Fitch Even News Feed

Fitch Even Welcomes 2023 Summer Associates

01 Jun 2023 00:00:00 -0800

We are pleased to welcome law students Christopher Paulson and Jerry Tkach as our summer associates for 2023. Christopher is attending the University of Alabama School of Law, with an expected graduation date of May 2024. Jerry is a student at Chicago-Kent College of Law and is also working toward a May 2024 graduation.

We appreciate having Christopher and Jerry join us this summer, and we look forward to working with them in the months ahead!

Fitch Even Achieves Mansfield Rule Certification Plus Status

23 May 2023 00:00:00 -0800

Fitch Even is thrilled to announce that the firm has achieved Mansfield Certification Plus, solidifying our commitment to diversity, equity, and inclusion (DEI).

The Mansfield Certification, facilitated by Diversity Lab, recognizes the structural changes and actions we have taken over 18 months to diversify leadership in our firm by broadening the slate of talent considered for internal leadership roles and increasing transparency with written and accessible advancement processes and role descriptions. Our Certification “Plus” status indicates that, in addition to successfully meeting the consideration and transparency requirements, our firm has achieved 30 percent representation of historically underrepresented lawyers in current leadership roles and pathway activities.

Why This Matters
The goal of Mansfield is to increase and sustain diversity in law firm leadership through a science-driven method that embeds accountability, transparency, and knowledge sharing into our talent practices. We know that with diverse leadership comes more inclusive and equitable decisions that reflect the needs of our diverse workforce for the benefit of our talent and clients.

What We Do in Practice
What does this mean in practice at our firm? Whenever our leaders make a decision about who to appoint or elect to firm leadership roles, we proactively consider a broad slate of talent including lawyers who are historically underrepresented in law. The same inclusive decision making takes place when we build client pitch teams. And, as part of Mansfield, we also work hard to ensure that our processes for advancement and the job expectations/qualifications for leaders at the firm are transparent. The Mansfield framework helps us ensure that we approach succession planning for the next generation of leaders in an inclusive, structured, and intentional manner consistently across offices and practices.

Proof That It’s Working
As illustrated in this recent American Lawyer article, an extensive analysis by two data science professors shows Mansfield is succeeding at its intended purpose to diversify leadership at firms that stay committed long-term. We, too, have seen and experienced positive progress at our firm.

Fitch Even is pleased to have reached this significant milestone and we will continue to build teams that reflect the diversity of our clients and communities while providing innovative counsel and exceptional service.

We are mindful that our work does not end here. As such, Fitch Even has recommitted to Midsize Mansfield for the 2023–2024 period.

Diversity Lab’s press release can be found here.

Fitch Even Partner Calista Mitchell Speaks on Women in eDiscovery Panel

18 May 2023 00:00:00 -0800

Fitch Even partner Calista J. Mitchell recently was a featured panelist at a Women in eDiscovery program on “Knowing Your Value & Negotiating Your Salary,” on May 16.

During the program, Calista and the other panelists discussed systemic issues that have contributed to income inequity between men and women and how to close the gap by understanding the market and advocating for yourself.

Women in eDiscovery (WiE) is a non-profit organization that provides educational opportunities regarding technology in the legal industry. Since its inception in 2007, Women in eDiscovery has grown globally with thousands of members and 31 chapters.

Fitch Even Associate Alvaro Cure Dominguez Speaks at PatCon: The Annual Patent Conference

16 May 2023 00:00:00 -0800

Fitch Even associate Alvaro Cure Dominguez recently presented at PatCon: The Annual Patent Conference at Northwestern Pritzker School of Law in Chicago on April 15. Alvaro's presentation was on “Misaligned Private-Public Interests in Administrative Patent Litigation.”

Alvaro has experience in patent, trademark, and trade secret litigation and on PTAB patent invalidity proceedings. As a student at Northwestern Pritzker School of Law, Alvaro was enrolled in the school’s Supreme Court Clinic, where he assisted the clinic and practitioners with drafting petitioner, respondent, and amici briefs to the Court and participated in moot courts to help prepare practitioners arguing in front of the Court.

