Erise IP is pleased to announce it received top accolades from Managing Intellectual Property’s 2019 IP Stars awards. In addition, five partners earned individual recognition.

The firm and individual honors include:

• Erise was named a “Highly Recommended” firm in Intellectual Property – the top ranking a firm can receive in the awards program
• Partner and Co-Founder Adam Seitz was named “Patent Star” and “Trademark Star”
• Partner and Co-Founder Eric Buresh was named “Patent Star” and ‘Trademark Star”
• Partner Jennifer Bailey was named “Patent Star”
• Partner Jason Mudd was named “Patent Star”
• Partner Marshall Honeyman was named “Patent Star”

Find the complete list of attorney honors here and firm honors here.

In selecting the winners, Managing Intellectual Property’s team of research analysts surveyed thousands of Intellectual Property attorneys in private practice and in-house in addition to conducting interviews with attorneys.

Erise IP shareholders Eric Buresh and Adam Seitz recently sat down with Law360 for a Q&A to discuss the unique challenges facing IP boutiques in today’s legal market and how they work to overcome those challenges in order to attract topnotch talent and compete with BigLaw firms for clients.

One of the ways Erise is addressing these challenges is by taking out the walls — literally and figuratively. The firm is open from the office design to how it works with clients.

“One of the things we pride ourselves on is that the people who go out and pitch the case are the same ones you see on the issues in the case,” Seitz said. “When we go meet with clients and establish a relationship with them, if that’s me or Eric, we’re going to be the people working with them throughout the entire case, from minor issues to trial planning.”

Another differentiator for Erise is its flexibility when it comes to billing.

“We don’t have a rigid decision-making structure with our firm,” Buresh said. “If Adam or I wants to provide a budget that’s unique or different than anything we’ve done before, really the decision stops with us. That’s something we can be very responsive to clients for and we can be creative in solving their problems.”

Erise IP shareholders Eric Buresh and Michelle Marriott and associate Mark Lang recently earned a summary judgment on behalf of video game maker Ubisoft in a case “related to music being used to control a virtual reality environment.”

The plaintiff in the case filed suit against Ubisoft for infringement in the games Just Dance and Rocksmith.

The Kansas City Business Journal recently highlighted the firm’s victory, writing “Erise argued that the Ubisoft games didn’t infringe on the patent because the games used a prerecorded control track that changed the video display using information on time, position and location in a song, not by the beat of the song itself.”

A Delaware magistrate judge granted Erise IP and client Ubisoft summary judgment of noninfringement in a case centered on a virtual reality computer system controlled by music or control tracks created from music.

Erise IP shareholders Eric Buresh and Michelle Marriott and associate Mark Lang “asserted that a prior art reference known as Williams anticipated and/or rendered certain claims of the patent obvious,” the court wrote.

The plaintiff claimed “Williams could not be used to invalidated the claims at issue, because Williams did not disclose a prerecorded control track having audio and/or control information corresponding to an audio signal.”

However, the court’s conclusion, which found the plaintiff’s theory falls within the disclaimed claim scope, was further underscored by the Williams reference, which triggered the disclaimer at issue.

Erise IP is pleased to announce that Colorado Super Lawyers has featured partners Abran Kean and Paul Hart in its latest annual guide.

The guide, which is published by Thomson Reuters, named both as Rising Stars in Intellectual Property Litigation. For Kean, it marks his sixth straight selection to the Rising Stars list, while it is Hart’s fifth consecutive honor.

Up to 5 percent of attorneys in each state are named as Super Lawyers, and up to 2.5 percent are named Rising Stars. The selection process includes peer nominations, third-party research and an evaluation by a panel of attorneys.

The lists, which are published nationwide in Super Lawyers magazines and in leading city and regional magazines and newspapers across the country, serve as a resource for attorneys and consumers seeking legal counsel.

Erise IP shareholder Adam Seitz was recently featured by Missouri Lawyers Weekly after being named a 2019 Missouri Lawyers Weekly Law Firm Leader.

