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Michael Erbele focuses on intellectual property litigation and appellate-level disputes, representing clients in federal courts and agencies throughout the United States and in state court in Minnesota. He is involved in all aspects of complex intellectual property cases, from investigation and preparation of the complaint through trial, post-trial, and appeal.

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Michael’s practice centers on patent infringement, trademark and trade dress infringement, unfair competition claims, and trade secret misappropriation. He has a technical background in chemistry and has represented clients in a wide variety of fields, including chemical technologies, consumer products, medical devices, pharmaceuticals, and software.

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Outside the firm, Michael Erbele volunteers for the Minnesota Center for Environmental Advocacy, providing pro bono assistance in administrative law matters. He is a former adjunct professor at the University of Minnesota Law School, where he taught intellectual property appellate advocacy.

While in law school, Michael served as a judicial extern to the Honorable Kermit E. Bye on the United States Court of Appeals for the Eighth Circuit. He received the A. Harold Weber Award for outstanding achievement in the art of oral argument and was a member of the Notre Dame New York Bar Appellate Moot Court Team.

University of Notre Dame Law School, J.D., 2012, 

Concordia College, B.A. Chemistry and Philosophy, 2009, 

Michael Erbele, Intellectual Property Attorney

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Minneapolis

Congratulations to Merchant &amp; Gould’s pro bono team &#8212; Paige Stradley, attorney; Michael Erbele, attorney; Kristin Drieman, litigation paralegal; and Anne-Marie Larkin, legal assistant &#8212;&nbsp;for their&nbsp;work around environmental issues and pollution.&nbsp; This is a win for the Minnesota Center for Environmental Advocacy (MCEA), as well as for Minnesota’s rivers.



With their help, on March 31, MCEA won a court case upholding the “River Eutrophication Standard,” a 2014 rule limiting phosphorus pollution in Minnesota. Phosphorus discharges are a key component of nutrient pollution that causes dangerous algae blooms in our waterways. MCEA’s petition to the EPA in 2009 asking for stronger state standards led to the rulemaking process that resulted in the River Eutrophication Standard.



Paige and Michael acted as pro bono counsel for the MCEA, with support from Kristin and Anne-Marie, defending the River Eutrophication Standard in the U.S. District Court for the District of Columbia. Center for Regulatory Reasonableness v. U.S. Environmental Protection Agency challenged the EPA’s approval of water quality standards that MCEA sought to protect rivers and streams from nutrient pollution. MCEA intervened in this case, alongside EPA and the Minnesota Pollution Control Agency. It was the latest in a series of legal cases filed by opponents of strong water quality standards. Once again, the U.S. District Court for the District of Columbia upheld the phosphorus protections, concluding “[n]othing in the administrative record before me suggests that EPA’s decisions … were arbitrary, capricious, or contrary to law. Quite the opposite, the record here reflects precisely the sort of cooperative federalism that the Clean Water Act envisions.”



Paige and Michael’s work was recognized by Megan Jekot of the MCEA as a key element in the successful defense of this water quality standard.&nbsp; Dr. Michael Overend, DVM, and MCEA supporter, also added, “The collective Merchant &amp; Gould team is our environmental hero, and we are grateful for their contribution to this important work.”



“Congratulations and thank you to Paige, Michael, Kristin and Anne-Marie for their work and for helping protect our Minnesota rivers,” said Patrick Johnson, P.E., pro bono chair and partner, Merchant &amp; Gould.&nbsp; “Merchant &amp; Gould is proud to provide bro bono services that make a difference in our community and for our environment.”&nbsp;

Merchant & Gould’s Minneapolis Team Wins Pro Bono Case, Protecting Minnesota Rivers from Phosphorus Pollution

12 Attorneys Were Recognized in the Minneapolis Office.



Congratulations to nine Merchant &amp; Gould attorneys in the Minneapolis office who have been named 2020 Minnesota Super Lawyers, distinguishing themselves in their legal practice.&nbsp; Only the lawyers in the top 5 percent of the total lawyers in the state were selected to the Super Lawyers list.



John Clifford was recognized for excellence in intellectual property law. Allen Hinderaker, Rachel Hughey, Scott Johnston, Heather Kliebenstein, Dan McDonald, Will Schultz, Tony Zeuli and Rachel Scobie Zimmerman were recognized for excellence in IP litigation.



In addition, Merchant &amp; Gould is proud to announce that three attorneys were recognized as 2020 Minnesota Rising Stars. Eric Chad, Michael Erbele and Paige Stradley are distinguished under the category of IP litigation. Rising Stars are attorneys 40 and under who have been practicing law for 10 years or less. They are selected annually based on nominations from other attorneys and an independent review board. &nbsp;No more than 2.5 percent of attorneys are selected for Rising Stars in any state.



