SpencePC

Congratulations to William C. Spence on his Illinois Super Lawyer Status and Anthony Wenn and Daniel Hess for being named an Illinois Rising Star!

Fri, 27 Jan 2023 19:19:51 GMT

About William C. Spence

As a trial lawyer and founding partner of SpencePC, William C. Spence assists both individual and business clients to obtain their best possible outcome in contentious legal matters. His extensive experience includes litigation, arbitration, and mediation involving a wide-range of intellectual property and complex commercial disputes.

Click here to learn more about Cory

About Anthony Wenn

Anthony Wenn is an associate with SpencePC and is adept at counseling clients in all areas of intellectual property. In particular, he excels at prosecuting utility and design patent applications in the chemical, electrical, mechanical, and software arts. He also prepares legal opinions related to patentability, infringement, patent validity, and freedom to practice. Additionally, AJ is a licensed patent attorney with the USPTO.

Click here to learn more about Anthony

About Daniel Hess

Daniel is an associate in the complex commercial litigation practice group of SpencePC. Daniel’s practice includes a wide variety of commercial contract disputes and intellectual property infringement matters: including patent, copyright, and trademark litigation. Daniel has extensive experience representing brand owners in trademark prosecution and enforcement matters.

Click here to learn more about Daniel

Congratulations to Anthony Wenn for being appointed to serve on the ISBA IP Section Counsel

Thu, 12 May 2022 21:42:17 GMT

About Anthony Wenn

Click here to learn more about Anthony

Congratulations to Anthony Wenn for being named one of the top 3 Patent Attorney’s in Chicago

Thu, 12 May 2022 21:42:15 GMT

Click here to read: https://threebestrated.com/patent-attorney-in-chicago-il

About Anthony Wenn

Click here to learn more about Anthony

Congratulations to Anthony Wenn for being named an Illinois Rising Star 2022!

Thu, 12 May 2022 21:42:13 GMT

Click here to read: https://profiles.superlawyers.com/illinois/chicago/lawyer/anthony-aj-wenn/2aa31d64-b971-42be-a3b3-c313dd8c0631.html

About Anthony Wenn

Click here to learn more about Anthony.

Our very own Anthony Wenn and Gopal Gannamraj were featured in OSBA Summer 2021 Intellectual Property Newsletter.

Tue, 24 Aug 2021 17:35:22 GMT

Click here to read: https://www.ohiobar.org/.../publications/section-newsletter/

Congratulations to William C. Spence, trial lawyer and founding partner of SpencePC, on his recognition on the IAM Patent 1000: The World’s Leading Patent Professionals 2021 list!

Thu, 22 Jul 2021 03:37:19 GMT

We are pleased to share that the IAM Patent 1000: The World’s Leading Patent Professionals 2021 Guide has officially been released!

Since its inception, the IAM Strategy 300 has featured leading figures in the IP world drawn from in-house, private practice, service providers, and beyond. It draws from the worlds of private practice, consulting and other special service providers. A slot in the 300 has quickly become a badge of honor for those who make the cut!

Our very own, William “Cory” Spence, was included this past year. Congratulations!

Read the entire guide on the IAM website here: https://lnkd.in/eim_GSs

Congratulations to William C. Spence on his Illinois Super Lawyer Status!

Wed, 24 Mar 2021 18:03:00 GMT

About William C. Spence

Click here to learn more about Cory

The post Congratulations to William C. Spence on his Illinois Super Lawyer Status! appeared first on SpencePC .

We are pleased to announce that William Cory Spence has been included in the first-ever edition of IAM Strategy 300 Global Leaders Guide!

Mon, 25 Jan 2021 18:59:00 GMT

The IAM Strategy 300 Global Leaders guide draws from the worlds of private practice, consulting, and other service providers, with specialists from the major IP markets in the America’s, Europe, and Asia.

Since its inception, the IAM Strategy 300 has featured leading figures in the IP world drawn from in-house, private practice, service providers, and beyond. A slot in the 300 has quickly become a badge of honor for those who make the cut!
Congratulations, William “Cory” Spence !

Continue reading here: https://lnkd.in/dxfaemK

The post We are pleased to announce that William Cory Spence has been included in the first-ever edition of IAM Strategy 300 Global Leaders Guide! appeared first on SpencePC .

SpencePC Has Been Listed among IAM 300’s List of the World’s Top IP Value Creators

Fri, 28 Aug 2020 21:11:00 GMT

The world’s pre-eminent IP strategists have been named in the latest edition of IAM Strategy 300: The World’s Leading IP Strategists, published online by IAM and free to access. The unique guide lists the individuals that in-depth research, undertaken by a team based in London, Washington DC and Hong Kong, has shown to possess world-class skills in the development and roll-out of strategies that maximise the value of patents, copyright, trademarks and other IP rights.

The IAM research team spoke to a wide range of senior corporate IP managers in North America, Europe and Asia, as well as third-party IP service providers, in order to identify these IP leaders: men and women whose business is the creation, development and deployment of strategies that enable IP owners to gain maximum value from their portfolios. Only those individuals nominated multiple times by different parties as outstanding IP strategists are listed in the IAM Strategy 300.

Not only does the publication feature world-class, third-party IP advisers, but it also includes individuals that work inside operating companies. This reflects the growing importance that businesses across the world attach to having in-house IP value creation expertise, alongside the legal expertise that has traditionally characterised corporate IP functions. Notably, there is now an emerging group of senior IP business leaders that are not lawyers by training, but instead have backgrounds in other disciplines.

The third-party service providers featured also have a wide range of professional backgrounds and areas of specialisation, including brokering, defensive patent aggregation, finance, insurance, management consultancy, law, licensing, mergers and acquisitions, tax and valuation. They are based in centres across the world. A number have been involved in IP-related transactions valued in the hundreds of millions, or even billions, of dollars; while others have advised clients on monetisation strategies that have reaped eight, nine and 10-figure sums.

“Intellectual property helps to drive the 21st century economy, creating strong incentives to invest in the creation and roll-out of brands and all types of content, as well as the innovation process. This makes IP strategists more important than they have ever been before. Their ability to create significant value makes them indispensable, wherever in the world they operate,” says IAM editor Joff Wild. “Since it was launched, the IAM Strategy 300 has become the go-to guide for those seeking to find out who leads the way when it comes to IP strategy. We invest considerable time and effort into identifying the right candidates for inclusion and we salute all those who have made it into the final publication. For the work they do, they deserve this recognition.”

Continue reading here: https://www.iam-media.com/directories/strategy300…

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Important information for all litigants: Fifth Amended General Order signed by Chief Judge Pallmeyer on July 10, 2020

Wed, 15 Jul 2020 20:01:00 GMT

On July 10, 2020, Chief Judge Rebecca Pallmeyer of the U.S. District Court for the Northern District of Illinois entered the Fifth Amended General Order (20-0012) regarding ongoing Court procedures during the COVID-19 pandemic. The Order states that while the Court does remain open and accessible, certain limitations are present and must be adhered to.

For civil matters, case hearings, bench trials, and settlement conferences may be scheduled and conducted by the presiding judge by remote means. In-court hearings are specifically limited to urgent matters that cannot be conducted remotely.

The Order also notes that civil jury trials will not be conducted before August 3, 2020 and those jury trials scheduled to start prior to this date will be rescheduled by the presiding judge.

Finally, it is important to note that this Order does not extend any deadlines in civil cases. Click on the link provided to read the Order in its entirety.

Read the full Order here

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Winding Down the Start-Up – IP Considerations

Tue, 23 Jun 2020 18:01:00 GMT

By Jason Wejnert, William Cory Spence and Laura Shapiro

Starting a small business and maintaining it through good and bad times is an enormous challenge in any era. Today, with the COVID-19 pandemic rampaging across the world and shuttering employment nationwide in the U.S., this stark truth is even more apparent. When owners face the difficult decision to wind down a start-up, there are important choices and strategies that one must consider, especially regarding leveraging and protecting assets such as intellectual property that the business generated.

It is certainly old news and accepted wisdom that startups face an uphill battle to survive over the years. We’re often told that half of all startups fail within their first five years. In reality, the number is more sobering. In a Small Business Administration study of firms formed in 1998, only 44% were still around only four years later. [1] 70% of startups won’t live to see their 10th birthday. [2] Along with challenges that are organic and perennial, like access to talent, performance of staff, trade policies and technologies shifts and revenue and funding issues, there is now both a global shutdown in business and the difficulties of remote work, for business where that is available.

Historical data shows that economic disruptions strongly affect new firm opening and closure rates negatively [3] . There were 64,318 business bankruptcy filings in calendar year 2008, compared to 28,322 in calendar year 2007, according to figures provided by Jupiter eSources, LLC’s Automated Access to Court Electronic Records. [4] Further, 18,000 small business bankruptcy cases were filed between 2008 and 2015 [5] . Even years after the Great Recession, new firm formations were still lackluster:

Startup founders often have obligations to many stakeholders, including family, employees, investors, and perhaps customers. So, when forced to face the reality of their business’s failure or mothballing, owners have a responsibility to these groups to optimize the process of exiting. This begins with understanding the various paths available to make the process as smooth and successful as possible to open the door for future ventures or maintaining good ties with potential investors. While communication with stakeholders is paramount in these considerations, often overlooked is the identification and disposition of intellectual property (“IP”) assets, including how these assets and licenses may be treated in bankruptcy. SpencePC can assist you in identifying these IP assets and monetizing them immediately.

Funding

Aside from another round of venture capital or angel investors taking a stake in your start-up, you could consider IP funders who provide capital for funding patent and trademark prosecution, and IP litigation funding. Such funders evaluate the nature and strength of the IP, whether currently owned by the company or speculative, and negotiate a loan or investment in the outcome of the litigation. Some loans are non-recourse – meaning, that if the litigation fails, the funder cannot collect on the loan. However, funders often seek terms that may not be appealing to a business owner, such as processing costs and high demands for returns on their investment, commensurate with the risk involved. Nonetheless, if you and an IP litigation funder determine there is a viable IP lawsuit to bring forward, this may help to keep the company afloat and attract investors to keep the start-up alive.

Examples of IP funders include Cardinal Consultants, Burford Capital, GLS Capital and Pravati Capital. SpencePC works with several IP funders and can provide connections to assist you in starting discussions. Keep in mind that these negotiations can take some time and may involve discussions with a few funders depending on the size and nature of the IP you wish to assert.

SpencePC has access to an extensive network of funders and the expertise to guide you through the difficult process of evaluating funders and getting you in touch with the right funder so you can get the most value for your assets or IP claims.

Selling and Brokering IP

Another option for small business and start-up owners is to consider selling their IP, whether trademarks, patents or copyrights, to another party. For instance, if a competitor is only interested in the technology you have developed, including, perhaps any patents, you can sell them your IP. There are companies that do nothing but buy patents and you can check with them too. But your technology doesn’t have to be patented to have significant value – other IP, trade secrets and important data compilations can be of value to a buyer.

Along with an outright assignment and transfer to another party, such as selling to a competitor or other interested party, there is a ripe market of IP brokers who contract with sellers to identify potentially interested parties who may either purchase the IP or take a stake in monetizing the IP, whether through a licensing or litigation campaign involving the IP.

A business owner may see advantages in offloading the “prospecting” process by letting a third party use its connections in the market to connect said business owner with a buyer or stakeholder. Again, keep in mind that these connections and transactions have costs associated with them, including a percentage of any sale or monetization of the IP involved. Careful evaluation of these terms is required. Examples of IP brokers include Ocean Tomo (an intellectual property merchant bank that provides financial products and services, including expert testimony, valuation, research, ratings, investments, risk management, and transactions), Iceberg IP Group and Dynamic IP LLC. In addition, some companies seek to purchase IP assets and use them in their own businesses, whether offensively or defensively. A robust market of entities exists in this area, such as Intellectual Ventures, Fortress and RPX. Also, Google has a program that buys patents (https://www.google.com/patents/licensing). As with any complex transaction, a start-up owner should engage IP counsel to consider the ramifications of any deal and get the best possible outcome. SpencePC attorneys have a long history of working with clients to evaluate agreements and negotiate deals, licenses and settlements to maximize the value a client can receive for their assets. Even in difficult and uncertain times, IP has a high value, whether patents, trademarks, copyrights, trade secrets or other intangible assets that are often overlooked. SpencePC can review your company’s asset list and work together to ensure a maximal value for the company.

IP and Bankruptcy

The third way that an IP owner can protect their property could be through bankruptcy. Bankruptcy is the court proceeding in which assets and liabilities are examined to determine whether debts should be discharged or restructured. There are three different chapters of bankruptcy: Chapter 7, Chapter 11 and Chapter 13. Chapter 7 is the most common type of bankruptcy and is set aside for individuals, partnerships or corporations. Chapter 7 allows an elimination of unsecured debts by the surrender of assets through liquidation. Liquidation is the sale of assets to pay what is owed to creditors. Chapter 11 bankruptcy is a reorganization effort or a plan to restructure assets to repay creditors over time. Chapter 11 is typically reserved for business owners. Chapter 13 bankruptcy is normally used by individuals or sole proprietors and involves the creation of a repayment plan to pay back all or a portion of creditor debts over three to five years. The difference between Chapter 11 and Chapter 13 bankruptcy is that Chapter 11 is open to any individual or business without specific income or debt-level limits, whereas Chapter 13 requires a stable income and requires debt limits [6] .

What entices parties to declare bankruptcy is the automatic stay that is invoked upon the date of the bankruptcy filing, no matter the chapter under which the filing was made. The automatic stay means that most collection calls and creditor actions stop, and therefore, the petitioner of bankruptcy no longer need fear demand of outstanding payments. It is important to note that the automatic stay does not usually apply to post-petition patent infringement (i.e. petitions made after the filing of bankruptcy). Instead, these post-petition claims are considered “administrative” and are usually paid in full [7] .

While the automatic stay can protect petitioners of bankruptcy, bankruptcy often negatively affects intellectual property rights though the rights of secured creditors and licensees. Under Bankruptcy Code, an IP license is generally considered an “executory contract”, meaning that performance remains due on the part of both the party seeking bankruptcy and the creditor or licensee. Failure to perform on either end thereby would constitute a material breach. The party seeking bankruptcy (or, the “licensor”) has four options when handling their IP licenses: (1) rejection of the license; (2) assumption of the license; (3) assumption of the license and assignment to a third party [8] ; or (4) sale of the IP free and clear of creditor interest [9] .

If the licensor decides to reject the license, the rejection will be treated typically as a breach of the license as of the date of the bankruptcy license, meaning the licensee will have a pre-petition claim in the bankruptcy case if any damages result from the breach. It is important to note that upon rejection, a licensee may elect to terminate the license or retain its rights to the license. If the license elects to retain its rights, the licensor is required to provide the licensee with the IP and allow the licensee to exercise all of its rights under the license for the duration of the license so long as both parties have been determined to have materially unperformed obligations [10] . The licensee, upon election, waives its setoff rights and any administrative claims it may have in the licensor’s bankruptcy case [11] . Trademarks are not included as intellectual property under the Bankruptcy Code. Still, a recent 2019 case discussing trademarks, Mission Products Holdings, Inc. v. Tempnology, LLC , held that rejection of a trademark license agreement does not “deprive the licensee of its rights to use the trademark.” [12] This means that a trademark licensor in bankruptcy can no longer cut off a licensee’s rights to continue using trademarks. Further, rejection of a trademark license only impairs the value of trademarks and therefore, a licensor should be wary before rejection [13] .

If the licensor decides to assume the license, they then must (1) cure the license of all its defaults or provide adequate assurance that it will promptly cure defaults; (2) provide compensation of any actual pecuniary loss as a result of any defaults; and (3) demonstrate an ability to perform in the future under the license [14] .

If the licensor chooses to assume the license and assign it to a third party, it is important to note that non-exclusive licenses are non-assignable unless the patent owner consents. Although this is usually true for exclusive licenses as well, there have been times where exclusive licenses have had the ability to be assigned without the patent owner’s consent [15] .

If the licensor chooses to sell their IP rights free and clear of creditor interest, then the bankruptcy court must first approve of the transaction. The standard by which the judge decides on the sale is whether or not the sale is “fair and equitable”, and whether (1) applicable non-bankruptcy law permits the sale and (2a) everyone with an interest in the property consents or (2b) the interest in the IP is a lien and the sale price of the IP is greater than the value of all liens against it [16] . This means that the sale must be within the reasonable range of litigation possibilities should the sale have taken place outside the bankruptcy court. Four factors are used to determine whether the sale is reasonable: (1) the probability of the sale’s success in litigation; (2) difficulties either party may have in collection of the sale; (3) complexity of litigation involved and expense, inconvenience and delay necessarily attending it; and (4) the paramount interest of the creditors [17] .

While bankruptcy may appear as an intimidating concept at first, it is an important tool used by IP holders. Bankruptcy can be used to either preserve IP licenses with licensees and creditors or as a way for IP creators to request relief from licenses through rejection of contracts or through the sale of the IP. It is important to note that every decision an IP holder makes in bankruptcy is important from deciding which chapter of bankruptcy to file under through the strategy an IP holder will choose when handling their various IP licenses. Securing counsel who are well-equipped in Bankruptcy Code is the best way in which an IP holder can navigate bankruptcy proceedings. SpencePC can assist you in identifying your company’s assets and connect you with the right counsel to work together to make sure you get the most value and protection for your assets.

Conclusion

Contemplating winding down your start-up is never an easy decision, especially after all the effort, ingenuity, pride, perseverance and investment of capital and emotions into the company. However, sometimes that is the right decision for yourself and your stakeholders, including your employees. If you have any questions about this article or IP questions in general, please feel free to contact us at SpencePC. Further, if you are considering protecting your IP at any stage of your company, we at SpencePC are happy to discuss both current and future options with you.

[1] https://www.caycon.com/what-kills-startups

[2] https://www.smallbizgenius.net/by-the-numbers/startup-statistics/

[3] https://www.caycon.com/what-kills-startups

[4] https://www.jonesday.com/en/insights/2009/02/the-year-in-bankruptcy-2008

[5] https://www.theguardian.com/business/2019/sep/08/us-small-businesses-bankruptcy-trump-reorganization-act

[6] www.credit.com/debt/filing-for-bankruptcy-difference-between-chapters-7-11-13/.

[7] corporate.findlaw.com/intellectual-property/protecting-your-rights-to-intellectual-property-in-bankrupcy.html.

[8] Id.

[9] www.jonesday.com/en/insights/2010/04/the-impact-of-bankruptcy-on-ip-litigation-and-licensing.

[10] Id.

[11] corporate.findlaw.com/intellectual-property/protecting-your-rights-to-intellectual-property-in-bankrupcy.html.

[12] www.millercanfield.com/resources-Trademark-Bankruptcy-Mission-Product-Holdings-Tempnology.html.

[13] corporate.findlaw.com/intellectual-property/protecting-your-rights-to-intellectual-property-in-bankrupcy.html.

[14] Id.

[15] www.jonesday.com/en/insights/2010/04/the-impact-of-bankruptcy-on-ip-litigation-and-licensing.

[16] www.wardandsmith.com/articles/intellectual-property-in-bankruptcy-an-overview.

[17] www.jonesday.com/en/insights/2010/04/the-impact-of-bankruptcy-on-ip-litigation-and-licensing.

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Congratulations to William C. Spence, trial lawyer and founding partner of SpencePC, on his recognition on the IAM Patent 1000: The World’s Leading Patent Professionals 2020 list!

Fri, 12 Jun 2020 22:02:00 GMT

Congratulations to William C. Spence, trial lawyer and founding partner of SpencePC, on his recognition on the IAM Patent 1000: The World’s Leading Patent Professionals 2020 list!

About the IAM Patent 1000

The IAM Patent 1000 is a standalone publication that identifies individual and firm expertise in all major areas of patent law and practice. Through an extensive research process conducted by a team of highly qualified, full-time analysts, the publication identifies the top patent practitioners, as well as leading patent law and attorney firms, in 48 of the world’s most important jurisdictions and 18 US states.

Continue Reading Here

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Enforcing Your Trademark Rights against Counterfeiters and Competitors in the world of E-Commerce

Thu, 11 Jun 2020 19:11:00 GMT

By: AJ Wenn & Danny Hess

While the ripple effects of the COVID-19 pandemic have many businesses tightening their budgets, the exact opposite is true in the e-commerce sector. Traditional retail business restrictions and shelter-in-place orders have sent the e-commerce market soaring. In a blog post on March 16, 2020 Amazon revealed that it is opening 100,000 new full and part-time positions to manage the surge in online shopping. Data from the U.S. Census Bureau demonstrates that e-commerce sales for January and February 2020 were the highest ever recorded. With such rapid growth comes a resurgence of dubious opportunists hoping to benefit from counterfeit and other fraudulent scams related to the online sale of goods. The shortage of genuine products creates a unique opportunity for counterfeits across online marketplaces targeting consumers who cannot wait for suppliers of genuine products to restock. For brands seeking to protect themselves against the estimated $509 billion trade in counterfeits and fakes, now is the time to implement a comprehensive strategy to combat these dubious trade practices.

Trademark law can assist your company in protecting your own brand from counterfeits while other competition and consumer protection laws may assist your business in taking an even more offensive approach: cracking down on false advertising and other harmful e-commerce practices. SpencePC’s attorneys are experienced in a wide variety of matters related to trademark enforcement and counterfeit protection and prepared to assist you in finding effective resolutions.

The most important step your business can take to protect its brand and reputation is to secure an enforceable trademark. This is done by filing with the United States Patent and Trademark Office or through common law by sufficiently “using” your trademark consistently in the stream of commerce. If you have any questions regarding trademark registration or enforceability, SpencePC is prepared to assist you. Unlike most other forms of intellectual property, you must consistently use and enforce your trademark in order to keep your legal rights to it. The longer your business allows counterfeit, potential infringers, or competitors to co-opt your business’s trademark the more likely a court of law could find the trademark to have been abandoned by its rightful owner.

The growth of e-commerce provides counterfeiters and trademark infringers an easy platform to sell knock-off products that harm your businesses bottom line or damage your company brand. Filing trademark infringement and counterfeit lawsuits in State and Federal Court is (perhaps surprisingly) a low-cost steady enforcement strategy your business can utilize. Most e-commerce sales occur on only a handful of online marketplaces (e.g. Amazon, eBay, Alibaba). While there may be hundreds of potential counterfeiters amongst the users of these marketplaces, they all can typically be joined in a single action—saving you both time and money. A large majority of these account holders never respond to the Court Summons sent to their accounts and therefore the Court typically will enter a “default judgement” against them, granting your business all the relief it requested. Your business would receive a court order to shut down the infringing accounts and claim any funds that the counterfeiting users had in their accounts. Thankfully, these online marketplaces are typically very cooperative in this process. While this enforcement method may not end all counterfeit, it is a cheap and efficient way to ensure your business is not taken advantage of in the e-commerce marketplace. Additionally, collecting on the seized funds from these counterfeiter’s e-commerce accounts can offset your legal costs and even become a profitable revenue stream.

