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Peter is an intellectual property attorney at Merchant &amp; Gould’s Minneapolis office with experience in renewable energy, chemistry, and biotechnology. He focuses his practice on patent prosecution and litigation, ensuring his clients receive the strategic advice they need to make the most of their patents.

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Delivering Value Through Strategic Patent Representation

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As an inventor, you get one chance to put forth a spectacular patent application for an invention. You must get that patent application right the first time. Moreover, there is so much more to a patent than simply an application. You need to know how to monetize that patent and what steps you’re willing to take to enforce it.

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As your IP attorney, Peter is here to help you craft a strong patent strategy that considers all aspects of your patent. He’ll help you finesse your application so you’re putting your best foot forward. He’ll help you understand the options you have once you bring your patented invention to market, and the steps you need to take to protect your patent from infringement.

For Peter, what matters most is ensuring your patents support your business. He stands ready as your strategic advisor to help you understand how your latest patent fits within your overarching IP portfolio and how you can use that patent to further future business growth.

Your patent strategy matters. Peter will ensure you have one that fits your immediate goals and long-term business objectives.

Peter is never still at work. He’s always digging deeper, seeking to uncover those special nuggets of information that will help put his clients in their best position.

Peter is also active outdoors whenever time allows. Some favorite outdoor pastimes include mountain biking, golfing, wakeboarding, and snowboarding. Speaking of active, here are a couple fun facts about Peter: he’s a black belt in karate and worked on a dairy farm growing up.

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University of Minnesota Law School, J.D., 2018, 

Peter Selness, Intellectual Property Attorney

Alternative Energy

Industrial Chemistry

Sports & Fitness

Minneapolis

Decision holds certain patents invalid for claiming unpatentable subject matter.



Merchant &amp; Gould is pleased to announce that its client Patch My PC, LLC, a fast-growing patch management software company, won an important decision in a patent case on April 13 against Ivanti, Inc. &nbsp;



Ivanti sued Patch My PC, alleging that it infringed three Ivanti patents. The patented technology is related to methods and systems for discovering software updates and then updating computers with the software as needed, across a network.



Patch My PC moved to dismiss the complaint, asserting that all three patents were invalid as unpatentable under 35 USC 101. The federal district court in Colorado granted the motion.



&nbsp;In finding the claims invalid under 35 USC 101, the court found the claims were directed at the abstract idea of “adding automation to a well-established manual process of identifying and fixing software bugs on computers.” The court also found that each representative claim of each patent “simply utilizes known components . . . in understood and conventional ways.” Ivanti has until April 20, 2023, to show cause why the case should not be dismissed in its entirety.



This decision is important to enterprises that manage networks. Automated systems for updating PCs and other computers are widespread to ensure network security and proper operation. Ivanti’s portfolio may have presented a threat to other patch system providers in the industry, and to customers who need to make sure their network of computers has updated software. If the patents are invalid, as the court found, the patents cannot be asserted against anyone else.



According to Patch My PC CEO Justin Chalfant, “We are very pleased by the result.&nbsp;We had clearly communicated to Ivanti our belief that the case was without merit even before Ivanti brought suit, and again before we filed our motion to dismiss. This result allows Patch My PC to keep its focus on taking care of its customers, which has always been its strength.”



Merchant &amp; Gould represented Patch My PC, and its litigation team crossed the firm’s Minneapolis, Denver, New York, and D.C.-area offices, including the following attorneys: Daniel W. McDonald, Peter A. Gergely, Ryan J. Fletcher, Kristen M. Souther, Peter S. Selness, and Paige S. Stradley, and technical advisor Yidi Wu.

Merchant & Gould Successfully Represents Patch My PC in Winning Patent Case with a Motion to Dismiss

Yesterday, 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/19-1454.OPINION.6-8-2020_1600475.pdf" target="_blank" rel="noopener">Munchkin, Inc. v. Luv N’ Care LTD.</a>, No. 2019-1454 (June 8, 2020), holding the district court abused its discretion in finding the case “exceptional,” and reversing the district court’s award of attorney’s fees in favor of Luv N’ Care (LNC).



