Arthrex: Supreme Court Upholds PTAB Judges

Maier & Maier

After facing extreme uncertainty at the Federal Circuit, the Patent Trial and Appeal Board’s (“PTAB”) judges have avoided calamity as the Supreme Court upheld their appointment process as constitutional in Arthrex v. Smith & Nephew. In their final decision, the Court held that while their appointment was upheld, the review process for their decisions was not and remanded the case down to the acting USPTO Director for further consideration.

The case began in an inter partes review proceeding at the PTAB and was appealed to the Federal Circuit on the basis that the Administrative Patent Judges comprising the Board are principal officers, who need Presidential appointment with the advice and consent of the Senate. This was premised on the lack of review their decisions receive from the USPTO Director, who is a duly appointed principal officer. According to 35 U. S. C. §6(c), “only the Patent Trial and Appeal Board may grant rehearings”. By insolating the APJs from Director’s review, Arthrex argued that they were converted to principal officers and their appointment was unconstitutional.

At the Federal Circuit, the panel agreed. Because the review process vested the APJ’s with power that exceeded that of an inferior officer, their appointment by the U.S. Secretary of Commerce was insufficient to satisfy the constitutional requirement. To cure this, the Federal Circuit declared that the tenure provision of the APJ’s was unconstitutional. This allowed the USPTO Director to fire them at their discretion and imbued the Director with a form of review over their processes. By giving the Director this authority, the Federal Circuit believed the APJ’s were satisfactorily inferior officers and their appointment could be upheld.

After the denied en banc rehearing, the Supreme Court disagreed in a splintered decision by the Justices. The opinion of the Court was authored by Justice Roberts and joined for Parts I and II by Justices Gorsuch, Alito, Barrett, and Kavanaugh. The crux of the decision rests on the review process itself being unconstitutional and curing it by remanding the case to the Director for their constitutionally mandated authority to review. As the Court explains, the statute “is unenforceable as applied to the Director insofar as it prevents the Director from reviewing the decisions of the PTAB on his own. The Director may engage in such review and reach his own decision.”

By striking the limitation on the Director, the Supreme Court has upheld the validity of the PTAB and its proceedings and prevented what could have been an extreme period of uncertainty for patent owners with the review process in total flux.

If you have any questions or concerns about how this or any other recent news may affect your portfolio or interests, please reach out to one of our attorneys here.

USPTO Designates Recent Cases Precedential & Informative

Maier & Maier

The Precedential Opinion Panel (“POP”) has added more precedential and informative decisions which address key issues facing the Patent Trial and Appeal Board (“PTAB”). These cases provide key insight to guide practitioners before the Board to effectively represent their clients’ best interest.

Precedential Opinions:

1. Sotera Wireless, Inc. v. Masimo Corporation, IPR2020-01019

In this proceeding, Sotera Wireless, Inc. (“Petitioner”) challenged U.S. Pat. No. RE47,353 E owned by Masimo Corporation (“PO”). The patent had been asserted against Petitioner in Masimo Corp. v. Sotera Wireless, Inc., Case No. 3:19-cv-01100-BAS-NLS (S.D. Cal.). In that case, Petitioner filed a stipulation which stated that it agreed not to pursue any grounds that were raised and instituted or could have been reasonably raised in an IPR. Here, in their Preliminary Response, PO argued against institution by advocating for a discretionary denial due to the status of the parallel litigation. In their Reply, Petitioner argued that the stipulation filed in the parallel proceeding lessened potential overlap between the two cases. In their Sur-Reply, PO argued that the stipulation was unclear whether the Petitioner reserved the right to continue with the parallel proceeding using other references cited in the invalidity contentions.

The Patent Trial and Appeal Board (“Board”) rejected PO’s argument and granted institution of the petition for inter partes review (“IPR”) in reliance on the six-factor analysis set forth by Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). The Board’s approval heavily weighed factor 4 (overlap between issues raised in the petition and in the parallel proceeding) of the Fintiv analysis. The Board determined that the broad stipulation mitigated the potential overlap between the instant case and the parallel proceeding. This decision suggests that mitigating overlap with a stipulation like the Petitioner’s may reduce the likelihood of a discretionary denial.

