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Paige is an intellectual property attorney at Merchant &amp; Gould’s Minneapolis office. She handles a range of IP litigation involving patents (utility and design), copyrights, trademark, trade dress and false advertising disputes. &nbsp;

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Paige works to first understand her clients—who they are and what they need to succeed.&nbsp; From there, she uses her experience to create custom-fit strategies to help her clients achieve their short- and long-term goals.&nbsp;

STEADFAST SERVICES TO MEET YOUR SHORT- AND LONG-TERM OBJECTIVES

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With both short- and long-term goals in mind, Paige will work with you to develop strategies that proactively avoid litigation or that use litigation as a tool to further your business objectives and protect your technologies, brands, designs, and competitive edge.&nbsp; She provides ongoing insight into how legal issues affect your day-to-day business while always keeping an eye on your budget and overarching business needs.

Business-Minded Enforcement and False Advertising Services

Paige also works with a wide range of companies across industries on trademark, trade dress, and design patent enforcement and false advertising issues. Her experience runs the gamut—from assessment of brand protection and risks upon expansion into new areas, to domain name disputes, to preventative analysis and review of designs and marketing and advertising campaigns, and more.&nbsp; In each instance, Paige aims to provide practical advice and a clear analysis of the risks and benefits of actions so you can make informed and strategic decisions that align with your goals. &nbsp;

Paige volunteers on the firm’s Diversity Committee and with organizations within the community that she believes in. At home, you’ll find her keeping active by running and playing tennis. She is also an avid traveler and a loyal Hoosier basketball fan (despite several frustrating seasons of late).

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University of Minnesota, J.D., 2012, 

Miami Unversity, B.A. Chemistry & Environmental Science, 2009, 

Paige Stradley, Intellectual Property Attorney

she / her / hers

Medical Devices

Minneapolis

Denver

M&amp;G is pairing with CLA (CliftonLarsonAllen) to showcase methods of integrating business and intellectual property to develop a balanced intellectual property portfolio that protects the bottom line.  The seminar has CLE credit for attorneys, CPE credit for accountants, and content for all business people.



This event has passed. 



<h2 class="has-text-align-center wp-block-heading">Tuesday, April 30, 2019</h2>



150 South 5th Street Third Floor Minneapolis, MN 55402



<h2 class="has-text-align-center wp-block-heading">Agenda</h2>



<figure class="wp-block-table"><table><tbody><tr><td>
<h2>Registration</h2>
</td><td>
<h2>&nbsp;</h2>
2:00 &#8211; 2:30
</td></tr><tr><td>
<h2>Integration of Business/Financial Strategy in IP Procurement</h2>
<div>William D. Schultz, Partner, Merchant &amp; Gould&nbsp; Brendan Kurvers, Manager, Manufacturing &amp; Distribution, CLA</div>
</td><td>
<h2>&nbsp;</h2>
2:30-3:00
</td></tr><tr><td>
<h2>Using Financial Principles to Reduce IP Costs&nbsp;</h2>
<div>Matt Winkleman, CLA</div>
</td><td>
<h2>&nbsp;</h2>
3:00 &#8211; 3:30
</td></tr><tr><td>
<h2>IP Law &amp; Financial Rule Rapid Fire Update</h2>
<div>Paige S. Stradley, Attorney, Merchant &amp; Gould David Mauch, CLA</div>
</td><td>
<h2>&nbsp;</h2>
3:30 &#8211; 4:00
</td></tr><tr><td>
<h2>Panel Discussion: Integrated IP &amp; Business Strategy</h2>
</td><td>
<div>4:00 &#8211; 4:30</div>
</td></tr><tr><td>
<h2>Social Hour</h2>
</td><td>
<div>4:30 &#8211; 6:00</div>
</td></tr></tbody></table></figure>



<hr class="wp-block-separator has-alpha-channel-opacity"/>

CyberWorld:  Bringing Business and IP Strategies Together

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

<h2 class="wp-block-heading">Location:</h2>



Hyatt Regency Cleveland At The Arcade 420 Superior Ave Cleveland, OH 44114



<h2 class="wp-block-heading">Overview</h2>



3-Minute Case Summaries:&nbsp;A fast-paced and energetic update on recent case law developments important to patent litigation from ten select cases.