Terrifying Tales of the USPTO's DOCX Filing System

02 May 2023 00:00:00 -0800

Please join Fitch Even for a free webinar, “Terrifying Tales of the USPTO’s DOCX Filing System,” on May 23 at 9:00 a.m. PDT / 10:00 a.m. MDT / 11:00 a.m. CDT / 12 noon EDT.

The USPTO .docx filing system was meant to streamline and automate the agency’s processes but has generated numerous problems since its introduction. As a result, the USPTO has repeatedly delayed implementing the surcharge for filing certain U.S. applications in a format other than .docx.

Join our presenters as they discuss the following topics and more:

Brief history of the USPTO’s earlier structured text filing initiatives
Problems caused by the .docx filing system
Remedial actions in the case of filing errors

Our presenters will be Fitch Even partners Giles N. Turner and Thomas F. Lebens.

Giles’ practice focuses on the preparation and prosecution of patent applications in the chemical and mechanical arts for both domestic and foreign corporations.

Tom manages Fitch Even’s California offices and has extensive experience with patent preparation and prosecution as well as ex parte appeals and post-issuance proceedings before the USPTO.

A recording of this webinar is available through May 22, 2024.

IP Alert: USPTO Considering Significant Changes to AIA Trial Proceedings

27 Apr 2023 00:00:00 -0800

On April 20, the USPTO announced an Advance Notice of Proposed Rulemaking (“Notice”), which sets forth a potpourri of proposed policy changes to AIA trial proceedings for public comment. These proposed changes relate to how the Patent Trial and Appeal Board (PTAB) will handle discretionary denial of petitions for inter partes review (IPR) and post grant review (PGR), petition word-count limits, and settlement practices. The proposed changes will be of interest to all current and future parties to patent infringement litigation, parties that may wish to challenge the validity of a patent at the PTAB, and all patent owners generally.

Most of the proposed changes relate to how the PTAB intends to handle discretionary denial of certain categories of petitions for IPR and PGR. These changes include:

Requiring discretionary denial of petitions filed by certain for-profit, non-competitive entities that the USPTO considers to be abusive;
Requiring discretionary denial of petitions challenging patents belonging to “under-resourced” patent owners, such as startups, small businesses and independent inventors, who have or are attempting to bring products to market;
Clarifying and modifying the considerations for discretionary denial of petitions challenging patent claims already found valid by a district court or the PTAB;
Clarifying and modifying the considerations for discretionary denial of serially-filed and parallel petitions;
Clarifying the requirements for discretionary denial of petitions raising previously addressed prior art or arguments;
Broadening the relevant parties in discretionary denial determinations to include those with “a substantial relationship” with the petitioner or patent owner; and
Clarifying the requirements for discretionary denial of petitions challenging patents also asserted in parallel litigation.

Additional changes being considered also include:

Providing for separate briefing on discretionary denial;
Allowing petitioners to pay additional fees to increase the word count limit for a petition;
As a condition of avoiding discretionary denial, requiring petitioners to file a stipulation that neither they nor their privy or real-party-in-interest have filed a prior post-grant proceeding (PGRs, IPRs, CBMs or ex parte reexaminations) on the challenged claims and agreeing to forgo any subsequent post-grant proceeding if their post-grant proceeding is instituted;
Requiring petitioners to file a separate paper justifying multiple parallel petitions; and
Requiring parties to file all settlement papers when the dismissal of an IPR or PGR is sought, regardless of the stage of the proceeding.

In addition to setting forth some potential rules relating to the above changes, the Notice also sets forth a variety of alternate and often competing proposals for improving IPR and PGR practice. Accordingly, all stakeholders would be well advised to review the Notice and consider submitting comments.

