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Gabrielle L. Kiefer is an IP litigation and technology law attorney with Merchant &amp; Gould’s Minneapolis, MN office. Gabrielle focuses her practice on brand protection, litigation and transactional agreements for a wide range of industries, including consumer products and services, medical devices, and beyond.

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“Set Your Legal Foundation—Be Proactive, Not Reactive”

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Gabrielle’s experience includes legal work for a seed-accelerator program as well as the University of Wisconsin Law &amp; Entrepreneurship Clinic. Through this experience, she helped start-ups and small companies develop firm intellectual property foundations to build their businesses upon.

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Through IP protection, your business can be proactive instead of reactive which will eliminate many legal challenges in the future. Gabrielle helps you protect your most important assets through work such as:

Patent, trademark and copyright licensing

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Solving Legal Challenges With Your Business in Mind

Every single business is different and requires unique legal solutions. Your business is no different. By looking at problems from a business perspective, Gabrielle takes pride in developing unconventional or creative solutions to fulfill your legal needs. She’s your advocate in protecting your rights, refusing to back down from a challenge or a fight.

Gabrielle graduated from Case Western Reserve University with a Bachelor of Science in Biomedical Engineering. She also worked for the Invacare Corporation, where she achieved proficiency in medical device documentation for the FDA, Health Canada and the EU.

Her studies and experience now allow her to help innovative companies protect their technical property.

Gabrielle received her J.D. from the University of Wisconsin Law School, where she served as the President of the Intellectual Property Student Association and conducted research in Corporate Governance. She has been admitted to the Wisconsin Bar, Minnesota Bar, and is admitted to practice before the USPTO.

In her spare time, Gabrielle enjoys being in the great outdoors, running, hiking and spending time with her friends and family.

University of Wisconsin Law School - Madison, J.D., December 2020

Case Western Reserve University - Cleveland, B.S. Biomedical Engineering, May 2018

Gabrielle Kiefer, Intellectual Property Attorney

she / her / hers

Consumer Products

Medical Devices

Internet

Minneapolis

Over the past decade there has been a significant uptick in online sales. COVID-19 only exacerbated this movement, making products even more accessible at the click of a single button. Online purchasing has never been easier, and it seems that consumers are willing to part ways with the in-person buying experience. But perhaps buyers should be more skeptical, or at least cautious, with sight unseen, click-and-buy purchases. This Article provides four tips to ensure that the product you click is the product you get.



<h2 class="wp-block-heading">1.&nbsp;&nbsp; &nbsp;Know Where You “Landed”</h2>



If you are visiting a website, make sure you have landed where you intended. Sometimes, even the slightest error in spelling or name variation can land you at a doppelganger website. This is the result of domain name squatting. Often, domain name squatters register slight variations of authentic domain names to divert traffic or confuse consumers. Sometimes, the only variation is the top-level domain name (e.g., “.com” versus “.net”). Ideally, companies have protected you by redirecting domain names with slight variations such as common misspellings to their authentic page. But that is not always the case, so it is important to ensure you land where you intended.



<h2 class="wp-block-heading">2.&nbsp;&nbsp; &nbsp;Don’t Roll the Dice on the Seller</h2>



Have you ever attempted to re-order a product, just to find that the two products are completely different? Here’s why. Products sold on marketplaces are often sorted based on an Identification Number. Each Identification Number is correlated to a specific type of product. Sellers that want to sell that type of product must do so under the appropriate Identification Number. Each Identification Number has its own product page with images and description. Products under a single Identification Number are grouped together, regardless of the seller. Therefore, when you add a product to your cart you essentially roll the dice on which Seller’s product you will receive. One way to prevent this is to look at which seller currently has the “Buy Box.” This will allow you to determine which seller is fulfilling orders for the product on that day. However, because the image and description for all products under a single Identification Number are the same, there is no guarantee that the product you receive will be the product shown. But, by at least knowing and selecting which seller to buy from, you ensure that the product you purchased on Monday, is the same as one purchased on Tuesday.



