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

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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.

A U.S. appeals court ruled Thursday that judges on a patent review panel were unconstitutionally appointed, casting a cloud over some of its work, according to a Bloomberg report.

The court ordered a new hearing before different judges at the U.S. Patent and Trademark Office’s review board in a dispute over a surgical device. The court suggested other pending patent challenges may suffer the same fate, report Bloomberg’s Susan Decker and Greg Stohr.

“The Court of Appeals for the Federal Circuit said that, under a 2011 law that created the reviews before the panel, called the Patent Trial and Appeal Board, judges had so much authority they should have been appointed by the president and confirmed by the Senate.”

Read the Bloomberg article.

Fitch, Even, Tabin & Flannery LLP will present a free webinar, “Patent Prosecution Options at the USPTO: Tried-and-True or New to You,” featuring Fitch Even attorneys Alan E. Schiavelli and George N. Dandalides.

The event will be on Wednesday, Oct. 23, 2019, at 9 am PDT / 10 am MDT / 11 am CDT / 12 noon EDT. It will also be available as an on-demand webinar after the presentation.

The firm said the USPTO is constantly striving to reduce average pendency and achieve compact prosecution office-wide, but that’s of little consequence if your patent application is bogged down in prosecution with the examiner—or if business reasons dictate a patent be obtained more quickly than usual. Fortunately, the USPTO offers several programs and initiatives to applicants designed to advance the examination process.

During this webinar, presenters will provide background information and helpful advice on these prosecution tactics and publication strategies:

• Track One prioritized examination
• Petitions to make special and accelerated examination
• First Action Interview Pilot Program
• Patent Prosecution Highway (PPH)
• Early publication and non-publication
• After Final Consideration Pilot 2.0 (AFCP 2.0)
• Pre-Appeal Brief Conference Pilot Program

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Fitch, Even, Tabin & Flannery LLP will present a free webinar, “Back on Track?: Obtaining Software Patents Using New Patent Office Guidance,” featuring Fitch Even attorneys Timothy R. Baumann and George N. Dandalides.

The event will be on Wednesday, March 20, 2019, at 9 am PDT / 10 am MDT / 11 am CDT / 12 noon EDT. It also will be available as an on-demand webinar after presentation.

Obtaining patents for software-related inventions has become more difficult in recent years, in the U.S. and throughout the world. However, recently released USPTO guidance addressing patent eligibility under 35 U.S.C. § 101 and § 112, among other developments, offers some amount of much-needed clarity and direction.

During this webinar, presenters will share information and insights on:
• USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance
• USPTO’s 2019 Guidance on Examining Computer-Implemented Functional Claim Limitations
• How to use the recent guidance fruitfully, including claim-drafting strategies and evaluation of example claims
• Drafting strategies for filing software patent applications in foreign jurisdictions
• What the future may hold for software patentability

Register for the webinar.

Fitch, Even, Tabin & Flannery LLP will present a free webinar, “Working Smarter with Patent Counsel: Tips for Inventors and In-House Lawyers, ” featuring Fitch Even attorney Jennifer V. Suarez.

The event will be Wednesday, January 23, 2019, at 9 am PST / 10 am MST / 11 am CST / 12 noon EST.

An efficient, productive first meeting with patent counsel can go a long way toward ensuring the patent application process goes smoothly and successfully. Inventors and corporate counsel alike can benefit from learning key considerations to discuss with their patent attorney initially and at each stage of the process.

This webinar will offer guidance on what crucial information should be provided at the onset and what further developments should be shared down the line:

• Pre-Drafting Stage
o Inventorship
o Information needed for written description
o Public disclosure (IDS; bar dates)
• Drafting Stage
o Legal requirements of a patent application
o Sections 112, 101, 102, and 103
o Specifications, claims, drawings
• Post-Filing Stage
o Post-filing improvements or prototypes
o Commercialization plans and efforts
• Business Drivers
o Target market analysis
o Marketing advantages of invention features
o Critical timeline markers

Register for the webinar.

In a recent Initial Determination, an administrative law judge ruled that a patent owner did not have standing to sue without joining a third party to which certain rights had been transferred, reports Jones Day.

Daniel Kazhdan and Blaney Harper discuss Certain Audio Processing Hardware, Software, and Products Containing the Same.

Andrea Electronics Corp filed a complaint asserting that a number of companies, including Apple Inc., infringed its patents by importing certain products. It was undisputed that Andrea held formal title of the patents, but Apple argued that Andrea did not hold “all substantial rights in the patents-in-suit,” as required by Diamond Coating Technologies, LLC v. Hyundai Motor America.