2. Snap, Inc. v. SRK Technology LLC, IPR2020-00820

In this case, Snap, Inc. (“Petitioner”) challenged U.S. Pat. No. 9,930,159 owned by SRK Technology LLC (“PO”). PO asserted this patent against Petitioner in SRK Technology LLC v. Snap, Inc., Case No. 2:19-cv-02515-PSG-JPR (C.D. Cal). In that proceeding, the district court granted a stay, pending denial of institution by the Patent Trial and Appeal Board (“Board”). Here, in their Preliminary Response, PO contended that the parallel proceeding would resume, and trial would occur at or before the final written decision deadline upon denial of institution. In reply, Petitioner argued that upon granting institution, the stay would remain until the Board issued a final written decision. Further still, Petitioner argued that a stay weighs in favor of granting institution because it mitigates duplicative efforts and inefficiencies.

The Board agreed with Petitioner and classified PO’s argument as mere speculation, while granting institution of the petition for inter partes review (“IPR”) in reliance on the six-factor analysis set forth by Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). The Board’s approval heavily weighed factor 1 (whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted) of the Fintiv analysis. The Board determined that a stay in the parallel proceeding alleviated concerns of repetitious work and inefficiencies. This case illustrates the potential impact of a stay on the Board’s consideration of factor 1 of the Fintiv analysis when determining approval of an IPR.

3. RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750

In this proceeding, RPX Corporation, (“Petitioner”) challenged U.S. Pat. No. 8,484,111 and U.S. Pat. No. 7,356,482 owned by Applications in Internet Time, LLC, (“PO”). The key issue in this case was the failure of Petitioner to name Salesforce.com, Inc. (“Salesforce”) as a real party in interest (“RPI”). Initially, the Patent Trial and Appeal Board (“Board”) had instituted the proceeding over PO’s objections to Salesforce’s omission. PO appealed the decision to the Federal Circuit, which admonished the court, explaining that Congress intended the term ‘real party in interest’ have its expansive common-law meaning. Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351.

On remand, the Board determined that Salesforce was in fact an RPI to the proceeding. The Board noted that Salesforce previously challenged the patents at issue and was denied institution. See Salesforce.com, Inc. v. Applications in Internet Time, LLC, CBM2014-00162, Paper 2 (filed Aug. 1, 2014); Salesforce.com, Inc. v. Applications in Internet Time LLC, CBM2014-00168, Paper 2 (filed Aug. 4, 2014). Salesforce had also paid Petitioner considerable membership fees, and over multiple interactions, discussed with Petitioner the Salesforce-PO litigation concerning the instant patents. The Board inferred from these facts that Petitioner filed the current proceedings in part to benefit Salesforce and permit it to have a second chance at invalidating PO’s patents.

Accordingly, the Board then relied on 35 U.S.C. § 315(b), which prohibits institution of an IPR if the petition is “filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” and terminated the IPRs.

4. SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734

In this case, SharkNinja Operating LLC, (“Petitioner”) challenged U.S. Pat. No. 9,921,586 owned by iRobot Corp., (“PO”). The main issue here was Petitioner’s failure to list its corporate parent, JS Global Lifestyle Company Limited (“JS Global”) as a real party in interest (“RPI”). In their Preliminary Response, PO argued that Petitioner’s omission served as grounds for denial under 35 U.S.C. § 312(a)(2), which requires identification of all RPIs in the petition. Further, PO contended that evidence supports JS Global’s involvement with Petitioner’s disputes in the instant case. In their Sur-Reply, Petitioner argued that the correct RPIs were listed and—if required—should be allowed to amend its mandatory notices.

The Patent Trial and Appeal Board (“Board”) looked to differing Board decisions for guidance. Some used extensive analysis to determine if a party should be listed as an RPI and others noted that such analysis is unnecessary when determining institution. The Board adopted the latter method in the interests of cost and efficiency. It dismissed PO’s argument and declined to consider if JS Global was an unlisted RPI, noting that even if JS Global should have been listed, that alone would not have established a time bar or estoppel under 35 U.S.C. § 315. Further, the Board recognized Petitioner’s willingness to amend its mandatory notices if necessary and dismissed the argument for denial of institution based on a procedural requirement that could easily be corrected in accordance with Board precedent.

5. Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854

In this proceeding, Apple Inc., (“Petitioner”) challenged U.S. Pat. No. 6,467,088 owned by Uniloc 2017 LLC, (“PO”) and filed a Motion for Joinder with Microsoft Corp.’s challenge of the patent in IPR2020-00023 (“the ’023 IPR”) as the role of “understudy.” Petitioner was previously denied institution for the challenged patent in Apple Inc. v. Uniloc 2017 LLC, IPR2019-00056. In its Opposition, PO argued for denial of Joinder using the factors set forth in General Plastic for Director’s discretionary authority under 35 U.S.C. § 314(a) because of Petitioner’s previous challenge. General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017). Further, PO contended that Petitioner was using Joinder to secure a second review. In reply, Petitioner argued that its request for Joinder was not subject to General Plastic.

The Patent Trial and Appeal Board (“Board”) dismissed Petitioner’s argument noting that General Plastic is relevant when considering denial under § 314(a), even if the petition is a follow-on petition or if the petitioner seeks an “understudy” role as Petitioner here does. Further, the Board determined that all but one of the General Plastic factors weighed against Petitioner with the remaining factor being neutral and denied both inter partes review (“IPR”) and Joinder. It noted that Joinder is typically an efficient means for becoming a petitioner in an IPR but because this was Petitioner’s second attempt for review with the possibility of continuing a potentially terminated proceeding, if Microsoft settles with PO, the Board’s finite resources outweighed Petitioner’s request. The Board used its denial of institution to also deny Joinder under 35 U.S.C. § 315(c).

Informative Opinions:

1. Apple Inc. v. Fintiv, Inc., IPR2020-00019

In this proceeding, Apple Inc., (“Petitioner”) challenged U.S. Pat. No. 8,843,125 owned by Fintiv, Inc., (“PO”). The Patent Trial and Appeal Board (“Board”) denied institution of the petition for inter partes review in reliance on the Precedential Order (“Order”) it issued in this case. The Order set forth factors to consider when determining to apply discretion to deny institution under 35 U.S.C. § 314(a) due to the advanced stage of a parallel proceeding. The factors seek to balance fairness, efficiency, and patent quality for patent owners in such circumstances. The Order lists the factors as follows: “1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.”

In denying institution, the Board noted that the district court’s scheduled trial date was two months before the Board’s final decision cutoff. Also, there was some level of effort expended in the parallel proceeding concerning claim construction and invalidity contentions. Further, Petitioner’s challenged claims relied on the same prior art in both the Petition and the district court. The above in addition to the parties being the same in each proceeding, and that PO had pointed out that at least two of Petitioner’s three independent claims were too close to call, weighed in favor of denying institution. The Board’s decision and Order set forth an influential analysis to be used in determining institution for granting an inter partes review.

2. Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-01393

In this proceeding, Sand Revolution II, LLC, (“Petitioner”) challenged U.S. Pat. No. 8,944,740 owned by Continental Intermodal Group – Trucking LLC, (“PO”). After the Patent Trial and Appeal Board (“Board”) originally used its discretion to deny institution, Petitioner concurrently filed both a Request for Rehearing of the Denial Decision and that the Board’s Precedential Opinion Panel (“POP”) reassess the previous decision. After the POP refused to reconsider the case, the Board initiated the rehearing and granted institution of the petition for inter partes review in reliance on the six-factor analysis set forth by Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential).

When weighing the factors, the Board noted that the lack of an issued stay in the parallel proceeding did not weigh for or against granting institution. However, the uncertainty regarding the trial date in the district court weighed in favor of granting institution while the effort invested in the parallel proceeding only slightly if at all weighed in favor of denying institution. Further, Petitioner’s stipulation to not pursue the grounds in this case in the parallel proceeding mitigated the risk of overlap and weighed in favor of granting institution. Lastly, the Board recognized that while the parties were the same in each case—which weighs in favor of denying institution—the other factors weighed in favor of granting institution and Petitioner sufficiently showed its likelihood of success in challenging the obviousness of the claims. Because of this, the Board granted institution of the petition for inter partes review. This proceeding highlights the usefulness of the Fintiv factors when determining to exercise discretion to deny institution under 35 U.S.C. § 314(a).

