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

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.


IP Check-In On The Supreme Court Docket

There are currently multiple significant IP cases pending at the Supreme Court, including both the Oracle case and the Arthrex cases, and a number of petitions denied cert. Here are the latest case updates on IP at the Supreme Court:

Google v. Oracle

On October 7th, the Supreme Court heard oral arguments for the Google v. Oracle case on appeal from the Federal Circuit. The case centers 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 to the current appeal at the Supreme Court.

Accordingly, the questions before the Supreme Court now are:

(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 could be the most significant copyright decision in at least a decade and will be important to developers and practitioners alike to watch moving forward.

Arthrex

Earlier this month, the Supreme Court denied certiorari to a number of cases. Notably this does not include the Arthrex cases challenging the constitutionality of the USPTO’s Patent Trial & Appeal Board.

On October 14,, 2020, as predicted by Maier & Maier’s own, Steve Kunin, the Supreme Court granted cert in three related Arthex cases: (1) United States v. Arthrex, Inc. (19-1434), (2) Smith & Nephew, Inc. v. Arthrex, Inc. (19-1452), and (3) Arthrex, Inc. v. Smith & Nephew, Inc. (19-1458).

The case rests on the question of whether the Administrative Patent Judges (“APJ’s”) are principal officers or inferior officiers, and accordingly, whether their appointment is constitutional. Specifically, the Supreme Court has identified the following two questions for review:

(1) Whether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the President with the Senate’s advice and consent, or ‘inferior Officers’ whose appointment Congress has permissibly vested in a department head.

(2) Whether, if administrative patent judges are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. 7513(a) to those judges.

Briefing and oral arguments, as well as likely amicus briefs will likely follow before these questions are resolved, and may be one of the first cases heard by any replacement for the late Ruth Bader Ginsburg on the Court.

Cert Denied

Unlike the pending Oracle and Arthrex decisions, the following cases have been denied certiorari by the Supreme Court and will not be heard on appeal:

      • BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., fka MonoSol RX, LLC, No. 19-1381 (Appealing IPR Termination)
      • TCL Communication Technology Holdings Limited v. Telefonaktiebolaget LM Ericsson, No. 19-1269 (Right to a Jury Trial for Specific Performance of FRAND license)
      • Willowood, LLC v. Syngenta Crop Protection, LLC, No. 19-1147 (Divided Infringement and 271(g))
      • The Chamberlain Group, Inc. v. Techtronic Industries Co., No. 19-1299.; Thomas v. Iancu, No. 19-1435; Primbas v. Iancu, No. 19-1464; Morsa v. Iancu, No. 20-32 (Patent Eligibility)
      • Ameranth, Inc., Petitioner v. Domino’s Pizza, LLC, No. 19-1351 (Sua Sponte Judicial Order Due Process)
      • Polidi v. Lee, No. 19-1430; Piccone v. United States Patent and Trademark Office, No. 19-8844 (Exclusion of Patent Attorneys by USPTO)
      • SRAM, LLC v. FOX Factory, Inc., No. 20-158 (Secondary Indicia for Obviousness nexus)
      • Arthrex, Inc. v. Smith & Nephew, Inc., No. 19-1204 (Application of IPR decisions retroactively to related pending applications)
      • Cheetah Omni LLC v. AT&T Services, Inc., No. 20-68 (Licensing Patents under Federal & State law)

USPTO Well-Equipped For Surge Of Artificial Intelligence IP

As Artificial Intelligence (“AI”) continues to transform industries across both the U.S. and the globe, the United States Patent and Trademark Office has been handling the issues at a much higher rate. In response to the developing field, the USPTO released a report on AI and the related Intellectual Property issues.

“The USPTO has long been committed to ensuring our nation maintains its leadership in all areas of innovation, especially in emerging technologies such as artificial intelligence,” highlighted Andrei Iancu. Director of the USPTO. In preparing the report, the USPTO sought input from and received comments from over 200 comments from bar associations, trade associations, law firms, academic authorities, industry practitioners in electronics, software, automobiles, medical and pharmaceutical industries, and foreign patent offices.

Overall, the report indicates that there is a high degree of confidence in the USPTO to handle many of the issues relating to patent, trademark, and copyright issues relating to AI. The report also emphasized the importance of maintaining a close eye for the developments in this industry to ensure the U.S. maintains its status as a global leader in this critical technology.


Supreme Court Outlook: Nominee Amy Coney Barrett’s IP Record

With multiple IP issues percolating in the lower courts, there will likely be many federal issues decided in the coming years. With the passing of Justice Ginsberg, Amy Coney Barrett stands as the nominee to inherit those votes and a staunch textualist. Here are the some of the most recent Barrett decisions on intellectual property matters.