Every year, Super Lawyers selects attorneys from all firm sizes and more than 70 practice areas on a state-by-state basis. &nbsp;Super Lawyers selects attorneys using a patented multiphase process, which includes evaluating them on 12 indicators of peer recognition, professional achievement and independent research.

Merchant & Gould Announces 2020 Super Lawyers and Rising Stars in Minnesota

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in The Best Lawyers in America: Ones to Watch 2021 Edition. 



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



MINNEAPOLIS, MN Joseph W. Dubis Ph.D.&nbsp;– Intellectual Property Law



Paige S. Stradley&nbsp;– Litigation &#8211; Intellectual Property



Michael A. Erbele&nbsp;&nbsp;– Technology Law

Merchant & Gould Attorneys Named by Best Lawyers as the Best Lawyers in America: Ones to Watch 2021 Edition

Congratulations to Merchant &amp; Gould&#8217;s attorneys who have been named 2021 Super Lawyers, distinguishing themselves in their legal practice.  Only the lawyers in the top 5 percent of the total lawyers in each state were selected for inclusion in the Super Lawyers list.



Jonathan Berschadsky, New York City Jeffrey D. Blake, Atlanta John A. Clifford, Minneapolis Scott W. Johnston, Minneapolis Heather J. Kliebenstein, Minneapolis Daniel W. McDonald, Minneapolis William D. Schultz, Minneapolis Anthony R. Zeuli, Minneapolis Rachel Zimmerman Scobie, Minneapolis



In addition, Merchant &amp; Gould is proud to announce that five attorneys were recognized as 2021 Rising Stars. Rising Stars are attorneys 40 and under who have been practicing law for 10 years or less. They are selected annually based on nominations from other attorneys and an independent review board.  No more than 2.5 percent of attorneys are selected for Rising Stars in any state.



Eric R. Chad, Minneapolis Michael A. Erbele, Minneapolis Ian G. McFarland, Knoxville Luciano A. Ricondo, New York City Paige S. Stradley, Minneapolis



Every year, Super Lawyers selects attorneys from all firm sizes and more than 70 practice areas on a state-by-state basis. &nbsp;Super Lawyers selects attorneys using a patented multiphase process, which includes evaluating them on 12 indicators of peer recognition, professional achievement and independent research.

Merchant & Gould Announces 2021 Super Lawyers & Rising Stars

Merchant &amp; Gould is pleased to announce the promotion of <a href="/people/michael-a-erbele/">Michael A. Erbele</a> to partner in its <a href="/offices/minneapolis/">Minneapolis office</a>, effective Jan. 1, 2022.  



Erbele focuses on intellectual property litigation and appellate-level disputes, representing clients in federal courts and agencies throughout the United States and in state court in Minnesota. He is involved in all aspects of complex intellectual property cases, from pre-suit investigation and discovery, through trial, post-trial, and appeal. &nbsp;Erbele’s practice centers on patent infringement, trademark and trade dress infringement, unfair competition claims, and trade secret misappropriation. &nbsp;He has a technical background in chemistry and has represented clients in a wide variety of fields, including consumer products, financial services, medical devices, pharmaceuticals, and software.



“We are excited to expand our leadership and promote Michael, who exemplifies the professionalism and experience that help our firm to grow and be successful, especially when our clients need us most,” said Christopher J. Leonard, Managing Director and CEO of Merchant &amp; Gould. “His promotion brings greater depth to our Litigation, Appellate and Trademark Practice Groups in some of the most inventive industries in Minnesota and across the country.”

Merchant & Gould Promotes Michael A. Erbele to Partner

Grows Leadership in Minneapolis, Denver and New York



Merchant &amp; Gould promoted three attorneys in three of its offices around the country – a notable way to launch the New Year.  Effective Jan. 1, 2022, the promotions include <a href="/people/michael-a-erbele/">Michael A. Erbele</a> in Minneapolis; <a href="/people/luciano-a-ricondo/">Luciano A. Ricondo</a> in New York; and <a href="/people/robert-s-sykes/">Robert S. Sykes</a> in Denver.



“We are excited to expand our leadership and embrace Merchant &amp; Gould’s growth in 2022, especially when new technologies are increasing and when our clients need us most.  These promotions bring depth to our practice groups in inventive industries across the country,” said Christopher J. Leonard, Managing Director and CEO of Merchant &amp; Gould.  



Michael A. Erbele, promoted to partner in the Minneapolis office, focuses on intellectual property litigation and appellate-level disputes, representing clients in federal courts and agencies throughout the United States and in state court in Minnesota. He is involved in all aspects of complex intellectual property cases, from pre-suit investigation and discovery, through trial, post-trial, and appeal. &nbsp;Michael’s practice centers on patent infringement, trademark and trade dress infringement, unfair competition claims, and trade secret misappropriation. &nbsp;He has a technical background in chemistry and has represented clients in a wide variety of fields, including consumer products, financial services, medical devices, pharmaceuticals, and software.



