SoCal IP Law Group

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Category Archives: Invalidity

SoCal IP Institute :: September 8, 2014 :: Trademarks and Patentable Subject Matter

Our weekly SoCal IP Institute meeting on Monday, September 8, 2014 will be a discussion of a recent trademark decision and a recent decision on patentable subject matter from the District of Delaware. Brief synopses of the cases appear below. Panda Kroll, Esq., will lead the discussion on the trademark case.

Blackhorse v. Pro-Football, Inc., Cancellation No. 92046185 (TTAB June 18, 2014) (available here), involves a case of what constitutes disparaging trademarks. The marks at issue were REDSKINETTES (typeset word(s)), REDSKINS (typeset word(s)), THE REDSKINS (drawing which includes word(s)), WASHINGTON REDSKINS (drawing which includes word(s)), WASHINGTON REDSKINS (typeset word(s)), and THE REDSKINS (drawing which includes word(s) in stylized form). The registrations for the marks above were issued in 1990, 1978, 1974, 1974, 1974, and 1967 respectively.

The Board applied a two-step analysis in finding that the marks were disparaging.  The steps are: “a. What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?” and “b. Is the meaning of the marks one that may disparage Native Americans?” The Board found that the Pro Football, Inc.’s alleged honorable intent and manner of use do not contribute to the determination of whether the term is disparaging. The record established that at least thirty percent of Native Americans found REDSKINS used in connection with Pro Football, Inc.’s services to be disparaging at the time they were registered. The Board found this number to be substantial.

 

Walker Digital, LLC, v. Google, No.: 11-318-LPS (D. Del. 9/3/2014) (available here). The plaintiff sued Google for infringing two of its patents related to facilitating employment searches. Google filed a motion for summary judgment asserting that the patents were invalid under 35 U.S.C. 101. The district court held the patents invalid.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 8, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

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SoCal IP Institute :: April 7, 2014 :: Arbitration clauses in licensing agreements and Nonobviousness standards in design patents

Our weekly SoCal IP Institute meeting on Monday, April 7, 2014 will be a discussion of arbitration clauses in licensing agreements and nonobviousness standards in design patents. Brief synopses appear below.

Radware, Ltd. and Radware, Inc. v. F5 Networks, Case No. C-13-02024 (N. Dist. of Cal. 12/23/2013) (available here).  Radware sued F5 for patent infringement in the Northern District of California. F5 Networks counterclaimed asserting patent infringement of four of its patents. Radware then brought a motion to compel arbitration based on a licensing agreement entered into the parties previously with respect to the patents being asserted by F5. The court denied Radware’s motion to compel arbitration on the basis that the type of infringement was not covered under the arbitration clause and therefore the parties did not agree to arbitrate this issue. 

MRC Innovations, Inc. v. Hunter Mfg., LLP and CDI International, Inc., Case No. 2013-1433 (Fed. Cir. 4/2/2013) (available here). MRC is the owner of two design patents for jerseys for dogs. For design patents, the test under 103 is whether the “claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.” The Federal Circuit affirmed the district court’s ruling finding both patents invalid as obvious.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 7, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: March 3, 2014 :: Patent Infringement and Venue Cases

Our weekly SoCal IP Institute meeting on Monday, March 3, 2014 will be a discussion of patent infringement and venue. Brief synopses appear below.

Realtime Data v. Morgan Stanley, Case No. 2013-1092 (Fed. Cir. 1/27/2014) (available here). Realtime owns patents relating to compressing data for transmission. The defendants use a standard called FAST which is used in the financial industry for transferring financial information. The district court granted summary judgment of noninfringement and also granted summary judgment of invalidity. On appeal, the Federal Circuit affirmed the district court’s rulings. 

In re Apple, Miscellaneous Docket No. 156 (Fed. Cir. 2/2013) (available here). In this case, Apple filed a writ of mandamus requesting that the case be transferred to the Northern District of California from the Eastern District of Texas. The Federal Circuit denied Apple’s motion.

In re Barnes and Noble, Miscellaneous Docket No. 162 (Fed. Cir. 2/2013) (available here). In this case, Barnes and Noble filed a writ of mandamus requesting that the case be transferred to the Northern District of California from the Western District of Tennessee. The Federal Circuit denied Barnes and Noble’s motion.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 3, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: July 8, 2013 :: Jury instruction regarding Indirect infringement and PTO’s reexam determination affecting litigation

Our weekly SoCal IP Institute meeting on Monday, July 8, 2013 will be a discussion of a Federal Circuit decision regarding jury instructions relating to indirect infringement and another Federal Circuit decision regarding a PTO’s reexamination proceeding affecting litigation. Brief synopses of the cases appear below.