The USPTO is accepting public comments through June 20, 2023. In addition, the Director of the USPTO, Kathi Vidal, is holding a public information session regarding the proposed changes on May 9, 2023 at 12 pm ET. The USPTO has indicated that after it considers public feedback, it will issue more concrete proposed rules in a Notice of Proposed Rulemaking and solicit additional public feedback.

For more information on this topic, please contact Fitch Even partner Paul B. Henkelmann, author of this alert.

Fitch Even IP Alert^®

IP Alert: Federal Circuit Clarifies Standard for Tacking Doctrine in Trademark Applications

21 Apr 2023 00:00:00 -0800

On April 4, in Charles Bertini v. Apple Inc., the Federal Circuit held that a trademark applicant cannot establish priority for every good or service in its application merely because it has priority through tacking in a single good or service listed in its application.

Apple filed Application No. 86659444 for the mark APPLE MUSIC for Class 41 services, including production and distribution of sound recordings and arranging, organizing, conducting and presenting live musical performances. Bertini, a jazz musician, filed a notice of opposition in the Trademark Trial and Appeal Board (TTAB) against Apple’s application based on a likelihood of confusion with his mark APPLE JAZZ which is used in connection with “[a]rranging, organizing, conducting, and presenting concerts [and] live musical performances.”

In addition to owning the APPLE MUSIC application, Apple previously purchased from the Beatle’s Apple Corps. Registration No. 2034964 for the mark APPLE for “gramophone records featuring music” and “audio compact discs featuring music.” During the opposition, Apple argued that, based on its ownership of the APPLE registration, it was entitled to the earlier priority date of August 1968 which preceded Bertini’s date of first use in 1985. The TTAB found that Apple could tack its 2015 use of its applied-for mark APPLE MUSIC onto the August 1968 use of its purchased APPLE registration. Therefore, based on Apple’s priority in the APPLE MUSIC mark, the TTAB dismissed Bertini’s opposition.

On appeal to the Federal Circuit, Bertini argued that the TTAB erred in its decision that Apple’s use of APPLE MUSIC has priority over his use of APPLE JAZZ. More specifically, Bertini claimed that the TTAB only considered whether Apple could tack its use of the APPLE MUSIC mark for one of the several services delineated in the subject application, namely production and distribution of sound recordings.

The court discussed the tacking doctrine which, it noted, allows trademark owners to “modernize and update their trademarks in response to a changing marketplace.” As the standard for tacking is strictly construed, a trademark owner that invokes tacking must demonstrate that the old and new marks are legal equivalents or create the same commercial impression. The court also analyzed the limited reach of tacking in its court, as well as the narrow interpretation of the doctrine in other circuits.

Based on its analysis, the court found that Apple could not invoke the tacking doctrine to claim priority for all of the services listed in its application based on a showing of priority for one service in the application. In particular, the court determined that Apple could not tack its use of APPLE MUSIC for live musical performances onto its use of APPLE for gramophone records. The court also provided further guidance on the proper standard for tacking in connection with different goods or services and determined that an applicant may establish tacking if the goods and services are substantially identical, or “within the normal evolution of the previous line of goods or services.” In this case, the court found that gramophone records and live musical performances are not substantially identical as such performances are not within the normal product evolution of Apple Corps’ gramophone records. Therefore, Apple’s date of priority for its APPLE MUSIC mark was 2015, not 1968, and Bertini thus had priority of use for APPLE JAZZ for live musical performances. Based on its findings, the court reversed the TTAB’s dismissal of Bertini’s opposition.

The Federal Circuit’s decision provides further guidance on the scope of the tacking doctrine in the context of different goods and services. As virtual goods and services become increasingly popular, this case is significant for trademark owners who are seeking to apply for registration of such products or services in the metaverse or virtual realm. It also allows trademark owners to better strategize and enforce their rights against third parties that may erroneously claim priority in different goods or services that are not within the normal product evolution of their prior goods or services.

For more information on this decision, please contact Fitch Even attorney Kerianne A. Strachan, author of this alert.

