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Home - Merchant & Gould P.C.

Kristen M. Souther is an associate attorney for Merchant &amp; Gould’s Denver, Colorado, office. Dedicated to helping businesses protect their critical IP, her practice encompasses all aspects of patent law.

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Supporting Businesses Through Patent Preparation, Prosecution &amp; Litigation

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Patent law is an ever-evolving field. Technology changes, as does the law, which means no two days are the same for a patent attorney. Kristen rises to the challenge, staying abreast of changes and putting her knowledge to work for her clients. This doesn’t mean that the patent field is one-size-fits-all, however. For Kristen, each client must find strategic solutions to fit their individual needs.

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Kristen supports businesses as they venture through this evolving realm of law, from preparing secure patents to litigating on behalf of her client’s rights. By listening to your needs and goals, she’s able to develop custom-tailored legal solutions that provide the protection you need for the future.

Technology is a passion for Kristen. Although she primarily serves within the electrical group at Merchant &amp; Gould, she enjoys working in a variety of fields from software to life sciences.

Experienced Patent Agent Turned IP Attorney

Not only does Kristen understand the legal side of the patent process, but she also knows the technical side. As a former patent agent for General Electric, she has experience in patent analysis, patent review and patent prosecution.

During law school, Kristen worked as a law clerk at a boutique IP firm in Colorado and participated in Merchant &amp; Gould’s summer associate program. While working in each of these roles, Kristen earned the experience necessary to support you through the patent process.

Kristen received her J.D. from the University of Denver Sturm College of Law where she received a certificate in intellectual property law. She was also an Associate Editor of the Denver Law Review and the President of the Intellectual Property Law Society.

When Kristen isn’t supporting businesses and inventors, you’ll find her hiking, backpacking, or long-distance trail running. She also enjoys all the skiing that beautiful Colorado has to offer.

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University of Denver Sturm College of Law, J.D., 2020

Denison University, B.S. Biochemistry, 2015

Kristen Souther, Intellectual Property Attorney

Computer Technology

Industrial Chemistry

Medical Devices

Software & Information Technology

Atlanta

Merchant &amp; Gould is pleased to welcome four attorneys to its legal team, spanning two offices.&nbsp; The new hires include Joseph Bauer and Sheila Niaz in Minneapolis, and Kristen Geary and Matthew Metcalfe in Denver.&nbsp;



“These four attorneys add IP experience and depth to the Electrical &amp; Software Practice Group in Colorado and Minnesota, bringing fresh perspective to our clients. &nbsp;We are excited to welcome them,” said Chris Leonard, Managing Director, CEO and Chairman of the Board, Merchant &amp; Gould.



<a href="/people/joseph-w-bauer/">Joseph W. Bauer</a>, a Minneapolis associate, focuses his practice on patent law for clients in the electrical engineering, computer engineering and software spaces.  From new computer programs to medical devices, he works to prepare patents and prosecutes patents, arguing the patentability of each invention or idea.  Previously, he was a  judicial extern for the US District Court of Minnesota. Joseph received his B.S. in Computer Engineering and Computer Science from the University of Wisconsin, Madison, and his J.D. from the University of Iowa College of Law. 



Sheila S. Niaz, a Minneapolis associate, serves clients in the software and electrical industries. As a previous software engineer, she has the knowledge required to support companies in protecting their most technical ideas and inventions.&nbsp; Sheila worked with Microsoft as a Senior Student Partner and was a Software Engineer for the SRF Consulting Group, Inc., where she developed apps to assist with GIS and CAD utilities.&nbsp; Sheila received her B.S. in Computer Science from the University of St. Thomas, and her J.D. with a Certification in Patent Law from Mitchell Hamline School of Law.



<a href="/people/kristen-m-geary/">Kristen M. Geary</a>, a Denver associate, works in a variety of fields from software to life sciences, preparing secure patents and litigating on behalf of clients’ rights.  As a former patent agent for General Electric, Kristen has experience in patent analysis, patent review and patent prosecution.  During law school, she worked as a law clerk at a boutique IP firm in Colorado and participated in Merchant &amp; Gould’s summer associate program.  Kristen received her B.S. in Biochemistry from Denison University, and her J.D. with a certificate in IP law from the University of Denver Sturm College of Law. 