Luciano A. Ricondo, promoted to partner in the New York office, helps his clients to strategically grow their patent portfolios and obtain comprehensive intellectual property protection for new products and businesses. &nbsp;He drafts and prosecutes domestic and foreign patent applications in the mechanical, electrical, computer, and software-related arts. &nbsp;Luciano also prepares and prosecutes domestic and foreign industrial designs. &nbsp;While his practice expands across multiple industries, Luciano’s practice primarily focuses on medical devices and software including healthcare communications connecting healthcare professionals with patients. In addition to patent prosecution, he provides litigation support in a variety of areas, including drafting opinion letters regarding patentability, freedom to operate, and patent infringement.



Robert S. Sykes, promoted to partner in the Denver office, is an intellectual property attorney who practices in the mechanical, electrical, aerospace, software and telecommunication spaces. When preparing a patent application for a client, he emphasizes strategic planning and detailed drafting to strive for efficiency. &nbsp;Robert believes this is the best way to create real value for clients and their intellectual property portfolios. &nbsp;

Merchant & Gould Promotes Three Attorneys to Partners in Three Offices

Other Attorneys Recognized for Pro Bono Hours and CLC Distinction



Merchant &amp; Gould’s Pro Bono Committee announced the firm’s 2021 Pro Bono Awards to attorneys who have dedicated their time to helping their communities through pro bono legal services and their deep commitment.&nbsp;



A special congratulations goes to Sheila Niaz (Minneapolis) who performed more than 300 hours of pro bono legal work this year. &nbsp;Sheila’s pro bono work included preparing several patent applications in connection with LegalCORPS and assisting on the appeal of a criminal conviction. &nbsp;She is the sole recipient of Merchant &amp; Gould’s 2021 Pro Bono Award.



In addition, we want to recognize Rachel Hughey (Minneapolis) who has since been appointed as a District Court Judge in Minnesota’s Fourth Judicial District; Bill Hughet (D.C.); Mike Erbele (Minneapolis); Joe Gess (D.C.); Rachel Scobie (Minneapolis); and Ben Tramm (Minneapolis) for dedicating more than 40 hours of pro bono work this year.



We also want to applaud our Minneapolis team of attorneys who received Children’s Law Center (CLC) of Minnesota’s “Distinguished Service Award” this year: &nbsp; Karen Beckman, Eric Chad, Julie Daulton, Lindsay Hartman, Rachel Hughey, Bradley Kuxhausen, Anneliese Mayer, Elisabeth “Bette” Muirhead, Ryan Smith and Rachel Zimmerman Scobie, Tracey Skjeveland and Tony Zeuli (CLC board member). &nbsp;Merchant &amp; Gould was recognized for its “dedication and commitment to representing children and youth in foster care,” as well as the firm’s “immense impact on Minnesota children in need.”



Congratulations to Sheila and all the attorneys who continue to help make our communities even better!

Merchant & Gould Congratulates Sheila Niaz as the Firm’s Pro Bono Award Winner

Merchant &amp; Gould’s Pro Bono Committee announced the firm’s 2022 Pro Bono Awards to attorneys who have dedicated their time to helping their communities through pro bono legal services and their deep commitment.



A special congratulations goes to Bill Hughet (D.C.) who performed a total of 97 pro bono hours in 2022, spread out over multiple clients.&nbsp;He is the recipient of Merchant &amp; Gould’s 2022 Pro Bono Award.



In addition, Merchant &amp; Gould recognizes a few other people who went above and beyond in pro bono this year. Tom Johnson (Minneapolis) and Michael Erbele (Minneapolis) both recorded over 80 pro bono hours in 2022; and several other professionals recorded more than 40 pro bono hours, including Joe Gess (D.C.), Samuel Scholz (Minneapolis), Peter Gergely (New York), Rob Lyksett (Minneapolis), and Rachel Scobie (Minneapolis). In total, M&amp;G professionals recorded more than 1,100 pro bono hours last year, making an immense impact in several states around the country.



Congratulations to Bill and all the attorneys who continue to make our communities even better by providing pro bono legal services!

Merchant & Gould Congratulates Bill Hughet as the Firm’s 2022 Pro Bono Award Winner

Last week, the Federal Circuit issued an opinion in Treehouse Avatar LLC v. Valve Corporation, No. 2022-1171 (Nov. 30, 2022), affirming the U.S District Court for the Western District of Washington’s holding striking portions of Treehouse’s expert report on infringement and granting summary judgment of noninfringement in favor of Valve.