J.S.T. Corp. v. Foxconn Interconnect Technology (Trade Secrets)

This 7th Circuit appeal came earlier this year focusing on a trade secret misappropriation and jurisdiction to bring the claims. A customer to J.S.T. provided one of their proprietary adapter designs to J.S.T.’s competitor, Foxconn, attempting to have them manufacture them instead of J.S.T. J.S.T. filed suit in Illinois for misappropriation and unjust enrichment, but Foxconn moved to dismiss for lack of personal jurisdiction.

They argued that because Foxconn and the other defendants had no headquarters in Illinois and neither manufactured nor sold the adapters in Illinois, there could be no personal jurisdiction. Foxconn and the other defendants sold the adapters in Texas or China, which were bought to be used in automobiles which were then sold nationwide. J.S.T. argued that this downstream commerce in Illinois was sufficient to establish personal jurisdiction in trade secret cases, but the District Court disagreed.

On appeal, Judge Barrett authored the opinion, affirming the lower court. As Barrett explained “[f]or the point of consumer sale to be as relevant to this litigation as it is to products liability suits, there must also be a connection here between downstream consumer sales and J.S.T.’s underlying claims.” This differs from both product liability and trademark claims, which can satisfy jurisdiction requirements at the consumer level. For trade secrets, the claim bases of “acquisition, disclosure, and use of a secret are all actions that can be completed long before an offending product ever comes into contact with a consumer.” Accordingly, looking to the text of the trade secret claim language, Judge Barrett saw no basis for personal jurisdiction, and her peers agreed.

Ariel Investments, LLC v. Ariel Capital Advisors LLC (Trademark)

In 2018, the 7th Circuit heard a trademark dispute between the Florida-based Ariel Capital Advisors (ACA) and the Chicago-based Ariel Investments, LLC (AI). AI was founded in 1983, while ACA was formed in 2014, with each advising and managing financial investments. AI brought suit in 2018 for trademark infringement and sought an injunction requiring a name change by ACA in the District of Chicago. The court obliged with a court order, and ACA complied by changing their name to Bray Capital Advisors, but challenged the ruling on appeal.

ACA appealed on the basis that the court had no jurisdiction to decide the case, explaining that they had no office, no clients, no property, and no staff in Chicago, nor has any employee even visit Illinois at all. AI responded that for intellectual property cases, the defendant essentially “reached into the holder’s home forum to take its property” and availed itself to jurisdiction. The appellate court disagreed.

As Barrett explains in authoring the decision, “Perhaps the Lanham Act ought to authorize nationwide service, as the antitrust and securities laws do…[b]ut it does not, so personal jurisdiction depends on state law.” On that basis, AI failed to show specific jurisdiction or the requisite minimum contacts. As Barrett quotes from the Supreme Court decision in 2014, Walden v. Fiore, “the plaintiff cannot be the only link between the defendant and the forum. Rather, it is the defendant’s conduct that must form the necessary connection with the forum State that is the basis for its jurisdiction over him”. Accordingly, she explains “No matter how one might characterize the relation between Ariel Investments and Ariel Capital, it is easy to describe the relation between Illinois and Ariel Capital: none. That resolves this litigation.”

Sullivan v. Flora Inc. (Copyright)

In 2019, Barrett joined the majority decision siding the 7th Circuit with the 1st, 9th, 11th, and D.C. circuits in an ongoing split. In the case, the decision resolved the definition of “one work” and whether a compilation qualifies or is a set of different works. Amy Sullivan, a graphic design artist, produced 33 illustrations for Joseph Silver as part of his freelance product specialist work. The illustrations were for a project Silver was working on for Flora, Inc. Without Flora’s knowledge, Silver had used Sullivan for the project, and obtained excusive rights to the illustrations for two specific ad campaigns. Instead, Flora used the illustrations in the two campaigns, as well as a number of others.

Sullivan then registered 17 of the illustrations under one copyright and 16 under another, and filed suit against Flora, Inc. in the Western District of Wisconsin. Sullivan argued that each of the 33 illustrations was a part of “one work” and that she should be awarded statutory damages on each of the 33 counts. Conversely, Flora, Inc. argued that the statutory damages could only be awarded for each collective or group works, a mere 2 counts of infringement.

The district court found for Sullivan and awarded all 33 counts of statutory damages, but on appeal, the 7th Circuit reversed, with Barret joining the majority. As the decision explains, controlling weight should be afforded to the text of Section 504(c), providing that “all the parts of a compilation or derivative work constitute one work”, and to the artists decision to bundle the works or to issue them separately.

Unsurprisingly, Barrett’s minimal IP record shows a consistency with her larger approach to judicial analysis, with an emphasis on the statutory language and adherence thereto. Should she pass the senate, she would bolster an already statutorily inclined bench, providing IP owners with greater predictability on their rights moving forward.


