Banner Witcoff is ranked as a top trademark firm in Illinois in the 2020 edition of World Trademark Review 1000 – The World’s Leading Trademark Professionals.

In addition to the firmwide ranking, five Banner Witcoff attorneys are recognized as leading practitioners in the trademark legal practice. Chris Renk is ranked for his work in enforcement and litigation, and Anna King, Helen Hill Minsker, Katie Laatsch Fink and Rich Stockton are recognized in the prosecution and strategy category.

Now in its 10th year, the WTR 1000 recommends top trademark firms and attorneys in over 80 jurisdictions globally.  The guide is based on extensive research conducted over a four-month period with hundreds of attorneys around the world and their clients involved with trademarks.

The guide said the following about Banner Witcoff:

“Leading IP boutique Banner Witcoff manages some 14,000 active trademark applications and registrations in more than 180 countries and has prosecution and portfolio management down to a fine art. One of the stars of the practice is Anna King, who makes her debut in the WTR 1000 this year. She provides wonderful training and mentorship to the ensemble’s paralegal corps and is a master at ensuring that the practice is streamlined and efficient. What is more, she is an excellent team player, working closely with Helen Hill Minsker and Richard Stockton on behalf of the Marmon Group and Schneider Electric, respectively. Minsker shines on the non-contentious side, while also maintaining a dynamic practice at the TTAB. Whatever her instructions, she never loses sight of the business objective. “She is a distinguished and seasoned lawyer who is outstanding substantively and a collegial but tough adversary.” Stockton’s stage is truly global – he manages multiple portfolios with 1,000-plus IP properties across the world. King also links up frequently and effectively with Katie Laatsch Fink, an all-rounder who is in her element counselling clients, overseeing prosecution and leading cases in the courtroom. The firm’s litigation side continues to hum thanks to the sterling efforts of Fink and out-and-out litigator Christopher Renk. A recent highlight for the pair was successfully representing Converse in ITC and federal court trade dress litigation against Wal-Mart and Skechers.”

Banner Witcoff is sponsoring the 2020 AlphaLab Gear Hardware Cup, an international pitch competition for early-stage hardware startups.

As part of the sponsorship, the firm will award, to one finalist, free legal services of preparing and filing a patent application. This is the first time a patent application is being offered as part of the competition.

The Hardware Cup consists of six regional competitions, taking place in Pittsburgh, Boston, Washington, D.C., Raleigh, Chicago, and San Jose, as well as several international competitions. At each event, startups will give three-minute pitches to a panel of judges made up of local investors and venture capitalists. The finals will be held May 19 in Pittsburgh, where the winning team will be awarded a $50,000 grand prize.

Banner Witcoff attorney Justin Philpott will speak at regional competitions in Washington, D.C. on Feb. 12 and in Chicago on March 11.

“We are thrilled to be sponsoring this innovative competition and to be able to provide such a unique prize,” Justin said. “As an intellectual property law firm with a 100-year history, Banner Witcoff has extensive experience preparing and filing patent applications for clients of all sizes. But, we also recognize it’s not something that every startup is able to do on their own, and we are excited to be able to offer this as part of our sponsorship of Hardware Cup.”

Click here for information about the Hardware Cup, and here to learn more about our IP capabilities. 

Banner Witcoff’s trademark practice has been shortlisted for Managing IP’s Americas Awards 2020. The publication announced the shortlists in a Feb. 5 article.

Banner Witcoff made the shortlists in two categories for the Midwest region: trademark prosecution and trademark contentious. Winners will be announced at a March 26 ceremony in New York.

In 2019, Managing IP named Banner Witcoff “Trademark Contentious Firm of the Year” and “Trademark Prosecution Firm of the Year” among Midwest firms. Banner Witcoff also received Managing IP’s “Impact Case of the Year” award for its work representing Converse in its trademark battle against entities selling knock-off versions of the company’s iconic Chuck Taylor All Star sneaker.

Banner Witcoff attorney Scott M. Kelly discussed the Patent Trial and Appeal Board’s (PTAB) precedential opinion in Hulu LLC v. Sound View Innovations for a Jan. 14 Bloomberg Law article.

