Maier & Maier Obtains Grant of Summary Judgment of Invalidity Based on §101 Related to Wearable Technology

April 5, 2024 – Maier & Maier PLLC is pleased to report that we secured a victory for our client Firstbeat Technologies OY in a case involving a heart rate measuring apparatus incorporated into wearable technology. The case was originally filed by Polar Electro OY in the District of Delaware on November 7, 2011, but was eventually transferred to the District of Utah. In December of 2021, we argued our Motions for Summary Judgment (“MSJ”) before Judge Waddoups. Today, the Court issued a decision granting our MSJ that the claims of U.S. Patent No. 6,537,227 are invalid as abstract. See 1:17-cv-00139-CW, Dkt. 498. The case has now been dismissed and Judgment has been entered in favor of our client Firstbeat Technologies OY.

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. This victory comes on the heels of another favorable decision in an ITC 337 Investigation last month.

About Maier & Maier PLLC

Maier & Maier’s litigation team has 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.


Timothy Maier Recognized as one of Washington D.C.’s Top Lawyers 2024

Tim Maier was recently recognized based on peer review by Washington D.C.’s Top Lawyers Washington DC 2024 Edition.


Perspectives on USPTO Rulemaking

A Perspective on USPTO Rulemaking Following In re Chestek, by Maier & Maier partner Robert Bahr, has been published on IP Watchdog. The article discusses the notice-and-comment rulemaking procedures practiced by the USPTO and the impact of the recent Federal Circuit decision in In re Chestek. You can read the full article here.


Maier & Maier Recognized for New Addition by Managing IP

Managing IP has published an article highlighting the addition of key former government officials to three top tier firms, including Finnegan, Maier & Maier, and O’Melveny.

To read the article, click here.


Recent Spotlight on Successful Appellate Review

Among the bases for patent term adjustment in section 154(b) is “appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability” (clause (iii) of section 154(b)(1)(C)). Section 154(b)(1)(C) or the “C” provision also provides for delays due to derivation/interference proceedings or imposition of a secrecy order. The Federal Circuit recently issued two decisions on the application of the “successful” appellate review provision in section 154(b)(1)(C)(iii). The first is Chudik v. Hirshfeld, 987 F.3d 1033 (Fed. Cir. 2021), and the second is SawStop v. Vidal, 48 F.4th 1355 (Fed. Cir. 2022).

In Chudik, the applicant responded to a final rejection with a request for continued examination, and then several rounds of rejection, appeal, and reopening ensued, with the final reopening leading to an allowance of the application. The applicant felt that the examiner’s ultimate decision to allow the application after the appeal should have led to patent term adjustment as successful appellate review, despite the absence of a decision in the review by the Patent Trial and Appeal Board (Board) or a court. The Federal Circuit in Chudik, however, held that the words of section 154(b)(1)(C)(iii), “in their most natural meaning when applied to an examiner’s unpatentability ruling, require that the patent issue under a Board decision that reversed the examiner’s unpatentability ruling or under a court decision that reversed a Board unpatentability ruling in the matter.” 987 F.3d at 1039-40.  Thus, since the Chudik appeal did not result in a decision by the Board or a court, the Chudik patent was not issued under a decision in the review reversing an adverse determination of patentability under the “C” provision.

Significant in Chudik is that the appeals and reopenings took place after the filing of a request for continued examination. Another basis for patent term adjustment is the failure to issue a patent within three years (section 154(b)(1)(B) or the “B” provision). This “B” provision, however, excludes time consumed by continued prosecution under section 132(b) (requests for continued examination) in determining the delay in issuing the patent under the three-year “B” provision (section 154(b)(1)(B)(i)). Absent the filing of a request for continued examination, the time consumed by the reopenings would have been considered in determining PTA under the three-year “B” provision. The filing of the request for continued examination, however, resulted in the time between the filing of the request for continued examination and the mailing of the notice of allowance not being considered under either the three-year “B” provision or the appellate review “C” provision.

The takeaway from Chudik is to be mindful of the effects that filing any request for continued examination will have on patent term adjustment under the three-year “B” provision. The Federal Circuit even felt the need to emphasize this point, stating—

The unavailability of B-delay for nearly two years (655 days) of delay in the PTO illustrates what applicants should understand when deciding whether to request a continued examination rather than take an immediate appeal. The potential benefit of immediate re-engagement with the examiner through such continued examination comes with a potential cost.