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

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.


USPTO Forms Council to Bolster Inventor Diversity Platform

Earlier this year, the USPTO launched the new Expanding Innovation Hub Platform. The Hub is designed to help foster inventorship from underrepresented groups including both female and minority inventors. As emphasized by USPTO Director Andrei Iancu, “To maintain our technological leadership, the United States must seek to broaden our intellectual property ecosystem demographically, geographically, and economically.”

The Hub includes an educational toolkit to help new inventors understand the system, mentoring programs to match inventors with individuals who can help them succeed in the system, and community groups to foster support and cooperation between inventors. The Hub will also serve as a base for events and programming focused on spurring innovation from the underrepresented groups.

Now, the USPTO has established the National Council for Expanding American Innovation (“NCEAI”). The Council is made up of 29 practitioners and Federal representatives and is tasked with building “a more diverse and inclusive innovation ecosystem” as emphasized by Director Iancu above. Part of the Council’s task will be period reporting such as the “Progress and Potential” report on female inventorship to hold the council accountable to the stated goals.

Per the Director of Commerce, Wilbur Ross, “It is critical that industry, academia, and government work together to strengthen our culture of innovation by encouraging the participation of young people from diverse backgrounds.”

One shining example of success Is the celebrated Dr. Marian Cloak, who was honored with an “Inventor Card” as part of the USPTO’s collectible card series. Dr. Croak emphasized the need for support and role models, explaining that “I think the more role models that people have, the more inspired they are to understand that they are capable of doing anything.” Dr. Croak will join Director Iancu later in October in the USPTO Speaker Series to address her path to success, her pioneering of VoIP advancements and 200 patents, and the goals of Direcor Iancu’s goals for a more diverse innovation pool.

However, these goals cannot be achieved by the USPTO or even the federal government alone. In the NCEAI are 29 industry representatives similarly committed to the cause, but industry support must be expanded for this to be successful.

Maier & Maier has long been a supporter of diverse inventorship in the industry, with a strong commitment to underserved inventors. Maier & Maier has made it a firm priority to assist solo inventors whenever possible and has a demonstrated commitment to leveling the playing field for inventors and practitioners alike. Our team consists of a diverse group of individuals speaking a variety of languages and from a variety of different countries, backgrounds, and identities.

We are committed to continuing on this path, and we welcome underrepresented inventors and practitioners to reach out to us at any time.


USPTO Announces Final Fee Schedule Update

The USPTO is set to implement changes to its Fee Schedule on October 2, 2020. Per the USPTO announcement, this update is “necessary to adjust to increasing costs and to provide necessary resources for Patent operations, including implementing the USPTO 2018-2022 Strategic Plan.”  The changes include an approximate 5% increase of fees across the board.

Certain fees were increased by substantial more than 5%. Most significant were AIA request and post-institution fees which were increased by up to 50%, with most coming in at 20-25% increases. This substantially affects the costs for PTAB post grant practice for petitioners and those considering their options for IP disputes.

This process began in 2017 in accordance with federal fee setting requirements. The process has included a public forum at the USPTO headquarters in Alexandria, Virginia, comments, and extensive review by the Patent Public Advisory Committee (PPAC). The fees were initially planned to be announced and come into effect earlier this summer but were delayed due to the state of the U.S. economy and the ongoing pandemic.

Notable changes include the addition of two new fees (for pro hac vice admission and effective January 1, 2021 a fee for non docx format submissions), four discontinued fees, and increases to most existing fees.

Further, it is especially important to note the following fee increases for PTAB proceedings:

  • Inter Partes Review Request Fee: This fee will increase from $15,000 to $19,000.
  • Inter Partes Review Post-Institution Fee: This fee will increase from $15,000 to $22,500
  • Total Fees for an instituted IPR increase from $30,000 to $41,500
  • Post Grant Review Request Fee: This fee will increase from $16,000 to $20,000
  • Post Grant Review Post-Institution Fee: This fee will increase from $22,000 to $27,500
  • Total Fees for an instituted PGR increase from $38,000 to $47,500
  • Additional fees may be incurred for each claim in excess of 20.

The full fee schedule table is available for download here and the USPTO announcement is available here.  In the meantime, filing cases before the October 2nd increase could provide significant cost savings and should be considered.


USPTO Issues IPR Guidance On § 311(b) Prior Art

On August 18, 2020, the USPTO issued guidance on § 311(b)’s institution requirement that IPR’s may only be petitioned “on the basis of prior art constisting of patents or printed publications” and how this applies to statements of the applicant in the specification.

