &sect; 1404(a).</p> <p>The two plaintiffs were non-practicing entities claiming to be unrelated, but they were commonly owned by five individuals with an office in North Carolina. Ikorongo Tech, a North Carolina company, owned the four patents. Ten days before filing suit, Ikorongo Tech assigned to Ikorongo Texas the exclusive rights to sue for infringement of those patents within specified parts of Texas, including certain counties in the Western District of Texas, while Ikorongo Tech retained rights to the patents in the rest of the country. Ikorongo Texas alone initially filed complaints in two separate actions in the Western District of Texas. The next day, Ikorongo Tech was added to the suits in amended complaints.</p> <p>In moving to transfer venue to the Northern District of California, defendants Samsung and LG argued that three of the five accused applications used in the defendants&rsquo; products were developed by third parties in the Northern District of California and no targeted application was developed in the Western District of Texas. They further argued that potential witnesses and sources of proof, including two of the named inventors, were located in the Northern District of California, and that no source of proof or potential witness was located in the Western District of Texas.</p> <p>In denying the motion to transfer, the district court had held that the defendants failed to establish the threshold requirement that the suits, even as amended to include Ikorongo Tech, &ldquo;might have been brought&rdquo; in the Northern District of California because Ikorongo Texas&rsquo;s rights under the asserted patents could not have been infringed in the Northern District of California. Therefore, the district court held that venue over the entirety of the actions was improper under section 1400(b). Alternatively, the district court held that the private and public interest factors weighed against transfer to the Northern District of California &ldquo;for the convenience of parties and witnesses, in the interest of justice&rdquo; under section 1404(a).</p> <p>In granting the petitions for writ of mandamus and ordering transfer of venue, the Federal Circuit held that the suits &ldquo;might have been brought&rdquo; in the Northern District of California. The court first rejected the plaintiffs&rsquo; argument that the initial complaints filed only by Ikorongo Texas (which asserted infringement occurring only in the Western District of Texas) governs the inquiry. Instead of looking only at the original complaints, the court focused on the amended complaints and stated that the original complaints were &ldquo;dead letter[s]&rdquo; and &ldquo;no longer performed[ed] any functioned in the cases[s]&rdquo; (quoting from <i>ConnectU LLC v. Zuckerberg</i>).&nbsp;</p> <p>The Federal Circuit held, however, that the suit might have been brought in the Northern District of California because it was not bound by the plaintiffs&rsquo; efforts to manipulate venue through its pre-suit creation of Ikorongo Texas and assignment of the patents to it. Noting that Ikorongo Texas &ldquo;seems to exist for the sole purpose of limiting venue to the Western District of Texas&rdquo; and its presence &ldquo;is plainly recent, ephemeral and artificial&mdash;just the sort of maneuver in anticipation of litigation that has been routinely rejected,&rdquo; the court held that it &ldquo;need not consider separately Ikorongo Texas&rsquo;s geographically bounded claims.&rdquo; The court further stated that &ldquo;disregarding this manipulation, Ikorongo Tech could have filed suit in the Northern District of California.&rdquo; &nbsp;</p> <p>The Federal Circuit also maintained that the way the district court balanced convenience and fairness factors against practical and public concerns factors was an abuse of discretion. The Federal Circuit noted that the district court erroneously failed to give any weight to the presence of possible party witnesses in the Northern District of California and erroneously discounted the convenience of third-party witnesses by presuming that &ldquo;only a few &hellip; non-party witnesses will likely testify at trial.&rdquo; The Federal Circuit also noted that even if not all witnesses testify, with no witnesses &ldquo;on the other side of the ledger, the factor strongly favors transfer.&rdquo; In disagreeing with the district court&rsquo;s discounting of the local interest in the case in the Northern District of California where the third-party applications were developed, the Federal Circuit rejected the district court&rsquo;s statement that the local interest in patent cases is &ldquo;generally a fiction,&rdquo; stating, &ldquo;Local interests are not a fiction, and the record evidence here shows a substantial local interest.&rdquo; &nbsp;&nbsp;</p> <p>This decision is notable in demonstrating that attempts to manipulate venue through pre- litigation transactions may be viewed with suspicion and ignored by a court in determining the propriety of a transfer of venue.</p> <p>For more information regarding this matter, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2581&amp;format=xml&amp;p=5482">Karl R. Fink</a>, author of this alert.<br /> <b><br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts07 Jul 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=118042&format=xmlIP Alert: Supreme Court Sets Boundaries for Assignor Estoppel in <i>Minerva Surgical v. Hologic</i>https://www.fitcheven.com/?t=40&an=118049&format=xml<p>The U.S. Supreme Court&rsquo;s June 29 decision in <a href="https://www.supremecourt.gov/opinions/20pdf/20-440_9ol1.pdf"><i>Minerva Surgical, Inc. v. Hologic</i>, <i>Inc.