The Dec. 20, 2019 decision stemmed from “Hulu’s request for rehearing on a PTAB decision not to hold a validity trial on claims in a data patent,” the article noted. In its recent decision, the agency’s Precedential Opinion Panel clarified PTAB standards for allowing petitioners to use non-patent literature (NPL) to try to invalidate patents.

“This decision should reduce the number of cases where a good prior art argument loses pre-institution because of some hyper-technical public accessibility proof issue that could instead be further developed during trial,” Scott told Bloomberg Law.

He added, “I think you’ll see less surprise decisions where NPL that seemed perfectly good is thrown out.”

The article, “New Evidence Precedent Gives Lawyers a Patent Board Road Map,” is available online to subscribers.

Leading Lawyers, a division of Law Bulletin Media, has recognized 25 Banner Witcoff attorneys as “Leading Lawyers” and “Emerging Lawyers” in intellectual property law for 2020.

Leading Lawyers:

Matthew P. Becker, Joseph J. Berghammer, Scott A. Burow, Marc S. Cooperman, Timothy C. Meece, Helen Hill Minsker, Janice V. Mitrius, Binal J. Patel, Thomas K. Pratt, Christopher J. Renk, Robert H. Resis, Charles W. Shifley, and Pieter van Es.

Those designated as Leading Lawyers have been recommended by their peers to be among the top lawyers in their practice area. Less than 5 percent of all Illinois attorneys receive the distinction of being named a Leading Lawyer.

Emerging Lawyers:

Katie L. Becker, Azuka C. Dike, Brian J. Emfinger, Katie Laatch Fink, Eric J. Hamp, Michael J. Harris, Kevin C. Keenan, Anna L. King, Michael L. Krashin, Timothy J. Rechtien, Bradley J. Van Pelt, and Victoria R. McDonald Webb.

Emerging Lawyers have been selected by their peers to be among the top attorneys who are 40 or younger. Less than 2 percent of all Illinois attorneys have received the Emerging Lawyer distinction.

Leading Lawyers uses a four-phase research process and is based on peer recommendations. Click here for more information.

Bloomberg Law sought out Banner Witcoff attorney Fred Meeker for a Jan. 2 article outlining five things attorneys should know about arguing before the Patent Trial and Appeal Board (PTAB).

In the article, Fred stressed the importance of having a detailed understanding of the technology involved in the patents at issue and the case record.

The judges “on your panel will know the patents and prior art as well as any lawyer in the courtroom,” Fred told Bloomberg Law. “They’ll know the law and they’ll also know PTAB practice,” he added.

Fred also suggested that attorneys tailor their presentations before the PTAB for judges who participate in hearings remotely. He recommended that attorneys who plan to use projection screens to display an exhibit in a PTAB hearing should submit presentation materials ahead of time so that remote judges can follow along.

The article, “Five Things to Know For Patent Trial and Appeal Board Arguments,” is available online.

By Sarah A. Kagan, Ph.D.

The U.S. Court of Appeals for the Federal Circuit recently construed section 271(g) of the patent statute, defining a type of infringement, in a case of first impression.  Syngenta Crop Protection, LLC v. Willowood, LLC (2018-1614, 2018-2044) (Dec. 18, 2019).[1] In general, the statute prohibits importation into the United States of a product made abroad by a process that is patented in the U.S.

Syngenta appealed the legal conclusion of the U.S. District Court for the Middle District of North Carolina that section 271(g) requires each step of a patented process to be performed by or controlled by a single entity for infringement liability to attach.  The Federal Circuit reviewed this question of statutory interpretation de novo.

Syngenta owns U.S. Patent 5,847,138 (’138 patent), which is directed to a two-step process for manufacturing azoxystrobin, a fungicide commonly used in agriculture to control fungal growth on crops.[2]  Syngenta sued four Willowood corporate entities for patent infringement over their alleged marketing and sales in the U.S. of azoxystrobin and fungicide products containing azoxystrobin.

The district court found that azoxystrobin was manufactured in China using the process claimed in the ’138 patent.  But it denied summary judgment because it construed section 271(g) as requiring that a single entity perform all steps of a process, and found a genuine dispute of material fact as to whether both steps were performed by Willowood’s supplier and whether Willowood directed or controlled multiple parties to practice different steps of the process.  The district court’s construction of section 271(g) relied on the Federal Circuit’s construction of section 271(a) in Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F. 3d 1020 (Fed. Cir. 2015).[3] 

After the district court denied summary judgment of infringement of the ’138 patent, the issue was pursued in a seven-day jury trial.  The jury found that Syngenta failed to prove that a single party performed or controlled both steps of the claimed process.

