In re Google, O'Reilly Winship v. SnapRays and more

Cold open

A judge in Texas is ordered to send a patent case to California. A Board decision is wiped away after the parties had already settled. And Apple faces a new trade case over the cameras that let an iPhone recognize your face.

Good evening. I'm Professor Joe, and this is The Friday Patent Report, for the week of October fifth.

Disclosure

A quick word before we begin. My voice is generated by AI. The script is written from the decisions themselves and checked by a patent attorney before it airs. This is news and education, not legal advice.

Lead: In re Google

We start at the Federal Circuit, with a fight over venue.

The University of Southern California sued Google in the Western District of Texas, in Judge Alan Albright's court. USC accuses features in Google Earth, Google Maps, and Street View of infringing two patents. Google asked to move the case to the Northern District of California, where it is headquartered. Judge Albright said no. He found that the convenience of the witnesses slightly favored California, and called every other factor neutral.

On Tuesday, a panel of Judges Dyk, Mayer, and Stark granted Google's petition for mandamus and ordered the case transferred. In a nonprecedential order, the panel said the only specific sources of proof in the district court's transfer analysis were in Northern California. Google designed, developed, and implemented the accused features there, and not at all in the Western District. With the witness factor favoring transfer, and no factor favoring Texas, the court concluded that denying transfer was patently erroneous.

The practical point: when the people who built the accused technology, and the evidence about it, sit in another district, a forum with only thin ties to the case will have a hard time keeping it.

O'Reilly Winship v. SnapRays

Next, claim construction, and something on nearly every wall: the cover plate over an electrical outlet.

SnapRays, which does business as SnapPower, owns patents on cover plates that draw power from the outlet behind them to run a built-in night light. A competitor, O'Reilly Winship, sells lighted cover plates of its own, and asked the federal court for the Northern District of Texas to declare that it did not infringe. The court granted summary judgment of non-infringement.

On Monday, in an opinion by Judge Hughes, the Federal Circuit reversed in part. One claim requires a contact that is joined to a resilient strip inside the plate. The district court read joined to require more than a contact resting in a hole and held in place by a rear cover. But the claim names no particular way of joining, and the specification gives broad examples. So the court directed summary judgment of infringement on three claims, and sent three others back.

SnapPower lost the rest. The parties agreed that configured to means designed to, and evidence that a spring clip might touch an unusually narrow box showed only what the product could do, not what it was designed to do. The opinion is nonprecedential, but it shows both sides of claim construction at summary judgment.

Federal Circuit quick hits

Now, the rest of the week at the Federal Circuit, quickly.

In AlexSam versus Simon Property Group, the court looked past the label on a post-judgment motion. After a judgment of non-infringement, the Eastern District of Texas dismissed Simon's state-law indemnity claim against Blackhawk Network as moot. The Federal Circuit read Simon's motion as a request to correct a legal error under Rule 60(b)(1), found that the indemnity fight was still live, and, since the parties agreed the federal court should decline jurisdiction over it, sent it back for dismissal without prejudice.

In re Gamble is a lesson for anyone who appeals to the Board. The examiner rejected an inventor's claims as indefinite. His appeal brief offered no argument, and said only that the errors will be corrected. The Board treated the point as forfeited, and on Wednesday the Federal Circuit affirmed. At the Federal Circuit, he made no real argument until his reply brief, and his request for rehearing at the Board did not engage with the new rejections. The lesson: make every argument in the opening brief.

In re Gonthier, an appeal from the Board on a patent application, was affirmed on Thursday without an opinion, under Rule 36.

And two appeals from inter partes reviews ended by agreement, with no ruling on the merits: Inari Agriculture versus Corteva on Tuesday, and Sarepta Therapeutics versus the University of Pennsylvania on Thursday.

At the PTAB: institutions and Director Review

Over at the Patent Office.

The Director's notice of institution decisions on Thursday covered twelve petitions. Four trials were instituted, three inter partes reviews and one post-grant review. Two petitions were denied on discretionary grounds, and one on the merits. The other five cleared the discretionary review and will now be reviewed on the merits.

We also posted two Director Review decisions from September that are worth your time.

The first is Nearmap versus Eagle View. The Board had found Eagle View's claims unpatentable. But this was the second inter partes review against the same patent. In the first one, years earlier, the Board found that the challenger had not shown the claims unpatentable, on the strength of Eagle View's evidence of objective indicia, and the Federal Circuit affirmed. After the second decision, Nearmap settled and stopped participating. The Patent Office stepped into the appeal and asked for a remand. Then Director John Squires, on his own initiative, vacated the Board's final decision, vacated the institution decision, and denied institution. In his words: maintaining this IPR now would result in an increased risk of inconsistent outcomes, and create additional expenses for Patent Owner, even though the underlying dispute has now settled.

The second is Samsung versus Maxell. The Board had found two of Maxell's claims unpatentable, over a dissent. Those claims require demodulating through O-F-D-M. Director Squires agreed with the dissent. The petition's arguments for those claims did not address that limitation, and its general arguments about the standard leaned, at least in part, on a version of a three-G-P-P specification that the Board had found was not prior art. So Samsung had not shown it, and those two claims survive. The practical lesson: check whether every dependent-claim showing still stands if one of your references falls out.

At the ITC: 337-TA-1525

Finally, the International Trade Commission.

On October fifth, the Commission ordered an investigation, number 1525, against Apple. The complainants are two trinamiX companies, one in Austin, Texas, and one in Germany. They accuse iPhones and iPads, and components including TrueDepth camera parts and near-infrared camera modules used for face authentication and 3D sensing, of infringing six patents. They ask for a limited exclusion order and cease and desist orders.

Two details to watch. The Commission's investigative staff will not take part as a party. And the Commission flagged domestic industry for development, including whether an industry exists or is being established, how far the complainants rely on spending by third parties, and the extent of spending outside the United States.

Patent jobs this week

Before we go, the job board. Fifty-four new patent jobs reached our board this week. A few that state their pay: 3M is hiring intellectual property counsel in Minnesota, at one hundred eighty-eight to two hundred thirty thousand dollars. Perkins Coie wants a patent agent in San Diego, at one hundred fifty to two hundred twenty-five thousand. And Finnegan has mid-level litigation associate openings in Northern Virginia, with ranges that top out at three hundred sixty-five and three hundred ninety thousand. Every opening, and what the jobs pay, is on our site.

Close

That's the week. Every decision we covered is summarized on our case blog, with a link to the opinion itself. If you'd like this report in your inbox, the weekly roundup goes out every Friday. You'll find it, and our courses, at patent law professor dot com.

Have a good weekend. I'm Professor Joe. We'll see you next Friday.