Commil USA, LLC v. Cisco Systems, Inc., (Fed. Cir. 6/25/2013) (available here). The district court held that Cisco directly and indirectly infringed certain claims of Commil’s patents. On appeal, the Federal Circuit vacated in part and remanded the case holding that the district court gave the jury a legally erroneous instruction with respect to indirect infringement.

Fresenius USA, Inc. v. Baxter International, Inc., (Fed. Cir. 7/2/2013) (available here). Baxter asserted that Fresenius infringed Baxter’s patent relating to the use of a dialysis machine with an integrated touch screen interface. The district court overturned the jury’s determination that Baxter’s patent was invalid. On appeal, the Federal Circuit vacated and remanded the district court’s finding that the patent was valid and infringed because the claims of the patent were canceled by the PTO during reexam.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 8, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: December 10, 2012 :: Administrative Procedures Act and Claim Construction

We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, December 10, 2012. Brief synopses are presented below.

Pregis v. Kappos, Case No. 2010-1492, -1532 (Fed. Cir. December 6, 2012) (attached).

In 2009, Pregis sued Free-Flow for declaratory judgment of invalidity and non-infringement of Free-Flow’s Patent Nos. 7,325,377, 7,526,904 and 7,536,837.  These patents relate to air-filled packaging technology used for shipping boxes.  In the same lawsuit, Pregis also sued the USPTO alleging that the  issuance of the patents by the PTO was arbitrary, capricious, an abuse of discretion or otherwise not in accordance with the law.  Pregis sought to hold unlawful and set aside the actions of the PTO in issuing two of the patents at issue. Pregis argued that under the Administrative Procedures Act (APA), the issuance of the patents should be nullified by the court.

The district court for the Eastern District of Virginia rejected Pregis’ claims for lack of subject matter jurisdiction, holding that “the Patent Act and its own scheme clearly expresses Congress’ intent to preclude putative third party infringers from seeking judicial review” under the APA of PTO decisions to issue patents.

On appeal, the Federal Circuit affirmed the dismissal. The Court held that a potential infringer cannot sue the PTO under the APA to attack the validity of an issued patent. The Court stated that judicial review of PTO decisions to issue patents may be precluded when Congressional intent to do so is “fairly discernible in the statutory scheme.”

The APA authorizes judicial review only where the agency action is “made reviewable by statute” or where there is a “final agency action for which there is no other adequate remedy in a court.”  The Court stated that third parties have an “adequate remedy in a court” for challenging an issued patent, such as inter partes reexamination or suits in court.

John Deere v. Bush Hog, Case No. 2011-1629, -1630, -1631 (Fed. Cir. December 4, 2012) (attached).

John Deere sued Bush Hog for infringing its U.S. Patent No. 6,052,980, which is toward an “easy clean dual wall deck” for rotary cutters.   A rotary cutter is a device pulled behind a tractor and used to mow wide swaths of ground.

One of the claim limitations in the patent was for upper deck walls that sloped downwardly “into engagement with, and being secured to” the lower deck wall.   The district court ruled that the “into engagement with” limitation required direct contact and since in Bush Hog’s accused device the upper deck wall does not directly contact the lower deck wall, there was no literal infringement of the claim.

On appeal, the Federal Circuit reversed the district court’s decision as erroneously construing the term “into engagement with” to require direct contact.  The Court looked to the specification of the patent which illustrated that “engagement” included indirect contact between the upper and lower deck walls. For example, the patent discloses a filler plate (blue) that provides the engagement between the upper deck (yellow) and the lower deck (red).

rotary cutter

The Federal Circuit also reversed the district court’s determination that John Deere could not assert the doctrine of equivalents.  The district court had held that because they construed “contact” to mean “direct contact,” allowing no direct contact under the doctrine of equivalents would vitiate the court’s construction.  In reversing, the Federal Circuit stated that a reasonable jury could find that a small spacer connecting the upper and lower deck walls represents an insubstantial difference from direct contact.  Thus, the trial court had erred by invoking the vitiation exclusion in this context.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, December 10, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.

SoCal IP Institute :: November 26, 2012 :: Overcoming Prima Facie Obviousness and Standing

We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, November 26, 2012. Brief synopses are presented below.

Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., Case No. 2011-1555 (Fed. Cir. November 15, 2012) (attached).