Section 271(g) was first enacted in the Process Patents Amendments Act of 1987.  It provides in relevant part that “[w]hoever without authority imports into the United States or sells or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer.”

Syngenta asserted that the district court’s interpretation of the statute is contrary to its plain meaning and contrary to the intent of Congress as discernible in the legislative history.  The Federal Circuit panel hearing the Syngenta appeal consisted of Circuit Judges Jimmie Reyna, Richard Taranto, and Kara Stoll.  The panel’s analysis focused on the section’s proscribed acts (offer to sell, sell, or use) and the object of those acts (a product).  The liability for infringement defined in section 271(g), the court noted, does not arise out of practicing the process abroad. Therefore, how many parties are involved in the practice is immaterial, the court concluded.

The panel reasoned that adoption of the single-entity requirement from section 271(a) was improper because the acts constituting infringement are different.  Section 271(a) proscribes making, using, offering to sell, selling, or importing any patented invention, whereas section 271(g) proscribes using, offering to sell, selling, or importing a product.  The single-entity rule, the court stated, is necessary for section (a) but inapplicable to section (g).  Section (a) prohibits using a process, but section (g) does not.  Section (a) prohibits making a product, but section (g) does not.

Willowood asserted that the Supreme Court’s application of the single-entity rule to both direct infringement under section (a) and to indirect infringement under section (b) of section 271[4] in Limelight[5] mandates its application to section (g) as well.  Willowood reasoned that section (g) merely defines another form of direct infringement.  The panel distinguished section (b)’s inducement to infringe, which is predicated on an underlying direct infringement of a patented process, from section (g), which is not so predicated.  Section (g), it stated, is predicated not on practicing a patented process abroad, but by acts performed in the U.S. on the product of a patented process.

The panel also noted that Congress did not use in section (g) the language it used in section (f) dealing with other acts outside the U.S.  It did not state in section (g) that the process needs to be practiced “in a manner that would infringe the patent if” done within the U.S.  The panel concluded that Congress knew how to express the concept of “infringement” but for practice outside the U.S., but did not do so in section (g).

The Syngenta panel was careful to explain that by refraining from applying the single-entity rule to section (g), it was not making acts abroad infringements that would not be infringements if practiced domestically, as Willow asserted.  Rather, it was focusing on the domestic activities that the statute explicitly prohibits.

The panel found support for its interpretation in other sections of Title 35.  It pointed to the limitation on available damages in section 287(b) that refers to “knowledge before the infringement” that a patented process was used to make the product.  This reinforces the panel’s interpretation of section 271(g) that the infringing acts occur after the product has been made, i.e., after the patented process has been used.  Who — or how many entities —used the patented process is immaterial to the infringing acts.  Similarly, section 287(b) limits damages for infringement under section 271(g) if the manufacturer is unknown. Such a limit would be inconsistent with a requirement to prove that manufacture was by a single entity.

Additionally, the panel called attention to the rebuttable presumption in section 295 that shifts the burden to the accused infringer to prove that the patented process was not used in the manufacture of the accused infringing product.  The concern motivating section 295, that it would be too difficult for patent owners to get evidence of the manufacturing process in another country, would also apply to a requirement to prove a single entity practiced the patented process.

The panel looked to the legislative history and found it consistent with its interpretation of the statute.  The legislative history talks of manufacturing abroad and “subsequent importation into the United States of products made by the patented process.”  It also clarifies that section 271(g) is not attempting to prevent practice of a patented process abroad, particularly when the patentee has not obtained protection in that foreign jurisdiction.

Providing a textbook example of claim construction, the panel relied on the plain language of section 271(g) — supported by context of the section within the statute and the legislative history — to interpret the statutory section as not requiring a single-entity manufacturer or a single-entity controller.  Concluding that the single entity required for direct infringement under section 271(a) does not apply to section 271(g), the panel reversed the district court’s judgment that Willowood did not infringe the ’138 patent.

Click here to view the court’s opinion in Syngenta Crop Protection, LLC v. Willowood, LLC.

