Kunin: Arthrex & Click-To-Call Highlight Patent Law Cases in 2020

Maier & Maier

As 2020 comes to a close, leading IP experts are taking stock of the year that was and its effect on U.S. patent law. Among these expert opinions is Maier & Maier’s own Steve Kunin, who commented on two of the most significant patent cases this year in Arthrex, Inc. v. Smith & Nephew, Inc. and Thryv v. Click-to-Call.

Thryv v. Click-to-Call, 140 S. Ct. 1367 (April 20, 2020)

“The Supreme Court held that a PTAB determination of whether an IPR petition is timely under 35 U.S.C. § 315(b) cannot be judicially reviewed. The Court, in the majority opinion by Justice Ginsburg, held that § 315(b) time bar determinations are not appealable, vacated, and remanded with instructions for the Federal Circuit to dismiss for lack of jurisdiction. This decision reinforced the Congressional intent to provide the USPTO with broad discretion in making AIA trial institution decisions.”

Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), reh’g denied, 953 F.3d 760 (March 23, 2020

“The Federal Circuit held that USPTO APJs were unconstitutionally appointed under the Appointments Clause. The judges are not “inferior officers” and should have been appointed by the President and confirmed by the Senate. The Court then “fixed” the problem by stripping out the civil servant protections set forth in 5 U.S.C. that prevented the judges from being fired without cause. The case is now before the Supreme Court on certiorari. If the Federal Circuit’s decision is not reversed it will require Congress to enact legislation to correct the problem. The U.S. Government’s position is predicated on the finding that APJs are inferior officers that have been duly appointed.”

As Arthrex is pending before the Supreme court, it may be one of the most influential in 2021 as well. For more commentary on the year in review, see the full article here.

Maier & Maier Named As Best Firm By U.S. News and World Report and Best Lawyers Magazine

Maier & Maier

U.S. News & World Report and Best Lawyers magazine has named it’s 2021 Best Law Firms, and named Maier & Maier among the best in the field.

Maier & Maier was named for its excellence in patent law in Washington, D.C. The firm prides itself on providing the highest possible service to each of its clients with a reknowned expertise for patents and intellectual property as a whole. The recognition comes after years of continued growth and success since its founding in 2006 by brothers, Tim and Chris Maier. The two have practiced for decades both at the USPTO as examiners and in private practice, giving them each unmatched expertise in the field.

The firm firm’s success comes in all facets of patent practice, with noted achievements in prosecution, litigation, and portfolio management. The firm successfully earns over a thousand granted patents for its varied and valued clients each year and prides itself on its corporate friendly and streamlined reporting systems. In the past year, the firm has been heavily involved in PTAB matters, both for petitioners and patent owners.  The firm successfully defended multiple patents from IPR petitions and challenged competitor patents for their clients.

This recognition for the firm comes after both Tim & Chris were recognized by IAM Patent 1000 as some of the most successful IP attorneys in the world, along with fellow Maier & Maier partner, Steven Kunin.

Maier & Maier Secures Sale for Client After Successfully Prosecuting Portfolio of Patents

Maier & Maier

Maier & Maier has officially secured a deal for its clients on a patent portfolio in the gas-flow technology field.

Maier & Maier successfully prosecuted the patent portfolio on behalf of the inventor. With the demonstrated high quality of Maier & Maier’s drafting and prosecution, the inventions drew interest from the purchaser. Maier & Maier was able to efficiently and effectively coordinate the sale transferring the portfolio.

The transaction is the latest example of the high quality service Maier & Maier provides our clients in all IP matters.

IAM Patent 1000 Recognizes Success of Maier & Maier Firm and Its Partners

Maier & Maier

The 2020 IAM Patent 1000 rankings were announced this week, and Maier & Maier was heavily featured among the highest-level experts in the patent field. Both founding partners Timothy and Christopher Maier were honored, along with renowned partner Stephen Kunin.