<a href="/people/matthew-m-metcalfe/">Matthew M. Metcalfe</a>, a Denver associate, focuses on patent prosecution, helping businesses secure patent protection for their intellectual property.  Working as a patent extern for the USPTO, he has seen what it takes to reach patentability. Plus, as a law clerk and summer associate for some of Houston’s largest firms, he gained hands-on experience in patent infringement.   Matthew received a B.S. in Electrical Engineering from the University of Texas, where he was also a member of the Institute of Electrical and Electronics Engineers (IEEE); and received his J.D. from the University of Houston Law Center.

Merchant & Gould Welcomes Four Associates to Minneapolis and Denver Offices

Merchant &amp; Gould is pleased to welcome <a href="/people/kristen-m-geary/">Kristen M. Geary</a> to the Denver office’s legal team. She serves within the electrical group, working in a variety of fields from software to life sciences, preparing secure patents and litigating on behalf of clients’ rights. 



As a former patent agent for General Electric, Kristen has experience in patent analysis, patent review and patent prosecution.&nbsp; During law school, she worked as a law clerk at a boutique IP firm in Colorado and participated in Merchant &amp; Gould’s summer associate program. While working in each of these roles, Kristen earned the experience necessary to support clients through the patent process.



Kristen received her B.S. in Biochemistry from Denison University, and her J.D. with a certificate in IP law from the University of Denver Sturm College of Law.&nbsp; She was also an Associate Editor of the Denver Law Review and the President of the Intellectual Property Law Society.



“Kristen adds IP experience and depth to the Electrical &amp; Software Practice Group in Denver, while bringing her fresh perspective to our clients.&nbsp; We are excited to welcome her here,” said Chris Leonard, Managing Director, CEO and Chairman of the Board, Merchant &amp; Gould.

Merchant & Gould Welcomes Associate Kristen Geary to the Denver Office

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

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Medtronic, Inc. v. Teleflex Life Sciences Ltd., No. 22-1721 (Nov. 16, 2023), affirming the Patent Trial and Appeal Board’s determination that a Teleflex patent was not unpatentable.



Teleflex is the assignee of U.S. Patent RE46,116, directed to a method for using a guide extension catheter. Medtronic petitioned for inter partes review of the ’116 patent and asserted that a reference to Itou was prior art under pre-AIA § 102(e). Teleflex argued that Itou was not prior art because the claimed invention was conceived before Itou’s filing date and was either actually reduced to practice before the critical date or diligently pursued until its constructive reduction to practice through its effective filing date.



The Board found that Itou did not qualify as prior art, so Medtronic had not shown certain challenged claims to be unpatentable. Specifically, the Board found that the claimed invention was conceived before Itou’s critical date, the claimed invention was actually reduced to practice before Itou’s critical date, and the patent owner diligently pursued work on the invention until its constructive reduction to practice through its effective filing date. In its decision, the Board incorporated its analysis from another decision on a related patent where it addressed whether Itou was prior art to similar claims with the same priority date. Medtronic appealed.



The Federal Circuit affirmed. The Court determined that the two sentences on diligence in Medtronic’s opening brief was an improper incorporation by reference that constituted a waiver of Medtronic’s diligence argument. The Court further noted that Medtronic attempted to incorporate by reference twenty pages from another brief, which would have vastly exceeded the word limit. The Court recognized that the Board can incorporate by reference analyses from other decisions, but an appellant is not entitled to do so and violate the Court’s rules in the process.



Therefore, because Medtronic waived any challenges to the Board’s diligence finding, and did not contest conception, the Court affirmed the Board’s finding that Itou was not prior art based on Teleflex’s constructive reduction to practice. The Court did not reach the issue of actual reduction to practice since it affirmed on constructive reduction to practice. Additionally, because the Court agreed that Itou was not prior art, it affirmed the Board’s decision that the challenged claims were not unpatentable.

CAFC Affirms PTAB Decision of Patentability After Improper Incorporation by Reference

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/21-1689.OPINION.2-3-2022_1902753.pdf">PlasmaCAM, Inc. v. CNCElectronics, LLC, No. 2021-1689 (Feb. 3, 2022)</a>, reversing and remanding a district court’s judgment involving a dispute over settlement terms.