Treehouse owns U.S. Patent No. 8,180,858 (“the ’858 patent”), which is directed to a method of collecting data from an information network in response to a plurality of network users’ choices. &nbsp;Treehouse sued Valve, alleging that several of Valve’s video games infringe the ’858 patent. At issue in the lawsuit was the construction of the claim term “character-enabled network site” (“the CE limitation”). At the parties’ request, the district court adopted the construction of the CE limitation that the Patent Trial and Appeal Board had reached in a previous inter partes review. Treehouse’s infringement expert later submitted a report applying the plain and ordinary meaning of the CE limitation rather than the parties’ agreed-upon construction. Valve moved to strike the portions of the expert’s report applying the inconsistent claim construction. While the motion to strike was pending, Valve also moved for summary judgment of noninfringement, arguing that in the absence of Treehouse’s expert testimony, there was no evidence showing that the accused products met the CE limitation. The district court granted both motions, and Treehouse appealed.



The Federal Circuit affirmed on both issues. The Court first found that a motion to strike expert testimony is properly granted when that testimony is “based on a claim construction that is materially different” than the district court’s construction. Because Treehouse’s infringement expert applied the plain and ordinary meaning of the CE limitation, and not the agreed-upon construction, the Court held that the district court did not abuse its discretion in striking the expert testimony. The Court also affirmed the district court’s grant of summary judgment of noninfringement in favor of Valve. The Court noted that to avoid summary judgment, Treehouse had the burden of establishing a genuine issue of material fact that Valve’s accused products performed every step of the asserted claims, including the CE limitation. But because the only evidence Treehouse provided was the stricken testimony of its infringement expert, the Court held that Treehouse failed to meet its burden and affirmed the district court’s grant of summary judgment.

CAFC Affirms Order Striking Expert Testimony and Granting Summary Judgment of Noninfringement

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/21-2357.OPINION.6-5-2023_2137084.pdf">Medtronic Inc. v. Teleflex Innovations SARL, Nos. 2021-2356, -2358, -2361, -2363, -2365 (May 24, 2023)</a>, affirming a holding of the Patent Trial and Appeal Board that inventor testimony regarding conception and reduction to practice was sufficiently corroborated.



Medtronic filed petitions seeking inter partes review asserting that five of Teleflex’s coronary catheter patents were invalid over U.S. Patent 7,736,355 to Itou, which Medtronic asserted was prior art under pre-AIA 35 U.S.C. § 102(e). Following institution, Teleflex argued Itou was not prior art because the claimed inventions were conceived prior to Itou’s filing date and were either reduced to practice before that date or were diligently pursued until their constructive reduction to practice. In support, Teleflex submitted testimony from its inventors and other employees and extensive documentary evidence. The Board agreed. It determined Itou was not prior art under pre-AIA § 102(e) because the claimed inventions were: (1) conceived before Itou’s September 2005 filing date, and (2) either reduced to practice for their intended purpose before Itou’s filing date or diligently pursued until their constructive reduction to practice on the filing date of the challenged patents. Because Itou was not prior art, the Board held that the challenged patents were not unpatentable. Medtronic appealed.



The Federal Circuit affirmed. It explained that a reference is prior art under pre-AIA § 102(e) if it was filed “before the invention by the applicant,” among other requirements, and that a patent owner may antedate an asserted reference by showing prior conception and reduction to practice. Medtronic did not challenge Board’s findings regarding prior conception, and the Court determined that the Board’s findings with respect to reduction to practice were supported by substantial evidence. Specifically, the Board determined that the patentee’s testing showed the claimed inventions worked for their intended purposes, and the Court declined to reweigh those findings. The Court also found that inventor testimony regarding reduction to practice was sufficiently corroborated, including by the testimony of other R&amp;D employees and by documentary evidence including lab notebooks, internal memoranda, engineering drawings, and documents from outside patent counsel. Because the Court determined the claimed inventions were actually reduced to practice prior to Itou’s filing date, it did not reach the issue of constructive reduction to practice, and it affirmed the Board’s finding that Itou was not prior art.

CAFC Affirms PTAB’s Finding of Sufficient Corroboration

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1918.OPINION.6-17-2020_1605082.pdf" target="_blank" rel="noopener">PersonalWeb Technologies LLC v. Patreon, Inc.</a>, No. 2019-1918 (June 17, 2020). The Court held that PersonalWeb’s prior patent infringement suit against Amazon barred re-litigation of the same claims against Amazon’s customers.



PersonalWeb sued Amazon in the Eastern District of Texas in 2011, alleging that Amazon’s S3 web-hosting product infringed five patents covering database technology. After claim construction, PersonalWeb stipulated to the dismissal of its claims against Amazon with prejudice. In 2018, PersonalWeb filed dozens of lawsuits asserting the same patents against customers using Amazon’s S3 product. These suits were consolidated in the Northern District of California, where Amazon filed a declaratory judgment action seeking an order that the customer suits were barred due to the prior Texas lawsuit. The district court held that claim preclusion barred claims for infringement occurring prior to the final judgment in the Texas lawsuit, and that the Kessler doctrine barred claims for infringement occurring after the final judgment in the Texas lawsuit. PersonalWeb appealed.