Read the article.

A recent written decision of the Patent Trial and Appeals Board sheds light on how the PTAB may treat common sense as used in obviousness arguments, reports Jones Day in its PTAB Litigation Blog.

Albert Liou discusses the recent case of Kranos Corporation v. Riddell, Inc., which involves the claimed invention of a sports helmet with a quick release connector for the faceguard. An important claim element was the “releasable coupler mechanism.”

“The Kranos decision teaches Petitioners to avoid relying only upon ‘common sense’ as a reason for combining references.” Liou writes. “Rather, an effective Petition should lead the PTAB to conclude that ‘common sense’ supports obviousness, after presenting the PTAB with a persuasive showing of why the elements or structure of one reference should be combined with those of another.”

Read the article.

New lawsuits are down — way down — in the mostly rural district that was once the national hotspot for patent disputes, reports Ars Technica, citing a study by IP litigation research company Lex Machina.

In a case called TC Heartland, in May, the Supreme Court sharply limited where patent owners can choose to file their lawsuits.

Joe Mullin writes that Lex Machina compared patent filings in the 90 days before the TC Heartland decision came down on May 22 to the 90-day period directly after the decision. Before the ruling, 377 patent lawsuits were filed in the Eastern District of Texas. After TC Heartland, just 129 cases were filed in a similar period.

“Much of that litigation seems to have moved to Delaware, where many national firms are incorporated due to favorable tax laws,” Mullin writes. “Delaware’s single judicial district had 153 patent lawsuits in the period before TC Heartland, but that shot up to 263 lawsuits in the period after the decision.”

Read the Ars Technica article.

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Dylan O. Adams, a senior patent attorney and author of “Patents Demystified: An Insider’s Guide to Protecting Ideas and Inventions,” presents an on-demand webinar on patent protection.

The complimentary 53-minute video is available at BrightTalk.com.

Adams has experience with U.S. and foreign patents in a wide variety of technology fields, including software, computer hardware and biotechnology.

This webinar explores which patent protection strategy best fits a company’s business goals, both short and long-term. It also covers best practices on how to work with patent attorneys to craft the strategy that fits current and future budget constraints, and how to leverage patent assets and derive the most value from them.

Watch the on-demand video.

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The U.S. Supreme Court has agreed to consider putting sharp new limits on where patent-infringement lawsuits can be filed, accepting a case that may undercut patent owners’ ability to channel cases to favorable courts, reports Bloomberg.

The case involves an appeal by TC Heartland LLC, an Indiana-based maker of water flavorings that says a Kraft Heinz Co. unit shouldn’t be allowed to sue it in Delaware, reports Greg Stohr.

“A victory for Heartland would also bar most patent owners from pressing cases in the Eastern District of Texas, a patent-friendly jurisdiction where more than a third of all infringement suits are now filed,” Stohr explains. “Heartland’s appeal has support from a group of internet retailers and software companies, as well as the financial-services industry.”

Read the Bloomberg article.

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Fitch, Even, Tabin & Flannery LLP will present a complimentary webinar, “Determining the Value of One Patented Feature: A Behavioral Alternative to a Consumer Survey,” featuring Jacob Jacoby, Ph.D., and Alison Aubry Richards and moderated by Edward W. Gray Jr. The webinar will take place on Thursday, Nov. 17, 2016, at 9 a.m. PST / 10 a.m. MST / 11 a.m. CST / 12:00 noon EST.

In a release, the firm said recent Federal Circuit decisions have made it more difficult to prove damages in litigation. This is especially true when the infringed patent relates to just one feature in a product with multiple features. Before a patent owner can obtain damages based on the entire market value of a product (patented and unpatented components sold together), the patent owner may be required to prove that the patented feature is the basis for consumer demand for the entire product. Other decisions require the patent holder to apportion the value of the whole product down to the patented feature.

Whether a damages expert’s opinion can meet these requirements is a critical question for all patent litigants. Ultimately, the persuasiveness and reliability of the factual data on consumer demand for a patented feature underlying the damages case can determine the financial outcome of the case.

This webinar will cover these topics and more:

• Relevant case law
• Why proving consumer demand is key to receiving monetary damages
• The shortcomings of typical survey approaches to measuring consumer demand
• An alternative behavioral methodology for reliably measuring consumer demand

CLE credit has been approved for California, Illinois, and 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.