Brand Protection Update:&nbsp;Hear an update on trends and cases related to online brand protection, including updates on copyright laws, trademark strategies, and anti-counterfeiting strategies. We will also provide an update regarding new programs put in place by online marketplaces to manage counterfeits and unauthorized product sales.



Data Privacy Developments:&nbsp;The laws and regulations relating to the collection, use, processing, and storage of consumer data and consumer privacy are constantly evolving. Eric will discuss two of the more significant developments in this area from the last few years: The EU’s General Data Privacy Regulation (GDPR) and the California Consumer Privacy Act (CCPA). Specifically, Eric will discuss what we’ve learned in the 13 months since GDPR went into force and what we can expect from the CCPA, which goes into force on January 1, 2020.



Panel Discussion: Agreements &amp; Innovation Due Diligence:&nbsp;M&amp;G attorneys share their experience helping their clients navigate technology, data, and IoT-driven projects. &nbsp;Agreement drafting, due diligence, litigation, data security, and client counseling will be discussed.



<figure class="wp-block-table"><table><tbody><tr><td>2:00 – 2:30</td><td>Registration</td></tr><tr><td>2:30 – 3:00</td><td>3-Minute Case Summaries: What Every Patent Lawyer Needs to Know &nbsp;</td></tr><tr><td>3:00 – 3:30</td><td>Brand Protection Update: Relevant Cases and Trends&nbsp;</td></tr><tr><td>3:30 – 3:50</td><td>Data Privacy Developments: GDPR at One Year and the California Consumer Privacy Act&nbsp;</td></tr><tr><td>3:50 – 4:00</td><td>Break</td></tr><tr><td>4:00 – 4:45</td><td>Panel Discussion: Agreements &amp; Innovation Due Diligence</td></tr></tbody></table></figure>



Followed by a cocktail &amp; networking reception



<a href="http://emailcc.com/cv/52439ec4097be55d3d6868fedcfda34fc8efe17a" target="_blank" rel="noopener">RSVP</a>

On the Cutting Edge: Updates on Patent Law, Data Privacy, and E-Commerce

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 promoted five attorneys in three of its offices around the country, celebrating the ongoing hard work and perseverance of its team. Effective July 1, 2020, the promotions include Alpaslan Sapmaz, Julie K. Skoge and Paige S. Stradley in Minneapolis; David D. Harrell&nbsp;in Denver; and Andrew O. Larsen, Ph.D., in New York.



“We are excited to expand our leadership and promote this group of excellent attorneys who have made a particular impact during the COVID-19 situation. Each attorney has exemplified the professionalism and ‘can do’ spirit that allows our firm to grow and be successful, especially when our clients need us most,” said Christopher J. Leonard, Merchant &amp; Gould’s Managing Director, CEO, and Chairman of the Board. “Many industry leaders believe the pandemic crisis will historically spark a new innovation and technology movement. We agree, and these promotions bring greater depth to our practice groups in some of the most inventive industries across the country.”



<a href="https://www.merchantgould.com/Professionals/Alpaslan-Sapmaz?">Alpaslan Sapmaz</a>, promoted to partner in the Minneapolis office, practices general intellectual property law with an emphasis on patent prosecution in the mechanical arts. His practice includes guiding clients through the patent process in bringing inventive concepts to granted patents under both U.S. and foreign patent law. Specifically, Alp has extensive experience in preparation and prosecution of patent applications and managing sizeable client patent portfolios.&nbsp;



<a href="https://www.merchantgould.com/Professionals/Julie-K-Skoge">Julie K. Skoge</a>, promoted to partner in the Minneapolis office, is a registered patent attorney who practices IP law with an emphasis on patent prosecution for both domestic and foreign clients.&nbsp; A science background combined with a detail-oriented outlook and a talent for persuasive writing helps her prepare and prosecute strong patent applications for her clients in diverse mechanical and software technology fields, as well as software-based applications for product design and fabrication.&nbsp;



<a href="https://www.merchantgould.com/Professionals/Paige-S-Stradley">Paige S. Stradley</a>, promoted to partner in the Minneapolis office, handles a range of IP litigation involving patents (utility and design), copyrights, trademark, trade dress and false advertising disputes. Her litigation experience includes crafting briefs and orally advocating in court, managing and participating in all aspects of fact and expert discovery, and examining witnesses both fact and expert witnesses at trial.&nbsp; In addition to litigation, Paige also counsels clients with respect to brand protection and engages in preventative analysis and review of designs and marketing and advertising campaigns.&nbsp;



David D. Harrell, promoted to partner in the Denver office, is a registered patent attorney whose practice encompasses areas including software and information technology, computer technology, and Internet-related technologies. He specializes in patent preparation and prosecution, infringement analysis, and global IP portfolio development.&nbsp;David’s technical areas include programming, software analysis and development, operating systems and database design and implementation.



