Maier & Maier Secures Victory At the International Trade Commission

Maier & Maier

April 22, 2024  – Maier & Maier PLLC is pleased to report that our clients Hikam America, Inc., Hikam Electrónica de México, S.A. de C.V., Hikam Tecnologia de Sinaloa, Hewtech Philippines Corp., Hewtech Philippines Electronics Corp., and Hewtech (Shenzhen) Electronics Co., Ltd. have been terminated from ITC Investigation No. 337-TA-1365.

The Firm represented six of the Respondents in an ITC Investigation in which they were accused by Shoals Technologies Group, LLC (“Shoals”) of infringing U.S. Patent No. 10,553,739 (“the ‘739 Patent”), which purportedly covers molded fuses used in solar installations.

On March 6, 2024, the presiding ALJ issued an Initial Determination (Order No. 20) granting Respondents’ motion for summary determination pursuant to Commission Rule 210.18(b) (19 CFR 210.18(b)). The ID found that under the proper claim construction, Shoals has not shown that genuine issues of material fact exist regarding whether Shoals has satisfied the technical prong of the domestic industry requirement with respect to the ’739 Patent.

On March 13, 2024, Shoals filed a petition for review of the ID. On March 26, 2024, Respondents and OUII each filed separate responses to Shoals’ petition for review of the ID.

On April 19, 2024, the Commission determined not to review the ID. Because Shoals has not satisfied the technical prong of the domestic industry requirement for the ’739 patent, the investigation is now terminated as to the ’739 patent with a finding of no violation.

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 a District Court case earlier this 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, the Trademark Trial and Appeal Board, and the International Trade Commission.

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

Maier & Maier

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.

New Proposal Requirements for Terminal Disclaimers Filed to Overcome Non-Statutory Double Patenting

Maier & Maier

The filing and recordation of an unnecessary terminal disclaimer has been characterized as an “unhappy circumstance” (MPEP 1490, citing In re Jentoft, 392 F.2d 633, 639 n.6 (CCPA 1968)). In an apparently “not significant” regulatory action, the USPTO is proposing a noteworthy change to terminal disclaimer requirements. 89 Fed. Reg. 40439-49 (May 10, 2024). The change being proposed would have profound effects on the prosecution of patent families and would turn the filing of even necessary terminal disclaimers into an even more unhappy circumstance. In essence, the proposed rule would require that a terminal disclaimer to overcome a non-statutory double patenting (NSDP) rejection also include a provision that the patent in which the disclaimer is filed (“target patent”) is no longer enforceable if that patent is or ever has been tied directly or indirectly by a terminal disclaimer to overcome NSDP to another patent (“reference patent”) that includes: (1) a claim that has been finally held unpatentable or invalid under 35 U.S.C. § 102 or 103 in a Federal court in a civil action or at the USPTO, or (2) a statutory disclaimer of a claim filed after any challenge based on 35 U.S.C. § 102 or 103 to that claim has been made.

Under today’s practice, applicants facing a NSDP rejection over a reference patent in the same patent family (applications/patents sharing a common priority date or a common patent term filing date) often file a terminal disclaimer (or ask that the requirement be held in abeyance) as a matter of course simply to remove the issue. The current consequences of a terminal disclaimer for patents in a common patent family are the need to maintain common ownership and possible effects on patent term adjustment. The consequences of filing a terminal disclaimer with the USPTO’s proposed provision – possible unenforceability of the entire patent if any claim in any reference patent is held invalid under 35 U.S.C. § 102 or 103 – are sufficiently concerning that any NSDP rejection must be carefully considered. Specifically, applicants will want to insist on a specific explanation of how each claim subject to a NSDP rejection is not patentably distinct from some claim of the reference patent to be assured that: (1) the NSDP rejection is sufficiently strong that filing the terminal disclaimer is the only way to obtain a patent on the rejected claims (i.e., an appeal would be futile); and (2) claims not properly subject to a NSDP rejection can be pursued in another application.

The USPTO is concurrently proposing a number of changes to patent fees, including tiered disclaimer fees that increase the later in prosecution the disclaimer is filed, and additional fees for continuing applications filed more than five years from the benefit date claimed under 35 U.S.C. § 120, 121, 365(c), or 386(c). The increasing disclaimer fees would appear to encourage filing of terminal disclaimers to resolve NSDP issues early in prosecution, but the USPTO’s terminal disclaimer proposal will encourage applicants to avoid filing any terminal disclaimer if at all possible, leading to terminal disclaimers being filed later in prosecution if filing a terminal disclaimer cannot be avoided. It is not clear what effect these two proposals will have on early resolution of double patenting issues, but it is clear that the proposed fee and disclaimer changes will result in an increase in the costs of obtaining patent coverage.

