To Qualify as a Joint Inventor – HIP, Inc. v. Hormel Foods Corp., 22-1696 (Fed. Cir. 2022)

Earlier this year, in an opinion by Judge Lourie the Court of Appeals for the Federal Circuit overturned a district court decision finding that David Howard, a representative of HIP, should be added as a joint inventor on Hormel’s U.S. Patent 9,980,498 (the ‘498 patent). The relevant independent claims, 1 and 5, describe methods of making precooked bacon and meat pieces (respectively) using hybrid cooking systems.

Hormel’s relationship with HIP began in 2007 when they entered into a joint agreement to develop an oven to be used for a two-step cooking process. During the first three months of this process Howard disclosed an infrared preheating concept which became the core issue on appeal. Hormel later moved testing to its own research facility and finalized their process, filing the ‘498 patent thereafter.

HIP suit against Hormel alleged that Howard was either the sole or joint inventor. The district court found him to be a joint inventor based on his contribution of the infrared oven preheating concept which appears in independent claim 5. Hormel raised two issues on appeal, only one of which was necessary for reaching the judgment.

“To qualify as a joint inventor, a person must make a significant contribution to the invention as claimed” based on the Pannu three part test: (1) contribution in some significant manner to the conception of the invention; (2) contribution to the claimed invention that is not insignificant in quality when measured against the dimension of the full invention; and (3) did more than merely explain to the actual inventors some well-known concepts and/or the current state of the art. All three Pannu factors must be met for one to be a joint inventor.

The Court reached its decision based solely on the insignificance of Howard’s contribution in light of the invention in its entirety, negating the second Pannu factor. First, Howard’s infrared preheating contribution is mentioned only once in one of the claims, claim 5, as one of three possible alternative methods. In contrast, the use of microwave ovens as developed by Hormel is featured repeatedly thought the patent. Further, the examples and figures not once describe or depict the use of an infrared oven, again focusing on microwave ovens.

In summary, HIP’s favorable district court ruling that Howard was to be added as joint inventor of the ‘498 patent was overturned based on the overwhelming insignificance of his infrared oven preheating contribution in comparison to the overall invention as described in the patent. Inventors should be on notice that to secure their inclusion as joint inventors their contributions must appear frequently or prominently in both the figures and text of a patent.


Design Day 2023: Highlights and Caselaw

On May 4th, 2023, the United States Patent and Trademark Office (USPTO) hosted its annual Design Day event. As part of the event, speakers outlined design patent practice as well as discussed key developments in design patent law from 2022.

Karen Young, Director of Technology Center 2900 at the USPTO provided an update on the state of the Design Patent Technology Center. In recent years, design patents have continued to grow in popularity. In FY2021, the number of design patents filed increased by 17.6% to a total of 54,201 applications, a new record for the USPTO. FY2022 did not bring with it a regression to the mean, as the number of filings decreased by less than 1%, still north of 54,000 applications. Of these filings, the top three classes for design patents were D6, D12, and D14 (Furnishings, Transportation and Equipment respectively).

The average time before first action after filing was 17 months, with an average total pendency of 21.3 months. The number of design patents issued in FY2022 decreased slightly from an all time high of over 35,000 in 2020, but remained strong. As anticipated, Hague applications have increased however with China joining, up from 2,248 to 2,677 applications.

Later in the day, several significant decisions from the Federal Circuit, the District Courts, and the Patent Trial and Appeal Board were discussed.  We highlight those cases here:

LKQ Corporation v. GM Global Technology Operations

In January of this year, a panel court of the U.S. Court of Appeals for the Federal Circuit ruled on two cases brought against GM by alternative car parts manufacturer LKQ Corp who presented a novel argument that the longstanding tests for obviousness of design patents were implicitly overruled by the Supreme Court over fifteen years ago. LKQ Corporation v. GM Global Technology Operations, Case No. 21-2348 (per curiam) (Lourie, J., concurring) (Stark, J., concurring) (hereinafter the “fender” case); LKQ Corporation v. GM Global Technology Operations, Case No. 22-1253 (per curiam) (Lourie, J., concurring) (Stark, J., concurring) (hereinafter the “skid bar” case).