The use of statements like these is referred to as ‘Applicant-Admitted Prior Art’ or APAA. Under the new guidance, APAA may not be used as the basis for an IPR but may still be permissible for other evidenciary purposes.

Previously, some Boards allowed the use of APAA under the logic that  “it is ‘prior art’ and found in a ”patent’. See, e.g., Cardiovascular Sys., Inc. v. Shockwave Med., Inc., IPR2019-00405, Paper 75, at 35-36 (PTAB Jul. 8, 2020); Apple Inc. v. Qualcomm Inc., IPR2018-01315, Paper 26, at 18-19 (PTAB Jan. 3, 2020); One World Techs., Inc. v. Chamberlain Group, Inc., IPR2017-00126, Paper 56, at 36-37 (Oct. 24, 2018) . As the Guidance explains, this interpretation is inconsistent with the statute, which is more accurate read to mean “any patent that is used as the “basis of’ a request for inter partes review must be a prior art patent, not the challenged patent.” Guidance at 3.

As a result, the PTAB will no longer allow APAA as the basis for a petition, but will allow its use for the following three purposes:

“(1) supply missing claim limitations that were generally known in the art prior to the invention (for pre-AIA patents) or the effective filing date ofthe claimed invention (for post-AIA patents);

(2) support a motivation to combine particular disclosures; or

(3) demonstrate the knowledge of the ordinarily-skilled artisan at the time ofthe invention (for pre-AIA patents) or the effective
filing date ofthe claimed invention (for post-AIA patents) for any other purpose related to
patentability”.” Guidance at 9.


Federal Circuit Overturns Pre-Suit Damage Award Against NetScout

On July 22, the Federal Circuit ruled that marking requirements for pre-suit damages cannot be satisfied based on defendant’s infringement of a related method claim in Packet Intelligence LLC v. NetScout Systems, Inc.

In the case, Packet Intelligence sued NetScout Systems for patent infringement in the Eastern District of Texas. The Jury found in favor of Packet Intelligence on all issues and awarded both pre-suit and post-suit damages. Following the jury trial, the court also enhanced damages and awarded an ongoing royalty for post-verdict infringement.

NetScout appealed to the Federal Circuit, arguing that in order to be subject to pre-suit damages Packet intelligence’s licensees must have properly marked their patent-practicing products. NetScout concluded that because they failed to do so, the award of pre-suit damages was in error. The Federal Circuit agreed.

Judge Lourie explained in the written opinion. While the defendant has the primary burden to “articulate the products it believes are unmarked ‘patented articles”, this initial burden was met by NetScout. The low bar for this need only “put the patentee on notice that certain licensees sold specific unmarked products”. The Federal Circuit ruled that the District Court incorrectly placed a burden on them to prove these products practiced the patent, when the burden should rightly be on the plaintiff to demonstrate that they did not.

Finally, the Federal Circuit was not convinced that NetScout’s infringement of related patents could be used to satisfy the marking obligation in place of actual compliance. Per the decision, “Packet Intelligence is barred from recovering damages for pre-suit sales of the…products because it failed to comply with the marking requirement. It cannot circumvent § 287 and include those products in its royalty base simply by arguing that NetScout’s infringement of related method claims drove sales.”


Federal Circuit Upholds Subject Matter Eligibility Review for Substitute Claims In IPR Proceedings

The Federal Circuit ruled that the PTAB May review all aspects of patentability for substitute claims in inter partes review (IPR) proceedings in Uniloc 2017 LLC v. Hulu, LLC last month.

At the PTAB, Hulu petitioned for IPR on Uniloc’s patent “System and Method for Adjustable Licensing of Digital Products”.  In the course of the proceeding, Uniloc offered substitute claims under $ 316(d). Hulu challenged these substitute claims as obvious under § 103, as enlarging the claim scope in violation of § 316(d), and as claiming non-statutory subject matter under § 101. The Board rejected the first two grounds, but agreed that the substitute claims were ineligible under § 101. Based solely on its ineligibility under § 101, the Board then rejected Uniloc’s proposed substitute claims.

After a failed rehearing at the PTAB arguing that substitute claims could not be reviewed under § 101, Uniloc appealed the decision to the Federal Circuit. The Federal Circuit upheld the Board’s ruling with Judge Wallach authoring the decision. The Federal Circuit found that the Board is to find “patentability” of substitute claims in IPR cases, based on legislative history and structure of the statute the court found this to require a full analysis of proposed substitute changes, and is not limited by § 311(b) for these purposes. The Federal Circuit accordingly reasoned that the Board was correct in including § 101 in its patentability analysis for substitute claims.

This is a significant development and should be noted with caution for patent owners and petitioners alike at the PTAB to factor into their decisions in any IPR proceeding with substitute claims.