The Federal Circuit affirmed. The Court rejected PersonalWeb’s contention that the Texas case involved a different feature of the S3 product and, therefore, a different cause of action rendering claim preclusion inapplicable. The Court explained that distinct arguments in support of liability “do not all constitute separate claims,” and that “a party may not split a single claim into separate grounds of recovery and raise those separate grounds in successive lawsuits.” The Court held all the lawsuits were directed to the same cause of action because they all involved the same accused S3 product. As such, claim preclusion applied.



The Court also rejected PersonalWeb’s contention that, because infringement was not “actually litigated” in the Texas lawsuit, the Kessler doctrine should not apply. The Court noted the Kessler doctrine “fills the gap” left by claim and issue preclusion by “allowing an adjudged non-infringer to avoid repeated harassment for continuing its business as usual post-final judgment.” The Court explained that the Kessler doctrine grants a limited trade right attached to a product itself, which is “not limited to cases involving a finding of non-infringement that was necessary to the resolution of an earlier lawsuit.” The Court held, therefore, that the stipulated judgment in the Texas case prevented subsequent infringement suits against Amazon’s S3 product regardless of whether those challenges were directed at Amazon or at its customers.

CAFC Holds Dismissal of Prior Infringement Suit Bars Later Suits Against Customers

Last week, the Supreme Court of the United States issued an opinion in <a href="https://www.supremecourt.gov/opinions/19pdf/18-1233_5he6.pdf" target="_blank" rel="noopener">Romag Fasteners, Inc. v. Fossil, Inc.</a>, No. 18-1233 (April 23, 2020). Resolving a longstanding circuit split, the unanimous Court held a plaintiff in a trademark infringement suit is not required to prove willfulness to recover a defendant’s profits under the Lanham Act.&nbsp;



Romag designs and sells magnetic snap fasteners for handbags. Romag licensed its fasteners to Fossil, but later discovered counterfeit fasteners used on Fossil handbags. Romag sued Fossil in the District of Connecticut, alleging Fossil infringed its trademark rights and falsely represented its fasteners came from Romag in violation of 15 U.S.C. § 1125(a). The jury found Fossil acted “in callous disregard” of Romag’s rights, but rejected Romag’s allegation that Fossil acted “willfully.” Because Romag failed to prove willfulness, the district court denied Romag’s request for a recovery of Fossil’s profits. The Federal Circuit affirmed, applying Second Circuit law under which a plaintiff seeking to recover a defendant’s profits must prove the violation was willful.



The Supreme Court granted certiorari and reversed. The Court held the plain language of 15 U.S.C. § 1117(a) does not require proof of willfulness for a plaintiff to recover profits in trademark infringement cases. The Court noted the statute expressly requires a showing of willfulness to recover profits on a trademark dilution claim under § 1125(c), but does not require willfulness to recover profits on a claim brought under § 1125(a). The Court explained that under the Lanham Act, violations of § 1125(a) have “never required a showing of willfulness to win a defendant’s profits.” The Court further explained that the absence of an express mens rea requirement applicable to this subsection is “all the more telling” because, elsewhere, the Lanham Act “speaks often, expressly, and with considerable care about mental states.” The Court rejected the argument that equity courts historically required a showing of willfulness before authorizing a recovery of profits. After surveying pre-Lanham Act cases, the Court found that “a trademark defendant’s mental state is a highly important consideration in determining whether an award of profits is appropriate,” but concluded this was “a far cry” from insisting on willful infringement as an “inflexible precondition to recovery.” The Court declined to consider the parties’ policy arguments because “the place for reconciling competing and incommensurable policy goals” is “before policymakers.”

SCOTUS Holds Willfulness Is Not Required to Recover Profits

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/18-2140.OPINION.5-27-2022_1957812.pdf">Arthrex, Inc. v. Smith &amp; Nephew, Inc., No. 2018-2140 (May 27, 2022)</a>, affirming a decision of the Patent Trial and Appeal Board in an inter partes review of Arthrex’s U.S. Patent No. 9,179,907.



Smith &amp; Nephew sought, and the Board instituted, an IPR of the ’907 patent. In a final written decision, the Board determined that certain claims of the ’907 patent were anticipated by Arthrex’s prior published application. On appeal, the Supreme Court held that the Board lacked constitutional authority to issue a final written decision because its Administrative Patent Judges were not nominated by the President and confirmed by the Senate. The Supreme Court held the appropriate remedy was to (1) exempt the Director from 35 U.S.C. §&nbsp;6(c), which precludes anyone but the Board from granting rehearing, and (2)&nbsp;“remand to the Acting Director for him to decide whether to rehear” the case.



On remand, Arthrex requested rehearing by the Director. The offices of the Director and Deputy Director were vacant, however, so the responsibility of addressing Arthrex’s request fell to the Commissioner. The Commissioner denied rehearing and ordered that the Board’s decision “is the final decision of the agency.” Arthrex appealed, arguing it “never got the remedy the Supreme Court ordered” because “[n]o presidentially appointed, Senate-confirmed [PAS] principal officer decided Arthrex’s petition” for rehearing.