This case involves a patent for offshore drilling technology that allows a single derrick on a rig to have parallel drilling operations for faster and cheaper oil well drilling.  In a previous case related to this litigation, the Federal Circuit had overturned the district court’s summary judgment finding of obviousness, noting that although Maersk showed a prima facie case of obviousness, the summary judgment was improper in view of Transocean’s significant objective evidence of nonobviousness (i.e., secondary considerations).

On remand, the district court allowed the jury to review the prior art references for the purposes of determining obviousness and the strength of the prima facie case of obviousness.  The jury verdict was one of patent validity and awarded $15 million to Transocean.  The district court then granted Maersk’s motion for JMOL notwithstanding the jury verdict.

The Federal Circuit stated in this case that it was error to allow the jury to reconsider whether the references made the patent at issue obvious because that issue was already decided in the first case.  The Court also held that there was no error in allowing the jury to weigh the strength of the prima facie case together against the objective evidence of nonobviousness.  The court 1) reinstated the jury verdict upholding the patent as supported by substantial evidence, 2) held that substantial evidence supported the jury’s finding of enablement, and 3) reinstated the jury’s award of $15 million as a reasonable royalty verdict that was supported by substantial evidence.

Ritz Camera & Image, LLC v. Sandisk Corp., Case No. 2012-1183 (Fed. Cir. November 20, 2012) (attached).

SanDisk owns several patents relating to NAND flash memory.  Ritz, a retailer that sells flash memory products, filed suit alleging that SanDisk had violated antitrust laws.  Ritz contended that SanDisk had fraudulently procured two patents relating to its flash memory products by failing to disclose known prior art and making affirmative misrepresentations to the PTO.  SanDisk moved to dismiss the case on the ground that Ritz lacked standing, arguing that Ritz should not be allowed to bring a declaratory judgment action challenging the validity or enforceability of the patents when Ritz has not been sued for infringement.

The district court denied SanDisk’s motion to dismiss stating that direct purchasers are generally permitted to bring antitrust actions and Ritz’s status as a direct purchaser gives it standing to pursue its antitrust claims even if it could not have sought a declaratory judgment of patent invalidity or unenforceability. The Federal Circuit affirmed saying that antitrust standing is not limited by the rules of patent standing.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, November 26, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.

SoCal IP Institute :: November 19, 2012 :: Inventorship and Best Mode

We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, November 19, 2012. Brief synopses are presented below.

Hor v. Chu, Case No. 2011-1540 (Fed. Cir. November 14, 2012) (attached).

The defendant, Paul Chu, is a professor at the University of Houston.  He is listed as the sole inventor of U.S. Patent Nos. 7,056,866 and 7,709,418, which relate to a super-conducting material that does not require liquid nitrogen coolant.  The patents have earned $680,000 for the university, half of which was given to Chu.  Chu distributed about $140,000 to his lab assistants, including Hor and Meng.  Nevertheless, Hor and Meng brought suit claiming that they should also be listed as co-inventors.

The district court dismissed the case as barred by laches saying that the plaintiffs should have known for a long time that they were not named as inventors on the patent application. The district court also held that the suit was barred by equitable estoppel.

On appeal, the Federal Circuit vacated the lower court’s decision on laches, holding that the period for laches for an inventorship action does not begin to run until the patent actually issues, even if “the omitted inventors knew or should have known prior to patent issuance that their names were omitted.”  The Federal Circuit also vacated the equitable estoppel holding because it had been raised sua sponte by the lower court and in light of defendant’s failure to assert the defense against either plaintiffs.

Joy Mining Machinery v. Cincinnati Mine Machinery, Case No. 2012-1153 (Fed. Cir. November 8, 2012) (nonprecedential) (attached).

35 U.S.C. §112, first paragraph, requires that the best mode of carrying out the invention be disclosed.

Patent No. 6,662,932 is owned by Joy Mining Machinery and is directed to an apparatus for use in mining.  The inventors had determined that the best mechanism for its claimed drive-pin retainer was a press fitting. The patent does not identify a press fitting in the specification and instead suggests welding.  However, a press fitting mechanism was already known to those of skill in the art as a way to construct a drive-pin retainer.

The district court invalidated the asserted claim for failing to disclose the best mode.  The Federal Circuit reversed, holding that the best mode requirement does not require actual disclosure of the best mode, but rather only adequate disclosure to enable one of skill in the art to practice the best mode without undue experimentation.  The defendant, Cincinnati Mine Machinery, had failed to show any clear and convincing evidence upon which a reasonable jury could rely to find that the omission of press fitting from the ‘932 patent “concealed” its use as a drive-pin retaining means from the public.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, November 19, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.