The Panel’s designations of each of these will be important to note moving forward for patent owners and PTAB petitioners alike. If you have any questions or concerns about how any of these decisions may affect your intellectual property rights and strategies, please reach out to us here.

Maier & Maier Wins Summary Judgment In SDTX

Maier & Maier

The Maier & Maier litigation team scored another victory for its clients, this time in the Southern District of Texas. District Judge Lynn Nettleton Hughes was the presiding Judge, while Maier & Maier represented Qiang Bai in the proceedings and earned the quick and favorable result.

Houston-based Flexsteel Pipeline Technologies. Inc. sued Qiang Bai and three other defendants for patent infringement and misappropriation of trade secrets on July 9, 2018 in the United States District Court for the Southern District of Texas. The patent-in-suit, U.S. Patent No. 6,705,351, relates to flexible pipe reinforced with steel bands and a method of fabricating the that pipe. The alleged trade secrets relate to features of the flexible pipe that are not disclosed in the ‘351 patent and certain aspects of the equipment used to manufacture the pipe.

Maier & Maier pursued aggressive written and deposition discovery from the outset, focusing on Flexsteel’s allegations and the evidence that allegedly supported them. The strategy was to resolve the case on summary judgment as early as possible and well short of trial. On April 16, 2021, we moved for summary judgment on all three counts against Qiang. Oral argument took place on May 19, 2021. On June 11, 2021, the Court entered summary judgment in favor of Qiang Bai on all three counts against him (direct patent infringement, indirect patent infringement and trade secret misappropriation). The Court also entered judgment declaring that Qiang Bai did not infringe any claim of the ‘351 patent.

Maier & Maier’s strategy was successful and earned the efficient and early resolution. With the win, Maier & Maier continues its string of successful results, gaining favorable results in district court, at the PTAB, and before the ITC. If you or your company need similar assistance, please contact Maier & Maier’s litigation team here.

USPTO Precedential Opinion Panel: Pending Petition Roundup

Maier & Maier

The Precedential Opinion Panel “POP” has had a number of petitions recently on key issues facing the Patent Trial and Appeal Board (“PTAB”). We’ve collected some of the most impactful below concerning the use of Applicant Admitted Prior Art (“AAPA”) and two focusing on the Fintiv factors for discretionary denial.

1. SolarEdge Techs. Ltd v. SMA Solar Tech. AG (IPR2020-00021)

In this proceeding, SolarEdge Techs. Ltd (“Petitioner”) challenged U.S. Pat. No. 8,922,048 owned by Solar Tech. AG (“PO”). The petition included three proposed grounds for obviousness, each relying on AAPA as the primary reference. In response, PO argued that the Petitioner may not use AAPA as the basis for an inter partes review (“IPR”) according to 35 U.S.C. § 311(b), which allows the use of only prior art patents and printed publications. In the Final Written Decision, the Board agreed that SolarEdge Techs. Ltd.’s use of AAPA was improper. The Board relied on the Guidance Memo (“Memo”) issued by the Director of the United States Patent and Trademark Office on August 18, 2020. While the Memo does not forbid using AAPA as a lead reference, the Board objected to Petitioner’s reliance on AAPA as the starting point for all three grounds of rejection. This suggests that future applicants’ use of AAPA to support claim limitations may be limited even if they employ additional statements to show potential improvements over the AAPA. Moreover, applicants’ reliance on prior art patents and printed publications as a “basis” may be disregarded if they use AAPA. Thus, this Decision may limit future applicants’ use of AAPA.