The USPTO’s proposed rule notice mentions a 37 CFR 1.182 option for removing a terminal disclaimer, and explains how in various examples the removal of a terminal under this procedure will determine whether or not a patent is considered to have “never been tied” to another patent by the terminal disclaimer. As discussed in the proposed rule, pre-existing USPTO guidance indicates that there is no means to remove or nullify a terminal disclaimer in an issued patent, but that a petition under 37 CFR 1.182 may be used to seek removal or nullification of a terminal disclaimer that is no longer necessary or was filed in error (MPEP 1490). The grant of a petition under 37 CFR 1.182, however, does not always assure that a patent will be considered as having “never been tied” to another patent by the terminal disclaimer (as discussed in the proposed rule), and the grant of such a petition is within the USPTO’s discretion. The only way for an applicant to ensure that a patent will not be subject to a terminal disclaimer containing this proposed provision is not filing one in the first place.

Applicants must consider prosecution of patent families (and other related patents that could form the basis of a NSDP), and not just the application subject to a NSDP rejection. An applicant cannot avoid double patenting by disclaiming the claims of the patent forming the basis of a NSDP rejection (reference patent). Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 n.5 (Fed. Cir. 2001)(“[a] patent owner cannot avoid double patenting by disclaiming the earlier patent”). Thus, the situation is already largely determined once the patent that may be the basis for a future double patenting rejection – the reference patent – is issued. Applicants contemplating possible continuing applications will need to consider the downstream effects of the claims in any potential reference patent. Applicants will want to avoid having distinct inventions, or possibly even separately patentable claims, in a single patent.  Applicants will be less inclined than they already are to challenge restriction requirements. In a previous rulemaking (ultimately withdrawn), the USPTO provided for applicant-suggested restrictions (72 Fed. Reg. 46740-41, 46842 (Aug. 21, 2007), to have been codified as 37 CFR 1.142(c)). Applicants may want to consider such an approach, even if not expressly provided for in the rules.

Finally, it is less than clear that this rule (if adopted) would survive court review. The USPTO relies on In re Van Ornum, 686 F.2d 937 (CCPA 1982), as authority for this type of requirement for a terminal disclaimer to overcome NSDP. Van Ornum addressed a specific requirement (common ownership) that was in place for a decade at the time of the challenge and adopted with the support of the patent community. Van Ornum, 686 F.2d at 945-46. The court-recognized practical effect of a terminal disclaimer is to create a situation equivalent to having the claims of all the patents tied together by terminal disclaimer(s) in one single patent. In re Braithwaite, 379 F.2d 594, 601 (CCPA 1967) (cited in Van Ornum). The CCPA considered the common ownership provision at issue in Van Ornum acceptable because a NSDP terminal disclaimer is to create a situation equivalent to having the claims of all the patents tied together by the terminal disclaimer in one single patent, and it is not permissible to assign separate claims of a single patent to different parties. Van Ornum, 686 F.2d at 948 (citing Pope v. Gormully, 144 U.S. 248 (1892)). There is no analogous statutory or judicial principle that all or some subset of claims in a patent are no longer enforceable if any claim of that patent is held invalid under 35 U.S.C. § 102 or 103; rather, the patent statutes and judicial rulings are to the contrary. To the USPTO’s credit, it is not shy in stating that its purpose is to address existing statutory provisions and judicial rules (the current state of the law), which it sees as impeding market entry. 89 Fed. Reg. at 40441 (middle column). This USPTO effort, however, may be unavailing as the Federal Circuit does not accept the view that the USPTO may effectively set aside its judicial rules (much less statutes) by regulation. Agilent Tech. v. Affymetrix, 567 F.3d 1366, 1375 (Fed. Cir. 2009)(“This court does not accept the PTO’s statement that is can ‘administratively set aside the judicially created rule of In re Spina.’ Judicial precedent is as binding on administrative agencies as are statutes”)(citing Rowe v. Dror, 112 F.3d 473, 479 n.2 (Fed. Cir. 1997)).

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

Maier & Maier

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

Perspectives on USPTO Rulemaking

Maier & Maier

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

Maier & Maier

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!

New USPTO Final Rule Establishes Separate Design Patent Bar

Maier & Maier

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

Maier & Maier

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.

Federal Circuit Revisits IPR Estoppel in Ironburg Inventions LTD. v. Valve Corp.

Maier & Maier

Ironburg Inventions LTD. v. Valve Corp., 21-2295 (Fed. Cir. 2023)

This case presented the Court of Appeals for the Federal Circuit with an opportunity to clarify the standards for determining estoppel of invalidity grounds in inter partes review (IPR) pursuant to 35 U.S.C. § 315(e)(2).

Ironburg initially sued Valve in 2015 for infringement of their U.S. Patent 8,641,525 (the ‘525 patent) which describes a handheld video game controller with the particular innovation of back control buttons. Valve’s “Steam Controller” included similar back buttons. The trial took place in 2021 over Zoom with the jury returning a verdict of willful infringement by Valve and awarding over $4 million in damages to Ironburg. Both parties appealed.

Valve raised on appeal the arguments that: first, the claims of the ‘525 patent are invalid as indefinite; second, that Valve is entitled to judgment as a matter of law because trial record contained insufficient evidence to find infringement, or alternately that Valve is entitled to a new trial because the trial court erroneously allowed a co-inventor to provide testimony wile Valve’s genera counsel’s testimony was excluded; third, the district court erred in denying Valve’s motion for judgment as a matter of law on the issue of willfulness, or alternatively for a new trial on willfulness; and fourth, Valve should not have been estopped from asserting prior art grounds against the ‘525 patent. Ironburg’s cross-appeal for enhanced damages was dismissed as the district court was within its discretion to decline a grant of enhanced damages.