</i></a> has important implications for inventors who assign patent rights, employers to whom employees assign patent rights, other assignees, and litigants in patent infringement suits involving patents in which rights were assigned. Historically, assignor estoppel barred assignors of patent rights from challenging the validity of the rights they assigned. In <i>Minerva</i>, the Supreme Court limited the doctrine of assignor estoppel to &ldquo;when, and only when, the assignor&rsquo;s claim of invalidity contradicts explicit or implicit representations [they] made in assigning the patent.&rdquo;</p> <p>The inventor in <i>Minerva</i>, Csaba Truckai, assigned his rights in a patent application to Novacept Inc., a company that Truckai cofounded, for a moisture-<i>permeable</i> applicator. Later Cytyc Corporation acquired Novacept, and subsequently Hologic acquired Cytyc. Truckai left Hologic and founded Minerva Surgical, where he developed a moisture-<i>impermeable</i> applicator, which Minerva began selling. Hologic added a claim to the patent application that Truckai had assigned to encompass applicators generally, without regard to whether they are moisture permeable. Hologic then sued Minerva for infringement of a patent that had issued from the altered patent application. Minerva sought to defend the suit by asserting that the patent claim for applicators generally was invalid as not supported by the written specification. Hologic argued that Truckai and Minerva were barred by assignor estoppel from challenging the validity of the patent. The district court agreed, holding that assignor estoppel barred Minerva&rsquo;s invalidity defense. The Court of Appeals for the Federal Circuit affirmed on that ground.</p> <p>After granting certiorari to review, the Supreme Court upheld the doctrine of assignor estoppel but found that the Federal Circuit failed to recognize the proper limits of the doctrine, which the Court stated are defined by its equitable basis. The Court proceeded to clarify the bounds of assignor estoppel. To summarize, assignor estoppel applies when representations made by an assignor are inconsistent with the assignor&rsquo;s later challenge to a patent&rsquo;s validity.</p> <p>According to the Court, the assignor&rsquo;s original warranty need not be express; the assignment of specific patent claims carries with it an implied assurance by the assignor of the claim&rsquo;s validity.</p> <p>For assignor estoppel to apply, there must be a contradiction between an assignor&rsquo;s explicit or implicit warranty and a later challenge to a patent&rsquo;s validity. The Court provided three examples of situations where assignor estoppel does not apply.</p> <p>Of great relevance to employment agreements, the Court stated, &ldquo;One example of non-contradiction is when the assignment occurs before an inventor can possibly make a warranty of validity as to specific patent claims.&rdquo; An employee&rsquo;s assignment to his employer of rights to any future inventions made during the course of employment cannot estop him from alleging a patent&rsquo;s validity in later litigation. In that situation, an invention does not yet exist, so the assignment of the future invention contains no representation that a patent for the invention is valid. There being no representation of validity, alleging invalidity creates no conflict, and assignor estoppel does not apply to such assignments.</p> <p>A second example of non-contradiction cited by the Court is where the law changes so that a patent that was valid at the time it was assigned is no longer valid. In that case also the Court said no estoppel bars the assignor from alleging a claim&rsquo;s invalidity based on a change in the law. The assignor&rsquo;s validity challenge is not inconsistent with any representation by the assignor.</p> <p>The third example given by the Court where assignor estoppel does not apply is another post-assignment development&mdash;where a change is made to the claims after the assignment. Where the changed claims are materially broader than the claims that were assigned, the assignor did not warrant the validity of the new claims. This was the situation in <i>Minerva</i>. According to the Court, &ldquo;[t]he limits of the assignor&rsquo;s estoppel go only so far as, and not beyond, what he represented in assigning the patent application.&rdquo;</p> <p>In conclusion, the genesis of any assignor estoppel is an assignor&rsquo;s explicit or implicit representation of a patent claim&rsquo;s validity when an assignment of the patent claim is made. Absent a conflict with such an explicit or implicit representation by the assignor made in assigning patent rights, an invalidity defense likely raises no concern of fair dealing, and assignor estoppel will not apply.</p> <p>For more information regarding this decision, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=18289&amp;format=xml&amp;p=5482">Stanley A. Schlitter</a>, author of this alert.<br /> <b><br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts07 Jul 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=118049&format=xmlFitch Even Partner Nikki Little Named a 2021 "Salute! Top 50 Women in Law" Honoreehttps://www.fitcheven.com/?t=40&an=117974&format=xml<p>Congratulations to Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2598&amp;format=xml&amp;p=5482">Nikki Little</a> on being recognized by the <i>Chicago Daily Law Bulletin</i> and <i>Chicago Lawyer</i> magazine as a 2021 &ldquo;Salute! Top 50 Women in Law&rdquo; <a href="https://www.chicagolawbulletin.com/women-law-leaders/attorneys/2021/little">honoree</a>.</p> <p>Chicago-area nominees are evaluated by the <i>Chicago Daily Law Bulletin</i> and <i>Chicago Lawyer</i> Women&rsquo;s Advisory Board and chosen by the CDLB and CL selection committee for their work to mentor and promote other women in the profession, for their success in the legal community, and for being a shining example of leadership.</p> <p>Nikki is an IP litigator who represents 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. 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>Firm News30 Jun 2021 00:00:00 -0800https://www.fitcheven.com/?t=40&an=117974&format=xml