2. Cellco Partnership d/b/a Verizon Wireless v. Huawei Techs. Co., Ltd. (IPR2020-01352)

Here, Cellco Partnership d/b/a/ Verizon Wireless (“Petitioner”) challenged U.S. Pat. No. 8,995,253 owned by Huawei Techs. Co., Ltd. (“PO”). The Patent Trial and Appeal Board (“Board”) denied institution of the petition for inter partes review in reliance on the six-factor analysis set forth by Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential).

The Board’s denial heavily weighed factor 3 (investment in the parallel proceeding by the court and the parties) and 5 (whether the petitioner and the defendant in the parallel proceeding are the same party) of the Fintiv analysis. In their petition and reply, Petitioner argued that factor 3 favored institution because of their diligence in filing the Petition within weeks of obtaining PO’s contentions and nine months before the statutory deadline. PO countered in their preliminary response, saying that Petitioner received the claim charts well in advance of filing its Petition. While the Board recognized Petitioner’s efforts, they were outweighed by the effort and resources invested in the parallel case, especially the district court’s claim construction. In their petition and reply, Petitioner also argued that factor 5 favored institution despite the identical parties across multiple proceedings. The Board rejected this contention on the grounds that Petitioner failed to explain why this factor should not weight against it.

In requesting POP review, the petitioner asserted that the Board’s analysis was at odds with previous decisions. For both factor 3 and 5, they identified unclear precedent based on Apple Inc. v. Maxell, Ltd., IPR2020-00204, PEAG, LLC v. VARTA Microbattery GmbH, IPR2020-01211, and Weatherford U.S., L.P. v. Enventure Global Tech., Inc., IPR2020-01648 where the similar analysis of factors 3 and 5 favored institution. Even further, for factor 3, they also cited to Apple Inc. v. Seven Networks, LLC, IPR2020-00156, PEAG, LLC v. VARTA Microbattery GmbH, IPR2020-01211, and Micron Tech., Inc. v. Good Kaisha IP Bridge 1, IPR2020-01007 as further clouding the precedent.

3. Canon Inc. v. Optimum Imaging Techs. LLC, (IPR2020-01321 & ‘1322)

In this IPR, Canon Inc. (“Petitioner”) challenged U.S. Pat. Nos. 7,612,805 and 8,451,339 owned by Optimum Imaging Techs. LLC (“PO”). The Board denied institution of the petition for inter partes review in reliance on the six-factor analysis set forth by Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential).

The Board’s decision focused on expeditiousness under factor 3 (investment in the parallel proceeding by the court and the parties) of the Fintiv analysis. The Petition relied on new prior art discovered by Petitioner after the time had passed to file responses to invalidity contentions, which it had failed to find in previous searches. In their reply, Petitioner argued that they were expeditious in filing the petition only 2 months after discovering the new prior art. In their preliminary response, PO contended that Petitioner could have discovered the prior art with a reasonably diligent search. The Board dismissed Petitioner’s argument because Fintiv requires prompt filing after learning of the claims asserted, rather than discovery of the prior art. The Board explained that approving of Petitioner’s argument for basing expeditiousness on newly discovered prior art would encourage delaying the search for prior art.

This Decision potentially conflicts with at least one previous Board decision referenced in the POP request. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019.  In Sotera Wireless, the Board considered outside events affecting the timing of the petition, even though the time to file invalidity contentions had passed in the parallel litigation.

The Panel’s decision on all three of these petitions will be important to note moving forward for patent owners and PTAB petitioners alike. If you have any questions or concerns about how any of these matters may affect your intellectual property strategies moving forward, please reach out to us here.

USPTO Issues Patent Number 11,000,000

Timothy Maier

In yet another sign of the strength of the U.S. patent system, the USPTO has now issued Pat. No. 11,000,000. The patent, dated May 11, 2021, was for “Repositioning Wires and Methods for repositioning Prosthetic Heart Valve Devices Within a Heart Chamber and Related Systems, Devices, and Methods”.

When the USPTO began numbering patents in 1836, Pat. No. 1 was issued for a traction wheel for steam locomotives and it took 163 years before the USPTO issued Pat. No. 6,000,000 in 1999. Innovation has gained even more steam since then, as the USPTO has issued another 5 million patents in the past 22 years.