The appeals court dismissed Valve’s first arguments for indefinite claims. The terms describing the controller back buttons as “elongate member[s]” “substantially the full distance between the top and bottom edge” were found clearly, to a person of ordinary skill in the art, to be descriptive of long buttons spanning the length of the back of the controller which are accessible to the users third, fourth, and fifth fingers.

Judge Clevenger’s dissenting opinion on this issue contends that the “extends substantially the full distance between the top edge and bottom edge” language is indefinite because it gives a person of ordinary skill in the art no certain boundaries for starting and ending such a measurement. He finds that the district court merely “held ipse dixit that Valve did not carry its burden” for proving that this language is indefinite without properly addressing Valve’s measurement argument.

Valve’s appeal for judgment as a matter of law was dismissed by the appeals court based on finding that the jury was provided with substantial enough evidence to reach their conclusion. A significant factor in this finding was the fact that each juror had an actual Steam Controller sent to their homes for hands-on examination. The alternate appeal for new trial was also dismissed because the district court was found to have acted within its discretion in excluding Valve’s proffered testimony.

The appeals court did find that the district court erred as to Valve’s third issue on appeal regarding willfulness, however the error was harmless and thus the denial of Valves motions was upheld.

Valve’s fourth issue on appeal resulted in a significant clarification to the standards for Non-Petitioned Grounds estoppel in IPR review. Valve presented four grounds for invalidity, two Non-Instituted and two Non-Petitioned. The appeals court found that the district court was correct in estopping the two Non-Instituted Grounds because they were included in Valve’s initial IPR petition but not instituted by the Patent and Trademark Office. Valve chose not to seek remand for this decision and therefore forfeited their claim against estoppel.

In contrast, estoppel of the Non-Petitioned Grounds was vacated and remanded. The “standards by which a determination is to be made as to what invalidity grounds not presented in a petition are estopped” had not yet been addressed by the appeals court. Thus, the district court was left to look to other district court rulings, and erroneously placed the burden of proof on Valve for determining whether “a skilled searcher conducting a diligent search reasonably could have been expected to discover” the grounds in question. The appeals court held instead that “the burden of proving, by preponderance of the evidence, that a skilled searcher exercising reasonable diligence would have identified an invalidity ground rests on the patent holder, as the party asserting and seeking to benefit from affirmative defense of IPR estoppel.”

The court’s holding on Valve’s fourth issue on appeal will have significant impact on litigation concerning IPR estoppel moving forward, as patent owners have now been strapped with a new burden of proof in defenses against invalidity.

To Qualify as a Joint Inventor – HIP, Inc. v. Hormel Foods Corp., 22-1696 (Fed. Cir. 2022)

Maier & Maier

Earlier this year, in an opinion by Judge Lourie the Court of Appeals for the Federal Circuit overturned a district court decision finding that David Howard, a representative of HIP, should be added as a joint inventor on Hormel’s U.S. Patent 9,980,498 (the ‘498 patent). The relevant independent claims, 1 and 5, describe methods of making precooked bacon and meat pieces (respectively) using hybrid cooking systems.

Hormel’s relationship with HIP began in 2007 when they entered into a joint agreement to develop an oven to be used for a two-step cooking process. During the first three months of this process Howard disclosed an infrared preheating concept which became the core issue on appeal. Hormel later moved testing to its own research facility and finalized their process, filing the ‘498 patent thereafter.

HIP suit against Hormel alleged that Howard was either the sole or joint inventor. The district court found him to be a joint inventor based on his contribution of the infrared oven preheating concept which appears in independent claim 5. Hormel raised two issues on appeal, only one of which was necessary for reaching the judgment.

“To qualify as a joint inventor, a person must make a significant contribution to the invention as claimed” based on the Pannu three part test: (1) contribution in some significant manner to the conception of the invention; (2) contribution to the claimed invention that is not insignificant in quality when measured against the dimension of the full invention; and (3) did more than merely explain to the actual inventors some well-known concepts and/or the current state of the art. All three Pannu factors must be met for one to be a joint inventor.

The Court reached its decision based solely on the insignificance of Howard’s contribution in light of the invention in its entirety, negating the second Pannu factor. First, Howard’s infrared preheating contribution is mentioned only once in one of the claims, claim 5, as one of three possible alternative methods. In contrast, the use of microwave ovens as developed by Hormel is featured repeatedly thought the patent. Further, the examples and figures not once describe or depict the use of an infrared oven, again focusing on microwave ovens.

In summary, HIP’s favorable district court ruling that Howard was to be added as joint inventor of the ‘498 patent was overturned based on the overwhelming insignificance of his infrared oven preheating contribution in comparison to the overall invention as described in the patent. Inventors should be on notice that to secure their inclusion as joint inventors their contributions must appear frequently or prominently in both the figures and text of a patent.