<h2 class="wp-block-heading">3.&nbsp;&nbsp; &nbsp;★ ★ ★ ★ ★: What It Really Means</h2>



If you’ve ever been on the fence between two products and checked the reviews to tip the scale one way or another, you may have been better off flipping a coin. Many product reviews on online platforms are fake or commissioned by the seller. Often, it appears as if a real consumer has left the review, but in reality, the “consumer reviews” are fictitious profiles used by the companies that sellers hire in an effort to boost their ratings. Some indications that a review may be fake include overgeneralizations, lack of detail, reference to inapplicable features, or unexplained gloating. In response to the ever-growing number of fake reviews, services that help consumers determine whether the reviews are legitimate are being developed. Consider using these services before adding the “five star” product to your cart.&nbsp;



<h2 class="wp-block-heading">4.&nbsp;&nbsp; &nbsp;Know Your Price: Too Good to Be True</h2>



Bargain hunters love a good deal, but sometimes a deal is, in fact, too good to be true. Products offered at a steep discount are often the result of either “passing off” or counterfeiting. When a seller “passes off” their product as that of a recognized brand, they include the brand name in the product name or description in hopes that the consumer mistakes their listing for an authentic one. And, often the brand they seek to associate with doesn’t even sell through that online marketplace. When a seller offers counterfeit products, their goal is to make the product look nearly identical to an authentic product. While counterfeiters don’t always use a brand name, they rely on consumers visual expectations and the defining features of a product in order to deceive. Consumers should anticipate the price of products and verify the platforms that specific brands sell on. To further avoid these traps, consumers should be skeptical of prices that seem too good to be true – because often behind a bargain is an inauthentic product. &nbsp;&nbsp; &nbsp;

Ensuring You Get What You Click

Responds to business and legal issues regarding third-party copying and infringement



Merchant &amp; Gould has formalized the launch of a business consulting group, the M&amp;G Integrator™ Program, offering product and service companies a new way to protect their brands in the fast-paced online marketplace. The group’s business-minded approach merges Merchant &amp; Gould’s deep-rooted IP strategies with its proprietary, patent-pending InnovaShield Brand Protection Index for a new way of practicing this type of IP law, expanding the firm’s capabilities at a critical time when third-party infringement is increasing rapidly and companies are eager to mitigate risk.



The M&amp;G Integrator Program complements the firm’s Internet Cybersecurity &amp; E-Commerce (ICE) Practice; serves clients in every industry; and balances timely business strategies with a critical legal lens. As a global law firm that has focused on intellectual property and technology law for more than 120 years, Merchant &amp; Gould has deep experience that cuts across all technology fields. Merchant &amp; Gould is uniquely structured and experienced to pioneer this solution and risk-assessing index within the industry.



“We are in a global economy with infringement issues that have always been there; but that have recently been exposed by the pandemic’s accelerated reliance on online marketplaces and by the rapid growth of Web3, including blockchain technology, NFTs, and the metaverse platform.  More than ever, it’s time to deal with these issues, assess risk, and understand what can be done,” said <a href="/people/william-d-schultz/">William D. Schultz</a>, partner in Merchant &amp; Gould’s Minneapolis office and leader of the M&amp;G Integrator Program.



Using Merchant &amp; Gould’s patent-pending InnovaShield Brand Protection Index, the M&amp;G Integrator Program quantifies a company’s risk and creates a strategic roadmap to address that risk. Visual analyses and reports establish a customized plan that addresses and helps overcome specific risks in the most cost-effective, efficient and consumer-driven manner.&nbsp; The ultimate goal is to give clients the broadest coverage of protection for their brands and, most importantly, for their consumer customers.



“Risk impacts businesses in many ways: in the products and services you develop; business partners you choose; and the distribution channels you use. We become part of a client’s team, bridging the gap between research and development, marketing, management, distribution and legal counsel, to help identify and mitigate the impact of risk in every way,” added Schultz, who is also the co-inventor of Merchant &amp; Gould’s patent-pending InnovaShield Brand Protection Index, as well as personal Web3 patents that relate to smart contract-verification software in the NFT space and digital-story collaboration. “While no risk can be eliminated completely, it can be improved with a tailored and strategic approach from a team who deeply understands the complexity – and who knows how to &nbsp;shield innovation from third-party infringers aiming to steal a company’s investments.”



Merchant &amp; Gould’s specialized Minneapolis team will steer the M&amp;G Integrator Program, while working with attorneys across the firm’s seven offices and tapping into the firm’s unique mix of IP, online and business experience.&nbsp;



<h2 class="wp-block-heading">About InnovaShield Brand Protection Index</h2>



The InnovaShield Brand Protection Index is calculated, based on the following effective equation: 



InnovaShield Brand Protection Index = Area of Projection – Risk.