“Since the founding of our nation, American inventors have driven our culture and commerce with incredible ideas that have improved every function of our lives. We owe a debt of gratitude to inventors who continue to show up day after day with solutions to the world’s most pressing problems. We congratulate the inventors behind patent 11 million and all of the innovators who helped the country reach this milestone,” described Drew Hirschfield, who is currently performing the duties of USPTO Director.

The patent comes at a time when the USPTO has been among the leaders spurring innovation to help combat the ongoing pandemic caused by SARS-CoV-2. The USPTO has made adjustments to facilitate remote work to ensure functionality throughout the pandemic and enacted additional procedures benefiting applications covering inventions that combat virus.

Maier & Maier is proud to be a part of the ongoing innovation efforts in the U.S. and assisting our clients protecting their hard work. If you have any questions or concerns about the pilot or how it may apply to your applications, please reach out to us here.

IBM-IPwe’s Push to Tokenize Patents Could Revolutionize Portfolio Monetization

Timothy Maier

Earlier this week, IBM announced it would be working with IPwe to launch a new IP Marketplace powered by IBM’s blockchain technology. Organizations can also more easily view the IP as an asset on their balance sheet.” As related technology has been implemented to represent sports memorabilia and iconic moments, digital art, and even social media posts, IBM and IPwe hope to lead IP Portfolios to a similar platform and token system. IBM hopes that “By representing IP in this way, it can be licensed, sold and commercialized.”

To achieve this, IBM will use blockchain technology to begin representing patents as “non-fungible tokens” (“NFTs”). As IBM explains, “The tokenization of intellectual property (IP) will help position patents to be more easily sold, traded, commercialized or otherwise monetized and bring new liquidity to this asset class for investors and innovators.” Efforts have already begun, and IBM believes it will be commercially available until Q4 of 2021.

This new project builds on previous work the two have done together. IPwe has several related aspects of portfolio management on its site, including its IPwe Registry, The Registry collects records on patent holdings and allows for searchable access to it all. Meanwhile, IBM has already enabled an enhanced search and analytic with certain AI features on the platform.

By tokenizing the patent holdings, IBM and IPwe hope to expand and streamline these efforts for easier transfer and access to analytics like the ones they already provide. Even further, by tokenizing the IP, IBM and IPwe will help the asset be treated as liquid and allow for more readily available management, evaluation, and transacting of the IP holdings.

If you have any questions or concerns about how this new trend might affect your holdings, please reach out to an attorney here.

Overcoming Sect. 101 Rejections: USPTO Guidance, Recent Decisions to Meet Sect. 101 Patent Eligibility Requirements

Daniel Ehrlich

Maier & Maier is pleased to announce that distinguished partner, Stephen Kunin, will be speaking in an upcoming Strafford live video webinar, “Overcoming Sect. 101 Rejections: USPTO Guidance, Recent Decisions to Meet Sect. 101 Patent Eligibility Requirements” scheduled for Tuesday, April 27, 1:00pm-2:30pm EDT.

We encourage anyone interested in Section 101 issues at the USPTO to tune in.  The panel will review case law, USPTO guidance, and offer response strategies.

For more information or to register >

 

Supreme Court Finds Fair Use In Google v. Oracle

Maier & Maier

Last week, the Supreme Court issued their long awaited and highly anticipated decision in Google v. Oracle, which had been pending for a decade. In the 6-2 decision for Google, the Court ruled that Google’s use of Oracle’s code was Fair Use, reversing the Federal Circuit’s decision and allowing Google to escape the infringement allegations by Oracle.

The Case

The case centered around the Android operating system designed by Google in their first foray into the smartphone arena. In the coding, Google used 11,000 lines of the Java SE platform coding for common interface commands. Oracle, the current owner of the Java SE platform, filed suit on the basis that the use of the lines constituted infringement. While a jury found them to be “fair use”, the Federal Circuit disagreed, reversing the decision, and leading the case to the Supreme Court.

The Court granted certiorari on the following two questions:

(1) Whether copyright protection extends to a software interface; and

(2) whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.