The Federal Circuit affirmed. The Court held the Commissioner’s exercise of the Director’s authority did not violate the Appointments Clause because an inferior officer may perform the functions and duties of an absent PAS officer on a temporary, acting basis. The Court further determined the Federal Vacancies Reform Act (FVRA) did not preclude the Commissioner from deciding Arthrex’s request because the FVRA applies only to non-delegable duties, and deciding rehearing requests is a delegable duty. Finally, the Court held the Commissioner did not violate the Constitution’s separation of powers because the President has unfettered power to strip the Commissioner of temporary authority.



On the merits, the Court held that substantial evidence supported the Board’s finding that Arthrex was not entitled to claim priority to its earlier published application because an intervening application lacked adequate written description of the claimed invention. The Court affirmed the Board’s anticipation finding and held there was “no merit” to Arthrex’s argument that the Board lacked authority to decide the priority claim.

CAFC Holds USPTO Commissioner May Decide Rehearing Request

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Realtime Adaptive Streaming LLC v. Netflix, Inc. et al., Nos. 2021-1484, -1485, -1518, -1519 (July 27, 2022), affirming a decision of the U.S. District Court for the Central District of California awarding attorney fees under the Court’s inherent equitable authority.



Realtime asserted six patents against Netflix in the District of Delaware, and Netflix filed IPR petitions in response. Netflix also moved to dismiss, arguing that four patents were directed to ineligible subject matter under 35 U.S.C. § 101. After IPRs were instituted for all six patents, and the magistrate judge issued a decision finding four patents ineligible under Section 101, Realtime voluntarily dismissed the Delaware case. The next day, Realtime asserted the same patents in two lawsuits against Netflix in the Central District of California, even though Realtime previously argued to the Delaware court that transfer to California would be inconvenient and an unfair burden. Netflix moved for attorney fees, and to transfer the cases back to Delaware, but Realtime voluntarily dismissed the California cases before a decision on either motion. The district court awarded Netflix attorney fees for the California cases pursuant to 35 U.S.C. § 285 and the court’s inherent authority, but it declined to award fees for the Delaware case and IPR proceedings. Realtime appealed the district court’s fee award, and Netflix cross-appealed the denial of fees for the related proceedings.



The Federal Circuit affirmed. It held the district court’s conclusion that Realtime “impermissibly” and “unjustifi[ably]” engaged in forum-shopping to avoid the Delaware court’s patent-ineligibility ruling was not an abuse of discretion. The Federal Circuit found that Realtime’s conduct was “within the bounds of activities sanctionable under a court’s inherent power” and affirmed the fee award. It did not reach the question of whether the fee award also satisfied the requirements of Section 285, or the related issue of whether Netflix was a prevailing party in the California cases. The Federal Circuit held that the district court did not abuse its discretion in denying Netflix’s fee request for the related proceedings and affirmed that holding.



In dissent, Judge Reyna noted that Realtime’s second voluntary dismissal operated as an adjudication on the merits as a matter of law under Rule 41(a)(1)(B). Netflix was a prevailing party, he argued, and it would have been appropriate to consider the fee award under Section 285.

CAFC Affirms Fee Award Under the Court’s Inherent Authority

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1828.OPINION.11-13-2020_1684550.pdf" target="_blank" rel="noopener">In re Google Technology Holdings LLC</a>, No. 2019-1828 (November 13, 2020). The Court clarified the distinction between waiver and forfeiture, and held that Google’s failure to make its claim construction arguments before the Patent Trial and Appeal Board (“PTAB”) forfeited those arguments on appeal. The Court affirmed the PTAB’s rejection of Google’s patent application under 35 U.S.C. § 103.



Google filed a patent application relating to video-on-demand systems. The examiner rejected the claims as obvious, and Google appealed the final rejection to the PTAB. Google argued the cited prior art references did not disclose certain claim elements, including the “cost” and “network penalty” elements, but never proposed any explicit constructions of those claim terms. The PTAB affirmed, finding Google had failed to rebut the collective teachings of the prior art. The PTAB did not explicitly construe the terms “cost” and “network penalty.” Google appealed, arguing to the Federal Circuit that the PTAB’s decision was premised on erroneous implicit constructions of “cost” and “network penalty.” The PTAB responded that Google had waived its claim construction arguments by failing to present them below.



The Federal Circuit affirmed. The Court sua sponte clarified the distinction between waiver and forfeiture. It recognized that its prior opinions “have not always been precise when discussing the doctrines of waiver and forfeiture,” and that it has primarily used the term “waiver” when applying the doctrine of “forfeiture.” But the doctrines are distinct. While forfeiture “is the failure to make the timely assertion of a right,” waiver is “the intentional relinquishment or abandonment of a known right.” The Court concluded that the PTAB’s waiver argument was properly interpreted as a forfeiture argument. It held Google forfeited its claim construction arguments by failing to raise them before the PTAB.