Munchkin filed suit against LNC asserting claims of trademark and trade dress infringement, unfair competition, and patent infringement directed to LNC’s CLIK IT! brand spill proof cups. LNC petitioned the Patent Trial and Appeal Board to conduct an inter partes review (IPR) of the asserted Munchkin patent. Before the Board instituted the IPR, Munchkin dropped all of its non-patent claims asserting a desire to streamline the litigation. The Board instituted the IPR, and found all of the asserted Munchkin patent claims unpatentable. After the Federal Circuit affirmed the Board’s decision in the IPR, Munchkin dropped its patent claim in the district court. LNC moved for attorney’s fees under 35 U.S.C. § 285 (for the patent infringement claim) and 15 U.S.C. § 1117(a) (for the trademark and trade dress claims). The district court granted the fee motion, determining that Munchkin’s claims for trademark, trade dress, and patent infringement were all so substantively weak as to render the case “exceptional.” Munchkin appealed.



The Federal Circuit reversed. The Court began by explaining that Octane Fitness sets out the standard for exceptional case determinations, and that an exceptional case is “one that stands out from others with respect to the substantive strength of a party’s litigating position or the unreasonable manner in which the case was litigated.” The Court noted that the district court’s findings here rested on an examination of issues that were not fully litigated, and determined that neither LNC nor the district court had made the sort of detailed, fact-based analysis of Munchkin’s litigating positions necessary to show that they were wholly lacking in merit. Concerning the patent infringement claim, for example, the Court explained that the district court’s claim construction decision undermined LNC’s invalidity arguments, and that the mere fact the Board found the claims unpatentable in an IPR cannot support an exceptional case determination. Concerning trademark and trade dress infringement, the Court similarly concluded the record simply did not reflect a full enough inquiry to demonstrate that Munchkin’s claims were unreasonable.

CAFC Reverses Award of Attorney’s Fees; No Demonstration that Case Was “Exceptional”

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Click-to-Call Techs. LP v. Ingenio, Inc., No. 2022-1016 (Fed. Cir. Aug. 17, 2022), reversing and remanding the district court holding that IPR estoppel did not apply despite Ingenio’s failure to seek remand for a partially instituted inter partes review (IPR) petition in light of SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018).



After being sued for patent infringement, Ingenio petitioned the Patent Trial and Appeal Board (PTAB) to institute an IPR of all asserted claims of the patent at issue. The PTAB issued a partial institution, instituting only on claims alleged to be unpatentable over the Dezonno reference and denying institution on grounds asserting unpatentability in view of the Freeman reference. In a final written decision, the PTAB found all instituted claims invalid. While the IPR appeal was pending, the Supreme Court ruled in SAS that the PTAB’s practice of partial IPR institutions was improper. In the infringement suit, Ingenio moved for summary judgment of invalidity against claim 27 based on the Dezonno reference. Click-to-Call argued that Ingenio was estopped from asserting this reference due to IPR estoppel under 35 U.S.C. § 315(e)(2). The district court disagreed, and Click-to-Call appealed.



The Federal Circuit reversed and remanded. First, the Court held that the district court erred in applying common law issue preclusion rather than 35 U.S.C. § 315(e)(2) to the analysis. Next, the Court rejected Ingenio’s argument that IPR estoppel should not apply because the PTAB did not institute IPR on claim 27 and, therefore, claim 27 was not addressed in the final written decision. The Court acknowledged that, while it is typically true that a claim must be included in a final written decision for IPR estoppel to apply, the present case has a unique procedural posture. Specifically, Ingenio&nbsp;included claim 27 in its IPR petition and the instituted IPR resulted in a final written decision. SAS made it clear that the PTAB should have instituted as to all claims and addressed all claims in the final written decision. But, the Court concluded, the burden was on Ingenio to have sought a remand in the IPR appeal directing the PTAB to address any non-instituted grounds in light of SAS. The Court explained that it is the IPR petition, not the final written decision, that defines the scope of IPR estoppel.