Per the IAM description honoring the firm, “Christopher Maier and Timothy Maier run a self-titled boutique in Alexandria that is steadily building on its reputation for quality in electrical engineering prosecution, post-grant proceedings and business-complementary counselling. Among their colleagues, Stephen Kunin is often called on to provide expert testimony on patent practice matters, in light of his experience and USPTO insight.”

This recognition comes with the firm’s continued success in both prosecution and litigation, along with any related IP needs its clients may have. The firm successfully earns over a thousand granted patents for its varied and valued clients each year and prides itself on its corporate friendly and streamlined reporting systems. In the past year, the firm has been heavily involved in PTAB matters, both for petitioners and patent owners. The firm successfully defended multiple patents from IPR petitions and challenged competitor patents for their clients.

Timothy Maier and Christopher Maier were all recognized for their success in the national patent law hub of the DC Metro Area, while Stephen Kunin was also listed among the Nationally recognized experts in the field.

USPTO Extends COVID-19 CARES Act Response Deadlines

Maier & Maier

On March 16, the United States Patent & Trademark Office (“USPTO”) announced that  ‘extraordinary’ circumstances for relief at the USPTO would officially include the effects of COVID-19 “coronavirus”. On March 27, the USPTO announced its further relief response with deadline extensions as authorized by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) executed March 27. The announcement identified certain deadlines that would have come between March 27 and April 30, and provided for a 30 day extension.

On April 28, USPTO Director Andrei Iancu officially announced the extension of those deadlines  and the expansion of the affected deadlines. Under the new announcement, certain deadlines occurring from March 27-May 31 are extended to June 1 with a statement of personal effect, rather than the original 30 days. The statement must describe how the deadlines and payments were delayed as a result of a personal effect of COVID-19 on practitioners, applicants, patent owners, petitioners, third party requesters, inventors, or other individual involved including as examples, office closures, cash flow interruptions, inaccessibility of files/materials, personal or family illness, etc. This extension applies to most responses, filings, and requests as listed in the notice with some reserved only for small and micro-entities. The specific affected deadlines and requirements are laid out in the official patent and trademark CARES notices.

The USPTO has adjusted its operations to ensure that fees and documents will continue to be processed through EFS-Web, USPS, and the Customer Service Window. Per the announcement, USPTO interviews and hearings will be conducted virtually until further notice.

Any questions or concerns regarding your applications or other USPTO matters can be brought to us at info@maierandmaier.com.

Western District of Texas Stakes Claim to Top Patent Litigation Forum

Maier & Maier

The close of the first quarter of 2020 means new patent filings totals from across the U.S., with the PTAB and the District of Delaware leading the way at 333 and 174 filings respectively. However, it was the Western District of Texas (WDTX) that made the biggest leap, continuing its surge since Judge Alan Albright was appointed to the bench in late 2018.

The first quarter of 2020 saw 163 patent filings in the WDTX, projecting to over 600 for the year. This comes after totaling only 257 for the entirety of 2019, which was up from 86 in all of 2018, and only 1 in all of 2017. If the trend continues, not only will WDTX eclipse its own total early in Q2, but the year end numbers are likely to continue to balloon and surpass the District of Delaware’s patent filings.

The rise of the WDTX to join the EDTX as a top venue for patent cases emphasizes the importance of a strong Texas presence for patent litigation firms. Maier & Maier’s Texas office, opened just last year in anticipation of the rise, affords the firm the proximity and expert resources necessary to handle the increased filings in the area.

This bump in filings is the result of Albright’s appointment and the subsequent changes he has made to the local rules for patent cases in the WDTX. These changes include a new filing schedule and streamlined Markmen hearings to attract patent filings. Combined with these appealing local rules, Albright’s tendency against transfers and the WDTX’s uncongested docket make the district highly appealing for patent filings, especially for Non-Practicing Entities.