<a href="https://www.merchantgould.com/Professionals/Andrew-O-Larsen-Ph-D">Andrew O. Larsen</a>, Ph.D., promoted to partner in the New York office, focuses his practice on Hatch-Waxman litigation, contested matters before the U.S. Patent and Trademark Office, and general IP counseling. He primarily assists clients in the pharmaceutical, biotechnology and chemical industries with developing and strengthening their patent estates and their overall litigation strategy, including pre-litigation counseling, fact and expert discovery, claim construction analysis, deposition and motion practice, and assistance at trial.&nbsp;

Merchant & Gould Promotes Five Attorneys to Partners in Three Offices

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

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 <a href="https://cafc.uscourts.gov/opinions-orders/22-1212.OPINION.1-10-2024_2251310.pdf">Great Concepts, LLC v. Chutter, Inc., No. 2022-1212 (Jan. 10, 2024)</a>, reversing the Trademark Trial and Appeal Board’s (“TTAB”) decision canceling Great Concept’s trademark registration based on a false Section 15 declaration submitted to obtain incontestability.



Great Concepts obtained a registration for its mark DANTANNA’S. Chutter’s predecessor petitioned to cancel the DANTANNA’S mark and filed a lawsuit against Great Concepts asserting trademark infringement. The district court granted summary judgment for Great Concepts, which the Eleventh Circuit affirmed. While the appeal and cancellation proceeding were pending, counsel for Great Concepts filed a combined declaration of use (under Section 8 of the Lanham Act) and incontestability (under Section 15 of the Lanham Act). To obtain incontestability, counsel declared that “there is no proceeding involving said rights pending and not disposed of either in the U.S. Patent and Trademark Office or in the courts.” This was false because the appeal and cancellation proceeding were still pending at the time of counsel’s declaration. Chutter petitioned for cancellation of the registration based on submission of a false Section 15 declaration. The TTAB found the declaration was fraudulent and cancelled Great Concept’s registration. Great Concept appealed.



The Federal Circuit reversed. The Court focused on the language of Section 14 of the Lanham Act, which prescribes when a registration may be cancelled. Under Section 14 a petition to cancel a registration may be filed if the “registration was obtained fraudulently.” It does not provide for cancellation based on a fraudulent Section 15 declaration. The Court noted that while the TTAB “has long believed” it had the power to cancel a registration based on a false Section 15 declaration, the language of the statute does not authorize cancellation in such circumstances. The Court explained that “registration and incontestability are different rights” and what Great Concept fraudulently obtained was not registration, but, rather, incontestable status for an already-registered mark. The Court found that Section 33(b) of the Lanham Act further confirmed its decision. In the context of infringement actions, Section 33(b) provides that an accused infringer may challenge incontestability based on fraud with the remedy for such fraud being loss of incontestable status, not cancellation of the registration. Finally, the Court rejected Chutter’s remaining arguments, which raised policy concerns and which invited the Court to approve “an extrastatutory basis for cancellation.” Judge Reyna dissented.

Federal Circuit Reverses TTAB Cancellation of Trademark Registration

Last week, the U.S. Court of Appeals for the Second Circuit issued an opinion in <a href="https://cases.justia.com/federal/appellate-courts/ca2/19-1262/19-1262-2020-06-08.pdf?ts=1591628410" target="_blank" rel="noopener">Pablo Star Ltd. v. Welsh Gov&#8217;t</a>, No. 19-1262 (June 8, 2020), holding the Welsh Government is not immune under the Foreign Sovereign Immunities Act (FSIA) from suit for copyright infringement in the United States.



Pablo Star owns registered copyrights in photographs of Welsh poet Dylan Thomas. Pablo Star discovered the Welsh Government was using its copyrighted photographs to, among other things, promote a walking tour in New York honoring Thomas’s time there, as a way of ultimately encouraging tourism to Wales. After the Welsh Government refused to cease use of the photographs, Pablo Star filed suit for copyright infringement in the Southern District of New York.



