The Precedential Opinion Panel “POP” has had a number of petitions recently on key issues facing the Patent Trial and Appeal Board (“PTAB”). We’ve collected some of the most impactful below concerning the use of Applicant Admitted Prior Art (“AAPA”) and two focusing on the Fintiv factors for discretionary denial.

1. SolarEdge Techs. Ltd v. SMA Solar Tech. AG (IPR2020-00021)

In this proceeding, SolarEdge Techs. Ltd (“Petitioner”) challenged U.S. Pat. No. 8,922,048 owned by Solar Tech. AG (“PO”). The petition included three proposed grounds for obviousness, each relying on AAPA as the primary reference. In response, PO argued that the Petitioner may not use AAPA as the basis for an inter partes review (“IPR”) according to 35 U.S.C. § 311(b), which allows the use of only prior art patents and printed publications. In the Final Written Decision, the Board agreed that SolarEdge Techs. Ltd.’s use of AAPA was improper. The Board relied on the Guidance Memo (“Memo”) issued by the Director of the United States Patent and Trademark Office on August 18, 2020. While the Memo does not forbid using AAPA as a lead reference, the Board objected to Petitioner’s reliance on AAPA as the starting point for all three grounds of rejection. This suggests that future applicants’ use of AAPA to support claim limitations may be limited even if they employ additional statements to show potential improvements over the AAPA. Moreover, applicants’ reliance on prior art patents and printed publications as a “basis” may be disregarded if they use AAPA. Thus, this Decision may limit future applicants’ use of AAPA.

2. Cellco Partnership d/b/a Verizon Wireless v. Huawei Techs. Co., Ltd. (IPR2020-01352)

Here, Cellco Partnership d/b/a/ Verizon Wireless (“Petitioner”) challenged U.S. Pat. No. 8,995,253 owned by Huawei Techs. Co., Ltd. (“PO”). The Patent Trial and Appeal Board (“Board”) denied institution of the petition for inter partes review in reliance on the six-factor analysis set forth by Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential).

The Board’s denial heavily weighed factor 3 (investment in the parallel proceeding by the court and the parties) and 5 (whether the petitioner and the defendant in the parallel proceeding are the same party) of the Fintiv analysis. In their petition and reply, Petitioner argued that factor 3 favored institution because of their diligence in filing the Petition within weeks of obtaining PO’s contentions and nine months before the statutory deadline. PO countered in their preliminary response, saying that Petitioner received the claim charts well in advance of filing its Petition. While the Board recognized Petitioner’s efforts, they were outweighed by the effort and resources invested in the parallel case, especially the district court’s claim construction. In their petition and reply, Petitioner also argued that factor 5 favored institution despite the identical parties across multiple proceedings. The Board rejected this contention on the grounds that Petitioner failed to explain why this factor should not weight against it.

In requesting POP review, the petitioner asserted that the Board’s analysis was at odds with previous decisions. For both factor 3 and 5, they identified unclear precedent based on Apple Inc. v. Maxell, Ltd., IPR2020-00204, PEAG, LLC v. VARTA Microbattery GmbH, IPR2020-01211, and Weatherford U.S., L.P. v. Enventure Global Tech., Inc., IPR2020-01648 where the similar analysis of factors 3 and 5 favored institution. Even further, for factor 3, they also cited to Apple Inc. v. Seven Networks, LLC, IPR2020-00156, PEAG, LLC v. VARTA Microbattery GmbH, IPR2020-01211, and Micron Tech., Inc. v. Good Kaisha IP Bridge 1, IPR2020-01007 as further clouding the precedent.

3. Canon Inc. v. Optimum Imaging Techs. LLC, (IPR2020-01321 & ‘1322)

In this IPR, Canon Inc. (“Petitioner”) challenged U.S. Pat. Nos. 7,612,805 and 8,451,339 owned by Optimum Imaging Techs. LLC (“PO”). The Board denied institution of the petition for inter partes review in reliance on the six-factor analysis set forth by Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential).

The Board’s decision focused on expeditiousness under factor 3 (investment in the parallel proceeding by the court and the parties) of the Fintiv analysis. The Petition relied on new prior art discovered by Petitioner after the time had passed to file responses to invalidity contentions, which it had failed to find in previous searches. In their reply, Petitioner argued that they were expeditious in filing the petition only 2 months after discovering the new prior art. In their preliminary response, PO contended that Petitioner could have discovered the prior art with a reasonably diligent search. The Board dismissed Petitioner’s argument because Fintiv requires prompt filing after learning of the claims asserted, rather than discovery of the prior art. The Board explained that approving of Petitioner’s argument for basing expeditiousness on newly discovered prior art would encourage delaying the search for prior art.

This Decision potentially conflicts with at least one previous Board decision referenced in the POP request. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019.  In Sotera Wireless, the Board considered outside events affecting the timing of the petition, even though the time to file invalidity contentions had passed in the parallel litigation.

The Panel’s decision on all three of these petitions will be important to note moving forward for patent owners and PTAB petitioners alike. If you have any questions or concerns about how any of these matters may affect your intellectual property strategies moving forward, please reach out to us here.

