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

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

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

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

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


USPTO Launches New Semiconductor Fast-Track Pilot Program

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

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

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

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


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

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.


Maier & Maier Defends Continually, Ltd. Against Allegations of Patent Infringement By Disintermediation Services, Inc. in the Western District of Texas

On June 22, 2022, Disintermediation Services, Inc. (“Disintermediation”) filed a Complaint alleging that Continually Ltd. (“Continually”) infringed U.S. Patent Nos. 11,240,183, 11,336,597, and 11,349,787, which purportedly cover two-way real time communication systems that allow asymmetric participation in conversations across multiple electronic platforms. The case was filed in the Western District of Texas, Waco Division, and was assigned to Judge Albright.

Maier & Maier represented Continually in the lawsuit, which is amongst a number of cases in which the firm has appeared in different districts in Texas. The parties were able to resolve the dispute and the case was voluntarily dismissed with prejudice on April 17, 2023.

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.

The Continually dismissal follows others in which Maier & Maier has helped defendants obtain efficient resolutions, including PASCO Scientific v. Vernier Software & Technology, (D.Or.), Aperture Net LLC v. Electric Mirror, Inc. (W.D.Wash.), Altus Partners, Inc. v. Altus Market Access, Inc. (E.D.Cal.), and Wave Linx LLC v. MeetingOne.com, Corp. (D.Colo.). The dismissal also comes on the heels of Maier & Maier successfully obtaining a stay on behalf of defendants in a patent infringement lawsuit between E9 Treatments, Inc. v. Kopman LLC et al. in the Southern District of Texas.

About Maier & Maier PLLC

In 2022, Maier & Maier issued over 800 total patents and maintained its positive growth trajectory, exceeding 25% year over year growth. The firm has proven its capacity for steady growth with an uncompromising commitment to delivering efficient and effective results.

Maier & Maier’s litigation team has also 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.

Representative Engagements

  • Cedar Lane Technologies v. THine Electronics, Inc., D.Tex., 6:22-cv-01145
  • Concrete Support Systems, LLC v. Bond Formwork Systems, LLC, W.D.Tex., 1:20-cv-01150
  • Transcend Shipping Systems, LLC v. Maersk, Inc. et al., D.Tex.,6:20-cv-01122-ADA
  • Advanced Cartridge Technologies, LLC v. Mark Collier et al., D.Tex., 1:21-cv-00657-ELY
  • AGIS Software Development LLC v. Xiaomi Corporation et al., E.D.Tex., 2:22-cv-00450 and 337-TA-1347 (International Trade Commission)
  • E9 Treatments, Inc. v. KopMan LLC, S.D.Tex., 2:22-cv-00172
  • Wave Linx LLC v. MeetingOne.com Corp., D.Colo., 1:22-cv-03077
  • Altus Partners, Inc. v. Altus Market Access, Inc.,D.Cal., 2:22-cv-01994
  • PASCO Scientific v. Vernier Software & Technology, Or., 3:21-cv-01523
  • Aperture Net LLC v. Electric Mirror, Inc.,D.Wash., 2:22-cv-015348
  • Disintermediation Services, Inc. v. Continually Ltd., D.Tex., 6:22-cv-00649
  • com, LLC v. Kinefinity, Inc., C.D.Cal., 8:21-cv-00041-JVS
  • Internet Media Interactive Corp. v. Sightline Media Group, LLC, D.Del., 1:21-cv-00970-MN
  • Freetek Holdings, LLC v. Extollo Communications, W.D.Wash. 2:21-cv-01021-TSZ
  • Sykes v. Nash Distribution, Inc., E.D.Va.,1:21-cv-00897-TSE-MSN
  • Juul Labs., Inc. v. Vaperistas LLC, N.D.Ill., 1:20-cv-04092 and 337-TA-1211 (International Trade Commission)
  • Lander Enterprises, LLC v. iSonic Inc., D.Conn., 3:20-cv-01693
  • Thomas A. Person v. Cigar Reserve LLC et al., D.Ind., 4:20-cv-00212

Maier & Maier Defends Electric Mirror, Inc. In A Case Filed by Aperture Net LLC In the Western District of Washington

Maier & Maier continues to enjoy consistent and favorable results in its litigation matters. On November 1, 2022, Aperture Net LLC filed a lawsuit accusing Electric Mirror, Inc. of infringing U.S. Patent No. 6,711,204, which purportedly covers connections between base stations and WiFi access points. The suit was filed in the Western District of Washington (2:22-cv-01548), and accused Electric Mirror’s Savvy Smart Mirror of infringement.