987 F.3d at 1041.

SawStop involved two patents. In the first SawStop patent, the appellate review resulted in a Board decision that the examiner’s rejection was inadequate, but that the claim was still unpatentable for reasons provided by the Board in a decision designated as containing a new ground of rejection.  Further prosecution of the application included several amendments to the claim, including via a request for continued examination, before the application was ultimately issued.  In the first patent, SawStop sought patent term adjustment based upon the Board not upholding the rejection as set forth by the examiner.  The second SawStop patent involved prior art and provisional obviousness-type double patenting rejections of two claims.  The Board upheld the rejections of the first claim but reversed the rejections of the second claim.  SawStop commenced a civil action under section 145 (considered “appellate review” for purposes of section 154(b)(1)) and obtained a reversal of the prior art rejection of the first claim, but did not seek review of the provisional obviousness-type double patenting rejections. SawStop addressed the provisional obviousness-type double patenting remaining after the civil action by canceling the first claim (rather than filing a terminal disclaimer).  In this second patent, SawStop sought patent term adjustment based upon reversal of the prior art rejection of the first claim in the civil action (the PTO accorded “C” provision patent term adjustment for the Board’s reversal of the rejections of the second claim).  The Federal Circuit held that the plain language of “issued under a decision in the review” in section 154(b)(1)(C)(iii) “means that at least one claim must ‘issue[] under’ the mandate of the appellate decision [, which at] a minimum, . . . means that at least one claim that ‘issued’ must have been analyzed by the Board or . . . Court that issued the ‘decision in the review” and that this “statutory requirement is not met if the claim that ultimately issues differs substantively from the claim under review.”  48 F.4th at 1362.  The claim in the first SawStop patent differed substantively from the claim under review by the Board (due to the subsequent amendment) and the claim in the second SawStop patent was not under review in the civil action (the claim under review was ultimately canceled).  Thus, neither SawStop patent was issued under a decision in the review reversing an adverse determination of patentability under the “C” provision.

SawStop also could not take advantage of the three-year “B” provision for the delays due to this appellate review.  In addition to the exclusion for time consumed by requests for continued examination, the “B” provision has an exclusion with respect to the events covered in the “C” provision, in that time consumed by appellate review (regardless of outcome), as well as time consumed by derivation/interference proceedings or imposition of a secrecy order, is not included in determining the delay in issuing the patent under the three-year “B” provision (section 154(b)(1)(B)(ii)).

One takeaway from SawStop is that it may not be enough for the Board or court decision to reverse all of the rejections of at least one claim for the appellate review to be considered “successful” for purposes of “C” patent term adjustment.  Rather, under SawStop, the “C” appellate review provision requires that the claims, or at least one of the claims on appeal, be patentable such that there is no need for any substantive amendment subsequent to the Board or court decision.  Thus, applicants should ensure that at least one of the claims on appeal is patentable without substantive amendment before any appeal to the Board. Another takeaway from SawStop is that applicants need to consider the possible patent term adjustment consequences before deciding to defer addressing double patenting rejections (whether provisional or not) until after the resolution of other patentability issues.

Taking Chudik and SawStop together, where patent term is important and the need for an appeal is contemplated, applicants need to prosecute the application with an eye to ensuring that claims are patentable – without the need for further substantive prosecution – before any final rejection is issued in the application.  This should limit the need for any request for continued examination (RCE) before (or after) appeal, as well as the need to substantively amend the claims following a “successful” appeal to the Board or courts.


Robert W Bahr Joins Maier & Maier

Maier & Maier PLLC is proud to announce its newest addition to the firm, Robert Bahr. Mr. Bahr joins Stephen Kunin as the second Maier & Maier Partner to have previously held the prestigious position of Deputy Commissioner for Patent Examination Policy at the United States Patent and Trademark Office(USPTO).

Mr. Bahr enjoyed a long and distinguished career at the USPTO having been intimately involved in nearly all patent-related rule-making at the USPTO since 1995. Mr. Bahr brings with him an expertise on USPTO patent policy, practice, and procedure that makes him a highly sought consultant and expert witness on such matters.

Maier & Maier is excited for a bright future with the addition of Mr. Bahr to our team. To inquire about Mr. Bahr’s services, please reach out to us at info@maierandmaier.com or 703-740-8322 for a consultation.