Fitch Even IP Alert^®

IP Alert: Aaron Judge Makes Triple Play in TTAB Opposition

20 Apr 2023 00:00:00 -0800

On April 12, in Major League Baseball Players Association and Aaron Judge v. Michael P. Chisena, the Trademark Trial and Appeal Board (TTAB) found in favor of the Major League Baseball Players Association (MLBPA) and New York Yankees outfielder Aaron Judge, sustaining their opposition against three trademark applications. The trademarks at issue were HERE COMES THE JUDGE, ALL RISE, and the following design mark:

The applicant, Michael Chisena, applied to register the marks in connection with clothing. Aaron Judge and the MLBPA, however, objected, arguing that the trademarks were already associated with Judge based on prior common law rights.

After starting his Major League Baseball career with the Yankees in 2016, Judge quickly became a well-known name in baseball. In the 2017 season, he was named American League Rookie of the month in April, May, and June and American League Player of the month in June and September. By midsummer, he led the MLB in home runs and on-base percentage.

Media publications and fans quickly began playing on Judge’s surname. In May 2017, he was featured on the cover of Sports Illustrated in an article titled, “All Rise! The Yankees Youth Movement is in Session. The Powerful AARON JUDGE Presiding.” Another publication ran an article featuring Judge titled, “HERE COMES THE JUDGE”. That May, Yankee Stadium also opened “The Judge’s Chamber”: three rows behind Judge’s right field position in which fans are given black “judge’s robe” t-shirts and a foam gavel with the wording “ALL RISE” on it. With Judge’s approval, the MLBPA also began licensing third parties to use judicial-themed phrases on apparel, such as ALL RISE and HERE COMES THE JUDGE, as well as images of gavels, courthouses, and the scales of justice.

On July 10, 2017, Judge won the All-Star Home Run Derby. Four days later, Michael Chisena applied to register ALL RISE and HERE COMES THE JUDGE. Chisena, a resident of Long Island, claimed that he had no knowledge of Aaron Judge but independently arrived at the trademarks for a baseball-themed line of clothing because “baseball is governed by rules and umpires similar to [how] a courtroom proceeding is governed by laws and judges.” He claimed the timing of Judge’s accomplishments and the filing of the trademark applications was coincidence.

The TTAB noted that Chisena’s position “strained credulity” but ultimately did not factor that into its decision. Rather, the core dispute was over which party could establish priority in the trademarks.

The MLBPA included as evidence a declaration from a licensee, BreakingT LLC, stating that the MLBPA had approved a request on July 5, 2017 for BreakingT to sell a t-shirt featuring the wording ALL RISE with a gavel design. BreakingT began to offer the t-shirt for sale that same day. Chisena did not depose BreakingT or otherwise establish that the declaration was inaccurate, and so the TTAB relied on the declaration. Although much of the additional evidence was redacted to the public and not discussed in detail in the opinion, ultimately, the TTAB found that the MLBPA and Judge had established priority.

Mr. Chisena did not address whether a likelihood of confusion existed, apparently conceding the point. Nevertheless, the TTAB analyzed the DuPont factors and found that a likelihood of confusion existed. The TTAB therefore sustained the opposition against all three applications.

Interestingly, in the opposition against Chisena’s baseball diamond design mark, the MLBPA and Judge alleged rights broadly in “judicial symbols”—“especially when used with baseballs and baseball fields,” rather than one specific design. The TTAB found that, because licensees authorized by Judge had sold apparel with various judicial phrases and symbols in connection with Judge, Chisena’s design similarly conveyed the impression that it was authorized by Judge. The decision, in effect, granted quite broad rights to the MLBPA and Judge in an undefined range of design marks.

In 2018, Judge’s mother applied to register ALL RISE and HERE COMES THE JUDGE on behalf of the Aaron Judge All Rise Foundation, with Judge’s permission. The applications have been suspended pending the outcome of Chisena’s applications. The TTAB’s decision should now clear the path for Mrs. Judge’s applications to register, unless Chisena appeals further.