Coverage comes from four factor areas: 1) intellectual property protection; 2) enforcement; 3) policies and programs; and 4) strategic coordination.  Similarly, risk depends on what, where, why, and how a company is selling or offering its products or services. Merchant &amp; Gould’s proprietary algorithm drives the inquiry, analysis and diagnosis.



<figure class="wp-block-image size-large"><img loading="lazy" decoding="async" width="1024" height="250" src="https://admin.merchantgould.com/wp-content/uploads/2023/03/integrator-graphics-1024x250.png" alt="integrator-graphics" class="wp-image-21161" srcset="https://admin.merchantgould.com/wp-content/uploads/2023/03/integrator-graphics-1024x250.png 1024w, https://admin.merchantgould.com/wp-content/uploads/2023/03/integrator-graphics-300x73.png 300w, https://admin.merchantgould.com/wp-content/uploads/2023/03/integrator-graphics-768x188.png 768w, https://admin.merchantgould.com/wp-content/uploads/2023/03/integrator-graphics.png 1920w" sizes="(max-width: 1024px) 100vw, 1024px" /></figure>



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<li>Question driven</li>
<li>Accessible user interface</li>
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<li>Patent-pending software</li>
<li>Deep industry experience</li>
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<li>Customized report</li>
<li>Tangible recommendations</li>
<li>Trajectory hypotheticals</li>
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Merchant & Gould Launches Business Consulting Group, Advising Clients Across Industries on Risk Mitigation and Protection

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1203.OPINION.10-25-2023_2211191.pdf">Netflix, Inc. v. DivX, LLC, No. 22-1203 (Oct. 25, 2023)</a> affirming the Patent Trial and Appeal Board’s determination that two DivX patents were not unpatentable.



DivX is the assignee of U.S. Patent Nos. 9,270,720 and 9,998,515, both directed to a method of adaptive bitrate streaming of content on a play-back device, such as a phone or computer. Netflix petitioned for inter partes review of certain claims of both patents. The IPRs focused on whether three claim limitations—the “filtering,” “retrieving,” and “generating” limitations—were disclosed in the asserted prior art combinations. The Board found these limitations were missing from the asserted references and issued final written decisions upholding the validity of the challenged claims. The Board did not consider certain arguments that it determined were not raised in Netflix’s original IPR petitions. Netflix appealed, arguing that the Board erred procedurally by failing to consider the arguments purportedly raised in its petitions.



The Federal Circuit affirmed. The Court determined that Netflix forfeited each of its arguments by failing to raise them before the Board. First, the Court found that Netflix’s IPR petitions had not clearly articulated how the prior art references at issue disclosed the “filtering” limitation. The Court noted that “it is the petition’s burden to present a clear argument” and explained that “[t]he Board is entitled to discretion in how it interprets petitions.” The Board’s determination that Netflix’s argument had not been adequately raised in the IPR petition was not clearly erroneous. Second, with respect to the “retrieving” limitation, the Court rejected Netflix’s argument that the Board erred by declining to consider another piece of prior art as anticipatory under 35 U.S.C. §&nbsp;102. Because Netflix’s IPR petitions included language such as “a [skilled artisan] would have found it obvious” in connection with this reference, the Board’s determination that Netflix did not assert it on anticipation grounds was not an abuse of discretion. Finally, the Court found that Netflix’s argument that a prior art reference disclosed the “generating” limitation was raised for the first time in Netflix’s IPR reply and not in the original petitions. Because it was improperly raised for the first time in reply, the Court held that the Board did not abuse its discretion in declining to consider this argument.

CAFC Affirms PTAB Decision on Forfeiture Grounds

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in LSI Corp. v. Regents of the University of Minnesota, No. 21-2057 (Aug. 11, 2022), affirming the Patent Trial and Appeal Board’s findings in an IPR. &nbsp;



The Regents of the University of Minnesota (“UMN”) asserted infringement of U.S. Patent No. 5,859,601 (“the ’601 Patent”), which addressed minimizing error rates in recording data to computer storage devices, against LSI Corporation and Avago Technologies U.S., Inc. (together, “LSI”) in the District of Minnesota. The case was transferred to the Northern District of California under 28 U.S.C. § 1406(a). LSI petitioned the Patent Trial and Appeal Board (“PTAB”) for inter partes review (“IPR”) of the ’601 Patent. UMN disclaimed all but claims 13, 14, and 17, and the PTAB instituted review of those claims based on U.S. Patent No. 5,392,270 to Okada (“Okada”) and U.S. Patent No. 5,731,768 to Tsang (“Tsang”). The PTAB found that claim 13 of the ’601 Patent was unpatentable in view of Okada, and that claims 14 and 17 were patentable. The PTAB further concluded that Tsang was not prior art because it was not “by another” under 35 U.S.C. § 102(e). LSI appealed with respect to claims 14 and 17.