CAFC Holds that Accused Infringer Is Estopped from Asserting Invalidity

Recently, 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/18-2361.Opinion.12-27-2019.pdf" target="_blank" rel="noopener">Persion Pharm. LLC v. Alvogen Malta Operations Ltd.</a>, No. 2018-2361 (Dec. 27, 2019), affirming the district court’s decision that Persion’s asserted patent claims were invalid as obvious.



Persion is the owner of U.S. Patents Nos. 9,265,760 and 9,339,499, both entitled “Treating Pain in Patients with Hepatic Impairment.” Both patents share a written description and priority date and cover methods of treating pain in patients with hepatic impairment through the use of hydrocodone. Persion sued Alvogen for infringement of both patents after Alvogen filed an Abbreviated New Drug Application seeking to market a generic version of Persion’s hydrocodone drug. The district court concluded that Alvogen would indirectly infringe the asserted claims because its product label would induce doctors and patients to administer the generic product in an infringing manner. However, the district court also concluded that the asserted patents were invalid as obvious over the Devane patent in light of the teachings of the Vicodin and Lortab drug labels. The district court determined that, in light of these labels, one of ordinary skill in the art would have been motivated to administer hydrocodone at an adjusted dose in accordance with the claims of the Persion patents, and that such person would have had a reasonable expectation of success in so doing. Persion appealed.



The Federal Circuit affirmed, rejecting each of the four arguments raised by Persion concerning the district court’s obviousness holding. First, the Court held that inherency may supply a missing claim limitation even when not all claim limitations are taught by a single reference. Second, the Court found no error in the district court’s reliance on pharmacokinetic data from formulations and patient groups not covered by the asserted claims to inform its analysis. Third, the Court found no error in the district court’s consideration of objective indicia of non-obviousness. Specifically, the Court explained that, although these factors were discussed by the district court after discussing the asserted prior art, the district court’s analysis made clear that consideration of objective indicia was not a mere afterthought. Lastly, the Court found no inconsistencies between the district court’s determinations on obviousness, reasonable expectation of success, and written description. In view of the affirmance of the district court’s decision on obviousness, the Court declined to reach any of the remaining issues presented on appeal.



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CAFC Affirms Obviousness Determination of Hydrocodone Method Patents

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/20-1046.OPINION.1-21-2022_1896055.pdf">Kyocera Senco Indus. Tools Inc. v. Int&#8217;l Trade Comm&#8217;n, No. 2020-1046 (Jan. 21, 2022)</a>, vacating and remanding an International Trade Commission (“ITC”) holding on induced infringement.



The asserted Kyocera patents relate to linear fastener driving tools, such as power nailers. Kyocera filed a complaint with the ITC alleging that Koki was violating 19 U.S.C. § 1337 by importing infringing spring nailer products. The ITC instituted an investigation and ultimately found that Koki induced infringement of the asserted patents. Both Kyocera and Koki appealed. The appeals addressed three issues: 1) the exclusion of an expert’s testimony as unreliable because he lacked experience in the relevant art; 2) the ITC’s claim construction determinations; and 3) whether a prior art reference teaches the “main storage chamber” claim limitation.



On the issue of expert testimony, the ITC administrative law judge had excluded the expert’s doctrine of equivalents opinions because he lacked experience in power nailer design but allowed him to testify on literal infringement. The Federal Circuit observed that it was undisputed that the expert lacked the experience required of a person of ordinary skill in the art and thus held that allowing him to testify on any issue was error.