SoCal IP Institute :: November 12, 2012 :: Historically Significant Marks and Public Accessibility of Prior Art

We will be discussing one Federal Circuit case and one California Court of Appeal case during our weekly SoCal IP Institute meeting on Monday, November 12, 2012. Brief synopses are presented below.

Winchester Mystery House, LLC v. Global Asylum, Inc., Case No. H036253 (Cal. App. October 24, 2012) (attached).

The plaintiff is a privately owned company that owns and operates the Winchester Mystery House, which is a popular tourist attraction in San Jose, California that was built by Sarah Winchester, a family member of the Winchester Repeating Arms Company.  It is now a museum and comprises of the Winchester mansion, surrounding gardens and other structures.  The plaintiff owns a word mark and an architectural mark for the Winchester Mystery House, which have been registered since February 2010.  The defendant released a film entitled “Haunting of Winchester House” which told a fictitious horror story involving Sarah Winchester.

The plaintiff sued for unauthorized use of its trademarks, unfair competition, and interference with contract and economic advantage.  The trial court granted the defendant’s motion for summary judgment where the defendant argued that the First Amendment provided an absolute defense and the fair use doctrine allowed defendant to identify plaintiff’s marks in the context of describing the movie.

The California Court of Appeal for the Sixth District affirmed stating that the marks have historical significance and the defendant’s film title satisfies both prongs of the Rogers test in adequately ensuring protection of both the public interest in avoiding consumer confusion and the public interest in free expression.  The Court also affirmed the trial court’s grant of summary judgment as to the interference causes of action, stating that the evidence would not allow a reasonable trier of fact to find in favor of plaintiff as to these causes of action.

Voter Verified, Inc. v. Premier Election Solutions, Inc., Case No. 2011-1553, 2012-1017 (Fed. Cir. November 5, 2012) (attached).

The plaintiff brought two patent infringement actions in the District Court for the Middle District of Florida against various parties, alleging infringement of Reissue Patent RE40,449.  The patent related to automated systems and methods for voting in an election, featuring a self-verification procedure by which “machine and human error may be detected and corrected before the ballot is submitted by the voter for tabulation.”  The defendants filed for summary judgment of non-infringement and invalidity due to obviousness based in part on prior Internet articles. The plaintiff argued that the article on the web was not a publicly accessible printed publication because there was no evidence of indexing.  The district court disagreed saying that indexing is only one among many factors that may bear on public accessibility and a skilled artisan would have found the web article even without indexing.

In consolidated appeals, the Federal Circuit affirmed stating that the district court correctly held Claim 49 invalid for obviousness and Claims 1 and 25 not infringed because none of the accused products includes a ballot scanning device or its equivalent.  The Court also affirmed the district court’s conclusion that plaintiff failed to create a genuine issue of material fact regarding whether the defendants exercised the requisite control or direction for steps performed “by the voter” to directly infringe the method claims.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, November 12, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.

SoCal IP Institute :: October 1, 2012 :: Inequitable Conduct and Judgment as a Matter of Law

We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, October 1, 2012. Brief synopses are presented below.

Outside the Box Innovations, LLC. v. Travel Caddy, Inc., Case No. 2009-1171 (Fed. Cir. September 21, 2012) (attached).

Travel Caddy brought suit against Outside the Box Innovations claiming infringement of two of their patents, U.S. Pat. No. 6,823,992 and its continuation, U.S. Pat. No. 6,991,104 both directed to tool carrying cases.  The district court held that the patents were unenforceable based on inequitable conduct during the prosecution of the patents.  Travel Caddy had failed to inform the patent examiner of the existence of litigation in the parent patent prior to the issuance of the ‘104 patent.  Travel Caddy also incorrectly claimed small entity status.  Travel Caddy clearly met the small entity status requirements in having fewer than 500 employees, but Travel Caddy had a commercial arrangement with its distributor and seller, The Rooster Group, who was a large entity of over 500 employees.

On appeal, the Federal Circuit reversed the decision of unenforceability for incorrectly claiming small entity status.  The Court reversed not on the ground of materiality, but on the basis of a lack of intent.  The Court held that  the requirements of Therasense were not met because “there was no clear and convincing evidence of intent to deceive the PTO.”