The Federal Circuit affirmed. First, the Court concluded the PTAB properly rejected LSI’s untimely arguments and noted that LSI waived any right to challenge the PTAB’s timeliness determination by failing to challenge it in its opening appeal brief. With respect to Tsang, the Court applied the three-step process set forth in Duncan Parking Techs, Inc. v. IPS Grp., Inc., 914 F.3d 1347 (Fed. Cir.&nbsp; 2019), for determining whether a reference is “by another”. The Court concluded that the portions of Tsang relevant to and relied on with respect to the challenged claims were not “by another.” Accordingly, the Court affirmed the PTAB’s determination that claims 14 and 17 were not unpatentable as anticipated by Okada or Tsang.

CAFC Affirms Patentability Determination in IPR

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/21-2013.OPINION.4-4-2022_1930596.pdf" target="_blank" rel="noopener">Littelfuse, Inc. v. Mersen USA EP Corp.</a>, No. 21-2013 (April 4, 2022), vacating a district court’s judgment of noninfringement because it was based on erroneous claim constructions.



Littelfuse sued Mersen for infringement of U.S. Patent No. 9,564,281 (the “’281 patent”) which, as stated in the Abstract, is directed to a “fuse cap for providing an electrical connection between a fuse and an electrical conductor.” As issued, independent claims 1 and 10 of the ’281 patent each require a mounting cuff, a terminal, and a fastening stem. Littelfuse had added the fastening stem limitation during prosecution to overcome the examiner’s rejection of the claims as anticipated by prior art. After the examiner found the independent claims patentable, Littelfuse rejoined dependent claims it had dropped earlier in response to a restriction requirement.



In the lawsuit, the district court construed “fastening stem” to mean a “stem that attaches or joins other components,” and construed “a fastening stem that extends from the mounting cuff and into the second cavity of the terminal that receives the conductor” to mean “a stem that extends from the mounting cuff and into the second cavity of the terminal that receives the conductor, and attaches the mounting cuff to the terminal.” The district court further clarified that, based on these constructions, independent claims 1 and 10 covered only multi-piece fuse end caps. The parties stipulated to judgment of noninfringement, and Littelfuse appealed.



The Federal Circuit vacated and remanded. First, the Court noted that several dependent claims “required that the end cap be formed ‘from a single, contiguous piece of conductive material.’” Applying the doctrine of claim differentiation, the Court noted that construing independent claims 1 and 10 to only cover multi-piece fuse end caps “would not merely render the dependent claims superfluous, but would mean that [the dependent claims] would have no scope at all.” Acknowledging that the presumption of differentiation in claim scope is not a hard and fast rule, the Court determined that nothing in the written description or prosecution history advised against its application here. The Court concluded that looking at the plain language of the claims a “fastening stem” is simply a stem that “attaches or joins,” and that neither claim 1 nor claim 10 is limited to a multi-piece fuse end cap.

CAFC Applies Claim Differentiation in Vacating District Court Claim Constructions

Last week, the U.S. Court of Appeals for the Federal Circuit issued an order in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1812.OPINION.8-3-2021_1813480.pdf" target="_blank" rel="noopener">Mondis Technologies Ltd v. LG Electronics Inc.</a>, No. 20-1812 (Aug. 3, 2021), granting Mondis’s motion to dismiss LG’s interlocutory appeal as untimely.



In 2014, Mondis brought an action against LG alleging infringement of U.S. Patent No. 7,475,180 (“’180 patent”), which covered a display unit configured to receive video signals from an external video source. The jury returned a $45 million verdict in favor of Mondis, finding that the accused LG televisions infringed claims 14 and 15 of the ’180 patent, that the claims were valid, and that LG’s infringement was willful.



Following the verdict, LG filed several post-trial motions including motions for (1) JMOL or a new trial on infringement, (2) JMOL or a new trial on validity, and (3) JMOL, a new trial, or a remittitur addressing damages and willfulness. Mondis filed a post-trial motion seeking enhanced damages, attorneys’ fees, and interest. On September 24, 2019, the district court denied LG’s motions regarding infringement, validity, and willfulness, and ordered further briefing on damages (“September Order”). On April 22, 2020 the district court granted LG’s motion for a new trial on damages. On May 8, 2020, LG filed an interlocutory appeal, challenging the district court’s denial of its other post-trial motions. Mondis moved to dismiss the appeal as untimely.