On the claim construction issues, the appellate court reversed three of the ITC’s determinations. First, the Court reversed the ITC’s construction of “driven position” because the patentees had acted as their own lexicographers by explicitly defining the term within the specification, and that definition controls. Second, the Court reversed the ITC’s construction of “lifter member” because it failed to treat the term as a means plus function limitation. The Court explained that, while the claims did not use word “means,” the rebuttable presumption against means plus function treatment was overcome because the claim did not recite sufficiently definite structure. Third, the Court reversed the ITC’s claim construction of “initiating a driving cycle,” explaining that it failed to treat components as distinct despite the structure of the claim indicating they are distinct components.



Lastly, on the prior art issue, the Court agreed with the ITC’s finding that a prior art reference failed to disclose a distinct “main storage chamber.”



Because the Court reversed on the expert testimony and claim construction issues, it vacated and remanded for further proceedings.

CAFC Vacates and Remands International Trade Commission Infringement Holding

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/18-1635.OPINION.11-17-2020_1686726.pdf" target="_blank" rel="noopener">SIPCO, LLC v. Emerson Electric Co.</a>, No. 2018-1635 (Nov. 17, 2020). The CAFC held that the Patent Trial and Appeal Board’s determination that a patent qualifies for covered business method (CBM) review is expressly and exclusively tied to the decision to institute the proceeding, and is thus unappealable under 35 U.S.C. §&nbsp;324(e).



SIPCO sued Emerson for infringement of U.S. Patent No. 8,908,842 (“the ’842 patent”), entitled Multi-functional General Purpose Transceivers and Devices. In response, Emerson petitioned for CBM review of the ’842 patent. The Board instituted review and found that claims 1, 7, 9, 16, and 17 of the ’842 patent recited patent-ineligible subject matter under 35 U.S.C. §&nbsp;101 and were unpatentable for obviousness under 35 U.S.C. §&nbsp;103. SIPCO appealed. On appeal, the Federal Circuit reversed the Board’s determination that the ‘842 patent qualified for CBM review. Emerson petitioned for certiorari, and the Supreme Court vacated and remanded the Federal Circuit’s decision for further consideration in light of the intervening precedent set forth in Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020). In Thryv, the Supreme Court held that the Board’s decision on whether earlier litigation bars institution of inter partes review under 35 U.S.C. § 315(b) is final and unappealable under the “No Appeal” provision of 35 U.S.C. § 314(d).



On remand, applying the precedent established in Thryv to the materially identical “No Appeal” provision of 35 U.S.C. § 324(e), the Federal Circuit concluded the Board’s determination on whether a patent qualifies for CBM review is closely tied to the decision to institute the proceeding, and is thus unappealable. Because the “No Appeal” provision of § 324(e) barred judicial review of the threshold decision to institute CBM review of the ‘842 patent the Court concluded SIPCO’s challenge to the Board’s institution decision could not be reviewed. On the merits of the Board’s unpatentability decision, the Court affirmed the Board’s obviousness determination and, therefore, did not reach the question of patent-eligibility under §&nbsp;101.

CAFC Holds Patent Office’s Determination on Qualification for CBM Review Is Unappealable

Last week, the U.S. Court of Appeals for the Fifth Circuit issued an opinion in <a href="http://www.ca5.uscourts.gov/opinions/pub/20/20-30233-CV0.pdf" target="_blank" rel="noopener">Alliance for Good Gov&#8217;t v. Coalition for Better Gov&#8217;t</a>, No. 20-30233 (May 19, 2021), affirming the district court’s award of attorney’s fees to Alliance for Good Government (“Alliance”) and its determination that both Coalition for Better Government (“Coalition”) and its principal, Darleen Jacobs, are responsible for their payment.



After a series of appeals and remands, the district court granted summary judgment in favor of Alliance on its federal trademark infringement claim, and enjoined Coalition from using Alliance’s marks. Alliance moved for fees under the Lanham Act’s fee-shifting provision and to join Jacobs, a principal of Coalition, because Alliance had learned during post-judgment discovery that Coalition lacked resources to pay any fee award. Both motions were granted. Jacobs and Coalition appealed, challenging both the reasonableness of the fee award and the propriety of the district court’s order joining her to the suit.