Legal counsel can be invaluable in ensuring your business can successfully enforce or defend against the actions of counterfeiters and competitors in e-commerce marketplaces. If you have any questions regarding trademark enforcement or unfair competitive acts by counterfeiters or competitors, please feel free to contact SpencePC.

1. Daniel Bennett, Covid-19 and Counterfeiting: How the Pandemic is Reshaping Brand Protection – Part 1, CORSEARCH (last visited June 8, 2020), https://corsearch.com/covid-19-counterfeiting-how-pandemic-reshaping-brand-protection/.
2. Id.
3. Id.

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The Effect of the Covid-19 Pandemic on Intellectual Property

Thu, 04 Jun 2020 22:19:00 GMT

By AJ Wenn and Gopal Gannamraj

In response to the recent COVID-19 pandemic, governments and agencies around the world are discussing and implementing measures to allow for the quick and easy spread of scientific knowledge and ideas that may help with the diagnosis, treatment and prevention of COVID-19. For example, Canada, Germany, France and Israel have considered or enacted emergency legislation to allow for the suspension of patent rights, either across the board or directed to specific drugs and devices. ¹

Here in the United States, Senator Ben Sasse (R-NE) has introduced a bill that would create the “Facilitating Innovation to Fight Coronavirus Act” that would delay and then extend patent protection for new and existing medical devices and drugs intended to treat COVID-19. Specifically, while the legislation would pre-empt or negate the rights of IP owners with IP related to treat COVID-19, the legislation would extend the patent term of pre-empted patents by a period of 10 years, wherein the 10-year extension would begin from the date on which the declaration of the national emergency is withdrawn. The Facilitating Innovation to Fight Coronavirus Act would impact the term of “a patent issued for a new or existing pharmaceutical, medical device, or other process, machine, manufacture, or composition of matter, or any new and useful improvement thereof used or intended for use in the treatment of the Coronavirus Disease 2019 (COVID–19).” ²

While the emergency legislation addresses important issues, it likely will be subject to further clarification and compromise if it proceeds through the legislative process. Among the issues to be clarified are whether the proposed legislation would apply to existing patents or only patents granted after its effective date, and what it means for a patent to be “used or intended for use in the treatment of … COVID–19.” ³ Additionally, there needs to be a determination made on how owners of pre-empted patents regain exclusivity following the period of pre-emption.

Other branches of government are also working behind the scenes to facilitate a sharing of information between private actors. The National Institutes of Health (NIH) has created a partnership with the U.S. Food and Drug Agency (FDA), the European Medicines Agency (EMA), and 16 leading pharmaceutical companies, including Merck, AbbVie, Johnson & Johnson and Pfizer, “to develop an international strategy for a coordinated research response to the COVID-19 pandemic.” ⁴ The partnership, called Accelerating COVID-19 Therapeutic Interventions and Vaccines (ACTIV), does not specifically discuss intellectual property rights, but establishes among other cooperative efforts “a centralized process and repository for harmonizing and sharing methods and evaluating models.” ⁵

Further, there are also a variety of private licensing groups attempting to tackle the COVID-19 pandemic. Companies and universities, including Intel and the Innovative Genomics Institute of UC Berkeley and UCSF, have signed on to the Open COVID Pledge, which provides a license that “make[s] intellectual property available free of charge for use in ending the COVID-19 pandemic and minimizing the impact of the disease.” ⁶ The Universities of Harvard, Stanford and Yale, have joined the COVID-19 Technology Access Framework, which provides “royalty free licenses … for the purpose of making and distributing products to prevent, diagnose and treat the COVID-19 pandemic.” ⁷ This type of corroboration between large universities and entities gives support to the promising search for a COVID-19 vaccine.

Nonetheless, it remains doubtful that congress will pass legislation extending the rights of patents that are related to treating COVID-19. Namely, because all new patent applications targeted at treating COVID-19 will take roughly three years to issue, at which point most experts agree the pandemic will be over. Moreover, it will be difficult to determine whether pre-existing patents cover technology that will be used to treat coronavirus. It is likely that private entities will continue to create intellectual property licensing groups, such as the Open COVID Pledge and ACTIV, to streamline the fight against COVID-19.

If you have any questions regarding licensing intellectual property, please feel free to contact SpencePC. We are also happy to discuss any IP issues you may face, including patent litigation, patent applications and prosecution, trademark applications and prosecution, copyright filings, trade secrets, or other complex litigation matters.

¹ See https://www.natlawreview.com/article/sharing-ip-rights-fight-against-covid-19
² See https://www.govtrack.us/congress/bills/116/s3630/text
³ See https://www.foley.com/en/insights/publications/2020/04/proposed-delay-then-extend-coronavirus-patents
⁴ See https://www.nih.gov/news-events/news-releases/nih-launch-public-private-partnership-speed-covid-19-vaccine-treatment-options
⁵ Id.
⁶ See https://www.wilsonelser.com/news_and_insights/insights/3787-sharing_ip_rights_in_the_fight_against_covid-19
⁷ Id.

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Navigating Contractual Rights and Remedies During the COVID-19 Pandemic: Understanding Your Options for Relief and How to Minimize Liability.

Tue, 21 Apr 2020 18:28:00 GMT

By William Cory Spence, Michael McDonough, and Daniel Hess

As we continue to live and work through the COVID-19 pandemic, many businesses are starting to feel the direct impact of fewer customers, tighter budgets, and strains on contractual obligations. During this time of uncertainty and fluidity, it is more important than ever to have a firm handle on contractual rights, responsibilities and variables. Such a grasp will allow businesses to make quick and effective decisions moving forward.

Our previous article outlined certain contractual clauses such as force majeure and other common law doctrines such as impossibility and commercial frustration which may be avenues of relief for obligations currently facing many businesses. In addition to knowing whether these defenses may be available to help your business, it is imperative to know what specific relief may be available or what potential liability you may face. This article will describe some of the nuances of invoking these contract provisions and the different strategies your business can utilize to your benefit. We will outline common provisions of force majeure in commercial contracts as well as the related procedures embedded within the Uniform Commercial Code (“UCC”).

A. Common Contractual Provisions to Compensate for a Force Majeure Event

If the current COVID-19 pandemic impacts your contracts and impairs either your ability to meet your contractual obligations or if the other contracting party is unable to meet their obligations your contract may contain provisions to compensate for such an event and give some clarification as to next steps. Contracts will often identify what rights the non-breaching party may take with regards to the contract when confronted with a force majeure e event. Such provisions typically include the right of termination, reduction or pro-rata reduction in payment, or substitute content/products.

The Right of Termination

The right of termination is often a standard provision for such a force majeure event and allows the non-breaching party to terminate the contract if the applicable event meets certain criteria. For example, a right of termination provision traditionally states that “in the event of a force majeure event resulting in non-compliance with the provisions of this Agreement for a period of more than (X) days, the non-breaching party shall be entitled to terminate this Agreement, at its election, upon written notice to the breaching party.” This type of provision gives the non-breaching party the right to terminate the contract. While the termination of some contracts may be warranted under current circumstances, such a decision should be made with the overall wellbeing of your business in mind.

Reduction in Payment

Instead of the right of termination, some contracts contain provisions to allow the non-breaching party to receive a refund of payment or only perform on a reduced or pro-rata reduced schedule. For example, a reduction or pro-rata reduction clause usually states, “in the event of a force majeure event resulting in non-compliance with the provisions of this Agreement for a period of more than (X) days, the non-breaching party shall be entitled to a pro rata reduction in payment of the Agreement fees.” Such a provision allows the non-breaching party to recoup payments made under the contract in a pro-rata fashion.

Substitution of Performance/Products

Another often used provision for a force majeure event is the ability to substitute content or products. For example, the ability to substitute performance clause will normally state, “in the event of a force majeure event resulting in non-compliance with the provision of this Agreement for a period of more than (X) days, the party invoking the force majeure event may use its best efforts to provide substantially similar products or perform in a substantially similar manner as to that which is outlined in the Agreement. Acceptance of the substitution of products or performance shall be at the discretion of non-invoking party and shall be commenced within a commercially reasonable time frame.” While substitution of performance may seem like a reasonable alternative, the instant pandemic may make substitute products or performance nearly as difficult as the original performance.

B. Force Majeure for Commercial Goods and Purchase Order Issues

COVID-19’s global impact has disrupted supply chains and wreaked havoc on almost all expectations for 2020. Delays and cancellations of commercial good transactions are inevitable in times of such uncertainty. However, this time can also be ripe for predatory and dubious practices by businesses attempting to ignore their contract obligations and wrongfully use the COVID-19 pandemic as a scapegoat. A precise understanding of force majeure clauses and its relationship to the Uniform Commercial Code (“UCC”) can be both a sword and shield for your business relationships. For commercial transactions involving the sale of goods, the UCC acts as a default (but enforceable) set of rules when buyers and seller’s contracts fail to address unforeseen circumstances. Commercial “goods” under the UCC refers to the physical products that businesses are holding out for sale. ¹ The UCC comes into play most often with large purchase order contracts such as a local car dealership filling out a standard form to buy 100 new cars from a manufacturer. Because these contracts are rarely negotiated and designed to be a “one-size-fits-all” solution, the UCC’s default rules facilitate any dispute that may arise between the buyer and seller. As we will discuss, the UCC outlines procedures both buyers and seller may invoke if their contract is frustrated by a force majeure -like event. Buyers and sellers in commercial good transactions should always look to the force majeure clauses within their contracts first as those will control. However, if the contract is silent as to these situations, the UCC can allow buyers and sellers to invoke force majeure -like protections so businesses should be equally aware of these unique procedures.

If you are a seller of commercial goods that is now crippled in your ability to fulfill your purchase orders on time, UCC § 2-615 will generally excuse a delay in performance for unforeseen circumstances, of which COVID-19 could apply. The seller must provide the affected buyers a written notice of the seller’s inability to satisfy the buyer’s purchase orders by the dates formerly agreed upon. ² In the notice, the seller should include justification as to why it cannot fulfill its contract obligations: citing the truthfully unforeseen circumstances such as the COVID-19 pandemic. ³ The buyer will then have thirty (30) days to either (1) accept a modified purchase order or (2) cancel the purchase order contract in its entirety. If the buyer does not respond within thirty (30) days, then the UCC dictates that the contract has lapsed and both seller and buyer are excused from performance. ⁴ Sellers should be aware that the UCC requires them to treat all affected customers (buyers) reasonably and fairly if they are claiming this necessity to modify contract obligations. ⁵ While some discretion is allowed, ⁶ sellers should aim to act in good-faith with all of their customers to avoid any escalation of disputes.

Turning to the buyers’ perspective, if you are dealing with a seller, like the one described above, you should ensure they comply with these obligations. A seller’s written notice should expressly claim the circumstances why their delay in performance is warranted. If you have reason to doubt the sincerity of a seller’s representation, consult with counsel to help determine if this is a satisfactory invocation of force majeure by the seller. Assuming the seller’s invocation is reliable, buyers should consider the cost/benefit of either modifying the existing purchase order or cancellation of the contract entirely. Buyers must respond within thirty (30) days or else the contract will lapse.

Finally, it is important to recognize that the UCC does not provide clear default rules for when a buyer wishes to exercise a force majeure right to terminate a purchase order and refuse delivery of goods. Whether your company is the buyer or seller in this context, it is important to first keep written records of all communications. For the seller, consult with counsel about your available remedies under contract and UCC provisions and consider the cost/benefit of attempting to reach a modification of the purchase order. For the buyer, be sure to document all evidence that would support a force majeure invocation: eviction notices, revocation of licenses, or new government regulations that have impacted your business. Especially in these contexts, it is imperative to consult with counsel so that your business is suitably represented during this unprecedented pandemic.

While the strategies outlined above and applications of force majeure are common, every contract is unique. Legal counsel can be invaluable in ensuring your business can successfully enforce or defend against these provisions to your maximum benefit. If you have questions regarding your commercial contracts or your rights and responsibilities thereunder, please feel free to contact SpencePC .

¹ U.C.C. § 2-105(1) (“’Goods’ means all things (including specially manufactured goods) which are movable at the time of identification to the contract for sale other than the money in which the price is to be paid, investment securities (Article 8) and things in action.”).
² U.C.C. § 2-616.
³ U.C.C. § 2-616.
⁴ U.C.C. § 2-216(2).
⁵ U.C.C. § 2-215(b).
⁶ Perhaps to favor medical companies in more dire need or to favor long-time customer contracts. See UCC § 2-215(b); but see Roth Steel Products v. Sharon Steel, Corp. , 705 F.2d 134, 151 (6th Cir. 1983) (arguing existing contracts must take precedence over any newly entered contracts); see also Subaru Distribs. Corp. v. Subaru of Am., Inc. , 2002 U.S. Dist. LEXIS 1699, at *111 (S.D.N.Y. 2002) (arguing it was unreasonable for seller to provide one customers purchase order in its entirety while wholly denying another customer any of the goods ordered under the purchase order).

The post Navigating Contractual Rights and Remedies During the COVID-19 Pandemic: Understanding Your Options for Relief and How to Minimize Liability. appeared first on SpencePC .

SpencePC Secures Denial of Motion to Dismiss on Section 101 Patent Eligibility Grounds in Northern District of Illinois Patent Infringement Lawsuit

Tue, 14 Apr 2020 15:48:00 GMT

On March 25, 2020, SpencePC client B*EIOR received a victory in its opposition to a FRCP 12(b)(6) Motion to Dismiss for Failure to State a Claim under 35 U.S.C. 101 when the Judge denied defendant Teradata’s motion.

Plaintiff and client Tad Lepman of B*IEOR is pleased with the results and looks forward to a successful resolution going forward and praises SpencePC for its excellent service and dedication in securing this result. Mr. Lepman remarked “the team at SpencePC produced a clear and convincing argument navigating today’s legal uncertainty regarding Section 101 and Alice case law. SpencePC’s patent infringement case for B*IEOR is now strengthened with the district court’s finding of the inventiveness of our patents.”

The post SpencePC Secures Denial of Motion to Dismiss on Section 101 Patent Eligibility Grounds in Northern District of Illinois Patent Infringement Lawsuit appeared first on SpencePC .

How Foreigners can Navigate China’s Intellectual Property System

Fri, 03 Apr 2020 16:07:00 GMT

By: Jason Wejnert and Laura Shapiro

Introduction

Sophisticated investors and business owners recognize the benefits of patent licenses and patent protection on an international level. The more intricate and global a business becomes, the more protection is required in order to maintain exclusivity over products and privacy against competitors. One of the major markets patent holders are seeking intellectual property (“IP”) protection in is the People’s Republic of China. There are many benefits to having patent protection in China as it is the world’s second largest economy ¹ , but there are many differences between the United States patent system and China’s patent system. Although complex, the differences are important for patent-holders to understand in order to maximize the benefits Chinese patent courts can offer regarding patent protection. This article will discuss China’s IP court system and its advances over the last few years, as well as the China courts’ growing friendliness towards foreigners. Despite the upheaval in China, Asia and the world in general due to the recent COVID-19 pandemic, China and its IP system will play a paramount role in a client’s decision to exploit IP globally.

Patent applications have accelerated in China in recent years, with the State Intellectual Property Office, or SIPO, receiving a record total of 1.54 million in 2018, accounting for nearly half of global patent filings ² . As with many countries, when patents are issued in China, patent holders often assert them in litigation: 16,010 civil patent suits were filed in 2017, up 30 percent from the year before and dwarfing the 4,060 patent complaints filed last year in U.S. courts ³ .

To begin, China’s courts, in general, are separated into four basic courts: the Supreme People’s Court, the High People’s Court, the Intermediate People’s Court and the Basic People’s Court. The Chinese courts all follow the civil law approach, meaning the judge leads in fact-finding and is active in determining the applicable laws. Further, while China’s courts consider caselaw, caselaw is not controlling as it would be in the United States ⁴ . The Supreme People’s Court is the highest level of court in China and is regarded as the superior appellate forum that handles national matters and the court of last resort. The High People’s Court is the highest local court that is responsible for issues at the provincial level. The Intermediate People’s Court is the court that handles relevant, important local cases in the first instance as well as appeal cases from the Basic People’s Court. The Basic People’s Court handles first instance cases at the local level as well as those cases that are deemed too ‘trivial’ to require a trial ⁵ . The Intermediate People’s Court used to be the court which handled IP disputes, but specialized IP courts have taken over a majority of that area of law ⁶ .

Specialized IP Courts

The specialized IP courts are a relatively new feature within China’s court systems. The new IP courts were established on August 31, 2014 by the Standing Committee of the National People’s Congress and were placed in Beijing, Shanghai and Guangzhou ⁷ . These three courts are independent judicial bodies and operate as Intermediate People’s Courts. In 2017, four new IP courts opened in Wuhan, Nanjing, Suzhou and Chengdu due to the overwhelming amount of IP disputes brought in those regions ⁸ . As of 2019, there were over twenty specialized intellectual property courts ⁹ , though these courts outside of Beijing, Shanghai and Guangzhou are subordinate to local Intermediate People’s Courts. Since the establishment of the court, the Beijing Intellectual Property Court, alone, has accepted 13,736 IP cases involving foreigners. During the same period, a total of 10,755 foreigner-related cases in the Beijing IP court were concluded ¹⁰ . Further, the judges in the IP courts are specialized and have the reputation of being amongst the best educated judges in China ¹¹ . For appeal from the IP courts, there is a specialized IP tribunal sitting in the Supreme People’s Court, which acts as the exclusive appellate venue for technology-related IP lawsuits. Notably, the Beijing, Shanghai and Guangzhou courts as well as the IP tribunal of the Supreme People’s Court only adjudicate civil and administrative IP cases. The specialized regional IP tribunals adjudicate civil, administrative and criminal IP cases ¹² .

To take advantage of these new IP courts, an IP owner can sue in locations only where the defendant resides or where the infringing act occurs. An infringing act can occur where an act of infringement is performed, a place where the result of the infringement occurs ¹³ or where the infringing act has some effect ¹⁴ . If the defendant neither resides nor the infringing act occurs in one of the locations of the specialized IP courts, then the plaintiff will need to use the current system in order to litigate (i.e. the Intermediate People’s Courts). The cases that the IP courts can hear are divided into three types: (1) civil and administrative cases involving patents, new plant varieties, layout designs of integrated circuits, technical secrets, computer software and other technology cases; (2) administrative cases involving copyright, trademark and unfair competition against the administrative action of the State Council department or above the county level departments; and (3) civil cases involving the affirmation of famous or well-known trademarks ¹⁵ . The difference between a famous trademark and a well-known trademark for a foreigner’s purposes is that a foreigner’s brand can gain the status in China of being a well-known trademark, though a famous trademark is reserved exclusively for national, Chinese companies ¹⁶ .

The IP courts have exclusive, original jurisdiction over Type 1 and Type 3 cases, meaning that other Intermediate People’s Courts may not accept Type 1 or Type 3 cases once the IP court accepts them. Type 2 cases can be heard by IP courts but if they are already within existing courts, it is unclear whether IP courts have concurrent jurisdiction over Type 2 cases. Both ‘run-of-the-mill’ trademark infringement cases where requests for recognizing well-known trademarks are not included, as well as ‘plain-vanilla’ copyright cases that do not involve computer software are excluded by the specialized IP courts, as these courts are only meant to focus on complex IP cases ¹⁷ .

Alternative Patent Protection Systems

Alternative routes from litigating within the specialized IP courts or from litigating within the existing systems include filing a complaint with the local Administrative Authorities for Patent Affairs (“AAPA”) or filing a complaint with Customs IP. The AAPA can both issue injunctions as well as provide tools for mediation among the parties but cannot provide monetary damages for patent infringement ¹⁸ . Customs IP, on the other hand, has two types of protection: ex-officio customs actions or passive protection. Ex-officio customs action requires the customs’ officers at the border to suspend the goods in question during their routine checks if they find the goods suspected of infringing on recorded IP rights. This can lead to detainment of goods as well as a fine imposed on the infringer. Passive protection under Customs IP is where an IP holder suspects infringement and then provides a guarantee equivalent to the value of the goods they subsequently request to be detained. A court will then get involved in determining whether to stop the infringement ¹⁹ . An alternative route to litigating for trademark infringement specifically would be to request a hearing from the Administration for Industry and Commerce (“AIC”). Foreign complainants may petition equally to Chinese companies, though their documents must be notarized and legalized with a Chinese translation. AIC can directly stop trademark infringement, impose fines, confiscate or destroy infringing goods and destroy tools mainly for manufacturing infringing goods or labels ²⁰ .

Remedies and Case Law Under the IP Court System

If a foreigner were to go forward and use the specialized IP court system in China to litigate IP claims, there are remedies available. However, the monetary relief provided is not nearly as substantial as it would be litigating within the United States. The relief in China that is available includes injunctions and monetary and compensatory damages ²¹ .

Punitive damages, a major source of relief in the United States, have still not made their way into the Chinese IP system. This will not be the case for long. As of 2019, the Chinese government launched a public comment advocating for a proposed legislative amendment that would mandate an infringed patent holder’s right to claim corresponding punitive damages. Some have called the public comment on punitive damages a “war” against IP infringers and counterfeiters ²² . This is a telltale sign that not only are punitive damages a future source of relief for patent holders, but also that there are stricter and harsher remedies to come for infringing upon patents in China. This is shown by the award increase over the last two years. While the average award in cases dealing with foreign parties was 770,000 RMB in 2015 ($108,717.13 USD), as of 2018, the average award was 2 million RMB ($282,382.16 USD), and as of 2019, the average award was 2.86 million RMB ($395,335.02 USD) ²³ .

While China is becoming an increasingly attractive venue to litigate IP issues within; considering plaintiffs who engage in patent litigation on average win 80% of infringement cases ²⁴ ; foreigners still fear discrimination and automatic loss when attempting to use Chinese courts. While this fear may have held some truth in the past, presently, China has become more friendly towards foreign plaintiffs litigating in the China IP courts. In fact, as of 2019, foreign firms have achieved higher win rates and average damages than Chinese firms ²⁵ . Further, as of October, in administrative cases, foreign parties had a 49% winning rate against Chinese entities. In civil cases between Chinese and foreign entities, the foreign party had a 68% winning rate ²⁶ .

There are several cases that also indicate foreigner’s ability to win within the Chinese IP court system. These include Double Robotics , and Bayer A.G. . In Double Robotics , the foreign plaintiff was able to persuade a China IP court to invalidate patents claimed by a Shanghai-based rival ²⁷ . In Bayer A.G. , the foreign plaintiff not only received a 1.31 million RMB ($184,960.31 USD) award in damages, but also, the China IP court ordered the native defendant to stop manufacturing of the alleged infringing products and to destroy drawing and molds for the manufacture of those products ²⁸ . Although there are still some cases in which the United States’ courts concluded for the United States’ party and China IP courts concluded for the Chinese party in two concurrent suits, including Samsung v. Huawei ²⁹ and Qualcomm v. Apple ³⁰ , the trend, in general, is pro-foreign plaintiff.