The Decision

Oral Arguments were heard last fall, leading to the decision issued here. The decision was authored by Justice Breyer and joined by Justices Roberts, Gorsuch, Kavanaugh, Sotomayor, and Kagan. Justice Thomas was joined by Justice Alito in his dissenting opinion. Justice Barrett had not yet joined the Court and accordingly did not play a role in the case.

The majority did not rule on the first issue of whether copyright protection extends to software interface, opting instead to focus on the second issue, where they ruled with the jury that Google’s use of a software interface in creating a new computer program was fair use. This determination upheld Google’s infringement defense, and eliminated Oracle’s infringement claims and potential damages. By skipping to the second question on the assumption that the code was protectable, the Court arrived at the same result that would have come from their determination in the first issue.

In his dissent, Justice Thomas objected to this majority’s assumption of copyrightability and performed the full analysis. He concluded that it was copyrightable, but only because it was specifically limited to exact functions, not merely the abstract use of declaring code. Thomas then did his own Fair Use analysis, finding three of the four factors favored Oracle over Google, and believed this was not an example of Fair Use.

Conclusion

While there are considerable aspects of copyright law which may be affected by this decision, the impacts could have even broader implications. Despite the 6-2 split, all 8 of the Justices found compelling interests in the importance of IP protection for software. That shared belief could prove crucial if the Court is to take up the Abstract Idea §101 issue for patent law and its application to software interfaces and diagnostics.

If you have any questions about how this may affect your IP interests, please reach out to an attorney here.

Maier & Maier Helps Cigar Reserve LLC Settle Southern District of Indiana Patent Litigation

Maier & Maier

The Maier & Maier litigation team recently secured the dismissal of another patent infringement suit that had been brought against its client. Last month, District Judge Tanya Walton Pratt dismissed patent infringement claims brought by Plaintiff Thomas A. Person against Cigar Reserve LLC and its owners, Brian and Chanda Kurland.

In October 2020, Mr. Person filed a Complaint in the Southern District of Indiana alleging infringement of two patents relating to cigar spills. The first was a utility patent, U.S. Pat. No. 8,507,070, entitled “Cedar spill,” and the second was a design patent, U.S. Pat. D664,292 entitled “Cedar Spill for a Cigar.” The complaint demanded trebled damages along with injunctive relief from Cigar Reserve and the Kurlands.

The Maier & Maier litigation team was able to defend Cigar Reserve and its owners from the Plaintiff’s demands and helped them come to a favorable resolution of the case. Cigar Reserve joins Maier & Maier’s constantly growing list of happy clients that have obtained favorable rulings thanks to the firm’s team of expert patent litigators that litigate at cost effective and efficient rates.

With another resolution for their client, Maier & Maier continues its string of successful representations in contentious matters, earning favorable results in district court, at the PTAB, and before the ITC. If you or your company need similar assistance, please contact Maier & Maier’s litigation team here.

USPTO Covid-19 Relief Efforts Expanded To Include Fast Track For Ex Parte Appeals

Timothy Maier

As part of the U.S. Federal Government’s ongoing response to the global Covid-19 pandemic, the USPTO announced programs to prioritize Covid-19 related patent and trademark applications this past May and June respectively.

Those programs were well-received, and the USPTO granted prioritized special status to well over 400 Covid-related patent and trademark applications. Of the patent applications, most target medical treatments, vaccines, and diagnostic technology. The remaining make claims on ventilators, personal protective equipment (PPE), and other similar technology.

Now, the USPTO is continuing these efforts by providing for fast tracked review of ex parte appeals for specific Covid-related applications. Eligible applications must be tied to a product or process that is subject to an applicable U.S. Food and Drug Administration (FDA) approval for COVID-19 use.

Currently, the pilot program has allocated 500 spots for fast tracked appeals, which will be opened for petitions as of April 15, 2021. Petitions for fast-track status will receive a decision in two business days, while the Board has set a goal of decisions on the appeals themselves for within 6 months.

Maier & Maier has embraced these programs to assist our clients and help combat the ongoing virus. If you have any questions or concerns about the pilot or how it may apply to your applications, please reach out to us here.