WEBVTT

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A judge in Texas is ordered to
send a patent case to California.

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A Board decision is wiped away after
the parties had already settled.

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And Apple faces a new trade case over the

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cameras that let an iPhone
recognize your face.

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Good evening.

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I'm Professor Joe, and this
is The Friday Patent Report,

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for the week of October fifth.

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A quick word before we begin.

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My voice is generated by AI.

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The script is written from
the decisions themselves

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and checked by a patent
attorney before it airs.

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This is news and education,
not legal advice.

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

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The University of Southern
California sued Google in the

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Western District of Texas, in
Judge Alan Albright's court.

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USC accuses features in
Google Earth, Google Maps,

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and Street View of infringing two patents.

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Google asked to move the
case to the Northern

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District of California,
where it is headquartered.

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Judge Albright said no.

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He found that the convenience
of the witnesses slightly

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favored California, and called
every other factor neutral.

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On Tuesday, a panel of Judges
Dyk, Mayer, and Stark granted

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Google's petition for mandamus
and ordered the case transferred.

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In a nonprecedential order, the panel
said the only specific sources of

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proof in the district court's transfer
analysis were in Northern California.

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Google designed, developed,
and implemented the accused

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features there, and not at
all in the Western District.

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With the witness factor favoring
transfer, and no factor favoring Texas,

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the court concluded that denying
transfer was patently erroneous.

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The practical point:

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when the people who built
the accused technology,

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and the evidence about it, sit in
another district, a forum with

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only thin ties to the case will
have a hard time keeping it.

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Next, claim construction, and
something on nearly every wall:

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the cover plate over an electrical outlet.

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SnapRays, which does business as
SnapPower, owns patents on cover plates

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that draw power from the outlet behind
them to run a built-in night light.

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A competitor, O'Reilly Winship,
sells lighted cover plates

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of its own, and asked the
federal court for the Northern

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District of Texas to declare
that it did not infringe.

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The court granted summary
judgment of non-infringement.

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On Monday, in an opinion by Judge Hughes,
the Federal Circuit reversed in part.

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One claim requires a contact that is joined
to a resilient strip inside the plate.

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The district court read
joined to require more than a

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contact resting in a hole and
held in place by a rear cover.

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But the claim names no
particular way of joining,

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and the specification
gives broad examples.

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So the court directed summary
judgment of infringement

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on three claims, and
sent three others back.

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SnapPower lost the rest.

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The parties agreed that
configured to means designed to,

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and evidence that a spring clip
might touch an unusually narrow box

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showed only what the product could
do, not what it was designed to do.

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The opinion is nonprecedential,
but it shows both

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sides of claim construction
at summary judgment.

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

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In AlexSam versus Simon Property Group,

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the court looked past the label
on a post-judgment motion.

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After a judgment of non-infringement,
the Eastern District of Texas dismissed

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Simon's state-law indemnity claim
against Blackhawk Network as moot.

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The Federal Circuit read Simon's
motion as a request to correct a legal

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error under Rule 60(b)(1), found that
the indemnity fight was still live,

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and, since the parties agreed
the federal court should decline

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jurisdiction over it, sent it back
for dismissal without prejudice.

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In re Gamble is a lesson for
anyone who appeals to the Board.

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The examiner rejected an
inventor's claims as indefinite.

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His appeal brief offered no argument,

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and said only that the
errors will be corrected.

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The Board treated the point as forfeited,

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and on Wednesday the
Federal Circuit affirmed.

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At the Federal Circuit, he made no
real argument until his reply brief,

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and his request for rehearing at the Board
did not engage with the new rejections.

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The lesson:

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make every argument in the opening brief.

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In re Gonthier, an appeal from the
Board on a patent application,

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was affirmed on Thursday without
an opinion, under Rule 36.

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And two appeals from inter
partes reviews ended

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by agreement, with no
ruling on the merits:

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Inari Agriculture versus
Corteva on Tuesday, and Sarepta

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Therapeutics versus the University
of Pennsylvania on Thursday.

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Over at the Patent Office.

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The Director's notice of institution decisions
on Thursday covered twelve petitions.

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Four trials were instituted, three inter
partes reviews and one post-grant review.

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Two petitions were denied on discretionary
grounds, and one on the merits.

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The other five cleared
the discretionary review

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and will now be reviewed on the merits.

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We also posted two
Director Review decisions

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from September that are worth your time.

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The first is Nearmap versus Eagle View.

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The Board had found Eagle
View's claims unpatentable.

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But this was the second inter partes
review against the same patent.

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In the first one, years earlier,
the Board found that the challenger

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had not shown the claims unpatentable,
on the strength of Eagle View's

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evidence of objective indicia,
and the Federal Circuit affirmed.

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After the second decision, Nearmap
settled and stopped participating.

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The Patent Office stepped into the
appeal and asked for a remand.

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Then Director John Squires, on his
own initiative, vacated the Board's

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final decision, vacated the institution
decision, and denied institution.

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In his words:

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maintaining this IPR now would
result in an increased risk of

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inconsistent outcomes, and create
additional expenses for Patent Owner,

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even though the underlying
dispute has now settled.

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The second is Samsung versus Maxell.

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The Board had found two of Maxell's
claims unpatentable, over a dissent.

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Those claims require
demodulating through OFDM.

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Director Squires agreed with the dissent.

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The petition's arguments for those
claims did not address that limitation,

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and its general arguments about the
standard leaned, at least in part,

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on a version of a 3GPP specification

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that the Board had found
was not prior art.

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So Samsung had not shown it,
and those two claims survive.

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The practical lesson:

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check whether every
dependent-claim showing still

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stands if one of your
references falls out.

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Finally, the International
Trade Commission.

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On October fifth, the
Commission ordered an

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investigation, number 1525, against Apple.

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The complainants are
two trinamiX companies,

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one in Austin, Texas, and one in Germany.

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They accuse iPhones and iPads, and
components including TrueDepth

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camera parts and near-infrared
camera modules used for face

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authentication and 3D sensing,
of infringing six patents.

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They ask for a limited exclusion
order and cease and desist orders.

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Two details to watch.

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The Commission's investigative staff
will not take part as a party.

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And the Commission flagged domestic
industry for development, including whether

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an industry exists or is being established,
how far the complainants rely on

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spending by third parties, and the extent
of spending outside the United States.

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Before we go, the job board.

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Fifty-four new patent jobs
reached our board this week.

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A few that state their pay:

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3M is hiring intellectual
property counsel in Minnesota,

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at one hundred eighty-eight to two
hundred thirty thousand dollars.

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Perkins Coie wants a
patent agent in San Diego,

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at one hundred fifty to two
hundred twenty-five thousand.

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And Finnegan has mid-level litigation
associate openings in Northern Virginia,

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with ranges that top out at
three hundred sixty-five

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and three hundred ninety thousand.

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Every opening, and what the
jobs pay, is on our site.

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That's the week.

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Every decision we covered
is summarized on our

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case blog, with a link
to the opinion itself.

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If you'd like this report in your inbox,
the weekly roundup goes out every Friday.

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You'll find it, and our courses,
at patentlawprofessor.com.

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Have a good weekend.

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I'm Professor Joe.

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We'll see you next Friday.