The Welsh Government moved to dismiss asserting sovereign immunity under the FSIA. The district court denied the motion, holding that the exception for “commercial activity carried on in the United States by the foreign state,” under 28 U.S.C. § 1605(a)(2), applied. The Welsh Government filed an interlocutory appeal and asserted that the actions at issue in the suit (1)&nbsp;were not commercial, but rather governmental, in nature and (2) did not have substantial contact with the U.S.



The Second Circuit, which had appellate jurisdiction under the collateral-order doctrine, affirmed. First, the Court held the unauthorized use of the photographs on promotional websites and printed materials advertising tourism to Wales constituted commercial activity. It explained that whether an activity is commercial “depends on its ‘nature’ rather than its ‘purpose’ . . .” and, regardless of whether the motive is profit or fulfilling sovereign objectives, the question is whether the actions performed by the sovereign “are the&nbsp;type&nbsp;of actions by which a private party engages in ‘trade and traffic or commerce.’” Here, although promoting tourism may have been the Welsh Government’s goal, the Court concluded the activity was nevertheless commercial in nature because it is the type of activity used by private parties to promote business. Second, the Court held the commercial activity had “substantial contact” with the U.S., even though the tourism plan was formulated in Wales and the Welsh Government’s computers and servers were in the United Kingdom. “Substantial contact” was established because the Welsh Government distributed the brochures throughout the Northeast U.S., to promote a walking tour in New York, and contracted with New York companies to print the materials.



This blog post was co-authored by Paige Stradley &amp; Rhett Sexton

Second Circuit Holds Welsh Government Not Immune in Copyright Infringement Suit

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/21-2303.OPINION.6-28-2022_1970511.pdf" target="_blank" rel="noopener">Static Media LLC v. Leader Accessories LLC</a>, Case No. 2021-2303 (June 28, 2022), reversing a district court’s civil contempt decision.



Static sued Leader in 2018 for infringing a design patent owned by Static. The case was decided on the merits when the district court granted Leader’s motion for summary judgment of noninfringement—a decision not addressed in the instant opinion. During the infringement suit, Static and Leader entered into a protective order that required confidential information to “be used solely for the purpose of this action,” though it also allowed such information to be disclosed to certain outside independent persons who had signed a Written Assurance. After Static sued a third party, OJ Commerce, in a separate action (the “Florida Action”), OJ and Leader entered into a joint defense agreement and Leader provided certain confidential documents to OJ’s attorney, who had signed a Written Assurance. OJ’s attorney later used that confidential information in the Florida Action, in violation of the protective order’s terms. On a motion filed by Static, the district court found Leader and its attorney in civil contempt for disclosing the confidential documents to OJ’s attorney. Leader and its attorney appealed.



The Federal Circuit, reviewing the district court’s decision under an abuse of discretion standard, reversed. The Court first addressed whether Leader was responsible for OJ’s attorney’s improper use of the confidential information disclosed to him. The Court held that Static failed to prove by clear and convincing evidence that Leader knew or should have known OJ’s attorney would use the confidential information in the Florida Action. The Court noted that Leader had received OJ’s attorney’s signed Written Assurance before disclosure and repeatedly reminded OJ’s attorney about the protective order’s terms. The Court also noted Static’s concession during oral argument that it would be erroneous to hold Leader in contempt for OJ’s attorney’s disclosure. Next, the Court reviewed the district court’s finding that the disclosure of confidential information in connection with the development of a joint defense strategy was impermissible because it was a use not “solely” for purposes of the instant action. The Court held it was “unreasonable to view the protective order as clearly prohibiting the disclosure of confidential documents” to a signatory to the protective order for the purpose of developing a joint defense strategy.



Coauthored by Paige Stradley and Brian P. Monahon

CAFC Reverses Holding of Contempt for Violation of a Protective Order

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/19-1734.OPINION.11-25-2020_1691832.pdf" target="_blank" rel="noopener">VidStream LLC v. Twitter, Inc.</a>, Nos. 2019-1734, -1735 (Nov. 25, 2020). The Court affirmed the Patent Trial and Appeal Board’s ruling that a particular reference, the Bradford reference, was prior art based, in part, on evidence submitted in the Petitioner’s reply.



