Fitch, Even, Tabin & Flannery LLP will present a free webinar, “American Axle: Does Patent Subject Matter Eligibility Depend on Enablement?,” featuring Fitch Even attorneys Stanley A. Schlitter and Andrew C. Wood.

The event will be on Thursday, January 30, 2020, at 9 am PST / 10 am MST / 11 am CST / 12 noon EST. It will also be available as an on-demand webinar after the presentation.

In American Axle & Mfg. Inc. v. Neapco Holdings LLC, the Federal Circuit affirmed a district court ruling that American Axle’s drive shaft patent is ineligible under 35 U.S.C. § 101 because the claims covered an application of a law of nature. American Axle’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 § 112 enablement requirement to § 101 subject matter eligibility. In general, the decision has created further uncertainty about what a patentee needs to do to meet the requirements of § 101.

During this webinar, the presenters will discuss the following:
• The district court and Federal Circuit decisions in this case
• Arguments presented in the amici briefs
• How American Axle comports with the USPTO’s patent eligibility guidance
• Strategies for litigators and prosecutors regarding Alice in view of American Axle

Register for the webinar.

The U.S. Court of Appeals for the Federal Circuit reversed a district court decision that retained jurisdiction over a breach of contract action, finding that the action did not sufficiently implicate issues of patent law and instead was simply a state law contract case for past royalties, reports McDermott Will & Emery via Lexology.

One of the parties to a case involving patents and royalties filed suit, alleging breach of contract and other equitable state law claims.

The defendant asserted counterclaims of breach of contract, fraud, negligent misrepresentation, restitution and breach of fiduciary duty. Both parties relied on diversity to establish subject matter jurisdiction.

Read the article.

Fitch, Even, Tabin & Flannery LLP will present a free webinar, “Presenting Alice-Friendly Patent Claims: Is McRo Worth a Second Look?,” featuring Fitch Even partner Steven G. Parmelee.

The event will be Wednesday, Oct. 25, 2017, at 9 am PDT / 10 am MDT / 11 am CDT / 12 noon EDT.

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.

While the Federal Circuit has identified small precedential islands of relative safety, the court has yet to chart a veritable Northwest Passage through which one can safely navigate the risks and concerns presented by the Supreme Court’s Alice decision, the firm says on its website.

Or have they?

McRo, Inc. v. Bandai Namco Games America, Inc., et al. is sometimes considered for its rather tepid and, to date, somewhat inconsequential consideration of preemption issues. McRo’s analysis and holding regarding abstractness, however, is perhaps more valuable to those writing and prosecuting patent applications than has been generally acknowledged to date.

During this webinar, presenter Steve Parmelee will be explore these questions:
• Whether McRo presents a new two-step abstractness analysis that offers useful and practical opportunities
• If so, whether such an opportunity is “more than a drafting effort designed to monopolize the [abstract idea] itself”

He will also share these insights, among others:
• Anecdotal McRo prosecution experience at the USPTO
• Claim and specification drafting tips

Following the live event, a recording of the webinar will be available to view for one year at www.fitcheven.com.

Register for the webinar.

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Fitch, Even, Tabin & Flannery LLP will present a free webinar, “Full Disclosure: Bridging the Information Gap Between Inventors and the Patent System,” featuring Fitch Even partner Michael J. Krautner.

The webinar will take place on Thursday, April 27, 2017, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

In a release, the firm said patents can be extremely valuable business assets, but only as valuable as the information they convey. Before a patent can be monetized, it will be scrutinized by myriad individuals — inventors, attorneys, examiners, judges, juries, and business leaders — each of whom will interpret the patent in the light most favorable to their objective. As a patent filer, it’s vital to ensure inventors provide clear, detailed, and accurate descriptions of their inventions so they’ll withstand scrutiny and generate the optimal return on investment.

Inventors can provide abusiness with a true competitive advantage, but because of the technical and legal complexities involved, attempting to capitalize on their innovations can be both expensive and risky. By educating inventors to recognize patentable innovations, the expense can be reduced and the risk mitigated.

This webinar will provide tips and strategies on how to
• Educate inventors on how to identify viable inventions and distinguish them from unpatentable ideas and concepts
• Ask the right questions to get inventors to divulge the unique details of an invention
• Tell a story that clearly illustrates why a patent is warranted

CLE credit has been approved for California and Illinois and is pending in Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but registration is required.

Following the live event, a recording of the webinar will be available to view for one year at www.fitcheven.com.

Register for the webinar.

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Fitch, Even, Tabin & Flannery LLP will present a free webinar, “Alice in Chains? Lessons Learned from Recent Federal Circuit Opinions on Patentable Subject Matter,” presented by Eric L. Broxterman and David A. Gosse.

The webinar will take place on Wednesday, Jan. 25, 2017, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.

The Federal Circuit has overruled several district court opinions finding patents invalid for lack of patentable subject matter, most recently in Enfish v. Microsoft, BASCOM v. AT&T Mobility, and McRO v. Bandai Namco Games America. This webinar will review these and other Federal Circuit opinions that have begun to define the boundaries of “abstract ideas” under the Supreme Court’s Alice test.

The event will cover the following topics and more:
• The test for patentable subject matter under Alice v. CLS Bank
• A survey of recent Federal Circuit cases
• Considerations when responding to a motion for dismissal based on Alice
• How claim construction can alter the analysis of patentable subject matter

CLE credit has been approved for California and Illinois and is pending in Nebraska. Other states may also award CLE credit upon attendee request.