The Court noted it had the discretion to consider Google’s forfeited arguments in the first instance, but declined to exercise that discretion. The Court explained that Google had not provided any reasonable explanation as to why it never raised its claim construction arguments to the examiner or the PTAB, and concluded that Google’s arguments below were “hardly more than a pastiche of block quotes from the claims and references.” Accordingly, there were no “exceptional circumstances” that would merit consideration of Google’s claim construction arguments on appeal in the first instance.

CAFC Clarifies Distinction Between Waiver and Forfeiture in Affirming PTAB Decision

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1646.OPINION.3-2-2021_1741285.pdf" target="_blank" rel="noopener">Rain Computing, Inc. v. Samsung Electronics America, Inc.</a>, Nos. 2020-1646, -1656 (March 2, 2021). The Court held that the asserted claims were indefinite under 35 U.S.C. § 112 ¶ 6 because the claim term “user identification module” is a means-plus-function term without sufficient corresponding structure.



Rain sued Samsung for infringement of U.S. Patent No. 9,805,349, which claims a method of delivering software application packages to a client terminal in a network based on user demands. During claim construction, the district court determined the term “user identification module configured to control access of . . . software application packages” was a means-plus-function term subject to § 112 ¶ 6, and that it was not indefinite. Based on the parties’ stipulation, the district court entered judgment that the asserted claims were neither infringed nor invalid for indefiniteness. Samsung appealed the finding of no indefiniteness.



The Federal Circuit reversed. The Court agreed with the district court that the term “user identification module” was a means-plus-function term subject to § 112 ¶ 6. It found that “module” is “a well-known nonce word that can operate as a substitute for ‘means,’” and that the prefix “user identification” merely describes the function of the module: to identify a user. But the Court reversed the district court’s finding that this term was not indefinite. The parties did not dispute the function of “user identification module” is “to control access to one or more software application packages to which the user has a subscription.” Therefore, the only remaining issue was whether the specification disclosed a corresponding structure. The Court concluded the district court erred in holding that the disclosure of “computer-readable media” was sufficient structure because these media “amount to nothing more than a general-purpose computer.” The Court held that “some special programming, i.e., an algorithm, would be required to control access to the software application packages.” Nothing in the claim language or the written description, however, provided an algorithm to achieve the “control access” function of the “user identification module.” And Rain was unable to identify such an algorithm when asked to do so at oral argument. Without an algorithm to achieve the “control access” function, the Court held the term “user identification module” lacked sufficient corresponding structure, rendering the claims indefinite under § 112 ¶ 6.

CAFC Holds “Computer-Readable Media” Insufficient Structure Under § 112

Merchant &amp; Gould P.C., a national technology and trial law firm, is pleased to announce a crucial victory for our clients TYC Brother Co., Ltd. and Genera Corp. before the U.S. International Trade Commission (ITC). In a pair of investigations concerning design patents related to automotive lamps, the ITC found no violation of section 337 by TYC Brother and Genera based on Complainants Hyundai’s and Kia’s failure to satisfy the ITC’s domestic industry requirement.



Merchant and its co-counsel Holland Law LLP were retained to defend TYC Brother and Genera against twin complaints filed with the ITC by automotive manufacturers Hyundai and Kia. The complaints asserted a combined 41 design patents against TYC Brother and Genera’s replacement headlights and taillights and sought orders that would have stopped all imports and domestic sales of those products.



An early evidentiary hearing was ordered under the ITC&#8217;s early disposition pilot program to determine whether the complainants satisfied the ITC’s domestic industry requirement. These investigations are the only ones to date for which the pilot program has been used.



Merchant identified numerous flaws in the complainants’ domestic industry evidence and analysis and developed a comprehensive record supporting our clients&#8217; positions. Following the ALJ’s initial determination, Merchant obtained full review by the ITC and submitted extensive briefing.



After considerable deliberations, the ITC agreed with Merchant, concluding that the complainants failed to satisfy the domestic industry requirement as to all 41 asserted patents. As a result, the ITC terminated the investigations with findings of no violation by TYC Brother and Genera, enabling their accused lamps to remain available to U.S. consumers, securing their access to high-value replacement parts.



&#8220;We are thrilled with the ITC&#8217;s ruling in favor of our clients, TYC Brother Co., Ltd. and Genera Corp. From the outset, we were confident in our case and in the merits of our clients&#8217; position. This outcome underscores the importance of thorough domestic industry analysis in section 337 investigations. And it is a significant win, both for the Respondents and for U.S. consumers who will continue to have access to high-quality, affordable automotive parts,&#8221; said Josh Hartman, Lead Counsel at Merchant &amp; Gould.&nbsp;

ITC Rules in Favor of TYC Brother Co., Ltd., and Genera Corp., Represented by Merchant & Gould

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in Best Lawyers in America: Ones to Watch 2025 Edition.