Twitter filed two petitions for Inter Partes Review (IPR) against VidStream, citing the Bradford reference as its primary reference in both. In the petitions, Twitter submitted the Bradford reference with a copyright date of 2011 and ISBN information. The reference, however, also stated that it was “Made in the USA Middletown, DE 13 December 2015.” VidStream, in its responses, challenged the availability of the Bradford reference based on the publication date of December 13, 2015. Twitter, in its replies, provided additional documents to support the availability of the Bradford reference including:



<ul>
<li>a copy of Bradford that was obtained from the Library of Congress marked “Copyright © 2011” that did not contain the statement “Made in the USA Middletown, DE 13 December 2015”;</li>



<li>Bradford’s Copyright Certificate of Registration listing a date of first publication of November 8, 2011; </li>



<li> Internet Archive webpages showing Bradford was available in November and December of 2011; and </li>



<li> Testimony from an expert on library cataloging and classification who testified that Bradford was available at the Library of Congress in 2011. </li>
</ul>



VidStream appealed, arguing that the Board erred in considering additional evidence regarding Bradford’s availability because it was not provided with the IPR petitions and was, instead, first provided with Twitter’s replies.



The Federal Circuit affirmed. On the standard of review, the Court reiterated that the determination of whether a document is prior art is a legal determination, based on underlying facts, such that the Court reviews the Board’s legal determinations de novo and its factual findings for substantial evidence. Applying this standard, the Court concluded that VidStream suffered no prejudice from the timing of the evidence submitted with Twitter’s replies because the Board allowed VidStream to file a surreply. The Court also rejected VidStream’s assertion that the Board failed to link the 2015 Bradford reference submitted with the petition to the later submitted evidence concerning a 2011 publication date. Looking at the totality of the evidence, the Court held that “[t]he evidence well supports the Board’s finding that Bradford was published and publicly accessible before the [relevant] patent’s 2012 priority date.”

CAFC Affirms PTAB’s Finding that Reference Is Prior Art Based on Evidence Submitted in Reply

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in ABC Corp. I v. Partnership and Unincorporated Associations Identified on Schedule “A”, No. 2021-2150 (October 28, 2022), vacating the district court’s entry of a preliminary injunction.



Plaintiffs filed suit asserting infringement of four design patents against, among others, Gyroor-US. Plaintiffs, however, did not immediately serve Gyroor-US with process. Prior to service being completed on Gyroor-US, the district court entered a preliminary injunction against the defendants, including Gyroor-US. Several months later, Plaintiffs moved to amend their Complaint to add defendants GaodeshangUS, Fengchi-US, and Urbanmax. The Court granted that amendment, meaning the three new defendants would also be bound by the injunction, despite not having been served with process and not having had notice of the injunction. Gyroor-US, GaodeshangUS, Fengchi-US, and Urbanmax (collectively “Defendants”) appealed.



The Federal Circuit began by assessing its jurisdiction over the appeals, first discussing the appeal brought by GaodeshangUS. That notice of appeal referenced the preliminary injunction order but did not reference the order granting amendment of the Complaint to add GaodeshangUS as a defendant. The Court explained that “[a] mistake in designating the judgment appealed from is not always fatal, so long as the intent to appeal from a specific ruling can fairly be inferred by probing the notice and the other party was not misled or prejudiced.” Here, the Court found no prejudice and interpreted the appeal to reference both Orders, thus confirming its jurisdiction.



Addressing the merits, the Court laid out the applicable legal standard, noting that grant of a preliminary injunction is reviewed for abuse of discretion using the law of the regional circuit. It explained that Rule 65 allows entry of a preliminary injunction only with notice to the adverse party. That notice requirement “implies a hearing in which the defendant is given a fair opportunity to oppose the application and to prepare for such opposition.” The Court held the district court’s entry of a preliminary injunction against Defendants violated Rule 65 because Defendants were not given advance notice or an opportunity to oppose the order. The Court rejected the argument that Gyroor-US received notice when Amazon froze its account because freezing an account did not qualify as notice of the motion for a preliminary injunction such that Gryoor-US had an opportunity to oppose.

CAFC Vacates Preliminary Injunction Issued without Proper Notice

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/19-2164.OPINION.5-12-2021_1776598.pdf" target="_blank" rel="noopener">Trimble Inc. v. PerDiemCo, LLC, No. 19-2164</a> (May 12, 2021), reversing the district court’s dismissal for lack of personal jurisdiction.