PlasmaCAM sued CNCElectronics for patent infringement. The parties eventually agreed to settle the case and notified the district court that a settlement had been reached. However, when the district court asked the parties to submit their final settlement documents, the parties could not agree on the scope of the mutual release or the identification of products that would be covered by the covenant not to sue (“Covered Products”). After a series of emails, CNCElectronics proposed that “Covered Products” be defined as “all components manufactured, sold or offered for sale by CNC which incorporate digital torch height control.” PlasmaCAM responded that it agreed to this definition of Covered Products. Because the parties continued to dispute the scope of the release, the district court authorized each side to submit briefing on its proposed interpretation of the agreement. During the briefing, the parties resolved their dispute concerning the release. PlasmaCAM’s reply brief, however, proposed a definition of Covered Products different than the one to which it had previously agreed. The district court granted PlasmaCAM’s motion to enforce the settlement agreement, adopting PlasmaCAM’s unilateral definition of Covered Products, and denied CNCElectronics’s motion for reconsideration. CNCElectronics appealed.



The Federal Circuit reversed. The Court first noted that it had jurisdiction under 28 U.S.C. §&nbsp;1292(a)(1) because the district court’s order effectively mandated specific performance, and, alternatively, because the order was a final judgment. On the merits of the appeal, the Court held that the district court committed clear error by disregarding the parties’ explicit agreement as to the definition of Covered Products. The Court explained that the record demonstrated the parties’ agreement to the definition proposed by CNCElectronics. The Court rejected PlasmaCAM’s argument that its agreement to CNCElectronics’s definition of Covered Products was contingent on adopting PlasmaCAM’s version of the mutual release, finding no support for such an argument in the record. The Court remanded for entry of an appropriate order implementing the parties’ agreed definition of Covered Products.



Judge Newman dissented, explaining that “nowhere in the record is there even a remote suggestion of agreement by PlasmaCAM” regarding all terms of settlement. &nbsp;

CAFC Reverses and Remands District Court Order Concerning Settlement Agreement

Last week, the U.S. Court of Appeals for the Federal Circuit issued a decision in Roku, Inc., v. Universal Electronics, Inc., 2022-1058 (Mar. 31, 2023), affirming the Board’s nonobviousness determination.



Universal Electronics owns U.S. Patent No. 9,716,853, which relates to a universal remote that provides commands to a variety of target appliances according to a command matrix, i.e., a list or table with entries corresponding to a command form to be used for specific appliances. The claims recite “using an identity associated with the intended target appliance to create a listing comprised of at least a first communication method and a second communication method different than the first communication method….” &nbsp;



Roku petitioned for inter partes review of claims of the ’853 patent, asserting that they would have been obvious in view of a reference to Chardon, which describes a remote control system configured to control target devices using two different formats to relay command codes. Roku argued that because Chardon’s command codes are formatted for transmission via different communication methods, its list of command codes is necessarily a list of communication methods as claimed in the ’853 patent. However, Roku’s petition did not explain how a list of command codes is a list of communication methods, nor did Roku suggest that Chardon’s list of command codes would render the claimed list of communication methods obvious.



The Board found Roku had not shown that the challenged claims would have been obvious because Roku failed to show that a person of skill in the art would have understood a command code and a communication method to be the same thing. Roku appealed.



The Federal Circuit rejected Roku’s arguments, finding substantial evidence supported the Board’s conclusion. Indeed, the Court agreed with Universal that Roku had failed to show that Chardon’s command codes formatted for transmission via a particular communication method are communication methods. Additionally, the Court noted that “the specification itself distinguishes a list of communication methods from a separate list of command codes.” Expert testimony also supported the Board’s finding that Roku failed of meet its burden of proof, according to the Court.



The Court concluded that “[b]ecause the Board’s factual finding—that Chardon’s listing of command codes did not teach or suggest a listing of communication methods—was supported by substantial evidence, we affirm the Board’s decision that Roku has not shown that the challenged claims would have been obvious.&#8221; &nbsp;

CAFC Affirms PTAB’s Nonobviousness Finding for Universal Remote Controls

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/20-1289.OPINION.7-22-2021_1808187.pdf" target="_blank" rel="noopener">Chemours Company FC, LLC v. Daikin Industries, Ltd.</a>, Nos. 20-1289, -1290 (July 22, 2021), reversing the Board’s obviousness determination.