2020 Economic and Trade Agreement

China continues to develop its IP court system. This is shown through their most current agreement with the United States: the 2020 Economic and Trade Agreement (the “Agreement”). Within the agreement, there have been stipulations made to foreign companies in that they no longer need to transfer or license proprietary information or IP to Chinese entities as a predicate to doing business. Further, trade secret protection has been expanded to include protection for information that has commercial value that may cause great harm to the competitive position of the information holder after disclosure. The Agreement also expands protection of IP rights to pharmaceutical-related IP rights and extends validity of patents in two ways: to compensate for unreasonable delays in the patent grant process and to compensate for unreasonable delays in the approval process of the drug market.

Beyond expansion of protection, the Agreement further enlists China to fight against piracy and counterfeiting on e-commerce platforms. The Agreement both requires the establishment of an effective notification and delisting system as well as a penalization against e-commerce platforms that condone infringement. Finally, amongst another notable achievements the Agreement hopes to accomplish, the Agreement highlights the importance to striking down bad-faith trademarks. This means that any trademark registration not filed for the purpose of use shall be rejected ³¹ . All sections within the Agreement will strengthen bilateral cooperation on the protection of IP rights between the United States Patent and Trademark Office and the China National Intellectual Property Administration ³² .

Future Outlook

As China’s IP system continues to develop in its courts, there have been notable trends with respect to how foreigners are interacting with China. Firstly, there is an influx of U.S. drug manufacturers securing Chinese patent protection so that they are able to market their drugs in China ³³ . This is because of the newfound ability to patent pharmaceuticals under the Agreement between China and the United States. Secondly, as the odds continue to be stacked for foreign companies in China IP Courts, foreigners are litigating in China at a rate never before seen ³⁴ . This is likely due not only to China’s apparent unbiased IP court system, but also, the fact that there are higher damages at stake for companies who can prove infringement ³⁵ . Finally, the more Chinese IP courts develop, the more navigable they are becoming. This is a positive for foreigners and United States citizens because they will be able to better predict litigation outcomes in China as well as prepare their cases to the standards that are easily accessible and understandable.

Despite recent trends, there is still great uncertainty as to whether China will finish achieving its potential regarding its IP Court system. Factors that might stunt China and its IP system include the ever-increasing tension mainland China has with Hong Kong ³⁶ and the coronavirus epidemic ³⁷ . As this article is published, U.S. citizens are currently being evacuated from both China and Hong Kong ³⁸ . The coronavirus has exploded worldwide, shutting down courts and business in every country affected. This is not a positive sign for business development, and therefore, is not a positive sign for legal development. Whether the damage to China is permanent has yet to be determined. If you have any questions about this paper, please feel free to contact us at SpencePC. Further, if you are considering protecting your patent or litigating a patent claim in China, we at SpencePC are happy to discuss both current and future options with you.

¹ “The World Bank in China.” World Bank, 13 Dec. 2019, www.worldbank.org/en/country/china/overview.
² Nebehay, Stephanie. “’Driving Force’ China Accounts for Nearly Half Global Patent Filings: U.N.” Thomson Reuters, 16 Oct. 2019, www.reuters.com/article/us-global-economy-innovations/driving-force-china-accounts-for-nearly-half-global-patent-filings-u-n-idUSKBN1WU2XR.
³ “What You Need To Know About Patent Litigation In China.” Law360, 9 Aug. 2018, www.law360.com/articles/1072015/what-you-need-to-know-about-patent-litigation-in-china.
⁴ “The Legal System of China.” LexUniversal, 5 Dec. 2007, lexuniversal.com/en/articles/3656.
⁵ “Legal Research Guide: China.” Legal Research Guide: China, Law Library of Congress, 3 May 2012, www.loc.gov/law/help/legal-research-guide/china.php.
⁶ Wejnert, Jason. China’s New IP Courts . PowerPoint Presentation.
⁷ Id.
⁸ Li, Richard, et al. “China’s Specialized IP Courts.” Kluwer Patent Blog, 7 Apr. 2017, patentblog.kluweriplaw.com/2017/04/10/chinas-specialized-ip-courts/.
⁹ China Law Blog. “China’s Intellectual Property Courts: A Procedural Overview.” China Law Blog, 20 Sept. 2019, www.chinalawblog.com/2019/09/chinas-intellectual-property-courts-a-procedural-overview.html.
¹⁰ “Foreign Parties Maintain a Great Success Rate at Beijing IP Court.” Lexology, CCPIT Patent & Trademark Law Office, 28 Oct. 2019, www.lexology.com/library/detail.aspx?g=1edf253a-0aaa-40b1-b193-b71429369ff3.
¹¹ Wejnert, Jason. China’s New IP Courts . PowerPoint Presentation.
¹² “Updates on China’s Specialized IP Courts and Tribunals.” Lexology, AFD China Intellectual Property Law Office, 27 Jan. 2019, www.lexology.com/library/detail.aspx?g=365fea3e-d682-4b63-822d-d7c9f0959b5d.
¹³ “China Patents: Supreme Court Frustrates Forum-Shopping Tactics.” Managing Intellectual Property, 18 Sept. 2017, www.managingip.com/article/b1kbpm5ybcp0qv/china-patents-supreme-court-frustrates-forum-shopping-tactics.
¹⁴ Wejnert, Jason. China’s New IP Courts . PowerPoint Presentation.
¹⁵ Id.
¹⁶ “China: The Problem with Defining ‘Famous’: World Trademark Review.” The World Trademark Review, Kangxin Partners PC, 1 Nov. 2016, www.worldtrademarkreview.com/portfolio-management/china-problem-defining-famous.
¹⁷ Wejnert, Jason. China’s New IP Courts . PowerPoint Presentation.
¹⁸ Zhao, Meisheng. “China’s Patent Infringement Remedies” Tsinghua China Law Review, 7 Sept. 2013, www.tsinghuachinalawreview.org/articles/PDF/TCLR_0502_ZHAOMeisheng.pdf.
¹⁹ “China Customs Provides IP Protection.” Managing Intellectual Property, 22 Mar. 2019, www.managingip.com/article/b1kblzh6b86cjj/china-customs-provides-ip-protection.
²⁰ “China Trademarks: A Brief Introduction to Trademark Enforcement by AIC.” Managing Intellectual Property, 11 Dec. 2017, www.managingip.com/article/b1kbpmzy96jg3k/china-trademarks-a-brief-introduction-to-trade-mark-enforcement-by-aic.
²¹ Spence, William Cory. “Prepare for Litigation and Avoid It Where Possible.” SpencePC, IAM Media, www.spencepc.com/wp-content/uploads/sites/2736/2019/10/STO-5567-IAM-Yearbook-2020_SpencePC.pdf.
²² “A Look at China’s Proposed Introduction of Punitive Damages Against Intellectual Property Infringement.” INTA Bulletin, 15 Feb. 2019, www.inta.org/INTABulletin/Pages/china_update_7403.aspx.
²³ Zhao, Bing. “Latest Statistics Show Foreign Firms Win in High Numbers at Beijing IP Court.” IAM Media, 24 Oct. 2019, www.iam-media.com/copyright/latest-statistics-show-foreign-firms-win-high-numbers-beijing-ip-court.
²⁴ Papageorgiadis, Nikolaos. “China Is Being Hyped as New Haven for Enforcing IP Rights, but Let’s Not Get Carried Away.” The Conversation, 4 June 2019, theconversation.com/china-is-being-hyped-as-new-haven-for-enforcing-ip-rights-but-lets-not-get-carried-away-115948.
²⁵ Id.
²⁶ Zhao, Bing. “Latest Statistics Show Foreign Firms Win in High Numbers at Beijing IP Court.” IAM Media, 24 Oct. 2019, www.iam-media.com/copyright/latest-statistics-show-foreign-firms-win-high-numbers-beijing-ip-court.
²⁷ Nicas, Jack, and Josh Chin. “Stronger Chinese Patent Laws Also Help U.S. Companies.” The Wall Street Journal, Dow Jones & Company, 20 July 2016, www.wsj.com/articles/stronger-chinese-patent-laws-also-help-u-s-companies-1468994404.
²⁸ “Bayer Awarded Injunction, RMB1.31 Million in Syringe Patent Case.” Mondaq, AFD China, 30 Sept. 2019, www.mondaq.com/china/Intellectual-Property/849624/Bayer-Awarded-Injunction-RMB131-Million-In-Syringe-Patent-Case.
²⁹ A case in which Huawei prevailed in alleging Samsung had not behaved reasonably when asked for a royalty. (https://www.twobirds.com/en/news/articles/2018/global/shenzhen-court-issues-written-judgment-in-huawei-v-samsung-case)
³⁰ A case in which Qualcomm was sued over its patent licensing activities. Qualcomm was ordered to follow a rectification plan which governed how it could negotiate licenses with Chinese firms and how much it could obtain in royalties. (https://www.ipwatchdog.com/2016/11/10/china-increasingly-preferred-venue-patent-litigation/id=74585/)
³¹ Xiaoxia, Zhang, et al. “浅析第一阶段中美经贸协议中与知识产权相关的规定.” Lexology, King & Wood Mallesons, 20 Jan. 2020.
³² Jiao, Hongbin, and Yuxin Liu. “An IP Roadmap for Phase-One Sino-US Economic and Trade Agreement.” China Law Insight, King & Wood Mallesons, 22 Jan. 2020, www.chinalawinsight.com/2020/01/articles/intellectual-property/an-ip-roadmap-for-phase-one-sino-us-economic-and-trade-agreement/.
³³ Xiaoxia, Zhang, et al. “浅析第一阶段中美经贸协议中与知识产权相关的规定.” Lexology, King & Wood Mallesons, 20 Jan. 2020.
³⁴ Yin, Cao. “Foreign IP Disputes on the Increase.” China Daily, 26 Apr. 2016, www.chinadaily.com.cn/china/2016-04/26/content_24839329.htm.
³⁵ Zhao, Bing. “Latest Statistics Show Foreign Firms Win in High Numbers at Beijing IP Court.” IAM Media, 24 Oct. 2019, www.iam-media.com/copyright/latest-statistics-show-foreign-firms-win-high-numbers-beijing-ip-court.
³⁶ Lee, Yen Nee. “5 Charts Show How Protests in Hong Kong Have Affected the City’s Economy and Stock Market.” CNBC, 25 Dec. 2019, www.cnbc.com/2019/12/26/hong-kong-protests-impact-on-economy-stock-market-in-five-charts.html.
³⁷ Huang, Eustance. “Ping An Says the Coronavirus Will Impact China’s Economy but Has Also Been ‘Helpful’ for Its Business.” CNBC, 21 Feb. 2020, www.cnbc.com/2020/02/21/ping-an-on-coronavirus-impact-on-china-economy-and-business.html.
³⁸ Areddy, James T., and Liza Lin. “U.S. Sets Second Evacuation of Americans From China.” The Wall Street Journal, Dow Jones & Company, 5 Feb. 2020, www.wsj.com/articles/u-s-sets-second-evacuation-of-americans-from-china-11580837124.

The post How Foreigners can Navigate China’s Intellectual Property System appeared first on SpencePC .

Supreme Court Considers Booking.com Trademark Dispute

Thu, 02 Apr 2020 18:59:00 GMT

By: AJ Wenn, Daniel Hess

Once a business purchases an internet domain name it can be rest assured that it—and it alone—owns and uses that specific domain name. Conversely, a business’ trademark is different: the business has to continuously use the trademark in commerce, but in return gains the incredible advantage of preventing competitors from using a similar mark in commerce. Almost every business wants its trademark to also be its domain name for consistency, but these remain distinctive property rights.

Presently, the United States Supreme Court is set to hear a case involving Booking.com: a company that openly markets itself as “Booking.com” where the “.com” is intended to be part of the company’s name and trademark. The Lanham Act makes it clear that generic terms cannot be registered as trademarks. 15 U.S.C. § 1051 . Generic terms are commonly understood as words or symbols that communicate the type of product or service offered for sale. However, a question arises as to whether an online business can create a protectable trademark by adding an internet domain, such as “.com,” to an otherwise generic mark. The Supreme Court seeks to address this issue in U.S. Patent & Trademark Office v. Booking.com B.V. , No. 19-46, where Booking.com is attempting to register a trademark on its name.

Previously, Booking.com filed four trademark applications for BOOKING.COM. Finding the trademarks generic and unprotectable, a USPTO examiner rejected these applications. The USPTO concluded that the company did not show the marks acquired secondary meaning and were merely descriptive. The TTAB then affirmed these rejections.

Booking.com appealed to the U.S. District for the Eastern District of Virginia, arguing that BOOKING.COM was eligible for protection because it was descriptive. The court agreed and held that BOOKING.COM had acquired secondary meaning due to its popularity and consumer recognition.

The USPTO appealed to the Fourth Circuit Court, arguing that adding a domain combined with an otherwise generic term could not generate a protectable mark. However, the circuit court affirmed the district court, relying in part on evidence showing consumers recognized BOOKING.COM as a brand rather than a generic service granting it secondary meaning.

The case was subsequently appealed and is now in the hands of the U.S. Supreme Court, who must decide if adding an internet domain to an otherwise generic term, like “booking,” can create a protectable trademark. Oral arguments were supposed to be heard earlier this week, but were postponed due to the coronavirus pandemic. It is unclear when oral arguments will resume.

The ruling in this case may affect the domain names and branding of businesses in a variety of ways. If Booking.com succeeds, it would be able to exclude competitors from using similar domain names and logos, such as, booking.biz, booking.co, booking.inc, or booking.org. Booking.com would also be able to exclude similar variants of its name, including, ebooking.com, bookingnow.com, booktrips.com, etc. The “doctrine of foreign equivalents” would also apply to these examples, which extends trademark protection beyond the English language ¹ and enables Booking.com to exclude domain names with common meanings in foreign languages.

In respect to trademark prosecution, if a business currently has a trademark or logo including an internet domain, this case could create an avenue for registration. For example, one could overcome an office action by arguing a mark with “.com” has acquired secondary meaning and is recognized by consumers as a brand, thereby securing a registration.

Conversely, if the USPTO wins the case, prosecution at the Trademark Office will remain largely unchanged, and internet domains will not provide an avenue to receive a registration. Similarly, one would not be able to enforce a generic trademark that contains an internet domain.

As most commercial businesses own web domain names, the outcome of this case could be crucial to the marketing and online advertising strategies of various organizations. Upon issuance of the final decision, SpencePC will publish a follow up article to address any substantive changes to the law. If you have any questions about trademark prosecution or litigation, please feel free to contact SpencePC. We are also happy to discuss any IP issues you may face, including patent litigation, patent applications and prosecution, trademark applications and prosecution, copyright filings, trade secrets, or other complex litigation matters.

¹ TMEP 1207.01(b)(vi)

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The Term ‘Inventor’ and its Growing Definition: Artificial Intelligence’s Impact on Inventorship

Thu, 02 Apr 2020 18:55:00 GMT

By: Gopal Gannamraj, AJ Wenn, and Alok Parikh

Can artificial intelligence systems be treated as an inventor? If so, what ownership rights flow to the owner of the artificial intelligence system? As some of the biggest technology and pharmaceutical companies in the world continue to invest heavily into their artificial intelligence systems, the USPTO has been faced with addressing these questions. Under the United States Patent Act, the term ‘inventor’ is defined as being an individual or the individuals collectively who “invented or discovered the subject matter of the invention.” While inventorship has historically been restricted to humans, the advent of improved artificial intelligence is forcing the USPTO to reevaluate its position. Accordingly, in August 2019, the USPTO issued a “Request for Comments on Patenting Artificial Intelligence Inventions” and is expected to provide a policy paper based on those comments later this year. ¹

The Artificial Inventor Project (“AIP”) is dedicated to seeking intellectual property rights arising from the use of an artificial intelligence system as an inventor. ² The work done by the AIP has raised several interesting questions regarding inventorship. The AIP believes that patent laws should allow artificial intelligence systems to be listed as the inventor, while the owner of the artificial intelligence system can be the assignee or owner of those patents. To further the debate, in August 2019, the AIP filed two patent applications that listed an artificial intelligence system as the inventor. Neither invention involved any human intervention. One patent application is for an improved beverage container and while the second patent application is directed to a device/method for attracting enhanced attention ( i.e. , a neural flame used during search-and-rescue missions). ³

Both patent applications list the inventor as Device for Autonomous Bootstrapping of Unified Sentience (“DABUS”). DABUS is an artificial intelligence system that was developed by Stephen Thaler, CEO of Imagination Engines, to generate ideas and determine which are novel and the most useful or valuable. ⁴ Specifically, DABUS was not created to solve any single problem or trained on any of specific data relevant to these two inventions., Rather, DABUS independently created inventions to solve a previously un-identified problem. DABUS, although trained to develop new ideas by a human, created the two inventions autonomously and accordingly, AIP named DABUS as the inventor.

While the number of patent applications directed to artificial intelligence being filed at the USPTO continues to grow, the DABUS patents are the first to name an artificial intelligence system as an inventor. As artificial intelligence systems grow more powerful, innovations developed by these artificial intelligence systems will become more common. With the prevalence of artificial intelligence technology and the USPTO facing questions regarding the concept of inventorship as it pertains to artificial intelligence, this issue is one to be closely monitored.

Upon issuance of the USPTO policy paper addressing Patenting Artificial Intelligence Inventions, SpencePC will publish a follow up article to address any substantive changes to the law. If you have any questions about inventorship, generally, or inventorship as related to artificial intelligence, please feel free to contact SpencePC. Our attorneys have experience litigating in a variety of venues, including the Northern District of Illinois, District of Delaware, Northern District of California, Eastern District of Texas, and Western District of Texas. We are also happy to discuss any IP issues you may face, including patent litigation, patent applications and prosecution, trademark applications and prosecution, copyright filings, trade secrets, or other complex litigation matters.

¹ ( See https://www.federalregister.gov/documents/2019/08/27/2019-18443/request-for-comments-on-patenting-artificial-intelligence-inventions) (last accessed March 30, 2020).
² ( See http://artificialinventor.com/patent-applications/) (last accessed March 30, 2020).
³ Id.
⁴ Id.

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Navigating Contractual Rights and Remedies During the COVID-19 Pandemic: Doctrines All Businesses Should Consider

Wed, 25 Mar 2020 15:07:00 GMT

By: William Cory Spence, Michael McDonough & Daniel Hess

¹ Rochester Gas & Elec. Corp. v. Delta Star, Inc. , 2009 U.S. Dist. LEXIS 11489 at *19, 68 U.C.C. Rep. Serv. 2d (Callaghan) 130; citing Kel Kim Corp v. Central Markets , 70 N.Y.2d 900, 902-03, 519 N.E.2d 295, 524 N.Y.S.2d 384 (1987) (ruling that non-performance based on a force majeure clause is excusable “only if the force majeure clause specifically includes the event that actually prevents a party’s performance.”); Kyocera Corp. v. Hemlock Semiconductor, LLC , 313 Mich. App. 437, 447 (2015) (ruling force-majeure clauses are typically narrowly construed, such that the clause “will generally only excuse a party’s nonperformance if the event that caused the party’s nonperformance is specifically identified.”).
² Kyocera Corp. v. Hemlock Semiconductor, LLC , 313 Mich. App. 437, 451-52, (2015); See also Great Lakes Gas Transmission Limited Partnership v. Essar Steel Minn., LLC , 871 F. Supp. 2d 843, 855 (Dist. Minn. 2012); Seaboard Lumber Co v United States , 308 F.3d 1283, 1293 (Fed. Cir. 2002); In re Millers Cove Energy Co, Inc , 62 F3d 155, 158 (CA 6, 1995); Coker Int’l, Inc. v Burlington Industries, Inc. , 747 F. Supp. 1168, 1170 (Dist. S.C., 1990); Langham-Hill Petroleum, Inc. v. Southern Fuels Co. , 813 F.2d 1327, 1328 (4th Cir. 1987).
³ OWBR LLC v. Clear Channel Communs., Inc. , 266 F. Supp. 2d 1214, 1223 (Dist. HI, 2003); citing Butler v. Nepple , 54 Cal. 2d 589 (1960); Stand Energy Corp. v. Cinergy Servs. , 144 Ohio App. 3d 410, 417 (2001).
⁴ Innovative Modular Solutions v. Hazel Crest Sch. Dist. 152.5, 965 N.E.2d 414, 421 (Ill. 2012).
⁵ Id.
⁶ Id.

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CHOOSING WHERE TO LITIGATE: Venue Considerations After In Re Google

Tue, 03 Mar 2020 18:14:00 GMT

By AJ Wenn, Gopal Gannamraj and Alok Parikh

Before filing suit, one of the most important decisions a plaintiff will make is where to file. While certain venues tend to be more plaintiff friendly, such as the Eastern and Western districts of Texas, other venues favor defendants, such us the Northern District of California ¹ .

Under 28 U.S.C. §1400(b), “[a]ny civil action for patent infringement may be brought (1) in the judicial district where the defendant resides, or (2) where the defendant has committed acts of infringement and has a regular and established place of business.” The Supreme Court in TC Heartland LLC v. Kraft Foods Grp. Brands ² , further defined the standards of §1400(b). In particular, TC Heartland narrowed the definition of “resides” to districts where a business is incorporated. Accordingly, if a plaintiff wishes to litigate in a court outside the state of incorporation, a plaintiff must bring suit where a business has committed acts of infringement and has a regular and established place of business ³ .

The Federal Circuit expounded upon the TC Heartland decision in In re Cray, Inc. ⁴ , holding that a regular and established place of business must be: (1) a physical place in the district; (2) regular and established; and (3) the place of the defendant. Importantly, the court noted that a regular established place of business may be the “physical, geographical location in the district from which the business of the defendant is carried out ⁵ .”

In the recent case of In re Google ⁶ , the Federal Circuit further narrowed the definition of a “regular and established place of business.” The plaintiff, Super Interconnect Technologies (SIT), filed suit against Google in the Eastern District of Texas, claiming that venue was proper because Google’s Global Cache (GGC) servers were located within the district. The servers were not owned by Google but were hosted and maintained in racks by third party Internet Service Providers (ISP). In analyzing the factors established in both TC Heartland and In re Cray , the court agreed that the presence of GGC servers within the Eastern District of Texas satisfied the first element, and that Google had a physical place within the district. However, regarding the second element, the court ruled that a place of business requires the regular, physical presence of an employee or other agent of the company. Expanding on this statement, the court concluded that the third-party ISP running the servers was not an agent of Google and that venue was improper under 28 U.S.C. §1400(b).

While this ruling provides some guidance on the difference between an employee/agent and a third-party contractor in terms of venue, there remains some gray area regarding the specific activities and frequency of these activities an individual must perform in the district to establish venue. Accordingly, future cases will have to decide if other offices’ activities within a business meet this standard. For example, future cases will likely have to examine whether activities performed at a human resources or marketing office, are enough to establish venue.

The key takeaway from these cases is to file suit where the defendant is operating a physical location not controlled by a third-party contractor.

If you have any questions about venue selection, please feel free to contact SpencePC. Our attorneys have experience litigating in a variety of venues, including the Northern District of Illinois, District of Delaware, Northern District of California, Eastern District of Texas, and Western District of Texas. We are also happy to discuss any IP issues you may face, including patent litigation, patent applications and prosecution, trademark applications and prosecution, copyright filings, trade secrets, or other complex litigation matters.