After failure to renegotiate a licensing agreement for several GM auto part design patents to LKQ, GM notified LKQ of pending infringement. In order to continue manufacturing and selling these parts without potential liability, LKQ filed for post-grant review to challenge the validity of GM’s U.S. Patent D797,625 in the “fender” case and GM’s U.S. Patent D855,508 in the “skid bar” case.

The USPTO Patent Trial and Appeal Board found in both cases that LKQ failed to show anticipation or obviousness where the ordinary observer includes retail and commercial purchasers of replacement parts. LKQ’s appeal to the Federal Circuit presented two arguments. First, that the Board erred in their selection of the ordinary observer by excluding purchasers of whole cars for which the patented parts are used in manufacturing. This alleged error would then invalidate the Board’s analysis of anticipation. Second, LKQ argues that the longstanding In re Rosen, 673 F.2d 388 (C.C.P.A. 1982) and Durling v. Spectrum Furniture Co., Inc., 101 F.3s 100 (Fed. Cir. 1996) combined test for obviousness was implicitly overruled by the Supreme Court in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007).

In both cases, the Appeals Court panel dismissed LKQ’s ordinary observer and anticipation argument. Federal Circuit precedent has repeatedly recognized that the ordinary observer may include the buyer of single component parts of a later-assembled product and is not restricted to solely the buyer of that later-assembled product.

The Court in its majority opinion, and Judge Lourie’s concurrence, refused to overrule Rosen and Durling based on KSR, but note a key caveat to their authority. In KSR the Supreme Court rejected “rigid mandatory formula[s]” as limits on obviousness for utility patents, instead adopting a flexible approach. The Court provided several reasons for rejecting LKQ’s argument that KSR implicitly applies to design patent obviousness and therefore invalidates the allegedly too rigid Rosen and Durling test. First, the Rosen and Durling test and design patents in general are not mentioned whatsoever in KSR. Further, KSR was decided over fifteen years ago and has never been applied to design patents. Additionally, Judge Lourie’s concurrence points to the different considerations applied in analysis of design and utility patent obviousness: generally objective properties are considered for utility patents while generally subjective properties are considered for design patents. KSR does not address any subjective obviousness considerations and therefore should not be applied to design patents.

Although the majority and concurring opinions present a strong position against application of KSR to design patents, the Court acknowledged that as a panel they lack authority to overrule existing precedent without a clear directive from the Supreme Court. LKQ’s novel argument may have failed on appeal but there remains a possibility that KSR’s rejection of rigidity will apply to design patents in the future by overruling Rosen and Durling.

 

Wepay Global Payments LLC Cases

Wepay Global Payments LLC v. PNC Bank N.A. No. 2:22-CV-00592-MJH(W.D. Pa. June 1, 2022)

Synopsis:

Wepay brought suit against PNC bank, claiming they were infringing on their patent on a graphical user interface consisting of three squares and a depicted price of $0.00.

Holding:

“[A] side-by-side comparison of WPG’sAsserted Design and PNC’s Accused Design demonstrates that they are ‘sufficiently distinct’ and ‘plainly dissimilar’ such that no reasonable factfinder could find infringement. Any similarity between the two designs is limited to basic geometric shapes, but with notable differences in shape size and spacing such that no ordinary observer would mistake the Accused Design with the Asserted Design or vice versa.”

Early Warning Services, LLC and Samsung Electronics Co., Ltd. v. Wepay Global Payments LLC (PTAB February 9, 2023)

Synopsis:

Both Early Warning Systems (EWS) and Samsung Electronics (Samsung) requested review of the Wepay ‘702 patent mentioned above. In response, Wepay filed statutory disclaimers to narrow the scope of their ‘702 patent.