Overall, both district court patent filings and PTAB filings remained steady in comparison to Q1 of 2019. Balancing out the surge in the WDTX, the District of Delaware is on pace to drop for the first time in over five years (only 696 in 2020 compared to 989 in 2019). Despite the drop, the District of Delaware remains a top venue for filings and there is little chance that ends in the near future.

USPTO Announces COVID-19 CARES Act Response And Deadline Extensions

Maier & Maier

The United States Patent & Trademark Office (“USPTO”) has announced its relief response and deadlines extensions relating to the current COVID-19 “coronavirus” as authorized by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) executed March 27.

In the release, USPTO Director Andrei Iancu explained the steps being taken by the USPTO:

“Inventors and entrepreneurs are the lifeblood of our economy, and we recognize that many of them are having difficulty as a result of COVID-19. As a result, we are working to provide as much relief as possible to our stakeholders, consistent with our ability to maintain the USPTO’s fee-funded operations. We are especially mindful of the outsized impact on small businesses and independent inventors, and we have provided additional relief for these groups. Ultimately, our goal is to ensure not only that inventors and entrepreneurs can weather the storm, but that they can also hit the ground running once it passes.”

The patent and trademark CARES adjustments include extensions of 30 days for certain deadlines between March 27 and April 30 with a statement of personal impact. The statement must describe how the deadlines and payments were delayed as a result of a personal affect of COVID-19  on practitioners, applicants, patent owners, petitioners, third party requesters, inventors, or other individual involved including as examples, office closures, cash flow interruptions, inaccessibility of files/materials, personal or family illness, etc. This extension applies to most responses, filings, and requests as listed in the notice with some reserved only for small and micro-entities.

These relief measures expand on the USPTO’s previous relief announcement on March 16 providing that the coronavirus outbreak was an “extraordinary situation”  within the meaning of 37 CPR 1.183 and 37 CPR 2.146 and that the fee associated with petitions to revive under 37 CPR l .17(m) will be waived.

The USPTO has adjusted its operations to ensure that fees and documents will continue to be processed through EFS-Web, USPS, and the Customer Service Window. Per the announcement, USPTO interviews and hearings will be conducted virtually until further notice.

Patent related concerns can be brought to the USPTO at their designated email address for the issue, Covid19PatentsRelief@uspto.gov.

Arthrex: Federal Circuit Rejects En Banc Rehearing On PTAB Judge Constitutionality

Maier & Maier

The Federal Circuit has denied the request for rehearing on their Arthrex decision from this past fall. As Maier and Maier’s own Steven Kunin describes here, this rejection sets up a probable grant of certiorari on the issue from the Supreme Court.

“The split among the judges provides a roadmap for a probable Supreme Court grant of a petition for certiorari to resolve the constitutionality of the appointment of PTAB judges to decide AIA trial cases.”

Steve goes on to lay out the dissent’s roadmap for issues in the Supreme Court review:

“Title 5’s protections for government employees are desirable and should not be eliminated without Congressional authorization. The USPTO can fix the problem by use of a statutory authorized panel (i.e., the Director, the Deputy Director, and the Commissioner of Patents). Prospective application of the remedy only is wrong. Retroactive application of Arthrex remedies the harm caused by the violation of the Appointments Clause. The original panel’s conclusion that PTAB judges are principal officers is highly questionable. The APJs are really inferior officers because the Director has substantial power over the PTAB, such as ‘to issue binding policy guidance, institute and reconsider institution, personally choose which APJs sit on AIA trials panels, single-handedly designate or de-designate any final written decision as precedential, and convene a panel of three or more members of his choosing to consider rehearing any Board decision’ and the ‘ability to discipline or remove APJs in a constitutionally significant manner.’”

Until the Supreme court has their final say, the USPTO awaits word on what could force significant changes to their operations.

New Rules For Proving Unintentional Delay At USPTO

Maier & Maier

On March 2, 2020, the USPTO published a new notice in the Federal Register clarifying their practice regarding unintentional delay.