For more information on this ruling, please contact Fitch Even partner Danielle K. Muñoz, author of this alert.

Fitch Even IP Alert^®

IP Alert: Federal Circuit Addresses Burden of Proof for IPR Estoppel

07 Apr 2023 00:00:00 -0800

On April 3, in Ironburg Inventions Ltd. v. Valve Corp., the Federal Circuit articulated a standard for applying inter partes review (IPR) estoppel on grounds a petitioner “reasonably could have raised” under 35 U.S.C. § 315(e)(2). Specifically, the court held that IPR estoppel applies to “invalidity grounds a skilled searcher conducting a diligent search reasonably could have been expected to discover.” The court further held that the burden of proof “rests on the patent holder, as the party asserting and seeking to benefit from the affirmative defense of IPR estoppel.”

In 2015, Ironburg sued Valve for infringement. Valve then filed an IPR that the Patent Trial and Appeals Board (PTAB) instituted. After the PTAB issued its final written decision in the IPR, Valve presented before the district court additional invalidity grounds that it borrowed from a third party’s later-filed IPR petition. Ironburg filed a motion with the district court asserting that Valve was estopped under § 315(e)(2) from raising the additional invalidity grounds because Valve reasonably could have raised them in its own earlier-filed IPR. The district court granted Ironburg’s estoppel motion, which Valve appealed.

On appeal, the Federal Circuit vacated the district court’s estoppel ruling, finding that the burden of proving that the asserted grounds are “grounds a skilled searcher conducting a diligent search reasonably could have been expected to discover” had been improperly imposed on the Valve. The Federal Circuit reasoned that the third party that filed the later IPR may have used “many other possible ways . . . that have nothing to do with what a skilled searcher would have found,” and that if the third party’s search involved “extraordinary measures” or “‘scorched earth’ tactics,” they would have gone beyond “reasonable diligence.” The court further found that Ironburg had not produced any evidence of the reasonableness of the third party’s search, which left a hole in the record. The court remanded the case for the district court to determine whether Ironburg could meet its burden.

This decision is significant in that it was the first time the Federal Circuit fully addressed the “reasonably could have raised” standard set forth in § 315(e)(2). The fact that an invalidity ground was raised in a third party’s IPR does not appear to be enough to establish that a defendant could reasonably have raised the ground in its own petition. A patent owner seeking to assert an IPR estoppel defense may consider providing evidence showing the level of diligence the third party exercised in finding the prior art references.

For more information on this holding, please contact Fitch Even partner Karen J. Wang or associate Hyojeong Son, authors of this alert.

Fitch Even IP Alert^®

Fitch Even Partner Nikki Little Moderates In-House Counsel Life Webinar Series

24 Mar 2023 00:00:00 -0800

On March 21, Fitch Even partner Nikki Little moderated a virtual panel presented by Chicago Women in IP (ChiWIP) and the Association of Corporate Counsel’s Women In The House (WITH) Network. This program is the second installment in a webinar series hosted by ChiWIP’s In-House Advisory Committee that focuses upon common issues encountered when transitioning into and amongst in-house counsel positions. Part 1 focused upon the considerations that go into researching and interviewing for an in-house counsel job.

Part 2 focused upon various aspects of compensation for in-house roles, including the different structures used in public, private, and not-for-profit companies, the importance of researching compensation data across demographics, and negotiating salaries, raises, bonuses, and title changes. The panel featured a lively discussion amongst panelists Laurel Palluzi, Director and Head of Legal at solo.io, Susanna McDonald, Vice President and Chief Legal Officer at Association of Corporate Counsel, and Mindy Sircus, Managing Director of In-House Counsel Recruiting at Major, Lindsey & Africa.

Recordings of this webinar series can be accessed on the ChiWIP website here.

Nikki is a cofounder of ChiWIP and currently is a member of its Board of Directors, as well as co-chair of its In-House Advisory Committee and a member of its Special Events Committee. ChiWIP 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.