Maier & Maier’s Stephen Kunin Discusses New Year’s Wishes with IPWatchdog

Maier & Maier partner, Stephen Kunin, was featured in IPWatchdog.com’s post highlighting New Year wishes from top IP practitioners. Mr. Kunin’s New Year’s wish stated:

“I would be pleasantly surprised and thrilled if Congress can resolve the patent subject matter eligibility problems that have been created by the Supreme Court and Federal Circuit. At this point I don’t see a solution coming from the federal courts or the USPTO. I hope that Senators Tillis and Coons will be able to overcome the roadblocks that are hampering a legislative solution that provides clarity in the law and promotes innovation.”

A majority of the New Year wishes focused on restoring strength to the US patent system and bringing clarity to the patent subject matter eligibility quagmire created by the courts.

We at Maier & Maier wish you a Happy New Year and we will keep you updated on key developments in US patent law throughout 2024!


Fed Circuit Overturns $2.18-billion-dollar Judgement in VLSI Technology LLC v. Intel Corporation

In 2021, VLSI brought a patent infringement case against Intel seeking $3 billion in damages in the Western District of Texas. A jury decision found that Intel had infringed 2 of VLSI’s patents and awarded VLSI a $2.18 billion dollar settlement for said infringement.

The 2 patents at issue were US Patent No. 7,523,373 “Minimum Memory Operating Voltage Technique” and US Patent No. 7,725,759 “System and Method of Managing Clock Speed in an Electronic Device”. Intel’s accused products included various Haswell and Broadwell Microprocessors. The jury found that Intel infringed the ‘373 patent on the basis of literal infringement and infringed the ‘759 patent but only under the doctrine of equivalents.

Generally speaking, the doctrine of equivalents provides a limited exception to the principle that claim meaning defines the scope of rights granted by a patent, the inquiry required by the doctrine is “Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?” (see MPEP 2186). However, courts have often emphasized “that the doctrine of equivalents is the exception, however, not the rule,” Eli Lilly & Co. v. Hospira, Inc., 933 F.3d 1320.

Intel appealed the decision to the U.S. Court of Appeals for the Federal Circuit, arguing that Intel did not infringe either of the patents, and specifically with regards to the ‘759 patent, that VLSI improperly invoked the doctrine of equivalents as (a) they were barred by prosecution history estoppel from invoking the doctrine of equivalents, and (b) VLSI’s evidence of equivalents was legally insufficient for a showing of infringement. Additionally, Intel argued that even if they had infringed the patents, the damages awarded with respect to the ‘373 patent were improper.

In a precedential decision released December 4, 2023, the Federal Circuit partially agreed with Intel’s position and reversed the earlier jury decision in part and affirmed in part. First on the ‘373 patent, while the court upheld the finding of infringement on the ‘373 patent, the court found Intel’s arguments with respect to damages to be persuasive. Therefore, while the infringement finding will be upheld, the case will be remanded for another hearing exclusively on damages.

On the ‘759 patent the court disagreed with Intel’s argument that VLSI was barred from bringing up doctrine of equivalents due to prosecution history estoppel but agreed that the evidence of equivalence VLSI provided was legally insufficient to form a verdict of infringement. Specifically, the ‘759 patent claim required “a first master device coupled to the bus, the first master device configured to provide a request to change a clock frequency of a high-speed clock in response to a predefined change in performance of the first master device”. Intel however showed that for their devices the equivalent cores did not request to change frequency based on changes the cores identified in their own performance, because only the software running on the (receiving) power control unit, based on observations of system conditions, called for a frequency change.

VLSI’s argument under the doctrine of equivalents attempted to accommodate this discrepancy by stating that Intel’s combination of (a) the core and (b) the software module on the power control unit that actually called for the frequency change, were equivalent to the first master device required by the claims. In order for this argument to meet the burden required by the doctrine, the court stated VLSI’s testimony needed to show “that the core and certain code, which resides on the power control unit, together perform substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed ‘first master device”.

VLSI’s testimony “contain[ed] no meaningful explanation of why the way in which the request is made is substantially the same as what the claim prescribes. The question [was] not whether, in a schematic drawing used to illustrate functions, an engineer could ‘draw[] . . . [a] line’ in different places. The question is about actual functionality-location differences. It is not enough, moreover, to say that the different functionality location placements were a ‘design choice.” Therefore, VLSI’s testimony was legally insufficient to support a showing of infringement under the doctrine of equivalents.

