Maier & Maier Defends Electric Mirror, Inc. In A Case Filed by Aperture Net LLC In the Western District of Washington

Maier & Maier

Maier & Maier continues to enjoy consistent and favorable results in its litigation matters. On November 1, 2022, Aperture Net LLC filed a lawsuit accusing Electric Mirror, Inc. of infringing U.S. Patent No. 6,711,204, which purportedly covers connections between base stations and WiFi access points. The suit was filed in the Western District of Washington (2:22-cv-01548), and accused Electric Mirror’s Savvy Smart Mirror of infringement.

The case was dismissed with prejudice on March 9, 2023 (Dkt. 21). The Electric Mirror dismissal follows two others in which Maier & Maier has helped defendants obtain early dismissals, including Altus Partners, Inc. v. Altus Market Access, Inc. (EDCA) and Wave Linx LLC v. MeetingOne.com, Corp. (D.Colo.). The dismissal also comes on the heels of Maier & Maier successfully obtaining a stay on behalf of defendants in a patent infringement lawsuit between E9 Treatments, Inc. v. Kopman LLC et al. in the Southern District of Texas.

About Maier & Maier PLLC

In 2022, Maier & Maier issued over 800 total patents and maintained its positive growth trajectory, exceeding 25% year over year growth. The firm has proven its capacity for steady growth with an uncompromising commitment to delivering efficient and effective results.

Maier & Maier’s litigation team has also been hard at work delivering positive results for clients. The Maier & Maier Team continues to advocate on behalf of clients in federal courts, before the Patent Trial and Appeal Board, Trademark Trial and Appeal Board, and the International Trade Commission.

Representative Engagements

  • Cedar Lane Technologies v. THine Electronics, Inc., WDTX, 6:22-cv-01145
  • Concrete Support Systems, LLC v. Bond Formwork Systems, LLC, WDTX, 1:20-cv-01150
  • Transcend Shipping Systems, LLC v. Maersk, Inc. et al., WDTX,6:20-cv-01122-ADA
  • Advanced Cartridge Technologies, LLC v. Mark Collier et al., WDTX, 1:21-cv-00657-ELY
  • AGIS Software Development LLC v. Xiaomi Corporation et al., EDTX, 2:22-cv-00450 and 337-TA-1347 (International Trade Commission)
  • E9 Treatments, Inc. v. KopMan LLC, SDTX, 2:22-cv-00172
  • Wave Linx LLC v. MeetingOne.com Corp., Colo., 1:22-cv-03077
  • Altus Partners, Inc. v. Altus Market Access, Inc.,D. Cal., 2:22-cv-01994
  • PASCO Scientific v. Vernier Software & Technology, Or., 3:21-cv-01523
  • Aperture Net LLC v. Electric Mirror, Inc.,D. Wash., 2:22-cv-015348
  • Disintermediation Services, Inc. v. Continually Ltd., WDTX, 6:22-cv-00649
  • com, LLC v. Kinefinity, Inc.,C.D. Cal., 8:21-cv-00041-JVS
  • Internet Media Interactive Corp. v. Sightline Media Group, LLC, Del., 1:21-cv-00970-MN
  • Freetek Holdings, LLC v. Extollo Communications, D. Wash. 2:21-cv-01021-TSZ
  • Sykes v. Nash Distribution, Inc. EDVA,1:21-cv-00897-TSE-MSN
  • Juul Labs., Inc. v. Vaperistas LLC, D.Ill., 1:20-cv-04092 and 337-TA-1211 (International Trade Commission)
  • Lander Enterprises, LLC v. iSonic Inc., Conn., 3:20-cv-01693
  • Thomas A. Person v. Cigar Reserve LLC et al.,Ind., 4:20-cv-00212

USPTO Transitions to Electronic Patent Grants

Maier & Maier

The USPTO recently announced through the publishing of a new Federal Register final rule (88 Fed. Reg. 12560) that effective Tuesday, April 18, 2023 all newly issued patents will be issued electronically. Electronically issued patents will bear the digital signature of the USPTO director, and the corresponding patent cover sheet will be nearly identical to current cover sheets; however, they will include the seal and Director’s signature in digital form. As an additional update the new official USPTO digital seal will serve as authentication of the patent, and will include an encrypted digital signature embedded within the seal.