The Fifth Circuit affirmed. On the reasonableness of the fee award, the Court rejected the argument presented by Jacobs and Coalition that the district court had no authority to award fees related to an appeal. The Court pointed out Federal Circuit precedent that “has interpreted the Patent Act’s fee-shifting provision as allowing district courts to ‘award[ ] fees for the entire case, including any subsequent appeals’ because neither the text ‘nor its legislative history distinguishes between awarding attorney fees in the district court and in the appellate court.’” For the same reasons, the Court concluded an award of fees for the entire case, including any appeals, was proper under the fee-shifting provisions of the Lanham Act. On the issue of joining Jacobs as a party to the suit, the Court rejected Jacobs’ argument that being joined to the suit after judgment was already entered deprived her of due process rights. The Court noted that, after Jacobs was joined to the suit, the district court gave her two weeks to respond to Alliance’s motion for attorney’s fees. The Court further noted that the district court gave due consideration to Jacobs’ arguments before issuing its ruling holding her liable for the fee award. Accordingly, the Court concluded that the demands of due process had been met and Jacobs was properly joined.

Fifth Circuit Holds Corporate Officer Personally Liable for Attorney’s Fees in Trademark Infringement Suit

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in Miller Mendel, Inc. v. City of Anna, Texas, Nos. 2022-1753, -1999 (July 19, 2024), affirming the U.S. District Court for the Eastern District of Texas’s grant of judgment on the pleadings.



Miller Mendel, Inc. (“Miller Mendel”) develops pre-employment background investigation software for police departments. The City of Anna, Texas, (“City”) uses the Guardian Alliance Technologies (“GAT”) software platform.



Miller Mendel filed suit against the City alleging its use of the GAT platform infringes “at least Claims 1, 5, and 15” of U.S. Patent No. 10,043,188 (“the ’188 patent”). The ’188 patent is directed to “a software system for managing the process of performing pre-employment background investigations.” The City moved for judgment on the pleadings, alleging the claims of the ’188 patent are ineligible for patent protection under 35 U.S.C. § 101. The district court granted the motion. The City also filed a motion for attorneys’ fees that the district court denied. Miller Mendel appealed and the City cross-appealed.



The Federal Circuit affirmed. Examining the first step of the Alice test, the Court found the asserted claims are directed to the abstract idea of performing a background check. The Court explained that because “the problem facing the inventor was the abstract idea of performing background investigations more efficiently and effectively,” the invention was not an improvement in technology. The Court rejected Miller’s argument that claim 1 was not directed to an abstract idea because certain steps could not be completed in the mind or on pen and paper. The Court found that the patent was automating something that was already being done manually. The Court then determined that the asserted claims do not “transform the nature of the claim into a patent-eligible application” under the second step of the Alice test. The Court cited the method claim’s ability to have its steps performed “in any random order” and the patent’s use of conventional computer components to support this conclusion.



Finally, the Court found the district court only had subject matter jurisdiction over the asserted claims and properly invalidated only those claims. The Court also upheld the denial of City’s attorneys’ fees.



Coauthored by Peter Selness &amp; Kynleigh Williams.

CAFC Affirms Judgment on Pleadings for Nonpatentable Subject Matter in Miller Mendel Suit

Litigation

Chemical & Life Sciences

Trade Secret

Mechanical

Abigail Krueger

Associate

Peter S. Selness

Bloomberg Bureau of National Affairs Award for Excellence in Intellectual Property Law

Awards & Recognition

<h3>Publications</h3>
Personalized Medicine, Mayo, and the Uncertain Future of Integrated Health Care, Minnesota Journal of Law, Science &amp; Technology (18 Minn. J.L. Sci. &amp; Tech. 788) (2017).

Peter S. Selness

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