Maier & Maier Secures Victory At the International Trade Commission

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 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., 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. 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

Supreme Court Narrows Patent Venue Law in TC Heartland, Likely Limiting Future Suits in the Eastern District of Texas

In TC Heartland LLC v. Kraft Foods Group Brands, LLC., 581 U. S. ____ (2017), the Supreme Court substantially narrowed the law of patent venue, preventing a patent owner from filing an infringement suit against a defendant in any district court where the defendant is subject to personal jurisdiction. Instead, patent owners will only be able to bring suit in districts in states where a defendant is incorporated, or in districts where there has been an act of infringement and the defendant has a regular and established place of business.

The ruling required the Supreme Court to reconcile two venue statutes: 28 U.S.C. § 1391, which sets forth the requirements for venue generally, and 28 U.S.C. § 1400(b), which sets forth venue requirements specific to patent infringement. The patent venue statute, 28 U.S.C. § 1400(b), stipulates that “Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” However, the general venue statute, 28 U.S.C. § 1391, allows a patent owner to file suit in any judicial district where the defendant “resides;” under 28 U.S.C. § 1391(c)(2), a corporate defendant is deemed to “reside” in any district in which the corporation would be subject to personal jurisdiction.

Past Supreme Court precedent, Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957), had established that §1400(b) is not supplemented by §1391. However, in 1988, Congress amended §1391, to state that  “[f]or purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced.” The Federal Circuit found, in VE Holding Corp. v. Johnson Gas Appliance Co., 917 F. 2d 1574 (1990), that this amendment had made §1391 applicable to patent infringement actions. Congress again amended §1391 in 2011, to state that “[e]xcept as otherwise provided by law… this section shall govern the venue of all civil actions brought in district courts of the United States.”

In this case, Kraft sued TC Heartland in the District of Delaware, where TC has no meaningful presence but does have the minimum contacts necessary for personal jurisdiction.  TC moved to dismiss or transfer the case based on improper venue, citing §1400(b). The District Court rejected these arguments based on Federal Circuit precedent and the Federal Circuit denied a writ of mandamus.

The Supreme Court decided, in a unanimous opinion, that Fourco was still good law and that §1400(b) is not supplemented or replaced by §1391. The Supreme Court based this decision on the fact that Congress never indicated that it had intended to overrule Fourco when it amended §1391 to apply to “all venue purposes” in 1988. Further, if Congress had overruled Fourco by amending §1391 to apply to “all venue purposes,” then, by essentially the same reasoning, Congress had reestablished Fourco by clarifying that §1391 applied “except as otherwise provided by law.”

The most significant effect of this case is expected to be a substantial reduction in the number of patent lawsuits filed in the Eastern District of Texas, which is often chosen for patent litigation because it is perceived to be friendlier to patent owners. Approximately 35% of all patent litigations currently pending have been filed in the Eastern District of Texas, and this case is likely to create a flood of motions to dismiss for improper venue or motions to transfer to a new district.

However, the District of Delaware, also a patent-owner-friendly district, is expected to take up the mantle of the Eastern District of Texas as the patent forum of choice. The District of Delaware is already a very popular patent forum (often the second most active for patent litigation), and as many corporations are incorporated in Delaware there are likely to be few questions of improper venue even under §1400(b).

Supreme Court Limits Laches Defense

In SCA Hygiene Products Aktiebolag et al. v. Quality Baby Products, LLC, et al., No. 15-927, 580 U.S. ___ (2017), the Supreme Court held that the defense of laches is not appropriate when suit is brought within the six year limitations period for patent infringement.
Laches is an equitable doctrine used to limit the recoverability of damages when a suit is filed after unreasonable delay.  In patent law, damages are already limited by a “statute of limitations” set forth in 35 U.S.C. § 286, which limits damages to only cover infringement that occurred within the six year period prior to the filing of the complaint. Contrary to typical limitations periods, the limitations period of 35 U.S.C. § 286 is counted backward from the filing of a complaint, not forward from the time of infringement.  However, this existing limitation on damages weighed heavily in the Court’s ruling.  The Court found that a laches defense would override the statutory damages period set forth by Congress.
The highly-anticipated ruling mirrored that of Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. ___ (2014), which addressed the defense of laches in copyright law.  On its face, the ruling looks to be favorable for patent owners by eliminating a defense in infringement proceedings and allowing plaintiffs to bring suit at a time of their choosing, which will likely be after a favorable six years of damages have accrued.