Bartonfalls LLC, an entity formed in August in the patent hotspot of East Texas, has sued 14 big media companies, claiming the media giants like CBS, NBC Universal and Bloomberg violated patented technology designed to switch automatically from one video display another, reports Ars Technica.

Reporter Joe Mullin explains that the patent, filed in 1997, “doesn’t talk about Web video or the Internet at all. Rather, it talks about switching between different video inputs when changing television programs.”

“Corporate documents show that Bartonfalls was formed as a Texas LLC in August,” according to the article. “Its business office is a virtual office in Plano, a city that’s just inside the borders for the Eastern District of Texas, the venue that it filed its lawsuits in. The only listed manager of Bartonfalls is a paralegal at a small Texas law firm, Stoddard and Welsh.”

Read the article.

Fitch, Even, Tabin & Flannery LLP will host a complimentary webinar, “Recent Updates in Design Patent Law,” presented by Fitch Even partners Calista J. Mitchell and Joseph H. Herron. The webinar will take place on Wednesday, October 12, 2016, at 9 am PDT / 10 am MDT / 11 am CDT / 12 noon EDT.

Understanding the latest developments in case law and USPTO examination standards is important to drafting effective design patent applications. This webinar will address numerous current issues in U.S. design patent law. It may be of interest to those who seek to broadly protect products with design patents, as well as those who draft design patent applications, litigate design patents, or prepare freedom-to-operate or patentability analyses for design patent applications.

Our speakers will cover these topics and more:
• Recent court decisions involving design patents
• The role of obviousness in patentability and invalidity determinations
• Current trends in examination by the USPTO

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.

Practical Law will present a webinar discussing best practices for Section 337 patent litigation and current hot topics at the International Trade Commission (ITC), such as standard essential patents and the Commission’s jurisdiction over electronic data importations.

The 75-minute event will be Tuesday, May 10, 1-2:25 p.m. EDT.

Commencing a patent infringement investigation at the International ITC under Section 337 of the Tariff Act of 1930 is a powerful weapon in a patent owner’s arsenal, Practical Law says on its website. Section 337 patent infringement investigations offer several advantages over patent litigation in federal district court, including swift resolution of disputes and broad availability of injunctive relief. However, Section 337 investigations also have potential risks, including substantial litigation costs and discovery requirements.

The webinar will feature (i) Charles Schill, a partner at Steptoe & Johnson LLP who has handled more than 130 unfair trade practice Section 337 investigations, and (ii) former ITC Administrative Law Judge Robert Rogers, who held 20 hearings during his tenure resulting in 17 Final Initial Decisions.

A short Q&A session will follow.

Presenters:
Charles F. Schill, Partner, Steptoe & Johnson: Charles focuses his practice on the intersection of international trade and intellectual property law. He has handled more than 130 unfair trade practice cases under Section 337 of the Tariff Act at the ITC, and has won or favorably settled almost all of them. He previously served as a Senior Staff Attorney in the Office of Legal Services and the Office of General Counsel at the ITC.

Robert K. Rogers, Jr., Attorney at Law: An attorney for 39 years, Mr. Rogers was an Administrative Law Judge for 19 years, including 5 years as an ALJ at the U.S. International Trade Commission. He was assigned more than 55 cases, held 20 hearings, issued 17 Final Initial Decisions, 2 TEO Decisions, and concluded one case by summary determination. Mr. Rogers has extensive experience in litigation related to patents and trade secrets, and his experience spans a breadth of industries, issues, and forums, which provides him the ability to effectively assist litigants in reaching settlement of patent and trade secret matters.

Register for the webinar.

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.

Fitch, Even, Tabin & Flannery LLP will hold a complimentary webinar, “So You Think You Know Patent Claims? Advanced Lessons in Patent Drafting and Analysis,” presented by Steven G. Parmelee and Allen E. Hoover. The webinar will take place on Thursday, Feb. 25, 2016, at 9 am PST / 10 am MST / 11 am CST / 12 noon EST.

The firm says that, even if you have practiced IP law for many years or are otherwise well-versed in what’s involved in patent drafting, you may be surprised by what you don’t know about patent claims.

Presenters will cover the following topics:
• The right and wrong way to use dependent claims to strengthen a patent
• How to avoid claim language that can impair the patent holder’s rights
• What you may not know about alternative claim language in patent claims

The firm says this webinar will be the first in an occasional series of “master classes” for experienced IP practitioners, patent owners, and others entrenched in the world of IP who already possess at least a basic understanding of patents and patent claims. It will be of interest to both those who analyze and litigate patents and those who draft patent applications.

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.