[1] There were other issues and other patents involved in the suit.  This article discusses only section 271(g).

[2] Syngenta also owns U.S. Patent 8,124,761, directed to using a particular catalyst (DABCO) to manufacture azoxystrobin.  Infringement of the ’761 patent did not depend on the construction of section 271(g).

[3] Section 271(a) states:  (a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

[4] Section 271(b) states: Whoever actively induces infringement of a patent shall be liable as an infringer.

[5] Limelight Networks, Inc., v. Akamai Technologies, Inc. 572 US 915, 921-22 (2014)

Banner Witcoff attorney Scott M. Kelly co-authored an article published in the December 2019 issue of Interactive Entertainment Law Review. He wrote the piece with Alex Nealon, a research assistant at the firm.

In their article, Scott and Alex examine a recent appellate decision in Game and Technology Co. Ltd. v. Activision Blizzard and Riot Games, Inc., a case involving patented technology relating to game avatars. They also discuss how inter partes reviews have changed the game in patent suits.

“This case illustrates the important role that IPRs play in US patent litigation, as well as the double-edged sword of obtaining very broad patent claims,” they wrote.

Scott is an editorial board member of Interactive Entertainment Law Review, which is a published twice a year and focuses on legal issues involving interactive entertainment, video games, virtual/augmented/mixed realities, social media and related forms of digital interactive entertainment.

Click here to read their article.

By Sarah A. Kagan, Ph.D.

Have you wondered how a patent assertion entity (PAE) operates?[1]  The U.S. Court of Appeals for the Federal Circuit recently laid out the modus operandi of one such PAE for all to see in Blackbird Tech LLC v. Health in Motion LLC (No. 2018-2393) (Dec. 16, 2019).

Blackbird Tech is an all-in-one operation.  It owns patents and serves as attorneys to litigate them against potential infringers.  Typically, its suits settle prior to receiving a decision on the merits.  Since its founding in 2014, Blackbird Tech has filed over 100 such suits.

In 2016, Blackbird Tech sued Health in Motion and Leisure Fitness Equipment for infringement of U.S. Patent No. 6,705,976, a patent relating to exercise equipment.  After the defendants filed a successful motion to transfer the suit, Blackbird Tech offered to settle for $80,000.  The defendants declined, stating that the infringement allegations lacked merit and they expected to obtain a court-ordered award of attorney fees.  The defendants counteroffered that they would settle if Blackbird Tech paid them $120,000.  Later, Blackbird Tech offered to settle if defendants paid Blackbird $50,000.  The defendants declined, and Blackbird Tech then offered to settle for $15,000.  Again, the defendants declined.  Then Blackbird Tech offered a settlement in which no cash changed hands, and Blackbird Tech would grant a license.  All settlement offers were declined. 

With regard to litigation conduct, Blackbird Tech delayed document production.  After full briefing of a motion for summary judgment, it filed a notice of voluntary dismissal with the court and granted the defendants a covenant not to sue, all without notifying the defendants.  The district court denied the motion to dismiss and authorized the defendants to file a motion for attorney fees and expenses.  The court later granted that motion and awarded the defendants $363,000, after finding that the case was “exceptional” because Blackbird Tech’s litigation position was meritless and frivolous and its litigation behavior unreasonable.

Blackbird Tech audaciously appealed the award of fees. The Federal Circuit determined that the district court had not abused its discretion in finding that this case was exceptional and thereby awarding reasonable attorney fees because indeed the litigation behavior was exceptional and the fees were reasonable. The Federal Circuit noted that even using Blackbird Tech’s proposed claim construction, the accused device did not meet the elements of the ’976 patent claim.

The district court also found Blackbird Tech’s litigation conduct unreasonable.  It pointed to the series of decreasing settlement demands that were far less than the anticipated cost of defending the suit.  These settlement demands constituted nuisance value settlement offers, the district court concluded.  The district court also determined that Blackbird Tech’s delay and failure to produce documents was unreasonable.  These were either unexcused or unexplained at the time. 

In addition, the district court found unreasonable the unannounced filing of Blackbird Tech’s notice of dismissal of suit and the timing of that filing on the same day that pretrial submissions were due.  Based on these findings, the Federal Circuit ruled no abuse of discretion in designating the case exceptional.  It also found appropriate the district court’s motivation for the attorney fees; it aimed to deter future abusive litigation in view of Blackbird Tech’s pattern of litigiousness.