“The United States Patent and Trademark Office (USPTO) is clarifying its practice as to situations that will require additional information about whether a delay in seeking the revival of an abandoned application, acceptance of a delayed maintenance fee payment, or acceptance of a delayed priority or benefit claim was unintentional.”

Effective immediately, the USPTO will now require additional information about the unintentional delay from the applicant seeking to:

  1. revive an application which has been abandoned for more than two years;
  2. file a maintenance fee on a patent which has been expired for more than two years
  3.  claim priority or a benefit for an application more than two years after such claim was due.

The USPTO notice also provides that the USPTO may require additional information to any other situation where the unintentional nature of a delay is in question.

The additional information will serve to demonstrate that the entire duration of the delay was unintentional. If any portion of the delay was intentional, the delay does not qualify as unintentional and the request will not be accepted. MPEP 711.03(c).

With the increased scrutiny for revival, diligent care by applicant and practitioners alike takes on heightened importance to adequately protect your patent rights.

Federal Circuit Uses Reference Number Conventions In Claim Construction

Maier & Maier

On February 21, 2020, the Federal Circuit remanded Ironworks Patents LLC v. Samsung Elecs. Co. back to the Northern District of California due to its flawed claim construction below. The panel of judges found the term ‘camera unit’ to have been misinterpreted to require a battery and external interface device over the specification and convention of the reference numbering.

At issue for the camera unit was U.S. Pat. Nos. 6,427,078 directed to hand-held personal devices and the potential infringement of Samsung mobile phones. Because Samsung’s accused devices did not include a battery or external interface device, the lower court’s claim construction resulted in the two sides stipulating to non-infringement before Samsung took the construction to the Federal Circuit on appeal.

Ambiguity of the Claims

In their analysis of the term ‘camera unit’, the Federal circuit appropriately first looked to the claims themselves. Claim 1 provides that a ‘camera unit’ “comprises a camera, optics, means for processing and for storing, at least one memory unit, and an output”. Claim 36 provides a ‘camera unit’ as “having at least one memory unit.” Finally, claim 73 explains that the ‘camera unit’ “comprises optics, an image sensor, and means for processing and storing”. The various descriptions of the term in each independent claim led the Federal Circuit panel to the specification for clarity.

In Light of the Specification

The Federal Circuit found that the specification supported Ironworks’ construction excluding the battery and external interface from the camera unit. The specification “consistently refers to camera unit 14 which includes camera arrangement 14o (comprising camera 14a and optics 14b) and image processing unit 14c”.

Samsung argued that the description that “the structure of both camera card 15 and camera unit 14 conforms to the block diagram shown in Fig. 5” requires that everything shown in Fig. 5 must be included as part of the ‘camera unit’. The Federal Circuit was not persuaded:

“Figure 5 uses the same numbering convention as the rest of the specification, suggesting camera unit 14 is comprised of elements numbered as 14 (i.e., camera arrangement 14o, which comprises camera 14a and optics 14b, and image processing unit 14c). See ’078 patent at 4:25–29. Other elements in Figure 5 are numbered differently, such as battery 21 and interface 22, suggesting they are not part of the camera unit 14. See id. In fact, the description concerning Figure 5 explains that “camera card 15” (as opposed to “camera unit 14”) includes battery 21 and interface 22. Id. at 4:25–29. On the other hand, a camera unit as expressly defined in the specification includes a camera, optics, and an image processing unit.”[1]

Takeaway

In the instant case, the narrowed interpretation of camera unit increases the likelihood that Ironworks will win its infringement case for those claims. On a practical level, this emphasis on reference number convention emphasizes the need for consistent and clear drafting in the initial filings and the necessary attention to detail needed to adequately protect your innovations.

[1] Ironworks Patents LLC v. Samsung Elecs. Co., 2020 U.S. App. LEXIS 5269 (Fed. Cir. Feb. 21, 2020)