The feature backgrounds how Seitz and shareholder Eric Buresh began to anticipate changes that would affect patent law, ultimately leading to the founding of Erise IP.

Seitz told Missouri Lawyers Weekly, “I learned through that entire process . . . that I need to have faith; that I’m not in control, number one, and that God, who’s in control, has a good plan for us.”

The day the doors opened on Erise IP, the new firm represented Sony, Garmin, Ford, and video game company Ubisoft Electronic Arts, among other large companies. At that time, around 10 people worked for the firm.

Erise needed to grow quickly to cover the work of its existing clients, and getting patent attorneys to move to Kansas City wasn’t easy, Seitz said. Erise IP now is home to more than 30 people with a roster of successful clients. Building that team is one of the accomplishments of which Seitz is most proud.

Erise IP associate Jon Hines recently authored an article for World IP Review that looks at three major changes to the U.S. Patent and Trademark Office (USPTO) revised Patent Subject Matter Eligibility Guidance.

Issued on January 4, 2019, the 2019 Revised Guidance “presents a substantial shift in the analysis of claims for subject matter eligibility under 35 USC §101,” Hines writes.

“The three major issues are changes in identification, categorization, and application of abstract ideas.”

On January 22, 2019, the Supreme Court unanimously held Helsinn v. Teva maintains status quo of pre-America Invents Act precedent regarding secret sales.

Many in the Patent Bar, including the U.S. Patent and Trademark Office, pointed to the catchall language in Section 102(a)(1) that an invention was considered “on sale” or “otherwise made available to the public.” The USPTO interpreted Section 102(a)(1) as changing the pre-AIA law, such that if the sale was secret, then it was not barring.

Erise IP shareholder Jennifer Bailey told Managing IP, “The patent office’s interpretation is more consistent with European practice, which requires an enabling prior public use or sale to be an invalidating sale/use barring patentability.”

Published on January 4, 2019, the United States Patent and Trademark Office (USPTO) released a revision to the Patent Subject Matter Eligibility Guidance, which presents a substantial shift in the analysis of claims for subject matter eligibility under 35 U.S.C. § 101.

Erise IP associate Jon Hines recently authored an article for Bloomberg Law that examines the 2019 Revised Guidance. In his article, Hines writes, “the 2019 Revised Guidance provides three significant changes to the subject matter eligibility analysis.”

First, alleged abstract ideas must be recited as such in the claims. No longer can abstract ideas be drafted by examiners through summarizing or generalizing the claims. Second, the claim limitation identified as an abstract idea must be evaluated to determine whether the claim limitation is within three enumerated categories. This is called “Prong 1 of Step 2A.” If the claim limitation is not within one of the categories, the claim is allowable. Third, if the claim limitation is within one of the categories, the additional elements (those claim limitations beyond the claim limitation identified as an alleged abstract idea) are identified to determine whether the additional elements integrate the abstract idea into a practical application. This is called “Prong 2 of Step 2A.” If the additional elements integrate the abstract idea into a practical application, the claim is allowable. If the additional elements do not integrate the abstract idea into a practical application, the additional elements may nonetheless render the claimed subject matter eligible if the additional elements are not well-understood, routine or conventional. This is Step 2B of the Alice/Mayo framework.

To read the article in its entirety, please click here.

Managing IP recently released rankings for the Patent Trial and Appeal Board for 2018, which looked at top petitioners, patent owners and law firms based on data listed in the Docket Navigator database.

Among the findings, Erise IP ranked No. 13 for “Petitioner Law Firm,” with 32 petitions before the PTAB. The firm ranked 23 rd for total PTAB disputes.

Erise is the highest ranking boutique firm on the petitioner law firm list and is the only Kansas City-based firm that is ranked in the top 50 of either “Petitioner Law Firm” or “Patent Owner Law Firm.”

Individually, shareholders Paul Hart, Adam Seitz and Eric Buresh ranked among the top 50 petitioner attorneys in 2018, a tremendous accomplishment for a boutique firm.