Eventually patents will no longer be issued in paper form and will be digital only, however there will be a yet-to-be determined transition period where a paper copy of the electronic patent will be provided as a courtesy. The courtesy copy will be mailed to the correspondence address of record. After the transition period ceremonial copies or presentation copies (certified copy of the front page that can be used for display) will be available for nominal fees. Advance copies of issued patents however will no longer be available for purchase.

Moving to electronic Patent grants will, according to the office, reduce pendency of patent applications, foster a green economy by reducing paper waste, and permit issued patents to be viewed and printed by applicants and the public immediately upon issuance in patent center. As a practical matter, the move to electronic grants will have some impact on patent practice, particularly with regards to continuation practice. Under the current system there is typically a delay of several weeks between the mailing of the issue notice and the actual issue date of the patent. Under the electronic patent process, the Office notes that patents will issue “shortly after the patent number and issue date are assigned, which will result in the reduction of pendency for allowed patent applications.” This means Applicants will have less time between the payment of the issue fee and grant, and therefore less time to file continuations, quick path Information Disclosure Statements, or petitions to withdraw an application from issue under 37 CFR 1.313(c). In line with this change the Patent Office recommends that going forward all these filings should be done as early as possible, and particularly with respect to continuations should be preferably done before the payment of the issue fee.

The above rule is just one of many steps the Patent Office has taken towards digitizing their processes. For example, the Patent Office also finalized another rule (88 Fed. Reg. 13028) the same week as the above which establishes that effective May 1, 2023 all “patent term extension (PTE) applications, interim PTE applications, and any related submission to the USPTO must be submitted electronically via the USPTO patent electronic filing system”. Professional and knowledgeable patent counsel are more important than ever to help clients navigate the ever changing and advancing systems of the USPTO.

Maier & Maier Looks to Carry 2022 Momentum Forward in 2023

Maier & Maier

Maier & Maier continues to enjoy consistent and steady growth in both prosecution and litigation matters. In 2022, Maier & Maier issued over 800 total patents and maintained its positive growth trajectory, exceeding 25% year over year growth. The firm has proven its capacity for steady growth with an uncompromising commitment to delivering efficient and effective results.

Maier & Maier’s litigation team has also been hard at work delivering positive results for clients. The Maier & Maier Team continues to advocate on behalf of clients in federal courts, before the Patent Trial and Appeal Board, Trademark Trial and Appeal Board, and the International Trade Commission.

In recent weeks, Maier & Maier has continued to resolve litigations on behalf of its clients, including negotiating settlements in Altus Partners, Inc. v. Altus Market Access, Inc. in the Eastern District of California and Wave Linx LLC v. MeetingOne.com, Corp. in the District of Colorado.  Maier & Maier also successfully obtained a stay in E9 Treatments, Inc. v. Kopman LLC et al. in the Southern District of Texas.

Maier & Maier’s litigation team has extensive experience representing clients across all patent venues, before the top patent judges and against the top competitor firms.

Whether you require prosecution or litigation assistance, the Maier & Maier team remains ready to deliver for your business.

 

USPTO Director Vidal issues key decisions regarding abuse of process in proceedings before the Patent Trial and Appeal Board

Maier & Maier

Two key decisions have been issued from the Patent Trial and Appeal Board (Board) this Thursday regarding abuse of process.

The first, Patent Quality Assurance, LLC, v. VLSI Technology LLC, IPR2021-01229, Paper 102, is a precedential decision where the Director of the USPTO Kathi Vidal held that Petitioner Patent Quality Assurance (PQA) abused the Inter-Partes Review (IPR) process by using the proceeding for the purposes of extortion.