On appeal, the Federal Circuit granted Mondis’s motion to dismiss, holding that LG’s interlocutory appeal was untimely under 28 U.S.C. § 2107(a). The Court explained that, because it left only the damages-related motions outstanding, the September Order constituted a judgment that was final except for an accounting. Accordingly, the September Order started the clock on the thirty-day period for LG to file a notice of interlocutory appeal, and LG’s May 8, 2020, notice of appeal was untimely. In reaching this decision, the Court rejected LG’s argument that FRAP 4(a)(4) permits a party to file an appeal within thirty days of an order disposing of the last post-trial motion. The Court explained that FRAP 4(a)(4) applies to interlocutory appeals under § 1292(c)(2), but that it does not toll the appeal period for outstanding motions that are unrelated to the interlocutory judgment.

CAFC Dismisses Interlocutory Appeal as Untimely 28 U.S.C. § 2107(A)

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/24-1324.OPINION.7-12-2024_2349134.pdf">Natera, Inc. v. NeoGenomics Laboratories, Inc. (July 12, 2024)</a>, affirming the U.S. District Court for the Middle District of North Carolina’s grant of a preliminary injunction.



Natera, Inc. (“Natera”) and NeoGenomics Laboratories, Inc. (“NeoGenomics”) are manufacturers of products used for early cancer detection. One method of detection analyzes DNA fragments in the body. Natera owns two patents related to this method, U.S. Patent No. 11,519,035 (“the ’035 Patent”) and U.S. Patent No. 11,530,454 (“the ’454 Patent”) (collectively, the Natera Patents”). Natera’s product, Signatera, is covered by the Natera Patents. NeoGenomics offers a competing product, RaDaR. Both Signatera and RaDaR are “tumor-informed” (as opposed to “tumor-naïve”) tests designed from a patient’s genetic information based on a tissue biopsy of the patient’s tumor.



Natera sued NeoGenomics alleging infringement of the Natera Patents. Natera also moved for a preliminary injunction. The district court granted the preliminary injunction, finding that Natera made the requisite showing, including demonstrating likelihood of success on the merits of its ’035 Patent infringment claim. The preliminary injunction enjoined NeoGenomics from making, using, selling, or offering for sale RaDaR, and from promoting, advertising, marketing, servicing, distributing, or supplying RaDaR. It created a carveout for patients already using RaDaR, in-process or finalized research projects, and clinical trials. NeoGenomics appealed, arguing the district court erred in its (1) treatment of claim construction, (2) obviousness analysis; (3) irreparable harm analysis; and (4) evaluation of the public interest.



The Federal Circuit affirmed. First, the Court determined the district court did not err by evaluating the likelihood of success on infringement before an explicit claim construction. Second, the Court determined the district court did not demand more than is required at the preliminary injunction stage when it rejected NeoGenomics’ obviousness argument, which was supported by only four paragraphs with “no meaningful supporting documentation” or articulated motivation to combine. Third, the Court rejected NeoGenomic’s assertion the district court relied on a categorical rule that irreparable harm exists where the parties are in direct competition. Rather, the district court did not err in relying on Natera’s unwillingness to license the patent, potential lost partnerships, business relationships, and ongoing business, among other factors. Finally, the Court rejected NeoGenomic’s arguments on public interest, which alleged the superior quality of its RaDaR product vis-à-vis Natera’s Signatera product.



Coauthored by Gabrielle Kiefer &amp; Tucker Bender.

Federal Circuit Affirms Grant of Preliminary Injunction Against Cancer-Detection Product

Litigation

Internet, Cybersecurity, & E-Commerce

Licensing

Yeng Yang

Associate

Gabrielle  L. Kiefer

<a href="https://www.merchantgould.com/News-Room/Articles/221008/Ensuring-You-Get-What-You-Click">Ensuring You Get What You Click</a>, April 18, 2022
Speaker, Three Takes on Takedowns: Protecting Your Brand Online, Colorado Chapter of the Association of Corporate Counsel, September 23, 2021
Speaker, Three Takedowns: Protecting Your Brand Online, Tennessee Chapter of the Association of Corporate Counsel, Speaker, April 21, 2021

Gabrielle L. Kiefer

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