¹ See https://media2.mofo.com/documents/181001-tc-heartland-one-year-on.pdf
² TC Heartland LLC v. Kraft Foods Grp. Brands LLC , 137 S. Ct. 1514 (2017)
³ Id.
⁴ In re Cray, Inc. , 871 F.3d,
⁵ Id. at 1362.
⁶ In re Google , Case No. 19-126

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Congratulations to William C. Spence on his Illinois Super Lawyer Status!

Thu, 20 Feb 2020 22:00:00 GMT

About William C. Spence

Click here to learn more about Cory

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PITFALLS OF PATENT LICENSING

Wed, 05 Feb 2020 15:31:00 GMT

How to Ensure Patent Enforcement Without Joining the Patent Holder

By AJ Wenn, Jason Wejnert and Daniel Hess

Sophisticated investors recognize the benefits of patent licenses and many prefer exclusive licenses over the cost, hassle, and uncertainty of patent litigation. Investors should recognize that exclusive licenses may not always prevent the patent holder from being joined in a lawsuit. This can cause problems for both the licensee and the original patent owner. For example, when patents are licensed from one organization to another, the licensee may lack standing to sue without joining the original patentee. An exclusive patent license typically grants the licensee the sole right to practice an invention. It does not, however, automatically provide the licensee with the ability to enforce its rights should others infringe on its exclusivity.

In order for a licensee to have standing in court, without joining the patentee, the contractual agreement must transfer “all substantial rights” of the patents. Courts typically weigh a variety of factors to determine if an assignee or licensee has received “all substantial rights” of a patent. The case of Clouding IP, LLC v. Google Inc. ¹ , discloses a comprehensive list of factors that influence a court’s decision, including:

(i) “ transfer of the exclusive right to make, use, and sell products or services under the patent;”
(ii) “the scope of the licensee’s right to sublicense ;”
(iii) “the nature of license provisions regarding the reversion of rights to the licensor following breaches of the license agreement;”
(iv) “the right of the licensor to receive a portion of the recovery in infringement suits brought by the licensee;”
(v) “the duration of the license rights granted to the licensee;”
(vi) “the ability of the licensor to supervise and control the licensee’s activities;”
(vii) “the obligation of the licensor to continue paying patent maintenance fees ;” and
(viii) “the nature of any limits on the licensee’s right to assign its interests in the patent.”

Of the above listed factors, the following are often given the most importance: (1) the right to bring a suit independent of the patentee; (2) the right to make, use, and sell products or services; (3) the right to sublicense the patents without approval; and (4) the right to assign the patents without approval. Each of these factors are described below in greater detail.

1) Right to bring suit independent of the patentee:
Frequently, the nature and scope of the licensor’s retained right to sue accused infringers is the most important factor in determining whether an exclusive license transfers substantial rights of the patent. Courts have often held that where the licensor retains a right to sue accused infringers, that right often precludes a finding that all substantial rights were transferred to the licensee ² .

2)Exclusive right to make, use, and sell products:
Transfer of the exclusive right to make, use, and sell products or services covered by the patent is considered vitally important to an assignment or license. This principle was further supported in Abbott Lab. v. Diamedix Corp. ³ , where the Federal Circuit concluded that the licensor had not transferred “all substantial rights” to Abbott when the licensor retained “a limited right to make, use, and sell products” embodying the patented inventions ⁴ .

3) Right to sublicense the patents without approval:
A licensee’s right to sub-license the patents is an important consideration in evaluating whether a license agreement transfers all substantial rights. For example, in Delano Farms Co. v. California Table Grape Comm’n ⁵ , the court determined that a licensing agreement, which restrains or controls the licensee’s sublicensing power, was regarded as having retained substantial control over patent enforcement. Consequently, the Federal Circuit held the agreement did not transfer all substantial rights in the patent to the licensee.

4) Right to assign patents without approval:
The right to assign patents without approval or direction from the assignor is important in the court’s determination of an assignee’s ability to independently litigate the patents. The importance of this factor is also supported by the case Abbott Lab. v. Diamedix Corp. ⁶ , where the assignor retained the “right to prevent Abbott from assigning its rights under the license to any party other than a successor in business.” The court then determined the assignor was the true patent holder because Abbott lacked the ability to assign the patent rights without encumbrance.

Accordingly, if the IP license agreement transfers (1) the sole right to bring a suit independent of the patentee; (2) the exclusive right to make, use, and sell products or services; (3) the right to sublicense the patents without approval of the patentee; and (4) the right to assign the patents without approval of the patentee, a court will likely determine all substantial rights in the patent have been transferred and licensee may bring suit without joining the patentee.

If you have any questions about drafting a licensing agreement, please feel free to contact SpencePC. Our attorneys have experience successfully drafting IP transfer agreements that withstand litigation. We are also happy to discuss any IP issues you may face, including patent litigation, patent applications and prosecution, trademark applications and prosecution, copyright filings, trade secrets, or other complex litigation matters.

¹ 61 F. Supp. 3d 421, 433, (D. Del. 2014).
² See Alfred E. Mann Found. for Sci. Research v. Cochlear Corp. , 604 F.3d 1354, 1361, (Fed. Cir. 2010).
³ 47 F.3d 1128 (Fed. Cir. 1995).
⁴ Id . at 1132.
⁵ 655 F.3d 1337, 1342 (Fed. Cir. 2011).
⁶ Abbot Lab , 47 F.3d at 1132.

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THE PENDULUM CONTINUES TO SWING – DEVELOPMENTS IN SECTION 101 LAW

Wed, 08 Jan 2020 21:11:00 GMT

William Cory Spence, Jason Wejnert, Jason Sanders, Laura Shapiro

As any patent practitioner, whether in patent prosecution, patent licensing or patent litigation, has witnessed over the past several years, patent eligibility under 35 U.S.C. § 101 has undergone a sea change back and forth. Cases have gone from District Court to Federal Circuit to Supreme Court and back again. The USPTO and PTAB has weighed in repeatedly, sometimes taking matters into their own hands, sometimes pleading to the higher authorities and Congress to intervene and provide more clarity. As we close out 2019 and open a new decade, there are several messages and considerations that a patent practitioner must consider as the pendulum swings in patent eligibility jurisprudence.

35 U.S.C. § 101 of the Patent Act states that anyone who invents a new and useful “process, machine, manufacture, or composition of matter” may be entitled to a patent. While one of the main bases for obtaining a patent in the U.S. should be a straightforward proposition, such a straightforward statute governing patent eligibility has generated significant confusion, frustration and uncertainty as of late. Specifically, the patentable subject matter trio of Supreme Court cases, Bilski v. Kappos ¹ , Mayo Collaborative Servs. v. Prometheus Labs, Inc. ² , and Alice Corp. Pty. Ltd. v. CLS Bank Int’l ³ , has made it far harder to prosecute and enforce software and business method patents. These cases have also placed significant limits on patents relative to pharmaceutical methods of treatment. Further, cases following this trio have even threatened mechanical inventions.

Such limitations and general confusion surrounding subject matter that is potentially eligible has generated subsequent problems and profound uncertainty in U.S. patent litigation. After Alice , accused infringers have routinely brought early motions to dismiss against software and business method patents – some of them quite questionable in merit – arguing that they are unpatentable “abstract ideas.” Unfortunately, no concrete definition of “abstract ideas” has been proffered – adding to the uncertainty surrounding § 101 patent eligibility. Although the question of patent eligibility, including whether a specific patent is directed toward an “abstract idea”, is a question of law, the Federal Circuit has announced that certain factual allegations may underly the ultimate decision ⁴ . Moreover, the surrounding confusion (and sometimes arbitrariness) of § 101 patent eligibility case law has made it difficult for attorneys to predict the outcome of a particular case. Patent infringement cases now run the ever-increasing risk of the patent becoming invalidated through incoherent and sometimes contradictory understandings of § 101. As of March 1, 2019, there have been 359 software/technology patents and 37 biotechnology/life sciences patents held ineligible under Alice , compared to 170 software/technology patents and 27 biotechnology/life sciences patents held subject matter eligible pursuant to § 101 ⁵ . In addition, 97 software/technology patents and 15 biotechnology/life sciences patents have been categorized as to be premature in an Alice determination of patent-eligible subject matter ⁶ . Clearly, there is a heightened proclivity to designate patents as ineligible via § 101 post- Alice .

The USPTO has identified the perplexity surrounding § 101 and has been proactive in addressing the concerns. Recently, the USPTO released the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), specifically outlining a new approach to the categorization of patent eligible material. Aimed at increasing both clarity and uniformity relative to how § 101 is applied during examination, the 2019 PEG introduces a new two-step analysis during step 2A of a patent eligibility examination. Under this analysis, subject matter is eligible for a patent, unless: (1) the claims recite a judicial exception; and (2) the exception is not integrated into a practical application of the exception. The 2019 PEG has offered “groupings” of abstract ideas (including mathematical concepts and mental processes) and has determined that “integration into a practical application” requires the claims to have an additional element or elements to transcend the judicial exception. Notwithstanding the USPTO’s bona fide attempt to provide clarity, the tortuous steps of determining § 101 patent eligibility persist.

Congress may be looking to overturn many of these unfavorable decisions (including the aforementioned Supreme Court cases) and help provide bright line rules regarding § 101 eligibility. Senators Thom Tillis (R-NC) and Chris Coons (D-DE), the Chairman and Ranking Member of the Intellectual Property Subcommittee, recently in 2019, held three days of Congressional hearings on a bill that would revise 35 U.S.C. §§ 100, 101, and 112 to overrule Mayo and Alice by abrogating the judicially created exceptions to patent eligibility ⁷ . The bill is still in its nascent stages and has a long way to go, but it has garnered bipartisan support and a new draft should be proposed after the July 4th recess. In the meantime, some courts are experimenting with other creative ways to address the increasing (some say “over”) use of early summary judgment motions based on patentability under 35 U.S.C. § 101.

Eastern District of Texas

Chief Judge of the United States District Court for the Eastern District of Texas, Rodney Gilstrap, has since this past August 2019 implemented procedural changes surrounding 35 U.S.C. § 101 patent eligibility contentions relative to patent infringement litigation. The Eastern District of Texas, among others, contains local rules requiring that defendants raise invalidity challenges based on both anticipation (§ 102) and obviousness (§ 103) early in the case – effectively streamlining discovery ⁸⁹ . Defendant’s contentions relative to § 101 ineligibility must include, at minimum, the following requirements: (1) a chart sketching out their arguments, including factual basis for those arguments; (2) the chart must also contain the relevant industry at the time of the invention and explain why each element would have been well-understood, routine, or conventional; and (3) corporations must disclose and produce all material they will rely upon ¹⁰ . Except in limited circumstances, the aforementioned contentions will be final, barring subsequent claim construction and the opportunity to raise § 101 ineligibility assertions at the summary judgment phase of the proceeding.

Potentially affected defendants include those that employ the tactic of raising § 101 patent ineligibility assertions at the summary judgment phase (delaying the judicial process and possibly receiving a second chance at claim construction), and those defendants that are teetering on whether to raise a § 101 or not. Although in the nascent stages, Judge Gilstrap’s new rule should certainly be factored in when potential patent infringement plaintiffs are considering which venue to choose. One potential outcome of the new rule: based upon the quasi-use-it-or-lose-it rule, more defendants raise § 101 patent ineligibility assertions early in the case. Simply due to the mere amount of assertions, more patents become invalid via § 101 and the Eastern District of Texas transforms into a defendant-friendly hotbed for invalidating patents. However, an alternative outcome: Judge Gilstrap’s new rule represents a higher threshold for success relative to § 101 patent ineligibility. Defendants subsequently forego utilizing their ineligibility assertions, and instead focus exclusively on their non-infringement position. The Eastern District of Texas becomes very plaintiff-friendly relative to § 101 patent eligibility and represents leverage for the plaintiff to help induce and facilitate settlement.

A recent case from the United Stated District Court for the Eastern District of Texas gives guidance as to where Judge Gilstrap’s rule may be headed: towards plaintiff-friendly territory. In PPS Data, LLC v. Jack Henry & Assocs. , the court denied the defendant’s motion to dismiss the patent infringement suit, determining the patent-in-suit (an electronic check deposit processing) as eligible. The court concluded that three inventive concepts within the patent-in-suit had genuine disputes of material fact, which saved the plaintiff from early dismissal ¹¹ .

Western District of Texas

The Western District of Texas also appears to be following the Eastern District’s lead by taking a plaintiff-friendly approach to patent validation. For example, in a recent case decided this past September, Ubiquitous Connectivity, LP v. City of San Antonio d/b/a CPS Energy , the Western District court found that patent claims must not be oversimplified ¹² . After the plaintiff showcased in its proposed amended complaint three inventive concepts regarding the patent-in-suit (a thermostat control system), the court generously allowed Ubiquitous to file its amended complaint, ruling that once amended, an inventive concept would sufficiently be alleged ¹³ .

The Western District’s patents eligibility suits have evolved over time to become more plaintiff-friendly, specifically to software/tech patents. To illustrate, in an early 2015 decision, Affinity Labs of Texas, LLC v. DirecTV, LLC , the broadcasting content in contention was determined to be directed toward an age-old concept “… accompanied by a generic recitation of a conventional cellular phone.” ¹⁴ Later in 2015, another software/tech patent was not dismissed because the defendants had not established the patent (mobile device data monitoring patent claims) was directed towards an abstract idea ¹⁵ . In a 2018 case, CliniComp International, Inc. v. athenahealth, Inc. the defendant’s motion to dismiss was denied because the plaintiff well-pled an inventive concept within their asserted healthcare management system ¹⁶ . Further, in a January 2019 case, Multimedia Content Mgm’t LLC v. DISH Network Corp. , the Western District determined that the plaintiff’s claim contained an inventive concept regarding their asserted network access patent. Therefore, the defendant’s motion to dismiss was denied ¹⁷ .

Further, Judge Albright has made it clear that he disfavors early Alice motions. His past orders on §101 motions have cited Aatrix ¹⁸ in relation to factual issues that might affect Alice analysis, and MyMail ¹⁹ in cases where claim construction might affect it. Since he intends to delay discovery until after the Markman hearing, Albright said Alice motions “are more properly preserved for summary judgment … both because of claim construction and because of need for discovery.”

Judge Albright has also cited the ruling in Berkheimer v. HP when denying Section 101 motions to dismiss. In Berkheimer , the Federal Circuit vacated a district court decision that granted summary judgment to HP Inc. after finding that a digital file archiving patent inventor Steven Berkheimer accused HP of infringing was invalid for claiming an abstract idea. The Federal Circuit said factual questions about whether the invention contained innovations beyond what was routine and conventional could not be resolved so early in a case.

Additionally, in support, according to RPX Corp., a patent risk management company, quick Alice wins have dwindled after the Federal Circuit’s Berkheimer ruling, with district courts granting only 45% of motions to dismiss on eligibility grounds compared to 70% before the decision. ²⁰

Other District Decisions

Despite more clarity in the Texas districts, other developments in case law have further succeeded to confuse patent-holders on the eligibility of their patents under § 101. Eligibility appears to be a venue-by-venue determination. For example, the Northern District of Illinois has been less clear in its approach to patent eligibility. Before 2018, there were more defendant-friendly judgments made on patent eligibility. In 2016, 9 software/tech patents were deemed ineligible compared to one case where the defendant’s motion to dismiss was denied. In 2017, 5 patents were deemed ineligible while no parents survived a motion to dismiss. In 2018, the Northern District appeared to take a turn as more plaintiff friendly with 3 cases surviving motions to dismiss ²¹ .

As of 2019, there has so far been a tangible split in whether a patent would be considered eligible or ineligible. In the recent decision of Checksum Ventures, LLC v. Dell Inc. , the Court ruled the plaintiff’s patent ineligible and accordingly, granted the defendant’s motion to dismiss. In its ruling, the court stated that it must only take the patent’s purported inventive improvements as true “to the extent they are captured in the claims” ²² . In fact, the Checksum court looked only to the patents-in-suit themselves before favoring the defendant’s motion to dismiss. Although the Checksum court allowed for a future amended complaint from the plaintiff, the analysis of the patent, a data identifier, reads far less friendly as opposed to the Ubiquitous court’s patent analysis. The Checksum court outright stated that the patent was directed toward an abstract idea and had no inventive concept, boiling the claims down to “apparatus, method and program” ²³ of well-known technology.

In another Northern District of Illinois case, FYF-JB, LLC v. Pet Factory, Inc. , the court ruled in favor of the plaintiff regarding patent eligibility. Despite the defendant’s position that the patent-in-suit, a pet tug-toy, was directed to the natural law of force and direction, the court ruled that there was an adaptation to the toy, thereby rejecting defendant’s motion to dismiss. Further, the court reminded the defendant that “claims must be considered as a whole ²⁴ ” when determining § 101 patent eligibility. This allowed for the court to reject the defendant’s stance that the tangible components included in the patent should be ignored ²⁵ .

Federal Circuit Decisions

Despite Berkheimer and Aatrix , the Federal Circuit appears to take a strongly patentee-adverse position, albeit inconsistently. In a recent decision, In re Greenstein , the Federal Circuit court maintained a high standard for patent eligibility by dismissing the plaintiff’s patent as ineligible. The court determined the patent-in-suit, a computer program, did “…no more than the automation of the longstanding fundamental economic concept of personal financial planning. ²⁶ ” Subsequently, the court claimed that whether considered individually or as an ordered combination, the patent-in-suit failed to recite an inventive concept and only recited an abstract idea with instructions to implement it on the computer ²⁷ .

In an additional patentee-adverse case brought earlier this October, American Axle & Manufacturing, Inc. v. Neapco Holdings LLC and Neapco Driveline LCC , the Federal Circuit appeared to expand § 101 patent ineligibility to encompass mechanical patents alongside the typical software and business patents normally accused of being “abstract”. This was due to the court’s understanding of the patent describing a drive shaft. The court stated that the patent claims did not describe a specific method in applying a scientific law. Further, the court thought the patent-in-suit should have included finite element analysis models. Finally, the court found no inventive concept within the patent. The patent was deemed ineligible, and the case was promptly dismissed ²⁸ .

American Axle is an especially concerning case. It could lead to more patent eligibility challenges in technology. Further, it expands the context in which patents in general can be challenged. Prior to American Axle , technology patents, unlike software or business patents, rarely faced challenges. If they were challenged, the patent-in-suit was typically directed towards a medical device or the high-tech field, such as biotech. Now, mechanical inventions face the line of fire. Further, patents-in-suit historically have faced challenges of abstractness. Now, claiming a patent in directed towards a natural law may be a fruitful motion for defendants to raise.

Next Steps

Despite the uncertainty of § 101 and how different venues are responding, there is hope for clarity. The Supreme Court is currently considering several petitions to deal with patent eligibility. Further, Representative Doug Collins (R-GA) has relit the fire for senators to act, calling for patent reform and a new patent eligibility test after American Axle was decided. He will likely join in with Senators Thom Tillis (R-NC) and Chris Coons (D-DE) in the drafting of their patent-reform bill ²⁹ .

Patent holders need to understand that the pendulum has been swinging back and forth on § 101 for the past few decades. The law is in flux and district courts and the Federal Circuit have looked to both the Supreme Court and Congress to demarcate what the rule should be. Until that is decided, patent applicants must continue to prepare specifications and a file history that clearly and amply describes the invention and the technological innovation that the invention provides with as much detail as possible. Also, as always, articulate and describe the invention in claim language that incorporates the technological innovation, to avoid having a court “abstract” away the invention. Attorneys at SpencePC have prosecuted, licensed and litigated patents with § 101 considerations many times in the past and we are available to discuss these issues in detail.

¹ Bilski v. Kappos , 561 U.S. 593 (2007) (holding “machine-or-transformation test is not the sole test for determining patent eligibility” and the method directed toward the economic concept of hedging was “a unpatentable abstract idea”).
² Mayo Collaborative Servs. V. Prometheus Labs., Inc ., 566 U.S. 66 (2012) (holding “patents claiming methods for calibrating proper dosage of thiopurine drugs to treat autoimmune diseases were effectively claim[ing] the underlying laws of nature themselves, and thus were invalid”).
³ Alice Corp. Pty. Ltd. v. CLS Band Int’l , 134 S.Ct. 2347 (2014) (holding “the abstract idea of an intermediated settlement was not patentable” and “method claims requiring generic computer implementation failed to transform the abstract idea of intermediates settlement into a patent-eligible invention”).
⁴ See Berkheimer v. HP Inc. , 881 F.3d 1360, 1366 (Fed. Cir. 2018); Ultramerical, Inc. v. Hulu, LLC, 722 F.3d 1335, 1338-39 (Fed. Cir. 2013).
⁵ Chart of Post-Alice Cases , GIBSON DUNN (as of March 1, 2019), https://www.gibsondunn.com/wp-content/uploads/2019/03/Overview-of-Section-101-Patent-Cases-Decided-After-Alice-v-CLS-as-of-03-01-19.pdf
⁶ Id .
⁷ Patent Eligibility in Flux: Tracking the Tillis-Coons Bill , JDSUPRA (Aug. 9, 2019), https://www.jdsupra.com/legalnews/patent-eligibility-in-flux-85215/
⁸ Matthew Bultman, Gilstrap Changes Playing Field With Patent Eligibility Rule, LAW360 (Aug. 14, 2019), https://www.law360.com/articles/1188573/gilstrap-changes-playing-field-with-patent-eligibility-rule
⁹ Id .
¹⁰ Id .
¹¹ PPS Data, LLC v. Jack Henry & Associates , 2019 U.S. Dist. LEXIS 169218, at *2 (E.D. Tex. Sep. 6, 2019)
¹² Ubiquitous Connectivity, LP v. City of San Antonio , 2019 U.S. Dist. LEXIS 165197, at *3 (W.D. Tex. Sep. 26, 2019) (citing Enfish, LLC v. Microsoft Corp. , 822 F.3d 1327, 1334 (Fed. Cir. 2016)).
¹³ Id .
¹⁴ Affinity Labs of Texas, LLC v. Directv, LLC , 109 F. Supp. 3d 916, 935 (W.D. Tex. 2015)
¹⁵ Versata Software, Inc. v. Zoho Corp. , 2015 U.S. Dist. LEXIS 145225, at *2 (W.D. Tex. Oct. 26, 2015)
¹⁶ CliniComp International, Inc. v. Athenahealth, Inc. , 2018 U.S. Dist. LEXIS 224777, at *4 (W.D. Tex. Oct. 3, 2018)
¹⁷ Multimedia Content Management LLC v. Dish Network Corp. , No. 6:18-CV-00207-ADA, 2019 U.S. Dist. LEXIS 198875, at *16 (W.D. Tex. Jan. 10, 2019)
¹⁸ Aatrix Software, Inc. v. Green Shades Software, Inc. , 882 F.3d 1121 (Fed. Cir. 2018) (holding that whether a patent is invalid can involve factual questions about what was routine and conventional at the time of the invention)
¹⁹ MyMail, Ltd. v. ooVoo, LLC , 934 F.3d 1373 (Fed. Cir. 2019).
²⁰ See https://www.law360.com/articles/1230433/is-a-delay-of-alice-motions-bringing-plaintiffs-to-west-texas-, last reviewed Jan. 6, 2020.
²¹ Chart of Post-Alice Cases , GIBSON DUNN (as of March 1, 2019), https://www.gibsondunn.com/wp-content/uploads/2019/03/Overview-of-Section-101-Patent-Cases-Decided-After-Alice-v-CLS-as-of-03-01-19.pdf
²² Checksum Ventures, LLC v. Dell Inc. , 2019 U.S. Dist. LEXIS 168216, at *18 (N.D. Ill. Sep. 30, 2019) (quoting Berkheimer v. HP Inc. , 890 F.3d 1369, 1373 (Mem))
²³ Id .
²⁴ FYF-JB, LLC v. Pet Factory, Inc. , 2019 U.S. Dist. LEXIS 162929, at *8 (N.D. Ill. Sep. 24, 2019) (citing Diamond v. Diehr , 450 U.S. 175, 191 (1981)).
²⁵ Id .
²⁶ In re Greenstein , 2019 U.S. App. LEXIS 26893, at *4 (Fed. Cir. Sep. 6, 2019)
²⁷ Id .
²⁸ American Axle & Manufacturing v. Neapco Holdings LLC , 2019 U.S. App. LEXIS 29655, at *1 (Fed. Cir. Oct. 3, 2019)
²⁹ Ryan Davs, Drive Shaft Ruling May Expand Challenges to Patent Eligibility , LAW360 (Oct. 24, 2019)
http://www.mondaq.com/unitedstates/x/853350/Patent/Rep+Collins+RGa+Calls+for+Patent+Reform+After+American+Axle+Decision

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SpencePC partners, William Spence and Jason Wejnert, accompanied by associate, Laura Shapiro, speak at the University of Chicago Law School

Tue, 07 Jan 2020 19:57:00 GMT

SpencePC partners, William Spence and Jason Wejnert, accompanied by associate, Laura Shapiro, recently spoke to students and faculty at the University of Chicago Law School. SpencePC presented a Lunch Talk on November 23rd discussing issues and recent changes in IP litigation around the world.