According to the decision, PQA failed to offer a verifiable, legitimate basis for filing its petition, which was filed only after a district court awarded large monetary damages keyed to the subject ‘373 patent. The Director identified that petitions unrelated to any pending litigation may raise concerns of petitioners who file “petitions, filed for the primary purpose of obtaining a cash settlement” from patent owners in order to settle and terminate the proceed.

The Director also found that PQA made material misrepresentations in order to ensure that another petition would be denied so that PQA’s petition, which was a replica of an earlier petition filed by Intel Corp., could proceed. The Director concluded that “To safeguard the proper functioning of the patent system, and the confidence therein, it is incumbent on me and the USPTO to protect against that harm.”

In a second, related decision, OpenSky Industries LLC v. VLSI Technology LLC, IPR2021-01064, Paper 121, the Director sanctions Petitioner OpenSky by precluding them from participating the proceeding based on their abuse of the IPR process in addition to sanctionable conduct including discovery misconduct, violation of an express order, and unethical conduct.

The standard applied to PQA and OpenSky was one of “compelling merits”. This requires that the petitioner present a compelling, meritorious challenge, which requires a “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. §314(a).

Our team at Maier & Maier is proud of our success in both petitioning and defending IPRs and other cases in front of the Board.

Fifth Circuit Ruling May Impact Venue Transfer for Patent Cases in the Western District of Texas

Maier & Maier

In recent years the Western District of Texas has become an increasingly popular destination for patent litigation, in large part due to the litigant friendly rules propagated by Judge Albright. The Western District of Texas (as well as the Eastern District of Texas, another popular district for patent litigation) is part of the 5th Circuit.

Where venue is proper Defendants have limited options for changing to a different location, one way of doing so is through venue provision 28 U.S.C. 1404(a), which allows for change of venue “for the convenience of parties and witnesses.” However, changing for convenience is not given as a matter of right, and the district judge overseeing the case has significant discretion in determining whether the transfer is allowed. How much discretion the district judge has is a matter of some debate among the district courts, and mandamus petitions for venue cases are not commonly taken up by the 5th circuit. However, the 5th circuit did recently take just such a case in re Planned Parenthood Fedn. On Am., Inc. 52 F.4th 625 (5th Cir. 2022).

The Planned Parenthood case was originally filed in Amarillo (N.D.Tex.), and Planned Parenthood moved for a transfer of venue to Austin (W.D.Tex) as a much more convenient forum. The district court denied the motion and planned parenthood filed a mandamus petition.

The circuit court further denied the petition, citing several grounds. Of particular note the court frequently hit on the broad discretion given to the district court in deciding whether to grant a transfer for convenient venue, for example the court opened by stating “we have often said that a writ of mandamus is an ‘extraordinary remedy’ reserved for ‘extraordinary causes”. Later in the opinion the court further “reiterate[s] that district courts have broad discretion in deciding motions to transfer; they need only grant such a motion where the evidence demonstrates that the destination venue is ‘clearly more convenient’ than the chosen venue. [the court] review that decision ‘only for clear abuses of discretion that produce patently erroneous results.’ The district court carefully considered each of the private and public interest factors, ultimately concluding that they do not weight in favor of transfer. The standard for reversing that holding is high” (emphasis added). While citing that the district judges have broad discretion in these cases is not new, and is taken from the precedent, the frequency and emphasis in which the court repeated this may indicate that the circuit is raising the bar on the showing required to reverse a judge’s denial of transfer.

The Circuit court also noted to other factors that weighed in favor of upholding the district courts denial of transfer, (1) was that the judge for this case had particular familiarity with the law at issue, (2) Amarillo (where the district court was located) is less expensive than Austin (where the case would be transferred to), finally (3) the district court found that the Amarillo Division is less congested than the Austin division. At least the first two points could potentially apply to patent cases under Judge Albright as well, Judge Albright definitely has familiarity with patent law, and Waco (where Judge Albright is located) is cheaper than many other locations that defendants are likely to want to transfer to (for example California, Delaware, Etc.).

One other factor that contributed to the denial as well was Planned Parenthood’s “inexcusable delay” in filing a motion to transfer. Specifically, Planned Parenthood waited until after resolution of an earlier motion to dismiss the case was denied before filing for transfer, so future defendants would be advised to make any planned transfer motions as early as possible.