Holding:

Wepay, by disclaiming all figures and embodiments described in the ’702 patent, disclaimed the entire scope of the sole design claim at issue. While statutory disclaimers may help narrow a claim that may be invalid, they may also lead to adverse judgments before the PTAB, who may even issue a Final Written Decision finding the challenged claim unpatentable.

 

ABC Corp. v Partnership and Unincorporated Associations, 52 F.4th934 (Fed. Cir. 2022)

 Synopsis:

ABC Corp. brought suit claiming infringement of their hoverboard design patents. Their expert report claimed that the prior art was vastly different and thus the patent enjoys a very broad scope. The district court agreed and issued a temporary restraining order (TRO) followed by a preliminary injunction. The decision was appealed to the Federal Circuit.

Holding:

At appeal, the CAFC found the district court erred in multiple aspects. 1) The district court applied the wrong legal standard 2) The district court did not conduct ordinary observer analysis through the lens of the prior art. 3) the court failed to apply the ordinary observer test on a product-by-product basis, considering significant differences in the accused products themselves. 4) The language of the injunction itself was overbroad. It needed to be limited to products that were actually found to infringe.

 

Think Green Ltd. V Medela AG, No. 21 C 5445 (N.D. Ill. Oct. 7, 2022)

 Synopsis:

Think Green Ltd. filed suit claiming infringement by Medela AG for its silicone breast milk collector. The figures contained in Think Green’s patent were computer-generated images instead of the usual line drawings or photographs. With drawings, an inventor intending not to claim any particular material type would leave the drawings free of anything but contour lines, thereby claiming both an opaque and transparent surface. Photographs however strictly limit the design claim to the specific incarnation depicted in the photograph. Medela’s collector, while structurally similar to Think Green’s, is transparent and the computer-generated patent drawings were opaque.

Holding:

The court found that the computer-generated image constituted a choice of surface material. “Even if Medela’s product were exactly the same as Think Green’s design in all other aspects, . . . an ordinary observer would not find the translucent object to be substantially the same as the opaque object. Opaque and translucent objects are categorically different such that they are ‘plainly dissimilar’ and could not be confused by an ordinary observer.”

 

Ex parte Grede et al. (PTAB September 29, 2022)

Synopsis:

In ex parte Grede, a design patent application by Kim Kardashian’s company was denied by an examiner as anticipated from prior art. The examiner relied on a figure depicting only “a fragmentary, front view of the right stocking unit.”

Holding:

On appeal, the PTAB emphasized that the ordinary observer test is used by considering the design as a whole, not in fragments. While relying on less than the entire claim may be appropriate when the applicant has chosen to claim only a portion of the article of manufacture, here the entire article is being claimed. Thus, the denial based on anticipation was inappropriate. An examiner may not cite only a portion of a reference product against the product as a whole. The examiner must compare either two designs for articles of manufacture or two portions of a design.

 

Ex parte Timothy Smith (PTABJanuary 31, 2022)

Synopsis:

In ex parte Timothy Smith, an examiner denied a claimed GUI design based on a composite illustration of 3 independent designs. The resulting image differed from the claimed design only in proportions. The examiner argued that “mere variations in orientation, dimension, proportion, and spacing do not make the claimed design sufficiently different in ornamental appearance.”

Holding:

“To the extent the Examiner is attempting to extract from King a hard and fast rule that all changes in dimension are per se unpatentable advances, the Examiner’s reliance upon this authority is misplaced. To the extent the Examiner is attempting to extract from Stevens a hard and fast rule that all changes in proportion are per se unpatentable advances, the Examiner’s reliance upon this authority is misplaced.”

 

Ideavillage Products Corp. v Konkinklijke Philips N.V

Synopsis:

Ideavillage filed a Petition requesting post-grant review of Konkinklijke Philips N. V’s ‘346 design patent. They presented 42 separate obviousness challenges using unique combinations of references presented, but failed to provide sufficient separate analyses for each combination.