The court’s holding here may have significant impact on the use of doctrine of equivalents in patent infringement litigation going forward, as the court increasingly emphasizes that the doctrine is a narrow doctrine, only to be applied in “exceptional” circumstances.


New USPTO Final Rule Establishes Separate Design Patent Bar

On November 16, 2023, the USPTO published a new final rule establishing the creation of a separate design patent bar. The final rule follows up on a notice of proposed rulemaking first published in May 2023 where the separate design patent bar was first contemplated. Currently there is only one patent bar which oversees everyone who practices in patent matters before the USPTO, regardless of whether they practice in design patents, utility patents, plant patents, or a combination thereof.

Traditionally, individuals seeking registration to practice in patent matters before the USPTO, including in utility, plant, and design patents, must be admitted to the patent bar. Eligibility for admission required an accredited college or university degree in limited technical subject areas (or an equivalent). These subjects are strictly limited to certain science and engineering degrees, such as biology, biochemistry, biomedical engineering, chemical engineering, computer engineering, computer science, electrical engineering, molecular biology, and other such degrees.2 This requirement applied regardless of the type of patent application the prospective practitioner was seeking to prosecute.

The USPTO points to an increasing number of design patent applications as the reason why they are implementing this new license. According to Kathi Vidal, Director of the USPTO, “Year over year we continue to receive more design patent applications, illustrating the importance of design protection to industry and our economy”. Vidal further stated, “Expanding the admission criteria of the patent bar encourages broader participation and keeps up with the ever-evolving technology and related teachings that qualify someone to practice before the USPTO.”

The new design patent bar would allow for applicants with a bachelor’s, master’s, or doctorate degree in industrial design, product design, architecture, applied arts, graphic design, fine/studio arts, art teacher education, or an equivalent to take a modified patent bar exam to practice exclusively with regards to design patent cases. Design practitioners registered under the separate design bar will be required to place the word “design” (in any format) adjacent to their handwritten signature as well as adjacent to the last forward slash of their S-signature in order to indicate their design patent practitioner status.

The new rule will have no direct impact on patent practitioners already licensed to practice before the USPTO. Additionally, the existing patent bar exam remains unchanged, and applicants passing that exam will still be able to practice on all patent matters, including design patents. Professional and knowledgeable patent counsel that can navigate the different types of patent applications and practices are more important than ever. Maier & Maier has practitioners knowledgeable in all forms of patent practice, including attorneys with years of design patent experience.


USPTO Launches New Semiconductor Fast-Track Pilot Program

In order to support the Creating Helpful Incentives to Produce Semiconductors (CHIPS) Act of 2022 the USPTO announced on December 1, 2023, a new Semiconductor Technology Pilot Program for expediting the examination of patent applications for innovations that “increase semiconductor device production, reduce semiconductor manufacturing costs, and strengthen the semiconductor supply chain.” The CHIPS Act provided $280 billion in federal funding to encourage domestic production of semiconductor patents in the US, as well as to fund research and development projects.

Under the Semiconductor Technology Pilot Program qualifying patent applications will be advanced out of turn for examination until a first Office action is issued, which can greatly reduce the time spent waiting until examination of the patent begins. In order to enter the program a petition to make special must be filed, though no petition fee is required for qualifying applications, and the applicant is not required to satisfy the normal requirements of the accelerated examination program or the prioritized examination program. This program is similar to other recently implemented technology pilot programs, for example the Climate Change Mitigation Pilot Program, which went into effect in mid-2022.

To be eligible an application must be (a) a non-continuing original utility nonprovisional applications or (b) Original utility nonprovisional applications that claim the benefit of the filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) of only one prior application that is either a nonprovisional application or an international application designating the United States. The pilot program is accepting petitions until December 2, 2024, or until a total of 1,000 applications have been granted special status under the program, whichever happens first.

This pilot program is exemplary of the USPTO’s push toward using programs to encourage specific kinds of innovation and patent applications. Professional and knowledgeable patent counsel who can help navigate these programs and advise you as to what options there are to take advantage of in your particular situation are more important than ever to help clients navigate the ever changing programs of the USPTO.