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



Minneapolis, MN



<ul class="wp-block-list">
<li>Joseph W. Dubis Ph.D. 
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Michael A. Erbele
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Patent</li>



<li>Technology Law</li>
</ul>
</li>



<li>Paige S. Stradley 
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized in the Best Lawyers: Ones to Watch® in America 2025 Edition

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in Best Lawyers in America: Ones to Watch 2022 Edition.



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



Minneapolis, MN



<ul class="wp-block-list">
<li>Joseph W. Dubis Ph.D. 
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Michael A. Erbele
<ul class="wp-block-list">
<li>Technology Law</li>
</ul>
</li>



<li>Paige S. Stradley 
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized in the Best Lawyers: Ones to Watch® in America 2022 Edition

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in Best Lawyers in America: Ones to Watch 2023 Edition.



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



Minneapolis, MN



<ul class="wp-block-list">
<li>Joseph W. Dubis Ph.D. 
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Michael A. Erbele
<ul class="wp-block-list">
<li>Technology Law</li>
</ul>
</li>



<li>Paige S. Stradley 
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized in the Best Lawyers: Ones to Watch® in America 2023 Edition

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in Best Lawyers in America: Ones to Watch 2024 Edition.



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



Minneapolis, MN



<ul class="wp-block-list">
<li>Joseph W. Dubis Ph.D. 
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Michael A. Erbele
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Patent</li>



<li>Technology Law</li>
</ul>
</li>



<li>Paige S. Stradley 
<ul class="wp-block-list">
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized in the Best Lawyers: Ones to Watch® in America 2024 Edition

Litigation

Appellate

Chemical & Life Sciences

Trade Secret

Emerging Technologies

ITC Section 337 Investigations

Anne-Marie Larkin

Partner

Michael A. Erbele

Federal Circuit Bar Association 
Minnesota State Bar Association 
The Honorable Jimmie V. Reyna Intellectual Property American Inn of Court 
Founding Member 
Omicron Delta Kappa

Professional Affiliations

Selected as by Best Lawyers in America: One to Watch, 2021-2025 
Selected for inclusion in Minnesota Super Lawyers Rising Star, 2018-2020 
A. Harold Weber Moot Court Award 
Dean&#8217;s Award: Social, Political, and Legal Thought of Shakespeare

Awards & Recognition

<h2>Publications &amp; Speaking Engagements</h2>
TC Heartland LLC v. Kraft Foods Group Brands LLC: Domestic Corporate Residence for Purposes of Patent Venue, Merchant &amp; Gould white paper, May 2017
Speaker, Perspectives on Federal Trade Secret Law: Impact of the DTSA on Your Company, Merchant &amp; Gould CLE, June 8, 2016
Supreme Court restores old induced patent infringement standard requiring a single direct infringer: the court&#8217;s decision in Limelight Neworks, Inc. v. Akamai Technologies, Inc., Lexology, June 18, 2014
Supreme Court restores old induced patent infringement standard requiring a single direct infringer: the court&#8217;s decision in Limelight Neworks, Inc. v. Akamai Technologies, Inc., M&amp;G Edge, June 2014
Pending Cases May Change Patent Landscape, Law Week Colorado, June 2, 2014
Minnesota Settlement Stifles Patent Troll’s Licensing Attempts, Lexology, co-authored with William D. Schultz, September 17, 2013
Bowman v. Monsanto Co.: Patent Exhaustion Does Not Permit Replication of Seeds, M&amp;G Edge, May 2013
<h3>Quoted</h3>
Lawyers Weigh In On High Court&#8217;s Induced Infringement, Law 360, June 2, 2014
Lawyers Weigh In On High Court&#8217;s Patent Indefiniteness Ruling, Law 360, June 2, 2014
<h3>Mentions</h3>
Law360&#8217;s Weekly Verdict: Legal Lions &amp; Lambs, Law360, Feb. 4, 2016
Fed. Circ. Affirms $14M Rudolph Semiconductor Patent Award, Law360, Feb. 3, 2016
Fed. Circ. Probes Scope Of $14M Infringement Verdict Appeal, Law360, Feb. 1, 2016

Publications & Speaking Engagements

Judicial Extern to the Honorable Kermit E. Bye, United States Court of Appeals for the Eighth Circuit

Judicial Externship

Adjunct Associate Professor, University of Minnesota Law School 
Instructor of the Intellectual Property Moot Court Class, 2014-2016 
Coach of the Giles Rich Moot Court Team, 2014-2016

Michael A. Erbele

Practices

Industries

Education

Admissions

Professional Affiliations

Awards & Recognition

Publications & Speaking Engagements

Publications & Speaking Engagements

Quoted

Mentions

Judicial Externship

Teaching