Chemours owns U.S. Patent Nos. 7,122,609 and 8,076,431. The ’609 and ’431 patents relate to insulating communication cables by pulling wires through melted polymer. The claims recite a specific melt flow rate range of the polymer as “about 30±3 g/10 min.”



Daikin filed two IPR petitions challenging certain claims in the ’609 and ’431 patents. The Board found all challenged claims unpatentable as obvious in view of a patent to Kaulbach. Kaulbach discloses a melt flow rate of 15 g/10 min or greater, with a preferred embodiment of 24 g/10 min. According to the Board, a POSA would have been motivated to increase the preferred melt flow rate in Kaulbach to be within the claimed range. The Board also analyzed objective indicia of nonobviousness and found no nexus between the claimed invention and the alleged commercial success. Lastly, the Board determined that Chemour’s evidence of commercial success was weak. Chemours appealed.



On appeal, the Federal Circuit reversed the Board’s determination. The Court explained that the Board ignored “the express disclosure in Kaulbach that teaches away from the claimed invention.” In particular, the Court concluded that the Board did not provide adequate reasoning why a POSA would have found it obvious to increase Kaulbach’s melt flow rate to the claimed range, particularly in view of Kaulbach’s caution against increasing melt flow rate.&nbsp; Reviewing the Board’s analysis of objective indicia of nonobviousness, the Court held the Board improperly analyzed commercial success by considering nexus to the claimed invention on a limitation-by-limitation basis and concluding that the prior art disclosed all features of the claims. The Court explained, “the separate disclosure of individual limitations, where the invention is a unique combination of three interdependent properties, does not negate a nexus.” The Court further held that the Board erred in concluding that gross sales figures alone, absent market share data, are insufficient to establish commercial success. Finally, the Court determined that the Board misapplied the “blocking patents” doctrine. Specifically, the Board characterized the challenged patents themselves as blocking patents in its analysis of commercial success. As the Court explained, “the challenged patent, which covers the claimed invention at issue, cannot act as a blocking patent.”&nbsp;

CAFC Reverses PTAB’s Obviousness Determination

Last week, the U.S. Court of Appeals for the Eighth Circuit issued an opinion in Beaulieu v. Stockwell, Case No. 21-3833 (August 30, 2022), affirming the district court’s grant of summary judgement that defendants did not infringe plaintiff’s copyrights in Prince photographs.



Allen Beaulieu was Prince’s personal photographer. Beaulieu shot album covers and world tours, and he registered copyrights for his original photographs. Beaulieu began working on a book in 2014. He hired Thomas Crouse and Clint Stockwell to collaborate on the development and promotion of the book, and Beaulieu entered contracts with Crouse and Stockwell related to the promotional activities. After Prince died in 2016, Beaulieu gave photographs to Stockwell to digitize to expand the proposed book. To solicit investors, Stockwell emailed a slideshow of Beaulieu’s photographs and a press release to roughly a dozen people. But the collaboration between Beaulieu, Crouse, and Stockwell fell apart, and Beaulieu demanded his photographs back. Beaulieu filed suit when Stockwell refused to return the photographs, alleging that his former collaborators kept his photographs and used them without permission. Among the allegations was a claim for copyright infringement. The district court found that Stockwell had an implied license to create and distribute the press release and slideshow, and it dismissed Beaulieu’s copyright claims on summary judgment. Beaulieu appealed.



The Eighth Circuit affirmed. The Court explained that the contracts between Beaulieu, Crouse, and Stockwell were not limited to the book, but also included provisions for promotional and merchandising rights. Beaulieu had received a copy of the slideshow and press release prior to the distribution to potential investors in an email from Crouse, which stated: “This is a foundation of all our marketing ideas going forward. It stands as a decent summary of everything we’ve discussed so far.” Beaulieu never objected to the marketing plans memorialized in Crouse’s email. Indeed, Beaulieu received several more emails including the slideshow, showing he was aware of, and did not object to, the distribution of his photographs to market the book. Beaulieu was expressly credited as the photographer of the photographs in the slideshow. The Court concluded that these interactions created an implied license: “Beaulieu’s silence, coupled with continued and normal interactions between him and the collaborators, implied his approval of the marketing plan and the corresponding distribution of his images.” Accordingly, the Court affirmed the dismissal of Beaulieu’s copyright infringement claims.

Kristen M. Souther

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