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.

Maier & Maier Earns Dismissal for iSonic, Inc.

Maier & Maier

Last month, the Maier & Maier litigation team earned the dismissal of Lander Enterprises, LLC’s allegations of patent infringement against client iSonic, Inc. iSonic runs different online stores selling various innovative oral hygiene tools across the country and was targeted by competitor Lander Enterprises, LLC over one of its product offerings.

In the November 2020 Complaint filed in the District of Connecticut, Lander Enterprises, LLC alleged that iSonic infringed their design patent and trade dress for a “child’s automatic toothbrush” (D887,146). The Plaintiff sought to recover punitive trebled damages and an injunction against iSonic.

Maier & Maier helped iSonic avoid the Plaintiff’s costly demands by resolving the matter quickly, only a few months after the original filing, without having to respond to the Complaint. By resolving the case, Maier & Maier’s patent litigation expertise helped iSonic prevent costly and lengthy litigation. iSonic joins Maier & Maier’s constantly growing list of happy clients who have obtained favorable rulings thanks to the firm’s team of expert patent litigators that litigate at cost effective and efficient rates.

With the resolution, Maier & Maier continues a strong run of success in contentious matters, earning favorable results for their clients 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 Hosts Women’s Entrepreneurship Symposium

Maier & Maier

On March 31st, the conclusion of Women’s History Month, the USPTO concluded its annual Women’s Entrepreneurship Symposium. Each year since 2011, the USPTO has honored diverse panels of successful women innovators, notable inventors, and experts and welcomed them to share their stories of overcoming adversity on their way to success.

As part of the symposium, the USPTO highlights important subjects, issues, and solutions including the expansion of roles for women and other underrepresented groups in STEM, innovation, and economic growth

The final panel included Janeya Griffin, Founder and CEO, The Commercializer; Rea Huntley, Founder and CEO, Lavii INC; and Sarah Gibson Tuttle, Founder and CEO, Oliver and June. Together, they discussed the importance of protecting your IP assets, the ways they identify those assets and opportunities for growth, and other such strategies that have keyed their success in todays business climate.

Maier & Maier makes concerted and consistent efforts to promote the growing role of women and minorities, and assist those clients in overcoming the challenges they face in the world of IP. If you need such assistance, we urge you to reach out to us here,so we may continue to do our part as the USPTO continues to strive towards equality and an equitable future for innovation.

Patent Filings Hint At Major Role For Small Modular Reactors In The Future Of The Energy Sector

Maier & Maier

As part of Maier & Maier’s ongoing commitment towards serving all of our clients IP needs, we routinely provide research and analysis for Business Intelligence. A major component of these services is surveying the IP Landscape for clients to help clients make informed decisions and to develop a strategic IP Plan. Recently, the team analyzed the patent landscape of Small Modular Reactors (“SMR”). In this report, we provide an overview of the current SMR landscape, with an eye towards where it may be heading moving forward over the next two decades.

Maier & Maier PLLC_SMR Patent Landscape_Spring 2021

Generally, our analyses are wide ranging and can isolate a variety of trends and insight. Some examples might help identify adjacent industries operating similar technologies, and overlooked weaknesses, protections, and competitors which could stifle your IP goals. Our analytics capabilities can also identify key IP competitors and show “White Spaces” and “Black Spaces” in a technological field. White Spaces have low competition, meaning that a good IP Plan can include filing broad claims for maximum scope of coverage or multiple aggressive filings to fill and dominate the space. “Black Spaces” are congested and should be closely watched to avoid liabilities in planning and inefficient prosecution in light of the potential prior art. Depending on a client’s individual concerns or needs, we will tailor our focus towards addressing those with key takeaways to help them find the right path moving forward.

If this report or similar questions about another industry are of interest to you, please consult one of our attorneys to leverage our cutting edge data analysis for your business and to maximize your IP investments.

 

 

Maier & Maier Successfully Settles ITC & NDIL Litigation Filed By Juul Labs, Inc.

Maier & Maier

Last summer, Juul Labs, Inc. launched an extensive campaign trying to eliminate nearly 50 competitors in the vape industry by alleging design patent infringement at the International Trade Commission and in numerous parallel district court litigations. Among those targets was Vaperistas, LLC, an online company that offers a wide variety of vape products including e-juices, pods, and other related accessory vape items.

Juul sought injunctive relief and punitive trebled damages in the Northern District of Illinois litigation, which was stayed while the ITC Case proceeded. At the International Trade Commission, Juul asserted four design patents (U.S. Design Patent Nos. D842,536; D858,870; D858,869; and D858,868) against Vaperistas’ products.

After Vaperistas’ involvement in the ITC proceeding was terminated in late 2020, NDIL Judge John Robert Blakey followed suit in district court earlier this year. Vaperistas joins Maier & Maier’s constantly growing list of happy clients that have been able to settle cases thanks to Maier & Maier’s team of experienced patent litigators. Using Partner level litigators at reasonable billing rates has allowed the Firm’s clients to obtain favorable results in a cost effective manner.

Led by Founding Partner Timothy J. Maier, the Maier & Maier litigation team successfully defended Vaperistas in both the ITC and Northern District of Illinois parallel proceedings. Meanwhile, Juul tapped Quinn Emanuel, a big law competitor of Maier & Maier. With the favorable settlement against the high investment opposition, Maier & Maier helped Vaperistas defend the infringement allegations at a cost that was proportional to their exposure.