The talk was focused on three major world markets: the United States, China and the European Union (with a special spotlight on Germany). After the lecture, students were given the opportunity to ask questions about both the Firm and IP law, in general. SpencePC was honored by the invitation and impressed with the students’ curiosity and intriguing queries.

We hope to return soon for a follow-up conversation, and always, we are available to speak about IP litigation issues in a global context.

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AJ Wenn Publication in the OSBA Newsletter

Mon, 16 Dec 2019 19:25:00 GMT

Congratulations to our associate A.J. Wenn for recently getting an article published with the Ohio State Bar Association. A.J. wrote about Papst Licensing GMBH & Co. v. Samsung Elecs. Am., which applied the principle of issue preclusion to an ongoing Patent Trial and Appeals Board (PTAB) case. Papst owned a family of three patents which were directed to interface devices for communication between data devices and host computers. After Papst sued Samsung for infringement, Samsung responded by filing separate inter partes review (IPR) proceedings at the PTAB for each of the three patents. In each IPR proceeding, the PTAB found the claims of asserted patents obvious and ruled in favor of Samsung.

In response, Papst appealed each IPR proceeding in an attempt to overturn the verdict. After the issues were fully briefed, and shortly before oral argument, Papst dropped two related IPR appeals from the PTAB. In dropping the related appeals, the earlier PTAB decisions became final, non-appealable judgments, thereby triggering issue preclusion and stopping Papst’s other ongoing appeal. This case should serve as a precautionary note to those who are faced with similar interrelated issues on appeal. While dismissal may be an option, an analysis of potential issue preclusion is necessary to prevent a patentee from missing out on their second bite at the apple.

To read the full article, please visit the Ohio Bar website here .

If you have any questions about proceedings at the PTAB, please feel free to reach out to SpencePC . Our attorneys have experience successfully representing clients in post-grant review, as well as IPRs. We are happy to discuss any IP issues you may face, including patent litigation, patent applications and prosecution, trademark applications and prosecution, copyright filings, trade secrets, or other complex litigation matters.

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Patent Docket Report for November 29, 2019

Mon, 09 Dec 2019 21:45:00 GMT

Docket Navigator put out a list of the most “Plaintiff Friendly” courts in the country. Check out Illinois, where 186 cases were won by the Patentee and 157 were won by the Patent Challenger, compared to other states on the list!

To create this list, Docket Navigator looked at contested Outcomes in Patent Cases in courts that had at least 20 cases with contested outcomes that terminated since 2016, and at least 20 unique Patentees asserting claims of infringement.

Source: Docket Navigator

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IAM Yearbook: Building IP Value in the 21st Century – 2020

Thu, 24 Oct 2019 17:26:00 GMT

This article first appeared in IAM Yearbook: Building IP value in the 21st century 2020, a supplement to IAM, published by Law Business Research – IP Division.

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SpencePC Welcomes Our Newest Associates

Thu, 24 Oct 2019 17:16:00 GMT

Please join SpencePC in welcoming Anthony Wenn , Gopal Gannamraj , and Laura Shapiro to our team of talented legal minds.

Anthony “AJ” Wenn

Associate

AJ Wenn is an associate with SpencePC and is adept at counseling clients in all areas of intellectual property. In particular, he excels at prosecuting utility and design patent applications in the chemical, electrical, mechanical, and software arts. He also prepares legal opinions related to patentability, infringement, patent validity, and freedom to practice. Additionally, AJ is a licensed patent attorney with the USPTO.

Prior to joining SpencePC, AJ worked at both large and boutique law firms, allowing him to gain extensive practical experience prosecuting patents and trademarks for companies of all sizes, including startups, middle market companies, Fortune 500s, and multinational corporations.

AJ received his degree in Biochemistry from the University of Illinois at Chicago and his Juris Doctorate from the University of Kentucky. While at the University of Kentucky, he was president of the Intellectual Property Law Society and competed on the Moot Court Team.

AJ is also active in the legal community and is currently the Chair of the Intellectual Property Section for the Ohio State Bar Association. As Section Chair, AJ influences legislation related to intellectual property at a state and federal level, as well as coordinating events and symposiums for the continuing education of lawyers.

Learn more about Anthony Wenn

Gopal Gannamraj

Associate

Gopal Gannamraj is an associate with SpencePC and focuses his practice on all areas of intellectual property. More specifically, he concentrates his practice on prosecution, litigation, licensing, and strategizing with clients regarding patents in the electrical, mechanical, chemical, and software arts.

In his career, Gopal has worked with a wide range of electronics including power amplifier modules, microcontrollers, semiconductor devices, home appliance/mobile device communication, machine learning within home appliances, the “internet of things”, component transporting/mounting mechanisms, etc.

Gopal graduated from the Ohio State University in 2014 with a degree in electrical and computer engineering with a focus on the electrical side. While at Ohio State, Gopal did extensive research on specific electrical power and distribution systems such as the ‘Microgrid.’ Gopal also worked as an IT assistant during his time at Ohio State.

Gopal earned his law degree from Loyola University of Chicago in 2017. During his time in law school, Gopal was the Executive Editor of the International Law Review along with tutoring a legal writing class. Additionally, Gopal also did work for the community law clinic at Loyola during his time there.

Prior to joining SpencePC, Gopal worked at mid-sized law firms, allowing him to gain a wealth of knowledge in a variety of arts related to patent prosecution and litigation. Gopal has experience working with companies of all sizes, ranging from start-ups to multinational corporations.

Learn more about Gopal Gannamraj

Laura Shapiro

Associate*

Laura Shapiro is an associate* at SpencePC. She is focusing her practice on complex commercial litigation. She earned her undergraduate degree from the Ohio State University, graduating summa cum laude in Chinese. Ms. Shapiro is also a graduate of the University of Chicago Law School. During law school, Ms. Shapiro served as President of the International Law Society, planning and participating in multiple events focused on various international legal topics. Ms. Shapiro spent her first-year summer interning at the United Nations. During her second-year summer, she worked as an associate at a large firm in Hong Kong, applying her fluency in Mandarin to the law.

In her final year at the University of Chicago, Ms. Shapiro acted as a consultant for a biomedical pharmaceutical startup as well as worked as an associate in the University’s Innovation Clinic. As a consultant, Ms. Shapiro advised on different patent strategies and acted as a representative of the startup when meeting with potential investors. As a Clinic associate, Ms. Shapiro assisted both startups in their formation and private equity firms in valuating various investment tactics.

Before law school, Ms. Shapiro studied abroad in China, twice. She went once as invitee of the State Department and once as a college student. She is an active legal researcher and writer in both English and Mandarin. Ms. Shapiro also keeps herself up to date on emerging topics in intellectual property and international law.

*not yet admitted to practice law in Illinois

Learn more about Laura Shapiro

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IPR Deadline Applies Even If Complaint Was Defective, Says PTO

Tue, 10 Sep 2019 18:40:00 GMT

See the original PDF Document here.

8/26/19 REUTERS LEGAL 11:04:19
REUTERS LEGAL
Copyright (c) 2019 Thomson Reuters

August 26, 2019

IPR deadline applies even if complaint was defective, says PTO Barbara Grzincic (Reuters) – The one-year clock for challenging a competitor’s patent under the America Invents Act starts to run when the challenger is served with a lawsuit for infringement, even if that lawsuit suffers from a fatal defect, a three-judge review panel held Friday.

The decision by the Precedential Opinion Panel of the U.S. Patent Trial and Appeal Board is a loss for action-camera maker GoPro Inc, which had convinced the PTAB that its September 2018 petition for review was timely even though rival 360Heros Inc had first sued it for infringement in August 2016.

The PTAB ruled in June that 360Heros’ 2016 complaint was a “nullity” because it had been dismissed for lack of standing, and therefore the clock did not start to run until 360Heros filed a new lawsuit in September 2017.

The Precedential Opinion Panel reversed the PTAB’s institution decision in an opinion written by U.S. Patent and Trademark Office Director Andrei Iancu, Commissioner for Patents Andrew Hirshfeld and Chief Administrative Patent Judge Scott Boalick.

In passing the America Invents Act, Congress specified that the one-year limit to file a petition for inter partes review would run from “service of the complaint,” not a “proper” complaint, Boalick wrote for the unanimous panel.

“(S)ervice of a pleading asserting a claim alleging infringement triggers the one-year time period …, even where the serving party lacks standing to sue or where the pleading is otherwise deficient,” the panel concluded.

Michael Kintner, CEO and founder of New York-based 360Heros (now doing business as 360RIZE) applauded the decision on Friday.

“It’s promising for all the inventors to see that the new leadership at the USPTO is willing to investigate its own panel rulings and right a wrong!” Kintner said in a statement issued through an attorney, William Spence.

GoPro’s attorney, James Isbester of Kilpatrick Townsend & Stockton, declined to comment.

California-based GoPro initially sued 360Heros in federal court in San Francisco in 2016, claiming the “360Abyss,” an underwater camera mount, infringed a subsidiary’s trademark on “Abyss.” 360Heros answered and served its counterclaim for patent infringement that August.

However, at the time, Kintner still owned the patent. The judge dismissed the counterclaim and the parties settled the rest of the lawsuit in May 2018.

Meanwhile, Kintner had formally transferred the patent to his company, which then filed the suit for infringement in U.S. District Court in Delaware. That action has been stayed pending the outcome of GoPro’s petition for inter partes review.

Friday’s decision dismissing the petition relied heavily on an August 2018 decision of the U.S. Court of Appeals for the Federal Circuit, but went a step beyond it.

The Federal Circuit, in Click-to-Call v. Ingenio, had ruled that the time limit on filing a petition for inter partes review was “plain and unambiguous,” and started when the petitioner was served with a lawsuit even if the plaintiff later dismissed the action. However, the Federal Circuit has never decided whether the result would be the same if the complaint itself were defective.

The Precedential Opinion Panel nevertheless held that Click-to-Call was dispositive.

“(G)iven this clear articulation of ‘served with a complaint,’ we see no gap in the statute’s language to fill or ambiguity to resolve,” the panel concluded.

The case is GoPro Inc v. 360Heros Inc, U.S. Patent Trial Appeal Board, No. IPR 2018-01754.

For GoPro: James Isbester of Kilpatrick Townsend & Stockton

For 360Heros: Robert Greenspoon of Flachsbart & Greenspoon, Clifford Kraft

—- Index References —-

Company: GOPRO INC; KILPATRICK TOWNSEND AND STOCKTON LLP

News Subject: (Information Technology Crime (1IN42); Intellectual Property (1IN75); Judicial Cases & Rulings (1JU36); Legal (1LE33); Patents (1PA79); Trademarks (1TR15))

Industry: (Security (1SE29))

Language: EN

Other Indexing: (360Heros Inc; Patents Andrew Hirshfeld) (Keith William Spence; Keith William Spence; Scott Boalick; James Isbester; Clifford Kraft; Andrei Iancu; Michael Kintner; Robert Greenspoon)

Keywords: ip; fedlit (OCC:OLRTXT); (N2:US)Keywords:

Word Count: 598

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SpencePC Client, 360Heros, Prevails in Rare PTAB Precedential Opinion Panel Decision

Tue, 27 Aug 2019 18:19:00 GMT

SpencePC client 360Heros achieved a rare victory on the 23rd of August in the Patent and Trademark Appeal Board’s newly created Precedential Opinion Panel (POP), when the POP overturned an IPR institution decision on 360Heros’ patent covering 360 degree camera rigs that is in suit in Delaware against GoPro Technologies. The POP panel determined that the one-year statutory bar on filing the IPR by GoPro was wrongfully applied against 360Heroes. SpencePC filed the original IPR response on behalf of 360Heros, and filed an amicus brief on behalf of 360Heros in the POP process.

According to PTAB counsel who represented 360Heros before the POP, Robert Greenspoon, “This decision rights a wrong. The POP panel deserves praise for a thorough and correct analysis of the issue. The original panel would have let a financially ruinous agency process proceed against an innovative family business, even though the one-year time bar had lapsed years before GoPro filed its petition. Patentees should be relieved to know that the top USPTO leadership is willing to scrutinize, and reverse, panel rulings that get the law wrong.”

To learn more about this important decision, please refer to this article published by Law360 .

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SpencePC Client, Katana Silicon Technologies, Enters into a License Agreement with Samsung Electronics

Tue, 27 Aug 2019 18:17:00 GMT

SpencePC represented client Katana Silicon Technologies (KST) in a license and settlement agreement with Samsung Electronics to license KST’s semiconductor technologies’ patents. SpencePC had represented KST against Samsung Electronics in a lawsuit in the Western District of Texas, which was dismissed on July 31, 2019.

This follows SpencePC’s representation of KST in securing a license to KST’s semiconductor technologies’ patents with SK Hynix in April 2019.

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SpencePC Welcomes Our Newest Associates

Fri, 23 Aug 2019 18:26:00 GMT

Please join SpencePC in welcoming Michael McDonough and Vani Vedam to our team of talented legal minds.

Michael McDonough

Michael McDonough is an associate in the complex commercial litigation practice group of SpencePC. He concentrates his practice on commercial litigation and resolving various business disputes for clients ranging from individuals to large corporations. Michael counsels his clients on a wide array of business and litigation issues.

Michael has experience trying cases in both state and federal court, including trial experience in the Circuit Court of Cook County, the U.S. District Court for the Northern District of Illinois, and national arbitration proceedings. In addition to his trial experience, Michael has extensive experience with all aspects of complex civil litigation including oral discovery, dispositive motion practice, and representing clients in mediations and court order settlement negotiations.

Prior to joining SpencePC, Michael worked with both large and boutique litigation firms in Chicago allowing him to gain extensive practical experience litigating cases locally and across the country.

Michael earned his undergraduate degree from Le Moyne College, in Syracuse, New York in political science. While attending Le Moyne, Michael was a four-year varsity athlete on the men’s basketball team serving as a co-captain his senior year. Michael earned his law degree from the University of Dayton School of Law in Dayton, Ohio. While in law school, Michael served as a law clerk for both the U.S. District Court for the Middle District of Pennsylvania as well as the Montgomery County Court of Common Pleas. Further, Michael was awarded the CALI Award for Excellence in Trial Practice in 2012 and the CALI Award for Excellence in Alternative Dispute Resolution in 2011. He also served as co-captain of the law school’s National Mock Trial Team in 2012-2013. Michael received the university’s Pro Bono Commitment to Community Award in 2013.

Learn more about Michael McDonough

Vani Vedam

Throughout her career, Ms. Vedam worked in various types of complex litigation matters including commercial litigation, breach of contract, creditors rights’ and labor. Additionally, Ms. Vedam is a registered patent agent with the USPTO.

Ms. Vedam received her undergraduate degree from the University of Illinois at Chicago in Chemistry, Psychology and Political Science in 2002. While she was earning her Bachelor’s, she worked with the Environmental Protection Agency (EPA) as an intern in the Office of Research Analysis for a semester investigating statistics and information on asthma for a pilot website intended for the EPA technical staff and senior managers in her last year of college. Ms. Vedam earned her law degree from The John Marshall Law School of Chicago in 2005.

Prior to joining Spence PC, Ms. Vedam worked at the Office of the Illinois Attorney General for several years representing the Illinois Department of Labor prosecuting employers for their failure to pay their employees correctly. Ms. Vedam worked in private practice before the Office of the Illinois Attorney General representing companies in breach of contract actions, commercial litigation, and creditors rights litigation. By her seventh year, she had handled hundreds of bench trials and two appeals.

Ms. Vedam is very active in the legal community and bar associations. She is a former president of the South Asian Bar Association of Chicago and currently sits on its Advisory Board. She is an active member of the South Asian Bar Association of North America, Asian American Bar Association of Chicago, Chicago Bar Association and Chicago Bar Association.

Learn more about Vani Vedam

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SpencePC has been listed among IAM 300’s list of the world’s top IP value creators

Thu, 18 Jul 2019 15:43:00 GMT

The world’s pre-eminent IP strategists have been named in the latest edition of IAM Strategy 300:
The World’s Leading IP Strategists , published online by IAM and free to access. The unique guide lists the individuals that in-depth research,undertaken by a team based in London, Washington DC and Hong Kong, has shown to possess world-class skills in the development and roll-out of strategies that maximise the value of patents, copyright, trademarks and other IP rights.

The IAM research team spoke to a wide range of senior corporate IP managers in North America, Europe and Asia, as well as third-party IP service providers, in order to identify these IP leaders: men and women whose business is the creation, development and deployment of strategies that enable IP owners to gain maximum value from their portfolios. Only those individuals nominated multiple times by different parties as outstanding IP strategists are listed in the IAM Strategy 300 .

The third-party service providers featured also have a wide range of professional backgrounds and areas of specialisation, including brokering, defensive patent aggregation, finance, insurance, management consultancy, law, licensing, mergers and acquisitions, tax and valuation.They are based in centres across the world. A number have been involved in IP-related transactions valued in the hundreds of millions, or even billions, of dollars; while others have advised clients on monetisation strategies that have reaped eight, nine and 10-figure sums.

“Intellectual property helps to drive the 21st century economy, creating strong incentives to invest in the creation and roll-out of brands and all types of content, as well as the innovation process. This makes IP strategists more important than they have ever been before. Their ability to create significant value makes them indispensable, wherever in the world they operate,” says IAM editor Joff Wild. “Since it was launched, the IAM Strategy 300 has become the go-to guide for those seeking to find out who leads the way when it comes to IP strategy. We invest considerable time and effort into identifying the right candidates for inclusion and we salute all those who have made it into the final publication. For the work they do, they deserve this recognition.”

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SpencePC has been listed among IAM 1000’s list of the world’s leading patent professionals 2019

Tue, 11 Jun 2019 16:32:00 GMT

The world’s leading patent professionals revealed

Building on the success of previous editions and with more firms having participated in the research than ever before, IAM is proud to present the full edition of IAM Patent 1000: The World’s Leading Patent Professionals 2019–a unique guide that identifies the top patent professionals in key jurisdictions around the globe.

The IAM Patent 1000 has become the definitive directory exclusively dedicated to identifying the world’s leading patent services providers. The extensive research process for this guide was conducted over several months by a team of full-time analysts, and involved more than 1,700 interviews with patent specialists across the globe. Legal and attorney firms and individual practitioners qualify for inclusion in the IAM Patent 1000 upon receiving sufficient positive feedback from market sources.

The IAM Patent 1000 features 48 country-specific chapters analysing local patent professional services markets and detailing the firms and individuals identified as leaders in their respective fields. The tables and accompanying detailed editorial reflect the depth of expertise, market presence and levels of work on which firms are typically instructed. The publication therefore serves as a one-stop reference source for anyone seeking patent services.

Nicholas Richardson, research editor for the IAM Patent 1000, explains: “In the world of commerce, patents have become pivotal in driving corporate value and profitability. When it comes to obtaining, enforcing and monetising these vital commodities, private practice lawyers and patent attorneys play an essential role; selecting the right specialist is of paramount importance. The IAM Patent 1000 delivers the most in-depth coverage of the market yet undertaken, pinpointing the best of the best in prosecution, litigation and licensing. The listings and editorial provide readers with a truly comprehensive overview of patent services around the world, making the IAM Patent 1000 an essential tool for all IP decision makers.”

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SpencePC Welcomes Our Newest Team Members

Fri, 31 May 2019 17:16:00 GMT

Please join SpencePC in welcoming Matthew Wilkerson and Andrew Spitzer to our team of talented legal minds.

Matthew Wilkerson, Summer Associate

Matt Wilkerson is a summer associate with SpencePC. He earned his undergraduate degree from Bucknell University in Biology. While at Bucknell, his studies were focused on virology, micro biodiversity, and genetics. Mr. Wilkerson earned his graduate degree from Northwestern University Pritzker School of Law. While at Northwestern, Mr. Wilkerson worked on a medical device startup, Stage.5, developing technology for early detection of pressure ulcers.

Mr. Wilkerson currently attends law school at the University of Iowa College of Law. He serves as the President of the Iowa Intellectual Property Law Society as well as Treasurer of the Veterans Legal Association. Mr. Wilkerson’s article “International [Dis]harmony: Solving Legal Uncertainty in Extraterritorial Patent Infringement Suits” will be published in the University of Iowa College of Law’s Transnational Law & Contemporary Problems journal in Fall of 2019.

Prior to law school, Mr. Wilkerson gained valuable experience working at UI LABS, a manufacturing research and development consortium, and as a co-founder of a medical device startup, Stage.5. He has also developed strategic planning and problem-solving skills while serving and an operations officer for the United States Army, both stateside and abroad.

Learn more about Matthew Wilkerson

Andrew Spitzer, Summer Intern

Andrew Spitzer is a summer intern with SpencePC. He is passionate about Intellectual Property litigation and serving clients in all areas of law.