Regarding the holding of unenforceability for not disclosing the litigation in the parent patent, the Federal Circuit reversed the district court’s pre-Therasense finding of both materiality and intent. On materiality, the Federal Circuit ruled that the failure to disclose the existence of a litigation when there was no citation of prior art, nor any pleading of invalidity or unpatentability in the complaint of the litigation as it existed during pendency of the continuation application, did not constitute clear and convincing evidence of materiality.  On intent, the Court held that there is no evidence that the withholding of the information concerning the litigation could have deceived the examiner and no suggestion of deliberate action to withhold it in order to deceive the examiner.

Mirror Worlds, LLC. v. Apple, Inc., Case No. 2011-1392 (Fed. Cir. September 4, 2012) (attached).

Mirror Worlds owns three patents at issue in this case: US Patents 6,006,227; US Patent 6,638,313; and US Patent 6,725,427.   Mirror Worlds brought a patent infringement action in the District Court for the Eastern District of Texas against Apple claiming that Apple’s Spotlight, Time Machine and Cover Flow features in their Mac operating system infringe the patents.  Cover Flow lets users scroll through album cover art when browsing for music in their iTunes libraries. The feature also works for documents, pictures and other material stored in a computer. Spotlight searches the computer’s hard drive while Time Machine automatically saves copies of files.  Mirror Worlds asserted claims of both direct infringement and induced infringement.

The district court granted Apple’s oral motion for judgment as a matter of law that Apple did not induce infringement of any of the patents.  The district court stated that Mirror Worlds failed to introduce substantial evidence to show that defendant itself induced its customers to infringe the disputed patent’s method claims. The issue of direct infringement by Apple was submitted to the jury, wherein the jury found Apple liable for willfully infringing all three asserted patents and awarded $208.5 million in damages. However, the district court granted Apple’s motion for judgment as a matter of law and vacated the jury verdict.

The Federal Circuit affirmed, concluding that Mirror Worlds failed to present substantial evidence of direct infringement and damages.  The district court had concluded that Mirror Worlds did not establish infringement under the doctrine of equivalents because Mirror Worlds did not provide substantial evidence to show that the accused products have an equivalent for the “cursor or pointer” limitation.  The Federal Circuit also agreed that the evidence presented at trial was not sufficient to support the damages awarded by the jury.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 1, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.

SoCal IP Institute :: August 20, 2012 :: Fair Use and Enablement

We will be discussing one Federal Circuit case and one Ninth Circuit case during our weekly SoCal IP Institute meeting on Monday, August 20, 2012. Brief synopses are presented below.

Monge v. Maya Magazines, Inc., Case Nos. 10-56710 and 11-55483 (9th Cir. August 14, 2012) (attached).

Noelia Monge is a pop singer and model in Latin America.  In 2007, she married her manager and music producer Jorge Reynoso in a private, unpublicized wedding in Las Vegas.  Maya Magazines, Inc. and Maya Publishing Group, LLC obtained and publishing previously unpublished photos of the secret wedding in “TVNotas,” a Spanish-language celebrity gossip magazine. The photos were allegedly stolen by a third party.  Monge sued Maya claiming copyright infringement. The district court granted Maya’s summary judgment on the ground that publication of the images was fair use under the Copyright Act of 1976.

On appeal, the Ninth Circuit Court of Appeals reversed and remanded, holding that the balancing of factors must be weighed against defendants’ burden to establish fair use.  The Ninth Circuit determined that not a single factor weighed in favor of the defendants and the defendants’ affirmative defense of fair use failed as a matter of law.

Magsil Corp. v. Hitachi Global Storage Tech., Inc., Case No. 2011-1221 (Fed. Cir. August 14, 2012) (attached).

MIT owns Patent No 5,629,922, which covers read-write sensors for computer hard disk storage systems that use a quantum mechanical effect to pass electric current from one electrode to another.  MIT and the patent’s exclusive licensee Magsil sued Hitachi et al. for infringement of the ’922 patent.  The Federal Circuit upheld the district court’s grant of summary judgment in favor of the defendants, finding the disputed claims invalid for lack of enablement.

The patent claims a device that has a change in resistance of “at least 10%.”  The district court found that the asserted claim coverage includes “resistance changes beyond 120% and up to infinity.”    The defendant was able to prove that the change in resistance levels could not have been achieved at the time of the patent filing without undue experimentation.  The field of art had advanced greatly after the filing of the patent application. The Federal Circuit stated that the specification at the time of filing must teach one of ordinary skill in the art to fully perform the method across the entire scope.  Accordingly, the district court’s finding of invalidity for lack of enablement was upheld.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 20, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.