In total this decision may cement Judge Albright’s (and any other patent friendly judges in districts under the 5th circuit) ability to retain the plethora of patent cases filed in their courts. This may continue to enable patent litigants to take advantage of the friendly rules of these specific Districts.

New Deadlines to Respond to Trademark Office Actions

Maier & Maier

On December 3, 2022, the United States Patent and Trademark Office will shorten the response deadline for Trademark office actions from 6-months to 3-months. This shortened deadline will apply to all office actions issued on or after December 3, 2022.

There will be an opportunity to file one 3-month extension for an additional fee. The USPTO fee for a 3-month extension will be $125 and the extension request must be filed before the initial 3-month deadline.

The goal of the shortened response deadline is to decrease the time to obtain a registration, while also allowing flexibility to request additional time to respond to more complex office actions.

The new shortened deadline will not apply to applications filed through the Madrid Protocol section 66(a).

The deadline for post-registration office actions will remain unchanged until October 7, 2023.

If a response deadline is missed, it may still by possible to revive the application by filing a petition to revive.

We look forward to assisting our valued clients as we navigate the transition to a 3-month response timeline.

Federal Circuit Partially Overturns Invalidation of 4 Software Patents Under §101

Maier & Maier

Inventor Sholem Weisner sued Google LLC for patent infringement of four patents (10,380,202, 10,642,910, 10,394,905 and 10,642,911) in the District Court for the Southern District of New York in 2020. Weisner’s patents all shared the same specification which generally described ways to “digitally record a person’s physical activities and ways to use this digital record.” Google enjoyed an early win when the District Court granted summary judgment finding all claims ineligible under §101. However, on October 13, 2022, the Federal Circuit partially reversed the District Court, specifically finding that the ‘905 and ‘911 patent claims should not have been dismissed for patent ineligibility at this stage. Weisner v. Google LLC, 2021-2228  (Fed. Cir. 2022).

The Federal Circuit found that the District Court correctly dismissed the ‘202 and ‘910 patents for patent ineligibility. The claims in question were directed to the abstract idea of “collecting information on a user’s movements and location history and electronically recording that data.” Specifically, these claims were essentially about “creating a digital travel log”. Weisner argued that the system was an improvement on a computer because it automatically made these recordings and limited “what is recorded to only specific types of interactions that are pre-approved and agreed to by an individual member and a vendor member”. Neither the District Court nor the Federal Circuit found this line of argumentation compelling, noting that “humans have consistently kept records of a person’s location and travel in the form of travel logs, diaries, journals…” purely automating or digitizing a travel log is not sufficient to “bring the claims out of the realm of abstractness.”

With regard to the remaining ‘905 and ‘911 patents the Federal Circuit said, “at step one [of Alice] the district court erred by failing to separately analyze these patents.” While the district court analyzed the remaining patents on the same grounds as the ‘202 and ‘910 the Federal Circuit found that these patents were instead directed to “creating and using travel histories to improve computerized search results” (emphasis added). Specifically, the ‘905 and ‘911 patents recited “a method of enhancing digital search results for a business in a target geographic area using URLs of location histories.” The Federal Circuit still found this was an abstract idea, but much closer than the first two patents.

On Alice step 2 the Federal Circuit found that the ‘905 and ‘911 patents “recite a specific implementation of the abstract idea that purports to solve a problem unique to the internet and that, accordingly, these claims should not have been held ineligible under step two at this stage.” This finding was not based on any new structure or algorithm, in fact Weisner conceded “the patented system uses the same or similar algorithm used by existing search engines.” However, this alone did not “doom the claims”. The allowability was instead found based on “the claims specificity as to the mechanism through which they achieve improved search results”, which was done “through a ‘location relationship’ with a ‘reference individual’ for the ‘905 patent or through the ‘location history of the individual member’ … for the ‘911 patent.” Therefore, the claims recite “a new technique for prioritizing the results of the conventional search,” which in the context of the internet are sufficient to “add significantly more to the abstract idea of using travel histories to improve computerized search results.”