Andrew is a rising second-year student at Northwestern Pritzker School of Law. At Northwestern, Andrew is a member of Moot Court Society where he participated in the AIPLA Giles Rich Moot Court Competition, advancing to the final round and earning Best Oralist for the Midwest Region. Andrew is also the Treasurer for both the Intellectual Property Law Society and Habeas Chorus acapella group. Lastly, Andrew is a provisional member of the Journal of Technology and Intellectual Property.

Andrew graduated magna cum laude in 2018 from the University of Notre Dame with a Bachelor of Science in Chemical Engineering. While at Notre Dame, he was a member of the Glee Club, Pre-Law Society, Tau Beta Pi Engineering Honors Society, and was actively involved in peer tutoring and many volunteer programs.

Learn more about Andrew Spitzer

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William Cory Spence to participate in Honorable William C. Conner Inn of Court’s “Three In One: Global Patent Trials”

Wed, 17 Apr 2019 20:23:00 GMT

Honorable William C. Conner Inn of Court presents Three in One: Global Patent Trials.

This full-day CLE program of mock mini-trials will compare key patent law and patent practice issues in three countries – Germany, Japan, and the USA – including issues related to infringement, invalidity, and remedy surrounding a hybrid bio-mechanical medical device. SpencePC’s, William Cory Spence, will be moderating a panel on comparative law following the mock trials.

Learn more about the event here.

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Congratulations to William C. Spence on his Illinois Super Lawyer Status and Meghan Nugent for being named an Illinois Rising Star!

Tue, 12 Feb 2019 22:09:00 GMT

About William C. Spence

Click here to learn more about Cory

About Meghan Nugent

Meghan Nugent is an associate with SpencePC. She has extensive experience assisting clients in both transactional and litigation matters of all natures. The focus of her practice is Intellectual Property. She also assists the firm’s clients in the prosecution of trademarks – including trademark clearance, registration, and enforcement.

Click here to learn more about Meghan

The post Congratulations to William C. Spence on his Illinois Super Lawyer Status and Meghan Nugent for being named an Illinois Rising Star! appeared first on SpencePC .

Brand Enforcement at SpencePC

Tue, 04 Dec 2018 19:48:00 GMT

We at SpencePC understand how important brand protection can be for any company. It is a devastating feeling to devote time and energy into building and protecting a brand only to see it infringed by competitors or counterfeiters. Trademark infringement and counterfeit goods present significant and growing challenges for brand owners in the increasingly global economy. To combat these challenges, SpencePC maintains a contingency trademark enforcement practice that allows its customers to turn the cost of brand enforcement into a new revenue stream.

Enforcement is key to maintaining trademark protection. Traditionally, enforcement used to require that companies invest significant money in the enforcement activities (or risk the loss of protection), but our enforcement procedure is designed instead to derive revenue for our clients through alternative fee arrangements and our strong partnerships with key brand enforcement firms who leverage proprietary technology to identify potential infringers who are selling through online channels. Most clients find that this program is a useful way to supplement their in-house brand protection and enforcement processes–while also bringing in additional revenue to the department.

If you’d like to learn more about SpencePC’s Brand Enforcement Practice, please contact SpencePC attorney, Meghan Nugent to discuss your brand enforcement needs.

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SpencePC Prepares Unique VR Technology Tutorial for District Court

Tue, 04 Dec 2018 19:43:00 GMT

In this case, however, based on SpencePC’s attorneys’ experience using our client’s technology and related VR systems, SpencePC was determined to show the judge the value of our client’s patented technology rather than merely talking about it. SpencePC thus, using the client’s VR camera product and software, prepared an innovative VR tutorial combining VR video of legal discussion of the patent-in-suit with VR videos taken by the client demonstrating and explaining how the technology works. In this particular field, our attorneys discovered that it was very difficult to understand the value of VR technology without personally experiencing it, and so SpencePC was committed to making sure the judge would be able to experience and better understand VR. This project demonstrated the value SpencePC brings to its client through its knowledge of technology, its willingness to innovate, and its commitment to meeting its clients’ needs.

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SpencePC Attorneys Published in the ABA’s 2018 Patent Litigation Strategies Handbook

Tue, 04 Dec 2018 19:39:00 GMT

The ABA Section of Intellectual Property Law’s choice of SpencePC’s attorneys to update this section, as they have in previous years, recognizes SpencePC’s experience in patent litigation and its commitment to staying informed regarding the latest changes in intellectual property law.

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SpencePC is Partnering with Lex Machina

Thu, 01 Nov 2018 23:47:00 GMT

By partnering with cutting-edge analytics services such as Lex Machina and others, SpencePC offers a proprietary approach to early-case assessment which combines our experience as litigators with cutting-edge data analytics, an approach we continually update as we acquire new data. To that end, please let us know if you wish to receive an example complimentary copy of SpencePC’s Preliminary Litigation Strategy Report (our “SPLS Report”), including customized litigation analytics and insight based on a variety of proprietary factors. These factors take into account the unique characteristics of the litigation such as subject matter, opposing counsel, court, judge, and recent litigation outcomes. With our SPLS Report, you can be assured of high quality, data-driven solutions to litigation problems that take the guesswork out of strategic decisions.

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IAM Yearbook: Building IP value in the 21st century 2019

Tue, 16 Oct 2018 21:50:00 GMT

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SpencePC welcomes New Foreign Advisors and Litigation Paralegal

Mon, 01 Oct 2018 23:35:00 GMT

SpencePC would like to welcome our new Foreign Advisors Nicha Tarkarnviroj and Yan Wang as well as our new Litigation Paralegal, Kristin Juliar.

Yan is a former in-house IP manager in China. She brings with her nine years of work experience in global IP protection and prosecution, IP strategy and IP management. She has extensive experience with helping companies to develop and execute strategic projects, maximize intangible assets, optimize IP portfolio and protection. Yan has received recognitions from international and national official organizations, such as WIPO and SAIC.

Yan received her Bachelor’s degree of Industrial Engineering and MBA both with Honors in China, and her Master’s degree with Honors from Northwestern University Pritzker School of Law.
Learn more about Yan

Nicha received her bachelor’s degree from Thammasat Law School which is the most prestigious law school in Thailand. She recently graduated with her master’s degree from Indiana University Maurer School of Law specializing in intellectual property law. Her academic and personal qualities earned her an internship at one of Thailand’s leading law firms, where she gained a wealth of experience in clerking, specifically drafting and managing legal documents as well as conducting legal research. She is highly interested in trademark and patent law.
Learn more about Nicha

SpencePC would like to welcome our new Litigation Paralegal, Kristin Juliar.

Kristin has over twenty years’ experience in all aspects of complex litigation from case inception through appeal, including the Court of Appeals for the Federal Circuit. She regularly manages document productions of over 100,000 pages from collection to technical database work, prepares deposition and trial witness kits, and drafts privilege logs. Kristin has attended more than 25 trials, mediations, and arbitrations in many venues.

As a seasoned paralegal for large, complex cases, Kristin’s expertise encompasses all aspects of case and trial management. She has spent most of her career working in Intellectual Property with an emphasis on patent litigation.
Learn more about Krista

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Learn more about Artificial Intelligence (AI) and how it is changing the playing field for legal professionals.

Thu, 12 Jul 2018 19:20:00 GMT

Join us on July 18th at noon a free lunch and CLE as Jay Leib (Founder and CEO) and Chip Delany of NexLP talk about discovery issues within the legal field and how AI can help.

They will present NexLP’s AI software Story EngineTM – Story Engine has been independently tested and academically vetted as the most highest performing artificial intelligence engine.

Efficiency, risk mitigation, and dramatically shortening the time and cost of human review is significant with Story Engine.

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SpencePC has been listed among IAM 300’s list of the world’s top IP value creators

Fri, 15 Jun 2018 18:19:00 GMT

The world’s top IP value creators are named in new edition of market-leading publication

London, 07 June 2018

The world’s pre-eminent IP strategists have been named in the latest edition of IAM Strategy 300 –
The World’s Leading IP Strategists, published online by IAM and free to access. The unique guide lists the individuals that in-depth research, undertaken by a team based in London, Washington DC and Hong Kong, has shown to possess world-class skills in the development and roll-out of strategies that maximise the value of patents, copyright, trademarks and other IP rights.

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SpencePC has been listed among IAM 1000’s list of the world’s leading patent professionals 2018

Wed, 13 Jun 2018 15:39:00 GMT

The world’s leading patent professionals revealed Building on the success of previous editions and with more firms having participated in the research than ever before, IAM is proud to present the full edition of IAM Patent 1000: The World’s Leading Patent Professionals 2018 – a unique guide that identifies the top patent professionals in key jurisdictions around the globe.

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SpencePC to speak in IP Web Series

Tue, 12 Jun 2018 14:58:00 GMT

Please join SpencePC in discussing Intellectual Property Laws of Trade Secrets. This 101 Series Premiere’s June 13th. Register Now.

Click Here to Learn More

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SpencePC welcomes our newest summer associate

Mon, 11 Jun 2018 15:50:00 GMT

Please join SpencePC in welcoming Daniel Hess (summer associate) to our team .

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Welcome our new team members

Tue, 22 May 2018 17:40:00 GMT

Please join SpencePC in welcoming Matthew Wilson (attorney) and Nellie Stoeckel (litigation paralegal) to our team .

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SpencePC to Speak in IP Web Series

Tue, 15 May 2018 14:43:00 GMT

Please join SpencePC in discussing Intellectual Property Laws of Trademarks. This 101 Series Premiere’s May 16th. Register Now.

Learn how #trademarks are created and maintained, as well as steps for enforcing trademarks in the U.S. in the brick-and-mortar marketplace and online. Click Here to Learn More

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Financial Poise™ Features SpencePC

Mon, 09 Apr 2018 18:33:00 GMT

The third episode of the series is “Nuts & Bolts of Copyrights,” and airs on April 11th at 2:00 PM CST ( Register Here ). The series features Host Cory Spence of Spence P.C. He is joined by Kristin Garris of Tannenbaum Helpern Syracuse & Hirschtritt LLP, Brian R. Landry of Saul Ewing Arnstein & Lehr LLP, and Julie Nichols Matthews of Lathrop Gage LLP.

Read the Press Release, Click Here .

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SpencePC featured in Financial Poise™

Mon, 26 Feb 2018 18:52:00 GMT

Episode 4: Legal Issues for Innovators & Inventors
The 4th episode of the “Intellectual Property Issues for the Newish Business” series is available now on demand! This episode features our very own, William C. Spence of SpencePC .

Watch the Episode!

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And down goes another Lanham Act clause…

Tue, 02 Jan 2018 16:43:00 GMT

By: Meghan Nugent

The Federal Circuit just ruled that the “scandalous” clause of the Lanham Act is unconstitutional in view of the Supreme Court decision in Matal v. Tam .

As a refresher , Matal v. Tam involved the Asian-American rock band The Slants, who filed an application for a trademark to register their band name, The Slants, with the United States Patent and Trademark Office (USPTO). The office rejected the band’s application. Relying on the disparagement clause of the Lanham Act, the USPTO found the name “The Slants” was offensive toward Asian-Americans. The Supreme Court eventually heard the case and determined that the disparagement clause “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

Now, in the case In re: Brunetti the Federal Circuit determined that the scandalous clause of the Lanham Act that bars trademarks that are either scandalous or immoral is unconstitutional as well. The applicant, Erik Brunetti, sought to register the mark “Fuct” for apparel. The USPTO denied registration citing the scandalous nature of the mark. On appeal the Federal Circuit noted that “[t]he trademark at issue is vulgar.” Yet despite the vulgarity of the mark, the First Amendment “protects private expression, even private expression which is offensive to a substantial composite of the general public.” The Court further noted that the USPTO failed to offer a substantial government interest for policing offensive speech.

This decision marks the latest seismic shift in “trademarkability,” but one that many experts saw coming after the Mata l decision.

The Brunetti and Matal decisions open the door for registration of a lot of trademarks that were previously deemed unregisterable under the Lanham Act. These decisions suggest that there is no such thing as a disparaging or scandalous mark and that the USPTO will no longer be the arbiter of good taste. Effectively, nothing is off limits when it comes to non-traditional brand identifiers.

However, just because a mark can be registered doesn’t mean that it should. Businesses still look to their customer base and the market place to determine whether an edgy mark that was once considered disparaging or scandalous is a wise business decision. What’s true for The Slants and Fuct might not be true for every business.

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Financial Poise™ Features SpencePC

Mon, 04 Dec 2017 21:11:00 GMT

Thought leaders share their most valuable advice for innovators, inventors, and the IP attorneys who represent them. 12/5, 2-3 pm, CST . Panelists include R. David Donoghue, Adam Gill, Jim Medek, and William Cory Spence .

Read the Press Release, Click Here .

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SelectCounsel.Law has Launched!

Mon, 04 Dec 2017 21:06:00 GMT

Spence PC is a recognized member of Select Counsel, a nationwide network of highly credentialed solo and small firm attorneys with Big Law backgrounds who draw on the collective expertise and resources of the network to offer clients large firm capabilities combined with small firm efficiencies. Select Counsel officially launched this week ( selectcounsel.law ) and we wanted to take the opportunity to pass along the announcement below.

About SelectCounsel.Law We mark the official launch of Select Counsel

Select Counsel, an elite, nationwide network of over 300 boutique firm attorneys – all with significant “Big Law” backgrounds and top credentials. Select Counsel provides a new model for accessing a broad spectrum of legal services by connecting clients with a curated network of independent boutique practices across all areas of legal focus. Using our platform, clients can find the same caliber attorneys, breadth of expertise and geographic reach of a big firm with the price point and personalized service of a smaller practice.

Please visit our new website at selectcounsel.law and launch announcement. Feel free to subscribe to our mailing list on the website to receive news and updates regarding the Select Counsel network.

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Brian Beck to Present Legal Writing and Argument CLE

Tue, 28 Nov 2017 16:48:00 GMT

On December 6th, SpencePC Associate Brian Beck will present a CLE on best practices in legal writing and argumentation. The hour-long seminar will focus on techniques for writing and organizing briefs, common style and formatting mistakes, and specific recommendations for briefing common patent litigation motions such as motions to dismiss, motions to compel, motions for summary judgment, and claim construction briefs. This presentation follows Brian’s recently published article at Law360, “ Winning Section 101 Motions by Defining the Abstract Idea. ”

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Law360 Publishes SpencePC Associate Brian Beck’s Article on Unpatentable Subject Matter Motions

Tue, 28 Nov 2017 16:40:00 GMT

On November 14, 2017, Law360 published SpencePC Associate Brian Beck’s article, “Winning Section 101 Motions By Defining the Abstract Idea,” to its Appellate and Intellectual Property sections. The article, available at Law360’s website, analyzes recent Federal Circuit cases regarding whether claims are unpatentable abstract ideas, and concludes that district courts’ and the Federal Circuit’s decisions are often strongly determined by how the patent owner and accused infringer respectively define the supposedly abstract idea of the claim. The article also explains why parties seeking to either challenge patents as unpatentable abstract ideas or to defend against claims of unpatentability should seek technologically sophisticated counsel who can understand and accurately characterize the technology at issue.

Winning Section 101 Motions By Defining The Abstract Idea

The critical dispute in most 101 motions post-Alice is how to define the alleged “abstract idea” covered by a patent. Patent owners win when they can convince the judge that the central “idea” behind a patent is sufficiently complex and nonabstract; accused infringers win when they convince the judge the idea of the patent is fully captured by a simple and short description. The latest Federal Circuit 101 decision, Smart Systems Innovations LLC v. Chicago Transit Authority ,[1] once again should guide patent litigators toward focusing their 101 motion practice around the goal of defining the central “idea” of the patent in their clients’ favor. More importantly, Smart Systems should guide both patent plaintiffs and defendants toward choosing counsel who are not only good general litigators, but who can thoroughly understand the patented technology.

Smart Systems concerned patents on electronic payment systems for mass transit. The Federal Circuit identified as representative Claim 14 of U.S. Patent No. 7,566,003 :

The Federal Circuit determined that this claim, and similar claims from the other asserted patents, were directed to unpatentable abstract ideas. Key to the determination was the panel’s view that the defendants’ characterization of the claimed invention as a simple abstract idea was correct. That the Federal Circuit accepted the defendants’ characterization suggests that the patent owner, both in the district court and on appeal, was unable to prevail because it failed to offer its own definition of what idea exactly the patent was directed to, and instead only challenged the defendant’s characterization of the asserted claims.

In this case, the defendants’ simple characterization of the patent prevailed. The defendants, in their initial motion for judgment on the pleadings characterized the challenged patents in extremely simple terms: “those four patents are directed to the abstract idea of using a bankcard to access mass transit.”[2] The district court adopted that very simple characterization of the patent, and the Federal Circuit approvingly quoted its characterization that, “[s]tripped of the technical jargon that broadly defines non-inventive elements (e.g., the ‘interfaces’ and ‘processing systems’), and further shorn of the typically obtuse syntax of patents, the patents here really only cover an abstract concept: paying for a subway or bus ride with a credit card.”[3]

The plaintiff, in both its opposition brief in the district court and in its appellate brief, failed to offer any positive contrasting description of what exactly its patents covered. In its district court brief, the plaintiff argued that the patents require more than “using a bankcard to access mass transit,” but only did so by referring to the “specific technologies” identified (in fairly generic terms) in the claim such as a “bankcard terminal” that “regulat[es] access,” a “processor,” “memory,” and other fairly generic computer terms.[4] The plaintiff added slightly more detail in its appellate brief, arguing that the claims were “directed to an improved bankcard terminal — which is a concrete assembly — that enabled the use of bankcards directly at the transit gate.”[5] But again, the plaintiff only supported its characterization of the claim by reference to generic terms like “bankcard terminal” in the claims.[6]

The Federal Circuit was not convinced by plaintiff’s argument. The Federal Circuit explicitly rejected any suggestion that the asserted claims were directed to anything more than handling of financial data:

Taken together, the Asserted Claims are directed to the formation of financial transactions in a particular field (i.e., mass transit) and data collection related to such transactions. The Asserted Claims are not directed to a new type of bankcard, turnstile, or database, nor do the claims provide a method for processing data that improves existing technological processes. Rather, the claims are directed to the collection, storage, and recognition of data.[7]

Of course, the plaintiff-appellant cited two of the most plaintiff-friendly recent Federal Circuit decisions on patentable subject matter — Enfish LLC v. Microsoft Corp .[8] and McRO Inc. v. Bandai Namco Games America Inc.[9] — and the Federal Circuit distinguished each of them from Smart Systems. To distinguish Enfish, the court explained that the Enfish patent was a claim “purporting to improve the functioning of the computer itself,” but that Smart Systems “does not argue that its claims are directed to an improvement in computer technology.” To distinguish McRo, the court explained that the Smart Systems patent was “not directed to specific rules that improve a technological process,” because it simply invoked computers.

The Federal Circuit’s distinctions between Enfish and McRo and the Smart Systems patent appear to be heavily influenced by the parties’ characterizations of the patents in these three cases. The claim upheld in Enfish was a pure software claim that, if it improved the functioning of the computer, did so only by specifying an algorithm that was more efficient in some situations. The Federal Circuit acknowledged that the claim in Enfish was purely a software algorithm, explaining that, “[m]uch of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes.”[10] Then, the court described the claimed invention in Enfish as “a specific type of data structure designed to improve the way a computer stores and retrieves data in memory.”[11] The Smart Systems patent, however, implemented a specific arrangement of technology designed to improve the way a mass transit turnstile admits passengers; why was that arrangement and improvement not patentable?

Similarly, the Smart Systems court’s distinguishing of McRO does not seem correct based on an analysis of the technologies at issue. The claim in McRO was to a method for automating facial expressions of animated characters, with claim limitations requiring, inter alia, “obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence.”[12] The court characterized this claim limitation as “limiting in that they define morph weight sets as a function of the timing of phoneme sub-sequences,” and that this was a specific rule that overcame a Section 101 challenge.[13] But the technical jargon in that claim limitation means little more than “rules to correspond facial expressions to speech!” Notably, the defendant-appellee in McRO made that exact argument on appeal, and the court rejected it because “no record evidence supports this conclusion.”[14]

Thus, the Federal Circuit’s decision in Smart Systems, in comparison to its decisions in Enfish and McRO, indicates that the way a patent owner’s attorney characterizes software or software-adjacent patents may affect the 101 analysis as much as the claim limitations themselves. The plaintiff in Smart Systems did not offer a clear, nonabstract description of its patent claims to counter the defendant’s simple description of “using a bankcard to access mass transit.” The plaintiff in Enfish, in contrast, prevailed by providing its own description of its claim as “a specific table structure that ‘may store any type of data, both structured and unstructured,’ that ‘overcomes the limitations of both the relational database model and object oriented database model by providing a database with increased flexibility, faster search times, and smaller memory requirements and that supports text attributes.’”[15] Similarly, the plaintiff in McRO was able to point to specific claim limitations that appeared to limit invention beyond the abstract concept of “applying rules for synchronizing animated facial expressions to speech,” where the Smart Systems plaintiff did not.

The first lesson of Smart Systems is that an attorney attempting to defend a motion to dismiss based on Section 101 should not emphasize a claim’s combination of generically defined hardware, but should take care to describe the invention in terms of its specific improvements over the prior art. Claim 14 of the ’003 patent could have been described not as merely a method for using a bank card to access transit, but as “a specific improvement in mass transit entry systems that allows speedy entry into a mass transit system with a bank card, rather than a ticket, by pre-registering and pre-loading transit customer bank card data to allow admission without the danger of network delay or failure.” The plaintiff could have focused on how the specific claim limitations achieve an improvement over merely validating a bank card over a network by assigning separate identifiers to pre-registered bank cards, downloading them to the entry terminal, and comparing the bank card identifier to the downloaded file to verify entry locally so there is no network delay. The language in Enfish and McRO suggests that this characterization of claim 14 would have been more likely to survive the district court’s or the Federal Circuit’s scrutiny.

The second lesson of Smart Systems, Enfish and McRO is for in-house counsel seeking to retain litigation counsel; each case emphasizes the need to hire technologically sophisticated litigation counsel who can understand and accurately characterize the technology at issue. In Smart Systems in particular, any Chicagoan riding the L or a CTA bus would understand how frustrating even seconds of delay at a turnstile can be, and how significant the improvement of being able to enter a turnstile with a credit card without waiting for bank verification over the internet would be. With a strong understanding of the technology and problem at issue, an attorney could have focused the court’s attention on that real-world improvement — like the plaintiff-appellant’s attorney did in Enfish — rather than focusing on generic hardware devices used in the implementation. And on the defendant’s side, a technologically sophisticated attorney would have emphasized that apparently specific claim limitations that supposedly improve on the prior art were simply the natural and necessary way to implement the abstract idea of using bank cards to access mass transit — as the defendant-appellee might have done in McRO. Lawyers presenting or defending a 101 challenge must have a thorough understanding of the patented technology to best advocate for their clients.
_________________________________________
The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

[1] No. 2016-1233, Slip Op. (Fed. Cir. Oct. 18, 2017)

[2] Smart Systems Innovations, LLC v. Chicago Transit Authority, No. 14-cv-8053, Defendants’ Memorandum in Support of Their Motion for Judgment on the Pleadings, Dkt. No. 52 at 3 (N.D. Ill. Apr. 8, 2015).