Blackbird Tech also asked the Federal Circuit to consider whether the district court inappropriately granted attorney fees to the defendants for the whole litigation, rather than merely for the part relating to the purported misconduct.  This, too, was not a helpful argument for Blackbird Tech because the Federal Circuit found that the misconduct severely affected every stage of the litigation. 

The Federal Circuit has dissected and displayed the techniques used by at least one PAE for all to see. 

Click here to view the Federal Circuit’s decision in Blackbird Tech v. Health in Motion LLC.

[1] Some call these non-practicing entities, or even less generously, patent trolls.

By Sarah A. Kagan, Ph.D.

Briefing on a petition for writ of certiorari to the U.S. Supreme Court ended last week for Athena Diagnostics, Inc. v. Mayo Collaborative Services LLC (No. 19-430). 

Petitioner Athena seeks review of the patent eligibility of its diagnostic method claims.  Athena characterizes its method as involving a hitherto unknown link between an analyte and a disease, a novel, man-made reagent, and novel steps.[1]  In addition to the involved parties, 11 entities filed amicus briefs, including commercial entities, trade associations, law professors, associations of lawyers, and a retired chief judge of the U.S. Court of Appeals for the Federal Circuit.  The justices are set to confer on the petition within the month.

Athena’s petition got a boost from the U.S. Department of Justice (DOJ), but not in the normal way.  The Supreme Court did not ask the DOJ for its opinion by inviting an amicus brief about Athena’s petition.  Rather, the DOJ used its amicus brief in a different case (Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc., (No. 18-817) to recommend that the Supreme Court grant Athena’s petition.  The DOJ filed its Hikma amicus brief Dec. 6, after Mayo had filed its respondent’s brief but before Athena filed its reply brief.  The DOJ urged the Court to grant Athena’s petition as a better vehicle for clarification of the law of subject matter eligibility than Hikma’s.

Athena’s petition repeats Circuit Judge Kimberly Moore’s striking statement that the Federal Circuit has invalidated every diagnostic claim that it has considered since the Supreme Court’s 2012 Mayo decision.  It also points to other statements from the many separate opinions of judges of the Federal Circuit when the court denied en banc review in July.  In their separate opinions, the appellate judges implore the Supreme Court to reconsider the law regarding diagnostic methods.  Whether the judges lay the blame at the feet of the Supreme Court or the Federal Circuit itself, Athena asserts that they all desire a more lenient framework that would not categorically ban diagnostic method claims.  Athena strategically tells the Supreme Court that the panel opinion of the Federal Circuit misinterpreted the Supreme Court’s exception to patent eligibility.

Notwithstanding the many Federal Circuit judges pleading for clarification from the Supreme Court, Mayo had the easier argument to make, urging the court to leave its precedent undisturbed and deny certiorari.  Mayo argues in its opposition brief that the circuit judges were not confused by the current state of the law, but they merely disagreed with the outcome.  Mayo characterizes Athena’s disagreement with the current law as a policy difference, which should be the domain of Congress rather than the Court.

Mayo further characterizes Athena’s diagnostic method as nothing more than an ineligible law of nature with known techniques appended; the appended techniques are insufficiently inventive to shift the method to patent eligibility.

In response to Mayo’s characterization of the Federal Circuit judges’ gaggle of opinions (denying rehearing) as merely reflecting policy differences, Athena asserts that the judges expressed confusion over how to interpret and apply Supreme Court precedents.  Athena notes that the DOJ agreed in its amicus brief in Hikma

Athena also counters Mayo’s argument that Congress, not the Court, should correct the Federal Circuit’s expansion of judicial exceptions. Athena asserts that since the Federal Circuit did not perform statutory interpretation but rather applied the Supreme Court’s judge-made law, it is appropriate for the Supreme Court to address the issue.  Athena concludes its reply brief by characterizing the Federal Circuit’s action as an expansion of the Supreme Court’s exception without congressional mandate.  

Will the Supreme Court take the bait and try to clarify its judicial exception to subject matter eligibility? Or will it decline and leave the discontented to the slower and less certain legislative process? 

[1] Click here, here, and here for Banner Witcoff’s prior alerts regarding the dispute.