With the case complete, Maier & Maier continues its well-established track-record of litigation success in District Court, before the PTAB, and before the ITC. If you or your company need similar assistance, please contact Maier & Maier’s litigation team here.

VLSI Tech Patents Win $2.18 billion From Intel

Timothy Maier

Last week, a Western District of Texas Jury entered a $2.18 billion dollar patent infringement verdict, one of the largest ever awarded in U.S. district court, in VLSI Technology LLC v. Intel Corporation.

In the case, VLSI Technology sued Intel Corp for infringement in April 2019 asserting three patents against Intel processors, but only two brought to the jury trial. The two patents were U.S. Pat. No. 7,523,373 for Minimum Memory Operating Voltage Technique and U.S. Pat. No. 7,725,759 for System and Method of Managing Clock Speed in an Electronic Device. The ‘373 patent netted VLSI a $1.5 billion verdict, while the ‘759 patent landed a $675 million sum from the jury.

Intel’s attempts to invalidate the patents all failed, leaving them liable for the products.  This includes a directed question on whether Intel’s Yonah Processor alone  anticipated the ‘759 patent, where the jury rejected the allegation, affirming the patents’ validity.

The damages will only encourage Intel in their fight against the U.S.P.T.O. for discretionary denials of their IPR petitions at the PTAB due to the advanced stage of the WDTX case, despite being filed within the one year filing deadline for accused infringers. The multinational tech firm is currently appealing the practice of discretionary denials in the Federal Circuit along with Apple, Cisco, and Google.

The Federal Circuit ruling will be heard, but in the meantime this ruling is yet another sign of the growing strength of patents in the Unites States.

USPTO To Terminate Pilot Program for First Action Interviews

Timothy Maier

As part of January 15, 2021, the USPTO will discontinue the First Action Interview Pilot Program that’s been in place for the past twelve years. The program allows practitioners to conduct an interview with the examiner prior to the first office action. This interview is held after the examiner’s preliminary prior art search and allows the practitioner to submit amendments prior to the first action response to the prior art and discussion.

As the USPTO explains;

Under the Full First Action Interview Pilot Program, an applicant is entitled to a first action interview, upon request, prior to the first Office action on the merits. The examiner will conduct a prior art search and provide applicant with a condensed pre-interview communication citing relevant prior art and identifying proposed rejections or objections. Within 30 days of receipt, applicant schedules an interview and submits proposed amendments and/or arguments. At the interview, the relevant prior art, proposed rejections, amendments and arguments will be discussed. If agreement is not reached, the applicant will receive a first action interview Office action that includes an interview summary that constitutes a first Office action on the merits under 35 USC 132.

In their announcement, the USPTO cited the low (0.2%) usage rate as the primary reason for the termination. This low usage stands in stark contrast to the rising rate of interview usage overall, with the peak coming this past October at 38.1%.

This increased interview use is with good cause, as Maier & Maier’s practitioners have had significant success using interviews to get favorable outcomes for our clients. The firm’s office is located just blocks away from the USPTO Headquarters in Alexandria, Virginia, providing easy access to in-person interviews.

If you have any questions about interviews or would like to take advantage of this program before it ends on January 15, 2021, please contact us here.

USPTO Covid-19 Relief Effort Grants Nearly 400 Applications Prioritized Status

Timothy Maier

As part of the U.S. Federal Government’s response to Covid-19, the USPTO announced programs to prioritize Covid-19 related patent and trademark applications this past May and June respectively. Since this summer, applicants were permitted to apply for special status without the normal payment requirements for special status.

Thus far, the USPTO has ushered in nearly 400 such applications with 251 patent requests and 133 trademark petitions granted. 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.  The program has resulted in 33 granted patents already related to combatting Covid-19.

“Our staff is working very hard to move COVID-19 related patent and trademark requests, ensuring the intellectual property system is fully responsive to this national emergency,” said Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “Over the past two centuries, solutions to some of the nation’s greatest problems have passed through the halls of the USPTO, and it’s very likely that some of the solutions to America’s current pandemic have already been examined by this agency.”

The success of these programs reflects the monumental efforts made by the USPTO in its Covid-19 response, as we’ve covered throughout.

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.

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.

Kunin Thankful for Strong USPTO Leadership In 2020

Timothy Maier

This Thanksgiving, Maier & Maier’s Steve Kunin noted the strength of USPTO leadership as Director Iancu deftly handled the ongoing pandemic to keep the office productive and effective.

“We should continue to be grateful for Director Andrei Iancu’s leadership and stewardship of the USPTO during these trying times caused by the adverse impacts of COVID-19. With his strong leadership, the USPTO has continued to provide vital services to the patent and trademark user communities.”

Kunin specifically noted the Iancu’s adjustments at the USPTO and responses to pandemic challenges as covered here.

“His outreach efforts have been well received and the USPTO has been open-minded and responsive to public feedback on how it can make continuous quality improvements to its services and products.”

As Kunin notes, this leadership would have been lost if not for the dedication of the USPTO employees as a whole who were forced to adjust to extensive telework like many other industries.

“Kudos as well to all the USPTO employees who have had to adapt to more extensive telework while striving to maintain continuity of operations.”

For more thoughts on the year in IP and appreciation from other experts and practitioners, see the full piece here.