[3] Smart Systems, No. 2016-1233, Slip Op. at 12.

[4] Smart Systems Innovations, LLC v. Chicago Transit Authority, No. 14-cv-8053, Plaintiff’s Brief in Opposition to Defendants’ Motion for Judgment on the Pleadings, Dkt. No. 54 at 8-9 (N.D. Ill. Apr. 24, 2015).

[5] Smart Systems Innovations, LLC v. Chicago Transit Authority, No. 16-1233, Brief for Plaintiff-Appellant, Dkt. No. 18 at 43 (Fed. Cir. Jan. 19, 2016).

[6] See id. at 46-47.

[7] Smart Systems, No. 2016-1233, Slip Op. at 14.

[8] 822 F.3d 1327 (Fed. Cir. 2016).

[9] 837 F.3d 1299 (Fed. Cir. 2016).

[10] 822 F.3d at 1339.

[11] Id.

[12] 837 F.3d at 1307-08.

[13] Id. at 1313.

[14] Id. at 1315.

[15] Enfish, LLC v. Microsoft Corp., No. 2015-1244, Plaintiff-Appellant Enfish, LLC’s Principal Brief, Dkt. No. 35 at 23 (Fed. Cir. July 10, 2015).

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Gain a better understanding of the complex legal issues associated with IP transactions

Wed, 08 Nov 2017 15:07:00 GMT

Buying & Selling Intellectual Property

Series: INTELLECTUAL PROPERTY ISSUES FOR THE NEWISH BUSINESS

Intellectual property rights are an important class of intangible assets that can be assigned or licensed to generate revenue. Indeed, some companies do not make or sell products; their entire revenue is derived from the licensing of their patents. Suffice it to say, licensing revenue has become a significant source of value in the global intellectual property economy. This webinar will help your company better understand the complex legal issues associated with IP transactions.

View Webinar Here

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Financial Poise™ Premieres “Setting Up a Website” a Webinar, Airing November 7th, 2pm CST Through West LegalEdcenter

Fri, 03 Nov 2017 17:03:00 GMT

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The “Regular and Established Place of Business” Analysis After In re Cray

Mon, 30 Oct 2017 19:28:00 GMT

Authors: Theodore Chiacchio and Jacob Graham

Venue plays a vital role in litigation. This is true with respect to patent litigation as much as any other type of litigation. Venue determines the district court in which a plaintiff may sue a defendant—thus factoring into the make-up of a jury, the judge presiding over the case, the timing and sequence of disclosures ( e.g. , infringement or invalidity contentions), the degree to which the court may be technologically savvy, and the degree to which the court may be familiar with and knowledgeable regarding patent law, among other things. Continue Reading

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Come Visit us at IAM’s IPBC Asia 2017

Thu, 19 Oct 2017 17:06:00 GMT

William C. Spence will be among 60+ expert speakers offering unique insights and experiences to provide you with a thorough understanding of the challenges and opportunities facing the IP community across the region.

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Register for the second Episode of Financial Poise™ webinar on Copyright Fair Use, Airing October 26, at 2pm CST.

Thu, 19 Oct 2017 16:59:00 GMT

Meghan Nugent and Jacob Graham To Speak on Copyright Fair Use Doctrine For Financial Poise. On October 26, 2017 , Meghan and Jacob will participate as panelists for the Financial Poise Webinar Series, “One Hour Law School 2.0 – Tell Me What I Need To Know.”

The topic for the program will be Using Copyrighted Material Without Violating Copyright Law: The Fair Use Doctrine . The practical, informative program seeks to teach listeners the ropes of copyright compliance.

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SpencePC featured in Financial Poise™

Thu, 19 Oct 2017 16:30:00 GMT

Episode 2: Buying & Selling IP
The 2nd episode of the “Intellectual Property Issues for the Newish Business” series is available now on demand! This episode features our very own, William C. Spence of SpencePC .

Watch the Episode!

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Welcome our new team members

Thu, 19 Oct 2017 16:03:00 GMT

Please join SpencePC in welcoming Eva Daniels , and Andrew Reeves to our team of talented legal minds.

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SpencePC featured in Financial Poise™

Mon, 14 Aug 2017 16:29:00 GMT

Episode 2: Hiring Outside Counsel
The 2nd episode of the “Patent Best Practices: ‘Insiders’ Advice for In-House Counsel” series is available now on demand! This episode features our very own, John Tolomei of SpencePC as he and other IP experts discuss enlisting outside counsel and the benefits for patent application preparation and prosecution.

Watch the Episode!

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SpencePC welcomes our new partner, Theodore J. Chiacchio

Mon, 14 Aug 2017 16:22:00 GMT

Mr. Chiacchio has amassed over 15 years of experience litigating high-stakes, complex, federal civil cases.

Mr. Chiacchio has extensive experience in all phases of patent litigation, including, for example, preparing Markman briefs, taking and defending the depositions of inventors and other key fact witnesses as well as expert witnesses, preparing dispositive motions, preparing motions in limine, preparing all manner of post-trial submissions, and preparing opening, responsive, and reply appeal briefs filed with the U.S. Court of Appeals for the Federal Circuit. Mr. Chiacchio has also actively participated in Markman hearings and oral argument before the Federal Circuit. Further, Mr. Chiacchio has been integrally involved in a number of trials before U.S. district courts throughout the country, including with respect to direct and cross-examination of witnesses and opening and closing arguments.

Complementing his patent litigation experience, Mr. Chiacchio also has substantial experience with other types of civil litigation, including copyright infringement, a range of other business torts, employment discrimination, and white collar civil enforcement matters.

In addition to his litigation experience, Mr. Chiacchio is a USPTO-registered patent attorney and has spent a considerable portion of his career preparing Opinions of Counsel regarding patent infringement/non-infringement, patent validity/invalidity, and patent enforceability/unenforceability matters. Mr. Chiacchio also has substantial experience preparing Freedom to Operate Opinions. More generally, Mr. Chiacchio has counseled clients regarding a range of patent matters. Mr. Chiacchio’s patent law experience spans a range of technologies, including mechanical, the Life Sciences, chemical, telecommunications, and automotive.

Mr. Chiacchio earned his Bachelor of Arts degree (Biology, French) from Bucknell University in 1999 and his Juris Doctor degree from Cornell University Law School in 2002. Prior to joining Spence PC, Mr. Chiacchio served as an associate at Kenyon & Kenyon (now part of Andrews Kurth Kenyon) and, most recently, practiced for just short of a decade at a top tier patent litigation boutique in Chicago, IL.

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SpencePC recognized and ranked in the 2017 edition of IAM Strategy 300

Mon, 12 Jun 2017 18:54:00 GMT

SpencePC is excited to announce that William C. Spence has been included in the final rankings of the 2017 edition of IAM Strategy 300: The World’s Leading IP Strategists . Continue Reading on IAM.

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SpencePC recognized and ranked in the 2017 edition of IAM Patent 1000

Wed, 07 Jun 2017 16:14:00 GMT

SpencePC is excited to announce that William C. Spence has been included in the final rankings of the 2017 edition of IAM Patent 1000: The World’s Leading Patent Professionals 2017 . Continue Reading on IAM.

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Meghan Nugent Publishes Column on Financial Poise

Wed, 22 Mar 2017 20:24:00 GMT

On February 23, 2017, Meghan published the first installment of her column entitled “Intellectual Property, Cybersecurity and Creativity” on FinancialPoise.com The column seeks to teach readers the basics of intellectual property and cybersecurity through real world examples and contribute to Financial Poise’s mission of providing high quality continuing education, news, and intelligence to (1) owners and executives of private businesses; (2) investors; and (3) their respective trusted advisors.

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Matt Werber and Meghan Nugent Guest-Lecture at IIT Chicago-Kent College of Law

Mon, 13 Mar 2017 20:51:00 GMT

These past two weeks both Matt and Meghan guest lectured during the Strategies in Intellectual Property class at Chicago-Kent College of Law. The class applies students’ previous intellectual property coursework by presenting real world practice examples. The class is taught by Herb Munsterman, Director of the Intellectual Property Management and Markets Program at Chicago-Kent and Senior Vice President, Corporate Development & Legal Affairs at Novomer, Inc. Novomer, a sustainable chemistry company, is a SpencePC client.

On February 13, 2017, Matt walked through the file histories of two patents he litigated previously and court opinions discussing these files to show how seemingly minor arguments and amendments appearing in a patent’s file history can ultimately impact a court’s ruling on claim construction and the outcome of a litigation.

On February 20, 2017, Meghan spoke to the students about trademark clearance searches and counseling trademark clients.

The post Matt Werber and Meghan Nugent Guest-Lecture at IIT Chicago-Kent College of Law appeared first on SpencePC .

Matt Werber Speaks at University of Michigan Engineering Student-Alumni Event

Tue, 28 Feb 2017 17:00:00 GMT

On February 10, 2017 Matt spoke at a panel discussion on careers for engineering professionals at an event planned by The University of Michigan Chapter of the American Society of Civil Engineers (“ASCE”). During the panel discussion, Matt discussed pursuing a career in law as an option engineering graduates can consider. Also on the panel were U-M alum engineering processionals based in Chicago. More than 70 U-M Civil and Environmental engineering students, faculty and alumni attended.

Each year a group of ASCE student members and faculty travel from Ann Arbor to Chicago for a weekend tour of laboratories and engineering sites around Chicagoland. The alumni discussion is widely considered one of the highlights of the trip.

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William Spence added to the list of Super Lawyers for third year in a row!

Wed, 22 Feb 2017 20:55:00 GMT

Each year Super Lawyers reviews Illinois top lawyers and includes exceptional ones in their list of “Super Lawyers”. William C. Spence has been selected to Super Lawyers from 2014 – 2017. As always, we are honored by our inclusion in this list and we thank Super Lawyers for their continued support.

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Matt Werber featured in Law360!

Mon, 30 Jan 2017 21:12:00 GMT

The Return of Patent Opinion Letters

Roughly six months ago, the U.S. Supreme Court handed down Halo Electronics Inc. v. Pulse Electronics Inc., 136 S. Ct. 1923 (2016), which, in a nod to patent plaintiffs, loosened what the unanimous court called “unduly rigid” barriers to a finding of willful infringement and enhanced damages (up to three times) under 35 U.S.C. § 284. Since then, courts have handed down a string of decisions shedding light on Halo’s impact. These post-Halo decisions reveal two trends: (1) plaintiffs are aggressively pursuing willfulness allegations more frequently…

Continue Reading on Law360.

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William C. Spence featured in ICLG

Wed, 21 Dec 2016 16:16:00 GMT

Continue to Free ICLG Guide.

This chapter first appeared in the seventh edition of The Internatinal Comparative Legal Guide to: Patents 2017, published by Global Legal Group Ltd, London (www.iclg.co.uk).

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Register for SpencePC’s fourth Episode on Legal Issues for Innovators and Inventors, Airing December 16, at 11am CST.

Wed, 30 Nov 2016 21:15:00 GMT

In today’s economic environment, intellectual property (IP) rights have become increasingly important assets for both individual and corporate entities. More and more, both are recognizing the economic importance of IP rights–whether those rights consist of a single patent–or whether they consist of an entire portfolio also including trademarks, copyrights, and trade secrets.

As with all Financial Poise webinars, each episode in the series is designed to be viewed independently of the other episodes, and listeners will enhance their knowledge of this area whether they attend one, some, or all of the programs.

Episode #4 of the IP 201 2016 series is “Legal Issues for Innovators & Inventors.” ( Register Here ) It airs on December 16th at 11:00 am CST. Moderator William C. Spence of Spence PC will be joined by Eric Curtin of Crawford Maunu, Peter Feinberg of Hoge Fenton, and Gary Sorden of Klemchuk LLP.

Effective legal representation of innovators and inventors requires careful thought and consideration. Among other things, care must be taken to properly initiate communications, prepare assignments, and handle subsequent legal disputes. This webinar discusses common legal issues that often arise during the representation of innovators and inventors. It also includes valuable advice from both innovators/inventors and the IP attorneys who represent them.

The post Register for SpencePC’s fourth Episode on Legal Issues for Innovators and Inventors, Airing December 16, at 11am CST. appeared first on SpencePC .

Register for SpencePC’s third Episode on setting up an IP websites, Airing November 18th at 11am CST.

Tue, 15 Nov 2016 15:25:00 GMT

The post Register for SpencePC’s third Episode on setting up an IP websites, Airing November 18th at 11am CST. appeared first on SpencePC .

FTC report recommendations largely legislative in scope in new patent assertion entity report

Fri, 04 Nov 2016 19:49:00 GMT

The Federal Trade Commission ’s (FTC) recently released report on patent assertion entities (PAEs) includes a number of key findings made by the agency on the business model of such companies. The FTC identified two different business models employed by PAEs which differ in terms of litigation and licensing activity. The report also includes a number of judicial and legislative recommendations to deter what the FTC calls “nuisance litigation.”

The FTC report identifies nuisance litigation as any lawsuit which is settled with a patent licensing agreement that pays less than $300,000 in total royalties. This $300,000 figure is the lower bound of a range taken from an American Intellectual Property Law Association (AIPLA) study regarding the costs of defending a patent infringement suit through discovery. The FTC’s recommendations seek to reduce nuisance litigation, which the agency finds to be a drain on judicial resources and can divert business resources from productive activities.

Continue to IPWatchdog Article.

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SpencePC Expands IP Practice

Thu, 20 Oct 2016 16:03:00 GMT

Chicago, October 20, 2016 – SpencePC adds senior litigator and two associates to bolster its IP and Complex Litigation practice.

Steve Szczepanski joins the Firm as a Partner. “We are thrilled to add an attorney with Steve’s prestigious background and immense talent to the Firm,” said William C. Spence, Founding Partner of SpencePC. “Steve is an accomplished litigator who will further solidify the Firm’s values and enhance our ability to provide our clients with positive, cost-effective results.”

Mr.Szczpanski earned his juris doctorate from Albany Law School of Union University, and both his bachelor’s and master’s degrees in chemical engineering from Rensselaer Polytechnic Institute, in Troy, N.Y.

Prior to joining SpencePC, Mr.Szczepanski gained experience at a number of well-known law firms with IP practices and at top litigation boutiques , including Kelley Drye & Warren, Jenkins & Gilchrist, Foley Lardner, and, most recently, Steptoe & Johnson.

Mr.Szczepanski represented dozens of leading US companies in patent litigation and preparing right-to-use, infringement, and invalidity opinions, and formulating IP strategy focused on monetization of patent rights through litigation and licensing.

SpencePC also adds two new associates, Meghan Nugent and Justin Cain. Ms.Nugent earned her juris doctorate from University of Dayton, and her bachelor’s degree in political sciences from Le Moyne College, in Syracuse, NY. Mr.Cain earned his juris doctorate from The John Marshall Law School, and his bachelor’s degree in chemistry from The University of Iowa.

SpencePC is an IP and complex litigation boutique in Chicago, IL. It focuses on representing clients in complex intellectual property disputes, including patent and trade secret litigation. The firm also renders validity, infringement, right-to-use and patentability opinions and prepares and prosecutes patent applications. The firm encourages the use of alternative fee arrangements (AFAs) that align the firms and its clients’ interests. The Firm’s attorneys possess significant technical expertise and a proven record of success in state and federal courts around the country, as well as in the U. S. Patent and Trademark Office.

Specifically, said Spence, the new group of attorneys expands the firm’s ability to provide complex litigation services and intellectual property counselling in high-growth areas including pharmaceuticals, medical devices, high-tech, and wireless industries.

The post SpencePC Expands IP Practice appeared first on SpencePC .

Register for SpencePC’s second Episode on Buying and Selling IP, Airing October 21st.

Tue, 11 Oct 2016 20:08:00 GMT

CHICAGO, IL (PRWEB)October 05, 2016

http://www.prweb.com/releases/intellectual-property/IP-buying-selling/prweb13736832.htm

The post Register for SpencePC’s second Episode on Buying and Selling IP, Airing October 21st. appeared first on SpencePC .

Oculus Rift Patents that change the Virtual Reality Landscape

Wed, 17 Aug 2016 19:04:00 GMT

On March 28, 2016, virtual reality headset developer Oculus VR of Menlo Park, CA, announced on its official blog that it had begun shipments of its Oculus Rift headset . This immersive VR headset has been highly anticipated since a successful Kickstarter campaign wrapped up in September 2015, after raising 947 percent of its original goal after a little more than one month . Of the virtual reality options currently on the market, the Oculus Rift is arguably built upon one of the most technologically robust VR platforms. Oculus VR is a subsidiary of parent online social media company Facebook Inc. ( NASDAQ:FB )

Many have focused on how the Oculus Rift will enable immersive video gaming experiences but there are other valuable applications for the technology in a wide swath of industrial sectors. For example, architectural design applications such as IrisVR or Arch Virtual seek to use the Oculus Rift platform to bring computer-aided design from two-dimensions to three, improving how architects are able to communicate spatial design. The immersive nature of the Oculus Rift’s virtual reality environment is also proving attractive to behavioral researchers who want to use virtual reality immersion to treat psychological disorders such as post-traumatic stress disorder (PTSD) or anxiety. Three-dimensional (3D) design also has growing manufacturing applications in a world where 3D printing is rapidly becoming a larger market .

Continue to IPWatchdog Article.

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FTC report on PAEs could have an outsized effect on U.S. patent reform debate

Tue, 16 Aug 2016 14:36:00 GMT

In September 2013, the Federal Trade Commission (FTC) issued a request for public comment for information on patent assertion entities (PAEs) and their licensing activities in an attempt to add to the existing literature and evidence on PAE behavior. The PAE study is the result of media coverage and Congressional pressure regarding the potentially abusive behavior of PAEs and the potential that their licensing activities could be “ a drag on innovation, competition, and our economy .”

For the purposes of the study, the FTC has defined a PAE as any business having a model which is primarily based upon purchasing patent rights and then enforcing that intellectual property against parties who are already practicing the technology in order to generate revenues. Along with publicly available information, the FTC will also be drawing from nonpublic information including licensing agreements, patent acquisition data as well as cost and revenue data from businesses. The FTC study specifically looks at PAEs in the wireless communication sector.

Continue to IPWatchdog Article

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Williamson v. Citrix – What it Means for Your Claims and Specification

Tue, 24 May 2016 19:05:00 GMT

Williamson v. Citrix 792 F.3d 1339 (Fec. Cir. June 16, 2015)

In 1952, Congress invalidated an earlier Supreme Court ruling and provided patentees with the right to claim an invention using functional language–so long as such patentees clearly signaled their intent to do so by use of the claim expression “means for,” in conjunction with a functional description of what the claimed structure or step accomplishes. This right is now codified in 35 U.S.C. 112(f)).

Initially, patent practitioners viewed means-plus-function language as an advantageous tool. Without such language, an inventor seeking to claim hardware used to attach two pieces of wood had limited options. The inventor could specifically claim a screw. Alternatively, and more generally, the inventor could (at least in the past) claim a fastener to cover the use of screws, bolts, rivets, staples, or other mechanical attachments. In the latter example, however, it is unlikely that the term fastener would be construed to include glue. In contrast, by using “mean-plus function” language the inventor could describe the claimed fastener as a “means for fastening.” When claimed this way, the claim term would likely include glue as an equivalent to the other fasteners disclosed in the specification. Accordingly, patent practitioners who began their careers prior to the creation of the CAFC were generally taught to see “means for” as their friend.

Jumping ahead to the present, many practitioners now view means-plus-function language as something to be avoided. Means-plus-function language fell in disfavor, at least in part, because recent court decisions have strictly limited corresponding claim coverage to only those structures or steps firmly identified in the specification. Such decisions are arguably in tension with apparent Congressional, which seemed to more broadly construe the scope of means-plus-function terms to include both recited structures and steps and the “equivalents thereof.” This more narrow treatment of equivalents under 112(f) undermines the usefulness of means-plus-function language. Referring again to the example of “means for fastening,” under this more narrow interpretation it would not appear include glue unless glue was specifically described in the specification. Therefore, it appears that many of the previously perceived benefits of means-plus-function language have vanished.

112 (f) provides that “an element in a claim … may be expressed as a means or step …” (emphasis added.) Prior to the Federal Circuit’s recent decision in Williamson, a clearer boundary existed between invocation or avoidance of “means for” treatment of claim elements. Formerly courts attached a strong presumptive trigger to the presence or absence of the words “means for.” In Williamson, the court “nonced” the term “module,” taken from the full expression “distributed learning control module.” It construed this term according to means-plus-function language. The Williamson decision appears to remove or reduce this presumption. Under Williamson, categorizing a generalized structural or step term (e.g. fastener) as a “nonce word” will result in application of “means for” treatment to claims terms.

The lesson learned appears to be this: patent applicants should invest more time and effort to carefully select claim terms and to verify that adequate support for all terms exists in the specification. While well-established terms like “fastener” are unlikely to get “nonced,” relatively new terms that encompass multiple structures or steps remain highly vulnerable. Accordingly, to ensure broad claim coverage for combination claims, patent applicants may need to expand the specification’s description of many, if not all, elements recited in such combination claims.

The post Williamson v. Citrix – What it Means for Your Claims and Specification appeared first on SpencePC .

Trademark Searching and Clearance

Wed, 13 Apr 2016 18:06:00 GMT

Many businesses don’t realize that the trademark or brand name they had their heart set on may be registered or used by another party in their state, country or potential market.

Trademark CLEARANCE EVALUATIONS answer questions like:

Why your business should seek a trademark clearance evaluation

Most companies seek a trademark clearance evaluation as a jumping off point in the registration process. Evaluating a name ahead of time allows businesses to avoid brand names that are claimed by someone else in your state or country. Evaluations also warn business of other pitfalls such as whether there is a potential violation of a consumer protection law. Attempting to register or use a name without evaluating it first can waste valuable time and money.

What’s the difference between registering with the state vs. Federal trademark protection?

When a company forms an LLC, they will also submit a “DBA” (Doing Business As) for the business. This registers the business name with the state but not the country. The DBA prevents other parties from registering a similar brand in your state. However, this provides zero protection in any of the other states. Federal trademark registration protects a business’s brand name in the entire U.S.

What happens if a company uses a mark that is already registered?

Using a brand name that is already registered can cause confusion in the marketplace between your business and another company. The company that registered the trademark may challenge your use of the mark after you have used it.

If the other company succeeds in its challenge of your trademark then you may have to:

Why you can’t use a search engine to see if someone else is using your desired brand name

Search engines, like Bing, Yahoo, or Google are sometimes helpful for finding trademarks prominently used in the marketplace. Search engines, however, do not provide a complete picture. For instance, another company may be in the early stages of seeking trademark protection for a similar mark that doesn’t draw a “hit” in a google search. Contacting your attorney for a trademark clearance evaluation is the best way to avoid these risks.