Holding:

“None of the 42 obviousness challenges advanced in the Petition is supported by an adequate analysis. . . In particular, none sufficiently discusses both the differences between the claimed and prior art designs and how any primary reference would have been modified (alone or in view of any other reference) to have the same visual appearance as the claimed design.” The proper steps to an obviousness challenge are as follows:

  • Find a primary reference (a single reference, something in existence, the design characteristics of which are basically the same as the claimed design).
    • BUT also provide an explanation as to how the primary reference is basically the same as the claimed design despite particular differences between the two designs.
  • Use secondary reference(s) to modify the primary reference to create a design that has the same overall visual appearance as the claimed design.
    • BUT also provide an explanation as to how and why the primary reference(s) would have been modified to arrive at a design that has the same overall visual appearance as the claimed design.

For more information and analysis regarding any of these cases and the impact they may have on your IP rights, please feel free to reach out to Maier & Maier.


Maier & Maier Defends Continually, Ltd. Against Allegations of Patent Infringement By Disintermediation Services, Inc. in the Western District of Texas

On June 22, 2022, Disintermediation Services, Inc. (“Disintermediation”) filed a Complaint alleging that Continually Ltd. (“Continually”) infringed U.S. Patent Nos. 11,240,183, 11,336,597, and 11,349,787, which purportedly cover two-way real time communication systems that allow asymmetric participation in conversations across multiple electronic platforms. The case was filed in the Western District of Texas, Waco Division, and was assigned to Judge Albright.

Maier & Maier represented Continually in the lawsuit, which is amongst a number of cases in which the firm has appeared in different districts in Texas. The parties were able to resolve the dispute and the case was voluntarily dismissed with prejudice on April 17, 2023.

Maier & Maier continues to enjoy consistent and favorable results in its litigation matters. The firm has obtained favorable results when defending clients accused of infringement by competitors as well as cases brought by patent assertion entities.

The Continually dismissal follows others in which Maier & Maier has helped defendants obtain efficient resolutions, including PASCO Scientific v. Vernier Software & Technology, (D.Or.), Aperture Net LLC v. Electric Mirror, Inc. (W.D.Wash.), Altus Partners, Inc. v. Altus Market Access, Inc. (E.D.Cal.), 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., D.Tex., 6:22-cv-01145
  • Concrete Support Systems, LLC v. Bond Formwork Systems, LLC, W.D.Tex., 1:20-cv-01150
  • Transcend Shipping Systems, LLC v. Maersk, Inc. et al., D.Tex.,6:20-cv-01122-ADA
  • Advanced Cartridge Technologies, LLC v. Mark Collier et al., D.Tex., 1:21-cv-00657-ELY
  • AGIS Software Development LLC v. Xiaomi Corporation et al., E.D.Tex., 2:22-cv-00450 and 337-TA-1347 (International Trade Commission)
  • E9 Treatments, Inc. v. KopMan LLC, S.D.Tex., 2:22-cv-00172
  • Wave Linx LLC v. MeetingOne.com Corp., D.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., D.Tex., 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, D.Del., 1:21-cv-00970-MN
  • Freetek Holdings, LLC v. Extollo Communications, W.D.Wash. 2:21-cv-01021-TSZ
  • Sykes v. Nash Distribution, Inc., E.D.Va.,1:21-cv-00897-TSE-MSN
  • Juul Labs., Inc. v. Vaperistas LLC, N.D.Ill., 1:20-cv-04092 and 337-TA-1211 (International Trade Commission)
  • Lander Enterprises, LLC v. iSonic Inc., D.Conn., 3:20-cv-01693
  • Thomas A. Person v. Cigar Reserve LLC et al., D.Ind., 4:20-cv-00212

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

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 CommunicationsD. Wash. 2:21-cv-01021-TSZ
  • Sykes v. Nash Distribution, IncEDVA,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

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 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

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

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

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

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.