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

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.


Perspectives on USPTO Rulemaking

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 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!


Fed Circuit Overturns $2.18-billion-dollar Judgement in VLSI Technology LLC v. Intel Corporation

In 2021, VLSI brought a patent infringement case against Intel seeking $3 billion in damages in the Western District of Texas. A jury decision found that Intel had infringed 2 of VLSI’s patents and awarded VLSI a $2.18 billion dollar settlement for said infringement.

The 2 patents at issue were US Patent No. 7,523,373 “Minimum Memory Operating Voltage Technique” and US Patent No. 7,725,759 “System and Method of Managing Clock Speed in an Electronic Device”. Intel’s accused products included various Haswell and Broadwell Microprocessors. The jury found that Intel infringed the ‘373 patent on the basis of literal infringement and infringed the ‘759 patent but only under the doctrine of equivalents.

Generally speaking, the doctrine of equivalents provides a limited exception to the principle that claim meaning defines the scope of rights granted by a patent, the inquiry required by the doctrine is “Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?” (see MPEP 2186). However, courts have often emphasized “that the doctrine of equivalents is the exception, however, not the rule,” Eli Lilly & Co. v. Hospira, Inc., 933 F.3d 1320.

Intel appealed the decision to the U.S. Court of Appeals for the Federal Circuit, arguing that Intel did not infringe either of the patents, and specifically with regards to the ‘759 patent, that VLSI improperly invoked the doctrine of equivalents as (a) they were barred by prosecution history estoppel from invoking the doctrine of equivalents, and (b) VLSI’s evidence of equivalents was legally insufficient for a showing of infringement. Additionally, Intel argued that even if they had infringed the patents, the damages awarded with respect to the ‘373 patent were improper.

In a precedential decision released December 4, 2023, the Federal Circuit partially agreed with Intel’s position and reversed the earlier jury decision in part and affirmed in part. First on the ‘373 patent, while the court upheld the finding of infringement on the ‘373 patent, the court found Intel’s arguments with respect to damages to be persuasive. Therefore, while the infringement finding will be upheld, the case will be remanded for another hearing exclusively on damages.

On the ‘759 patent the court disagreed with Intel’s argument that VLSI was barred from bringing up doctrine of equivalents due to prosecution history estoppel but agreed that the evidence of equivalence VLSI provided was legally insufficient to form a verdict of infringement. Specifically, the ‘759 patent claim required “a first master device coupled to the bus, the first master device configured to provide a request to change a clock frequency of a high-speed clock in response to a predefined change in performance of the first master device”. Intel however showed that for their devices the equivalent cores did not request to change frequency based on changes the cores identified in their own performance, because only the software running on the (receiving) power control unit, based on observations of system conditions, called for a frequency change.

VLSI’s argument under the doctrine of equivalents attempted to accommodate this discrepancy by stating that Intel’s combination of (a) the core and (b) the software module on the power control unit that actually called for the frequency change, were equivalent to the first master device required by the claims. In order for this argument to meet the burden required by the doctrine, the court stated VLSI’s testimony needed to show “that the core and certain code, which resides on the power control unit, together perform substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed ‘first master device”.

VLSI’s testimony “contain[ed] no meaningful explanation of why the way in which the request is made is substantially the same as what the claim prescribes. The question [was] not whether, in a schematic drawing used to illustrate functions, an engineer could ‘draw[] . . . [a] line’ in different places. The question is about actual functionality-location differences. It is not enough, moreover, to say that the different functionality location placements were a ‘design choice.” Therefore, VLSI’s testimony was legally insufficient to support a showing of infringement under the doctrine of equivalents.

The court’s holding here may have significant impact on the use of doctrine of equivalents in patent infringement litigation going forward, as the court increasingly emphasizes that the doctrine is a narrow doctrine, only to be applied in “exceptional” circumstances.


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.