This blog post is designed for companies or individuals looking to understand the process of trademark searches. For details on SpencePC’s related services click here to check out our practice areas . To contact our intellectual property attorneys or to learn more about their background in your field, click here .

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2016 Patent Cases Pending Before the Supreme Court

Wed, 13 Apr 2016 18:05:00 GMT

The U.S. Supreme Court will rule on the following three patent lawsuits this term: Cuozzo Speed Technologies, LLC v. Lee ; Halo Electronics Inc. v. Pulse Electronics, Inc. ; and Stryker Corp. v. Zimmer, Inc .

Cuozzo v. Lee addresses two issues:

The Supreme Court granted certiorari following a 6-5 split at the Federal Circuit.

Given the Supreme Court’s patent and agency law jurisprudence, legal analysts predict the Court will affirm the Federal Circuit’s holding—thus leaving the current IPR proceedings in tact. If, on the other hand, the Court reverses, the scope and effect of IPR proceedings would change dramatically. Oral argument in Cuozzo v. Lee is set for April 25, 2016. On a related note, Versata Development Group, Inc., in Versata v. SAP , filed a petition for writ of certiorari in March 2016, requesting the Supreme Court to address issues related to the PTAB’s covered business method review (CBM). Although the PTAB’s CBM review, not IPR review, is in question, there is a clear overlap of administrative law issues between Versata and Cuozzo . And in fact, one of the issues noted in Versata’s petition–whether the PTAB should give claim terms their “broadest reasonable interpretation”–is the same issue that will be addressed in Cuozzo .

Standard for Enhanced Damages under 35 U.S.C. § 284

The other two cases, Halo and Stryker , address the standard for enhanced damages under 35 U.S.C. § 284. The issue before the Supreme Court is whether the Federal Circuit erred in applying a two-part test for enhanced under 35 U.S.C. § 284, when the Supreme Court recently rejected a similar two-part test for attorneys’ fees under 35 U.S.C. § 284 in Octane Fitness . The Supreme Court combined Halo and Stryker , hearing oral argument on February 23, 2016 in a single, one-hour hearing.

Comparison of Willful Infringement (Enhanced Damages) and Attorneys’ Fees

The table below provides a comparison of the test for enhanced damages applied by the Federal Circuit in Halo , Stryker , and Seagate ; the test for attorneys’ fees applied by the Federal Circuit in Octane Fitness , but then overruled; and the current test for attorneys’ fees that was announced by the Supreme Court in Octane Fitness . Should the Supreme Court require a flexible standard, courts would likely see an increase in pleadings for willful infringement and enhanced damages.

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Four Types of Intellectual Property for Businesses

Mon, 04 Apr 2016 18:08:00 GMT

Copyrights, Patents, Trademarks, and Trade Secrets – Four Types of Intellectual Properties

If you are a business owner, you should familiarize yourself with the four types of intellectual property, otherwise known as IP. We speak with many entrepreneurs who don’t know where to begin when it comes to protecting their ideas and inventions. They need this information frequently so we decided to create a quick and easy guide to educate them. It was popular so we decided to post it to our blog. Let us know if you found this useful and if there are any other guides you would like us to make in the comment section below.

If you feel you need to speak with a lawyer directly, call Spence PC directly at 1-312-404-8882.

Four Types of IP

At Risk Businesses

When your business is young, it is at risk of having its ideas “borrowed” by competitors. Protect yourself, your business, and your ideas by following this guide.

Type 1 – Copyrights

What are Copyrights? According to Copyright.Gov ‘s Guide to copyrights, “Copyright is a form of protection provided by the laws of the United States (title 17, U.S.Code) to the authors of “original works of authorship,”” Copyrights protect writing, pictures, music, art, and other forms of intellectual works. What this means for you is that if you wrote something, or created a piece of work that you don’t want people to reuse without your permission, you have the right to copyright that work. Now, if people want to use, reuse, or re purpose your work, they must first contact you to use it, attribute you as the owner, and use it for purposes you deem appropriate. There is an exception to this rule, that is, Fair Use . If someone wants to use a portion of your work for educational, parody, commenting, or news purposes they can.

Take away : Make sure you copyright your work and your website while providing people a way to contact you so they can use your work with your permission. Click the link for Copyright.Gov’s frequently asked questions to learn how to copyright your work .

Want to know more? Watch this Copryights Basics video by CommonSense.Org and Michele Auxier

https://www.youtube.com/watch?v=AKTNtqaSTrY

Type 2 – Patents

What are Patents? According to the United States Patent Office , “A patent for an invention is the grant of a property right to the inventor”. Generally this patent lasts for 20 years from when the inventor attempts to patent their invention by filing with the US Government. The list of things that can patented is fairly lengthy and open to interpretation but it covers anyone who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,”.

For a business owner or an inventor this means that if you found a new way to make something or discovered a new product you’d like to take to market, you would want to first patent the idea so no one can take the idea and claim it as their own. For instance, if you have a revolutionary water bottle that you feel would benefit the masses, you should protect this intellectual property by filing with patent office that the idea is unique and your own. If the government agrees that the idea is your own, unique, and is useful you will be awarded a patent to protect your right to the concept. This then gives you the ability to produce the concept, sell it, or bring the concept to investors without worrying about them stealing your ideas.

However, a word of caution, if you share your patented ideas, there is a risk that others will reverse engineer your concept. Reverse engineering is when competitors take apart an object or idea to understand how it functions with the goal of enhancing or modifying the object in order to replicate it. Making enough variations to the original concept can result in a ‘unique’ idea that your competitors can then patent as their own idea. Companies can avoid compensating you for your patent idea and claim these ‘new’ versions of your idea as their own. This frequently happens in the technology industry between companies like Samsung and Apple .

Take away: Protect your ideas and inventions with patents before sharing them with the world.

Type 3 – Trademarks

What are Trademarks? According to the USPTO , a Trademark is a “word, phrase, symbol, or design, or a combination thereof, that
identifies and distinguishes the source of the goods of one party from those of others. ” For instance, if your company name, a logo, or your company tagline can me trademarked. The trademark serves as a brand identifier for your business or your products. Images, slogans, and colors can all be trademarked. For instance, Tiffany Blue is a trademarked color that is used by Tiffany & Co. in promotional materials as well as boxes, bags, and more.

Words, phrases, and pictures are generally the most common intellectual properties to be trademarked, however other distinguishing features can also be registered for your company. For example, Coca-Cola bottles’ have a trademarked shape, Dell and Ford have trademarked their family names, and even smells. These are known as non-conventional trademarks but are used in every industry to protect IP. It is important to protect these business assets, as trademarks give business owners the tools to prevent competitors from taking advantage of the goodwill that one’s brand has accumulated over the years.

If you feel that you have been the victim of copyright or trademark infringement, an unregistered trademark provides limited protection.

Take Away: It is best to register trademark s at your local and national government office responsible for trademark registration. Remember, a registered trademark must be renewed regularly to keep it “alive” and to protect your IP.

Type 4 – Trade Secrets

What are Trade Secrets? Generally, any piece of confidential corporate information which gives any business a competitive advantage can be considered a trade secret. For instance, Coca-Cola’s secret formula could be considered a trade secret. Now, if I created a soda company and produced identical soda to coca-cola, this would be an infringement of Coke’s trade secret. This is a general example but trade secrets can even defined as distribution methods (Walmart), Sales methods, consumer information, ad campaigns and strategies, list of vendors, list of clients, and production processes. Generally, trade secrets are leaked through corporate (industrial) espionage, breach of contract, or something as simple as leaving your prototype iPhone at a bar .

A trade secret must be designated as such before it is leaked. One cannot simply say “I have a secret”. Use Nondisclosure agreements and designate information as trade secrets in contracts when dealing with partner companies and employees. There are other ways to designate information as a trade secret, to learn more, you should contact Spence-PC .

Take Away: Protect your trade secrets. Keep employees on a need to know basis. If you’re letting an employee go, make sure they don’t have access to your client files after they have been terminated. To learn more about protecting your company and your trade secrets from corporate espionage check out this article from Inc.

The post Four Types of Intellectual Property for Businesses appeared first on SpencePC .

How counterfeiting, piracy, and imitation of copyright materials hurts global business

Mon, 21 Mar 2016 18:11:00 GMT

Counterfeiting is a rapidly growing global threat to businesses and consumers. The trade of copyright movies, computer programs, music, or even counterfeit iPhones 6 from China hurt global trade. In some cases fake or counterfeit items are harmful to consumer health and safety . The world of fakes don’t only harm modern technology sectors, the art world was ripped off for millions of dollars because of single a con artist painter .

More consumers remain unaware that counterfeiting and piracy of intellectual property can pose a risk to themselves and their families. Even consumers who know about piracy are at risk. Every day another person gets ripped off on craigslist and buys a knock-off at retail prices. It’s difficult to identify a fake in a line up. Take a look at the video of a Youtuber DarGadgetZ who got ripped off when he purchased his iPhone 6s. Watch the video below and tell us if you could spot the fake. Tell us in the comment section. This YouTube tech expert unboxes the latest technology every day and even he was fooled. Counterfeiters will go to any lengths to produce a convincing clone of copyrighted and patented designs.

How do I fight fakes as a business owner?

It can be difficult for a brand or patent owner to know where to begin when dealing with piracy, counterfeiting, or trade in fakes. Global online marketplaces with thousands of vendors producing millions of goods, some of which have produced counterfeits can be hard to track.

As a brand owner, if you know your Intellectual Property rights, such as trademarks, patents, designs, and copyrighted materials you are in a great position to fight fakes. You have a right to your IP, although, to enforce said rights in a way that is not financially burdensome will require planning. Check out the common questions you should ask yourself before pursuing a counterfeiter.

Answer these questions to find opportunities and vulnerabilities as a brand owner of IP that is being hurt by trade in fakes. Knowing the answers to these questions will help you plan your next move with an IP law office like SpencePC . If you have any questions are are looking for legal aid please call us at 1 312 404 8882 .

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Five ways to Research your Keywords for a Patent Search

Mon, 07 Mar 2016 18:13:00 GMT

While we recommend hiring a professional to undertake researching existing patents, some entrepreneurs and inventors choose to handle the patent search process on their own. The United States Patent and Trademark office ( PTO ) has created digital, physical and online databases to aid the public in the search for patents. If you’re just starting your first patent search then you should definitely check out these seven tips from the PTO .

Be sure to read our list of the 5 ways to research your keywords before you begin your first patent search. This blog post is designed for companies or individuals looking to understand the process of patent searches. For details on SpencePC’s related services click here to check out our practice areas . To contact our intellectual property attorneys or to learn more about their background in your field, click here .

How to Research Your Keywords Before your Patent Search

Once you’ve finished creating the description for your invention, you should head over to the PTO’s website and search through their database of registered patents. Click here to check out the Patent Office’s full text and image database.

There are many steps that an inventor must take to know that their patent is unique. A quick search won’t be enough to protect your idea. To learn more about patent searches, call SpencePC at +1 312 404 8882 or check out our website at www.spencepc.com

The post Five ways to Research your Keywords for a Patent Search appeared first on SpencePC .

William C. Spence has Achieved the Highest AV Preeminent® Rating

Wed, 24 Feb 2016 18:13:00 GMT

On February 10, 2016, William C. Spence, founding partner of Intellectual property firm SpencePC, in Chicago, IL, received the AV Preeminent® rating from Martingale-Hubbell®.

The post William C. Spence has Achieved the Highest AV Preeminent® Rating appeared first on SpencePC .

William Spence Hosts Intellectual Property Series with Special Guests

Tue, 16 Feb 2016 18:15:00 GMT

On January 28, 2016 , Mr. Spence hosted the first of a series of webinars , called “Intellectual Property; What Every Lawyer and Every Client Must Understand.” Messrs. Eric Curtin (Crawford Manu), Mike Pellegrino (Pellegrino and Associates), and Kal Shah, (Locke Lord LLP) joined him as speakers. The speakers provided an overview of intellectual property laws in the U.S., including a discussion of what may be protected and the level of protection afforded. The speakers also engaged in lively discussion concerning the myriad ways that a lack of understanding concerning intellectual property may translate into lost business opportunities.

Upcoming episodes include:

The webinars are produced by Financial Poise, a business unit of DailyDAC, LLC, and sponsored by ChamberWise and West LegalEdcenter. More information can be found here .

The post William Spence Hosts Intellectual Property Series with Special Guests appeared first on SpencePC .

Federal Circuit holds that AIA Reviews Don’t Require Review of All Patent Claims

Wed, 10 Feb 2016 18:17:00 GMT

On Wednesday, February 9, 2016, the Federal Circuit upheld the Patent Trial and Appeal Board’s policy of conducting partial reviews of patents challenged in America Invents Act inter partes review petitions, rejecting Synopsys Inc.’s argument that the board must review all the challenged claims.

In her dissent, Judge Pauline Newman writes that letting the Patent Trial and Appeal Board pick and choose which claims it wants to review creates an “absence of finality [that] negates the AIA’s purpose of providing an alternative and efficient forum for resolving patent validity issues.”

The case is Synopsys Inc. v. Mentor Graphics Corp., case number 14-1516 .

For additional information concerning the potential impact of this ruling on your intellectual property rights, please contact SpencePC at info@spencepc.com or 312-404-8882.

The post Federal Circuit holds that AIA Reviews Don’t Require Review of All Patent Claims appeared first on SpencePC .

What Patent Litigators and Litigants Need to Know About Amendments to the Federal Rules

Wed, 02 Dec 2015 18:18:00 GMT

William C. Spence will be hosting a webinar for patent litigators and if you read our blog post you can receive 25% off registration.

On December 1, 2015, patent litigators and litigants will begin to follow the newly amended Federal Rules of Civil Procedure. This webinar, taking place on Wednesday, December 16th, 2015 from 11AM to 12PM ET will be presented by seasoned patent litigators , will discuss anticipated changes that these amendments may bring to U.S. patent litigation. The webinar will attempt to answer questions that every patent litigator must be prepared to explain, including:

When is the webinar?

Wednesday, December 16th 2015 at 11AM to 12PM ET

Educational Objectives:

Who would benefit the most from attending this program?

Patent litigators, patent litigants.

Register Now and Get 25% off

The registration page for this program is up and running: http://www.bna.com/ounce-prevention-patent-m57982063785/ . Use this special discount code for clients and blog readers FIRMDISC25 so you receive 25% off the registration fee.

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Protecting Slogan Trademarks – Intellectual Property 101

Sat, 21 Nov 2015 18:18:00 GMT

A perfectly crafted slogan

A perfectly crafted slogan is a central component to the marketing campaigns of any commercial interest. A phrase that cleverly sticks in the mind of consumers can have tremendous value as a piece of intellectual property. Over the years, many famous slogans have even been protected by trademark, such as is the case with Nike’s “Just Do It” and Wendy’s “Where’s the Beef?” ad campaigns.

Maybe your marketing team has conceived an original catchphrase that has caught on with your customers. The first step in the trademark process, as always, is to perform a search of the database of trademarks registered with the U.S. Patent and Trademark Office . The intended trademark must not be registered in order to move ahead with the process.

It’s also very important to consider your slogan’s purpose, as this will have a great effect on whether or not it is eligible for a trademark. For example, the “Where’s the Beef?” campaign was based on Wendy’s assertion that its burgers were beefier than its fast food rivals. A clever line can resonate with a large audience, but if it doesn’t have anything to do with a company’s good or service being sold, the chances that a trademark will be issued decrease. Slogans that can be trademarked should be both distinctive and capable of calling a product or service to a consumer’s mind.

Other ways to protect your slogan and trademark

Another way to improve the chances that a slogan can be trademarked is by inserting the company’s brand name directly into the phrasing. A benefit of this approach is the fact that it’s quite unlikely the name will already be registered for a trademark. It also more clearly ties the slogan to the company, along with the products or services which it sells.

What is “secondary meaning”?

The biggest consideration in drafting a slogan that is eligible for trademark is to create one that achieves a secondary meaning in the mind of the consumer. Secondary meaning is established when a phrase transcends its literal meaning in order to take on an association that is valuable to a business. “Where’s the Beef?” doesn’t just sell burgers, it sells Wendy’s assertion that its burgers are beefier than the competition. “Just Do It” assures athletes that they’ll be capable of performing to the best of their abilities when using Nike’s sports equipment. Typically, a slogan will need to be in use for a few years in order to develop this sense of secondary meaning.

Although secondary meaning is important to establish, it’s possible that a slogan can go too far in the direction of describing a good or service. For this reason, “Where’s the Beef?” becomes a trademark-eligible slogan, whereas “Wendy’s Burgers Have More Beef” would be too descriptive of a slogan and would likely face obstacles at the USPTO. Remember that it’s more important for a slogan or catchphrase to be distinctive rather than descriptive, especially in terms of trademark eligibility.

Trademarking difficulties

If an applicant has difficulty in obtaining a trademark on a phrase, it may help to turn that phrase into some form of artwork in order to obtain a design trademark. Developing artwork for use with the company slogan also opens up certain opportunities for copyright protection, which is not available for phrases and short titles . Again, however, the artwork has to be functional and not simply a decorative feature, as the USPTO will not issue trademarks on items which are merely ornamentation .

An effective intellectual property strategy when obtaining a trademark for a slogan should include the enforcement of those trademark rights over time, regardless of how actively the slogan is used in current advertisements. Nike, for instance, has filed suit against companies in the past for infringing on the “Just Do It” slogan . As with any trademark, a registered trademark owner must file for trademark renewal and pay associated fees within a certain time frame. Those holding trademarks for slogans may want to renew even if the slogan isn’t actively being used in marketing materials as companies sometimes return to slogans at a later point in time in order to reconnect with consumers.

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Inventing to Nowhere Documentary – an Intellectual Property Film

Wed, 28 Oct 2015 18:19:00 GMT

What is the history of Intellectual Property in the United States? How do patents work? This visually and historically gripping documentary answers these questions and more while exploring how patents brought America into the industrial age and provided jobs to millions. For the poor and huddled masses that came to America with nothing in their pockets, protecting the ideas, or IP , in their minds was the only way to receive fair compensation for their inventiveness. This is the story of how we got to now and why U.S. Patent laws need to be protected to ensure that individuals and businesses of future generations can be rewarded for their ideas. Check out this video and let us know what you think below.

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Patent Pro Bono Program – Patent HUB

Mon, 26 Oct 2015 18:20:00 GMT

SpencePC’s Jacob Graham recently attended the inaugural, launch event for Chicago-Kent’s Patent HUB on October 14, 2015. The Patent HUB is a program that facilitates the placement of under-resourced Illinois inventors with pro bono patent prosecution counsel. The program acts as Illinois’ hub for the USPTO Patent Pro Bono Program that currently offers programs in all 50 states. Section 32 of the America Invents Act led to the creation of the Patent Pro Bono Program by requiring the USPTO to “work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.”

Speakers at the launch event included Jennifer McDowell of the USPTO, who administered the development of the program, and Congressmen Danny Davis and Bobby Rush of the U.S. House of Representatives. Further information on the Chicago-Kent Patent Hub can be found here . The Patent HUB makes patent counsel available to low-income Illinois inventors. In turn, it promotes access to the U.S. Patent system, boosting the economy, and significantly reduces the daunting cost, regulatory, and technical impediments that under-resourced inventors face. SpencePC , as a member firm of the program, has agreed to offer its services and act as pro bono patent counsel to these inventors in need.

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SpencePC Expands IP Practice with Jacob Graham

Mon, 05 Oct 2015 18:20:00 GMT

Spence PC adds Jacob Graham, bringing additional depth to its intellectual property practice

Jacob Graham joins Spence PC, an intellectual property litigation firm , as an Associate. He brings extensive experience in litigation, arbitration, and mediation involving intellectual property, technology, and commercial issues.

Mr. Graham is licensed to practice in Illinois and is registered to practice before the US Patent and Trademark Office. Prior to joining Spence PC, Mr. Graham practiced for several years with a large litigation firm. He also previously worked with one of the world’s largest pharmaceutical companies as a scientist in research and development.

“We are extremely excited to add an attorney with Jacob’s background and talent to the Firm,” said William Cory Spence, Founding Partner of SpencePC . “In addition to bolstering our IP practice, Jacob’s addition furthers the Firm’s values and enhances the Firm’s ability to obtain positive, cost-effective results for our clients.”

SpencePC is an elite litigation boutique in Chicago, IL. It focuses on complex intellectual property disputes—including patent and trade secret litigation—while providing its clients with the flexibility of alternative fee arrangements ( AFAs ). The Firm’s attorneys possess significant technical expertise and a proven record of success in state and federal courts around the country, as well as in front of the U. S. Patent and Trademark Office.

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William Cory Spence Co-authors Chapter in International Guide to Patents

Sun, 06 Sep 2015 18:21:00 GMT

SpencePC Founder Authors Chapter in ICLG

In the 2016 edition of The International Comparative Legal Guide to: Patents, published by Global Legal Group Ltd., London, Mr. Spence co-authors a chapter on U.S. patent law, which discusses: patent enforcement; patent amendment; patent licensing; patent term extension; patent prosecution and opposition; border control measures; antitrust law and inequitable conduct; and other current developments in U.S. patent law.

For the full guide, go to The International Comparative Legal Guide to: Patents ( http://www.iclg.co.uk/practice-areas/patents/patents-2016 ).

You can also read a biography for Mr. Spence at http://www.iclg.co.uk/firms/kirkland-and-ellis/william-spence.

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William Cory Spence Again Named to Super Lawyers List

Fri, 10 Apr 2015 18:22:00 GMT

Super Lawyers, part of Thomson Reuters, is a research-driven, peer influenced rating service of outstanding lawyers who have attained a high degree of peer recognition and professional achievement. Attorneys are selected from more than 70 practice areas and all firm sizes, assuring a credible and relevant annual list.

Since 2002, Mr. Spence has assisted individual and business clients in obtaining their best possible outcome in contentious legal matters. He has extensive experience in litigation, arbitration, and mediation involving all areas of Intellectual Property law.

Mr. Spence has litigated claims in both state and federal courts throughout the United States. Additionally, he has extensive experience with patent monetization strategies and complex, international patent infringement litigation involving multiple parties and jurisdictions, including Asia.

For more information on Mr. Spence and Super Lawyers , go to SuperLawyers.com

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Former K&E Attorney Forms Patent Litigation Boutique

Sat, 28 Mar 2015 18:23:00 GMT

On January 1, 2015, former Kirkland & Ellis attorney, Cory Spence, announced the launch of a new patent litigation boutique, Spence PC. SpencePC will specialize in complex, contentious proceedings, including patent, trade secret, unfair competition, and other intellectual property disputes. “We are trial attorneys first, but we also have the technical expertise necessary to favorably resolve a wide range of litigation, arbitration, mediation, and other contentious administrative proceedings,” explained Mr. Spence.

Mr. Spence further explained that the new firm will offer a unique value proposition:

“Rather than bill by the hour for services, we favor alternative fee arrangements (AFAs). We discourage our clients from paying for our services by the hour because we believe that the traditional model of hourly billing is broken. Hourly billing creates the wrong incentive for attorneys to work longer, not smarter.”

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