The case was dismissed with prejudice on March 9, 2023 (Dkt. 21). The Electric Mirror dismissal follows two others in which Maier & Maier has helped defendants obtain early dismissals, including Altus Partners, Inc. v. Altus Market Access, Inc. (EDCA) and Wave Linx LLC v. MeetingOne.com, Corp. (D.Colo.). The dismissal also comes on the heels of Maier & Maier successfully obtaining a stay on behalf of defendants in a patent infringement lawsuit between E9 Treatments, Inc. v. Kopman LLC et al. in the Southern District of Texas.

About Maier & Maier PLLC

In 2022, Maier & Maier issued over 800 total patents and maintained its positive growth trajectory, exceeding 25% year over year growth. The firm has proven its capacity for steady growth with an uncompromising commitment to delivering efficient and effective results.

Maier & Maier’s litigation team has also 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.

Representative Engagements

  • Cedar Lane Technologies v. THine Electronics, Inc., WDTX, 6:22-cv-01145
  • Concrete Support Systems, LLC v. Bond Formwork Systems, LLC, WDTX, 1:20-cv-01150
  • Transcend Shipping Systems, LLC v. Maersk, Inc. et al., WDTX,6:20-cv-01122-ADA
  • Advanced Cartridge Technologies, LLC v. Mark Collier et al., WDTX, 1:21-cv-00657-ELY
  • AGIS Software Development LLC v. Xiaomi Corporation et al., EDTX, 2:22-cv-00450 and 337-TA-1347 (International Trade Commission)
  • E9 Treatments, Inc. v. KopMan LLC, SDTX, 2:22-cv-00172
  • Wave Linx LLC v. MeetingOne.com Corp., Colo., 1:22-cv-03077
  • Altus Partners, Inc. v. Altus Market Access, Inc.,D. Cal., 2:22-cv-01994
  • PASCO Scientific v. Vernier Software & Technology, Or., 3:21-cv-01523
  • Aperture Net LLC v. Electric Mirror, Inc.,D. Wash., 2:22-cv-015348
  • Disintermediation Services, Inc. v. Continually Ltd., WDTX, 6:22-cv-00649
  • com, LLC v. Kinefinity, Inc.,C.D. Cal., 8:21-cv-00041-JVS
  • Internet Media Interactive Corp. v. Sightline Media Group, LLC, Del., 1:21-cv-00970-MN
  • Freetek Holdings, LLC v. Extollo CommunicationsD. Wash. 2:21-cv-01021-TSZ
  • Sykes v. Nash Distribution, IncEDVA,1:21-cv-00897-TSE-MSN
  • Juul Labs., Inc. v. Vaperistas LLC, D.Ill., 1:20-cv-04092 and 337-TA-1211 (International Trade Commission)
  • Lander Enterprises, LLC v. iSonic Inc., Conn., 3:20-cv-01693
  • Thomas A. Person v. Cigar Reserve LLC et al.,Ind., 4:20-cv-00212

USPTO Transitions to Electronic Patent Grants

The USPTO recently announced through the publishing of a new Federal Register final rule (88 Fed. Reg. 12560) that effective Tuesday, April 18, 2023 all newly issued patents will be issued electronically. Electronically issued patents will bear the digital signature of the USPTO director, and the corresponding patent cover sheet will be nearly identical to current cover sheets; however, they will include the seal and Director’s signature in digital form. As an additional update the new official USPTO digital seal will serve as authentication of the patent, and will include an encrypted digital signature embedded within the seal.

Eventually patents will no longer be issued in paper form and will be digital only, however there will be a yet-to-be determined transition period where a paper copy of the electronic patent will be provided as a courtesy. The courtesy copy will be mailed to the correspondence address of record. After the transition period ceremonial copies or presentation copies (certified copy of the front page that can be used for display) will be available for nominal fees. Advance copies of issued patents however will no longer be available for purchase.