In yet another sign of the strength of the U.S. patent system, the USPTO has now issued Pat. No. 11,000,000. The patent, dated May 11, 2021, was for “Repositioning Wires and Methods for repositioning Prosthetic Heart Valve Devices Within a Heart Chamber and Related Systems, Devices, and Methods”.

When the USPTO began numbering patents in 1836, Pat. No. 1 was issued for a traction wheel for steam locomotives and it took 163 years before the USPTO issued Pat. No. 6,000,000 in 1999. Innovation has gained even more steam since then, as the USPTO has issued another 5 million patents in the past 22 years.

“Since the founding of our nation, American inventors have driven our culture and commerce with incredible ideas that have improved every function of our lives. We owe a debt of gratitude to inventors who continue to show up day after day with solutions to the world’s most pressing problems. We congratulate the inventors behind patent 11 million and all of the innovators who helped the country reach this milestone,” described Drew Hirschfield, who is currently performing the duties of USPTO Director.

The patent comes at a time when the USPTO has been among the leaders spurring innovation to help combat the ongoing pandemic caused by SARS-CoV-2. The USPTO has made adjustments to facilitate remote work to ensure functionality throughout the pandemic and enacted additional procedures benefiting applications covering inventions that combat virus.

Maier & Maier is proud to be a part of the ongoing innovation efforts in the U.S. and assisting our clients protecting their hard work. If you have any questions or concerns about the pilot or how it may apply to your applications, please reach out to us here.

Last week, the Supreme Court issued their long awaited and highly anticipated decision in Google v. Oracle, which had been pending for a decade. In the 6-2 decision for Google, the Court ruled that Google’s use of Oracle’s code was Fair Use, reversing the Federal Circuit’s decision and allowing Google to escape the infringement allegations by Oracle.

The Case

The case centered around the Android operating system designed by Google in their first foray into the smartphone arena. In the coding, Google used 11,000 lines of the Java SE platform coding for common interface commands. Oracle, the current owner of the Java SE platform, filed suit on the basis that the use of the lines constituted infringement. While a jury found them to be “fair use”, the Federal Circuit disagreed, reversing the decision, and leading the case to the Supreme Court.

The Court granted certiorari on the following two questions:

(1) Whether copyright protection extends to a software interface; and

(2) whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.

The Decision

Oral Arguments were heard last fall, leading to the decision issued here. The decision was authored by Justice Breyer and joined by Justices Roberts, Gorsuch, Kavanaugh, Sotomayor, and Kagan. Justice Thomas was joined by Justice Alito in his dissenting opinion. Justice Barrett had not yet joined the Court and accordingly did not play a role in the case.

The majority did not rule on the first issue of whether copyright protection extends to software interface, opting instead to focus on the second issue, where they ruled with the jury that Google’s use of a software interface in creating a new computer program was fair use. This determination upheld Google’s infringement defense, and eliminated Oracle’s infringement claims and potential damages. By skipping to the second question on the assumption that the code was protectable, the Court arrived at the same result that would have come from their determination in the first issue.

In his dissent, Justice Thomas objected to this majority’s assumption of copyrightability and performed the full analysis. He concluded that it was copyrightable, but only because it was specifically limited to exact functions, not merely the abstract use of declaring code. Thomas then did his own Fair Use analysis, finding three of the four factors favored Oracle over Google, and believed this was not an example of Fair Use.

Conclusion

While there are considerable aspects of copyright law which may be affected by this decision, the impacts could have even broader implications. Despite the 6-2 split, all 8 of the Justices found compelling interests in the importance of IP protection for software. That shared belief could prove crucial if the Court is to take up the Abstract Idea §101 issue for patent law and its application to software interfaces and diagnostics.

If you have any questions about how this may affect your IP interests, please reach out to an attorney here.

The Maier & Maier litigation team recently secured the dismissal of another patent infringement suit that had been brought against its client. Last month, District Judge Tanya Walton Pratt dismissed patent infringement claims brought by Plaintiff Thomas A. Person against Cigar Reserve LLC and its owners, Brian and Chanda Kurland.

In October 2020, Mr. Person filed a Complaint in the Southern District of Indiana alleging infringement of two patents relating to cigar spills. The first was a utility patent, U.S. Pat. No. 8,507,070, entitled “Cedar spill,” and the second was a design patent, U.S. Pat. D664,292 entitled “Cedar Spill for a Cigar.” The complaint demanded trebled damages along with injunctive relief from Cigar Reserve and the Kurlands.

The Maier & Maier litigation team was able to defend Cigar Reserve and its owners from the Plaintiff’s demands and helped them come to a favorable resolution of the case. Cigar Reserve joins Maier & Maier’s constantly growing list of happy clients that have obtained favorable rulings thanks to the firm’s team of expert patent litigators that litigate at cost effective and efficient rates.

With another resolution for their client, Maier & Maier continues its string of successful representations in contentious matters, earning favorable results 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.

On March 31^st, 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.