This case, like the Federal Circuits other recent §101 case Cooperative Entertainment v. Kollective Technology, shows that the Federal Circuit is willing to push back on District Court §101 invalidations, especially for software cases where such invalidations are common. Whether this is indicative of a larger trend on how the Federal Circuit views §101 going forward still remains to be seen.

Federal Circuit Overturns Summary Judgment Based on §101 Ineligibility

Maier & Maier

In a new precedential decision released September 28, 2022, the Federal Circuit overturned a decision from the Northern District of California. The lower court’s decision granted summary judgement for defendant Kollective Technology, finding all claims of plaintiff-complainant Cooperative’s ‘452 patent ineligible under 35 U.S.C. §101.

Cooperative’s ‘452 Patent relates to systems and methods for structuring a peer-to-peer (P2P) dynamic network for distributing large files, namely for videos and video games. The District Court had found that the ‘452 patent failed §101 at step 1 of the Alice test, specifically that the focus of the patent was the abstract idea of “the preparation and transmission of content to peers through a computer-network.” Furthermore, the lower court ruled that the ‘452 patent failed step two of Alice because the patent was “merely implementing the abstract idea of preparing and transmitting data over a computer network with generic computer components using conventional technology.”

The Court of Appeals overturned the lower court rejection on the basis that the ‘452 patent did in fact meet part two of the Alice test on two different bases. The first issue was a matter of claim construction, Cooperative argued that the claims required trace routes to be used in content segmentation, while Kollective argued that the segmentation was optional, and therefore irrelevant for the purposes of determining eligibility. The District Court had not conducted claim construction yet and the Federal Circuit held “under these circumstances we proceed by adopting the non-moving party’s construction”. Since the construction was the only thing at issue for the trace routes, this alone was enough to overturn the dismissal under §101.

However Cooperative also claimed that the patent was inventive because the ‘452 patent required a dynamic P2P network wherein multiple peer nodes consume the same content and are configured to communicate outside the CDN’s. Kollective argued that all components used in this feature are routine and well known, and this is simply a rearrangement of existing components. Cooperative did not dispute that the components themselves were well known in the art, but rather that it was the arrangement and structure of these components that was itself inventive, and therefore patent eligible. The Federal Circuit agreed with Cooperative, “we conclude that claim 1 recites a specific technical solution … it recites a particular arrangement of peer nodes for distributing content … which did not exist in the prior art”.

The Federal Circuit therefore completely overturned the lower courts decision on both points, stating “at a minimum, the district court should have denied the motion to dismiss because Cooperative’s allegations in the complaint regarding the claims and the ‘452 patent’s written description create a plausible factual issue regarding the inventiveness of the dynamic P2P configuration of claim 1.”

This case could have larger implications on §101 policy going forward. Software patents like the one at issue in this case have been notoriously susceptible to §101 rejections, but the Federal Circuit’s decision here is a win for software patents.

USPTO Transitions to New Online Search Tool, Patent Public Search

Maier & Maier

On September 30, 2022, the United States Patent and Trademark Office (USPTO) consolidated and replaced four legacy search tools with a single Patent Public Search tool. The new tool is intended to streamline the search process for users and to incorporate new, useful features.

The legacy tools that were phased out include:

  • Public-Examiner’s Automated Search Tool (PubEAST)
  • Public-Web-based Examiner’s Search Tool (PubWEST)
  • Patent Full-Text and Image Database (PatFT), and
  • Patent Application Full-Text and Image Database (AppFT).

The new Patent Public Search tool can be accessed here.

Stephen Kunin Named Go To Lawyer for Intellectual Property Law by Virginia Lawyer’s Weekly

Maier & Maier

Maier & Maier partner, Stephen Kunin, has again been named by Virginia Lawyer’s Weekly as a Go To Lawyer for Intellectual Property Law. The selected attorneys were nominated by their colleagues and chosen by a panel from Lawyers Weekly. The full list and individual profiles can be read here.