Following the live event, a recording of the webinar will be available to view for one year at fitcheven.com.

Register for the webinar.

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According to 10 judges of the Federal Circuit, a patent owner’s right to sue for infringement in the United States is not exhausted by sales of products abroad or by sales subject to valid post-sale contractual restrictions on use, write David Tellekson, Stefan Szpajda and Phillip K. Decker of Fenwick & West LLP.

The case is Lexmark Int’l, Inc. v. Impression Prods, Inc., Nos. 2014-1617, slip op. (Fed. Cir. Feb. 12, 2016).

In a 10-2 en banc decision, the Circuit court held that U.S. patent rights need not be expressly reserved in foreign sales transactions to preserve the right to sue for infringement if the goods enter the United States downstream of the point of sale.

“Although the Federal Circuit’s decision purports to maintain the status quo regarding patent exhaustion, Lexmark has immediate implications for patentees, licensees, and downstream consumers alike,” the authors write.

Read the article.

The en banc Federal Circuit by a vote of 10-2 held that patent exhaustion can be avoided by otherwise lawful post-sale contractual restrictions and that foreign sales of a patented item are not presumed to exhaust patent owner’s rights in the United States, according to a report posted by Dentons.

The case is Lexmark Int’l, Inc. v. Impression Products, Inc., No. 14-1617, -1619 (Fed. Cir. Feb. 12, 2016) (en banc).

“The dissent would have found post-sale restrictions invalid and that foreign sales exhaust patent owner’s rights in the United States absent an express reservation. The Federal Circuit’s 99-page majority decision may not be the last word on these issues if the Supreme Court is asked to grant certiorari later this year,” wrote Joel N. Bock, Joshua D. Curry and Heather Khassian.

Read the article.

An article by Dennis Crouch in the Patentlyo.com blog looks at the TriReme v. AngioScore federal circuit court ruling about the ownership of potential patent rights, which the U.S. Supreme Court has repeatedly found initially vest with the inventor(s).

“Corporations must be getting somewhat annoyed with the antics of these pesky inventors,” Crouch writes. “TriReme v. AngioScore centers on an inventorship dispute involving Dr. Chaim Lotan who was previously a paid consultant with AngioScore but who later sold his rights to a competitor TriReme. In the lawsuit, TriReme sued for correction-of-inventorship of three AngioScore patents that do not currently list Lotan as an inventor.”

“So far in our law, the set of potential ‘inventors’ is limited to human persons (not corporate persons or machines or macaques). The initial right may, however, be transferred to through an assignment agreement.” according to the article.

Read the article.

Lex Machina has published an article highlighting IP trends and data from 2015, including the fact that the distribution of patent cases among district courts remains highly uneven, with the Eastern District of Texas receiving 2,540 cases comprising 43.6 percent of all cases filed in 2015.

Patent litigation in U.S. district courts grew in 2015, with 5,830 patent cases filed, a 15.0 percent rise from 2014 (5,070 cases). Except for 2013, which remains the high-water year for patent litigation (6,114 cases), 2015 surpassed all other previous years.

The report, written by Brian Howard, covers statistics showing filing by quarters for the most-active districts.

Another section of the report covers activity at the Patent Trial and Appeal Board (PTAB), charting petitions by quarter.

The section on trademark litigation reports that fewer trademark cases were filed in 2015 than in any of the previous 10 years, although 2015’s total of 3,449 cases is only 11.6% lower than the median over the same time frame.

Lex Machina’s Copyright Report explains the difference between file sharing cases (those having John Doe or anonymous defendants and accusations based on file sharing technology such as BitTorrent), and other, more traditional cases, detailing the trends.

Read the report.

Fitch, Even, Tabin & Flannery LLP will hold a complimentary webinar, “Current and Emerging Trends in Patent Law: Cases to Know and Cases to Watch,” presented by Joseph F. Marinelli and Eric L. Broxterman. The webinar will take place on Thursday, Oct. 29, 2015, at 9 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

In a release, the firm said the patent landscape is constantly changing. This webinar will help you stay informed on recent significant judicial developments in patent law, in both litigation and prosecution, and will provide a preview of Federal Circuit decisions on the horizon for the last quarter of 2015 and into 2016.

The webinar will cover these topics and more:
• Patent-eligible subject matter under Alice—DDR Holdings, LLC v. Hotels.com
• The Supreme Court’s new claim indefiniteness standard in Nautilus—Dow Chemical Co. v. NOVA Chemicals Corp.
• Expert apportionment method for proving damages by reasonable royalty—Summit 6 v. Samsung
• Standards for injunctive relief—Apple v. Samsung
• Good-faith belief of invalidity as a defense to inducement—Commil USA v. Cisco Systems
• Appellate standard for claim construction—TEVA Pharmaceuticals v. Sandoz
• Patent exhaustion based on foreign sales—Lexmark v. Impression
• Approval of biosimilars—Amgen v. Sandoz

Speakers will be Fitch Even partners Joseph F. Marinelli and Eric L. Broxterman. Marinelli has a diverse intellectual property law practice covering all aspects of IP creation, management, enforcement, and licensing, with a particular emphasis on complex litigation. Broxterman is a litigator with extensive trial experience in patent cases and a registered patent attorney who also counsels clients on patent prosecution, infringement/invalidity opinions, and IP transactional issues.

CLE credit has been approved for California and Illinois and is pending in Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but registration is required.

Register for the webinar.