Moving to electronic Patent grants will, according to the office, reduce pendency of patent applications, foster a green economy by reducing paper waste, and permit issued patents to be viewed and printed by applicants and the public immediately upon issuance in patent center. As a practical matter, the move to electronic grants will have some impact on patent practice, particularly with regards to continuation practice. Under the current system there is typically a delay of several weeks between the mailing of the issue notice and the actual issue date of the patent. Under the electronic patent process, the Office notes that patents will issue “shortly after the patent number and issue date are assigned, which will result in the reduction of pendency for allowed patent applications.” This means Applicants will have less time between the payment of the issue fee and grant, and therefore less time to file continuations, quick path Information Disclosure Statements, or petitions to withdraw an application from issue under 37 CFR 1.313(c). In line with this change the Patent Office recommends that going forward all these filings should be done as early as possible, and particularly with respect to continuations should be preferably done before the payment of the issue fee.

The above rule is just one of many steps the Patent Office has taken towards digitizing their processes. For example, the Patent Office also finalized another rule (88 Fed. Reg. 13028) the same week as the above which establishes that effective May 1, 2023 all “patent term extension (PTE) applications, interim PTE applications, and any related submission to the USPTO must be submitted electronically via the USPTO patent electronic filing system”. Professional and knowledgeable patent counsel are more important than ever to help clients navigate the ever changing and advancing systems of the USPTO.


United States Patent and Trademark Office Expands Prioritized Examination (Track One) Program

The United States Patent and Trademark Office (USPTO) has further expanded their Track One prioritized examination program by increasing the annual limit on accepted requests. Previously, the USPTO only accepted 12,000 Track One requests per fiscal year, but this announcement increases the limit to 15,000 requests per year.

Track One expedites the patent prosecution process by allowing applicants to receive a final disposition (such as a notice of allowance or final rejection) of a patent application within twelve months from the date of the Track One request.

This is an important development, since Track One allows applicants to avoid lengthy prosecution with less requirements than other prioritized examination programs. An application under Track One typically receives a final disposition in under six months on average. Non-track one applications, however, don’t even receive a first office action for over 16 months, and remain pending for an average of 23.2 months.

At Maier & Maier we take pride in developing sophisticated patent portfolios for our clients and are well equipped to navigate and take advantage of the Track One, Patent Prosecution Highway, or other programs offered by the USPTO.


U.S. District Judge Alan Albright Provides Informative Update at the 2021 IPO Annual Meeting

Judge Alan Albright assumed the bench in September of 2018 and has quickly made the Western District of Texas a premier venue for patent litigation. 24% of all patent cases filed so far in 2021 were filed in the WDTX, up from just 3% of patent cases filed in 2018. This significant increase in filings is mainly due to the unique rules Judge Albright implements in all his patent cases.

In a speech this morning to the annual meeting of the Intellectual Property Owners Association, Judge Albright emphasized his firm belief that intellectual property is a vital component of our country, and that he therefore has a personal duty to be a fair judge. Judge Albright believes he can accomplish this by providing clear rules which lead to efficient resolutions, thus saving valuable time and costs for all parties to a dispute. Lawyers and their clients can both benefit from Judge Albright’s process which provides certainty and predictability to what can otherwise be lengthy and expensive trials.

Judge Albright prides himself on creating a patent dispute resolution system where a Markman hearing is typically reached within 8 months and a trial 14-16 months after that. Judge Albright has had twice as many Markman hearings as any other Texas division- including 40 in just this past summer.

The COVID-19 pandemic has not diminished WDTX’s efficiency. Instead, Judge Albright took advantage of the flexibility and transparency of Zoom. Hearings taking place over Zoom save time and money for both parties and can also give the public immediate access to the hearing. Anyone can listen to a patent trial in Judge Albright’s court (except for certain confidential portions, such as during the damages stage). Access to the Judge’s hearings can provide a major insight to understanding how the Judge will handle certain issues, providing even more predictability for the parties as well as useful strategies to take advantage of.

The Maier & Maier litigation team is well equipped to take advantage of Judge Albright’s procedures, which allowed us to settle a recent case in just 43 days from the filing of the complaint. By monitoring Judge Albright’s cases and other trends in the case law, Maier & Maier continues its track record of successful patent cases in the Western District of Texas.