PerDiemCo sent Innovative Software Engineering, LLC (“ISE”) a letter asserting ISE’s products and services were covered by several of PerDiemCo’s patents and attaching an unfiled complaint. ISE, a subsidiary of Trimble, forwarded the letter to Trimble. Thereafter, the parties engaged in negotiations, during which time PerDiemCo also asserted Trimble’s products were covered by its patents. During the negotiations, PerDiemCo called, emailed, or wrote Trimble twenty-two times. Trimble and ISE ultimately filed an action for declaratory judgment of noninfringement in the Northern District of California. PerDiemCo moved to dismiss for lack of personal jurisdiction. The district court granted the motion, concluding that it lacked specific personal jurisdiction over PerDiemCo based on the Federal Circuit’s holding in Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc. that “[a] patentee should not subject itself to personal jurisdiction in a forum solely by informing a party who happens to be located there of suspected infringement.” Trimble appealed.



The Federal Circuit reversed the district court’s decision. First, the Court explained that subsequent developments had clarified the scope of its holding in Red Wing. The Court noted that the Supreme Court (1) has since clarified that the analysis of personal jurisdiction does not rest on special patent policies and “is governed by the same . . . procedural rules as other areas of civil litigation”; (2) has held that communications sent into a state may create specific personal jurisdiction; and (3) has established that a broad set contacts with a forum are relevant when assessing minimum contacts. Accordingly, the Court held that, though Red Wing was correctly decided on its facts, there is “no general rule that demand letters can never create specific personal jurisdiction.”



Next, the Court analyzed PerDiemCo’s contacts with California and found they were much more extensive than those present in Red Wing. PerDiemCo had “amplified its threats of infringement” and even “went so far as to identify the counsel it retained to sue Trimble and ISE and the venue in which it planned to file suit.” For those reasons, the Court held that PerDiemCo was subject to personal jurisdiction in the Northern District of California and the case should not have been dismissed.

CAFC Holds Certain Threats of Suit Can Be Enough to Establish Personal Jurisdiction

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1099.OPINION.5-23-2023_2131192.pdf">OneSubsea IP UK Limited, et al. v. FMC Technologies, Inc., No. 2022-1099 (May 23, 2023)</a>, affirming the district court’s denial of attorneys’ fees and costs under 35 U.S.C. § 285.



The OneSubsea Plaintiffs (“OSS”) field suit against FMC Technologies, Inc. (“FMC”) asserting infringement of ninety-five claims across ten patents relating to structures for subsea oil and gas recovery. Following issuance of the Markman Order, FMC moved for summary judgment of noninfringement based on the district court’s construction of the term “divert.” OSS opposed that motion and submitted an expert declaration in support of its argument that FMC’s accused structure diverts the fluid’s flow. In the meantime, several of FMC’s petitions for inter partes review were granted. The district judge stayed the case despite the pending summary judgment motion, stating “it is unclear from the current record whether FMC’s dispositive motion will be granted.” The PTAB ultimately invalidated seventy-six claims. FMC filed a renewed summary judgment motion, and OSS again opposed and submitted a different expert declaration. FMC moved to exclude that expert. The district court granted the motion to exclude and granted summary judgment. FMC sought fees and costs under 35 U.S.C. § 285. After briefing, the case was reassigned to a new judge who denied the § 285 motion. FMC appealed.



The Federal Circuit affirmed. First, the Court laid out the standard for an award of fees under Octane Fitness and explained that the denial of an award of fees is reviewed under an abuse of discretion standard. The Court rejected FMC’s argument that it should review the district court’s decision de novo because the successor judge who ruled on the fee motion had only “briefly ‘lived with the case.’” In doing so, it relied on a “substantial body of law” in which appellate courts have consistently reviewed successor judges’ decisions on discretionary issues for abuse of discretion and further found FMC’s cases inapposite. Next, the Court rejected FMC’s argument that the case was objectively baseless, noting that, following the Markman Order, the district court understood both parties’ contentions and originally concluded it was unclear whether FMC’s dispositive motion would be granted. Finally, the Court agreed with the district court that OSS’s reliance on inadmissible evidence did not render the case exceptional and rejected FMC’s other claims of litigation misconduct.

CAFC Affirms Denial of Attorneys’ Fees and Costs Under 35 U.S.C. § 285

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>
<li>Joseph W. Dubis Ph.D. 
<ul>
<li>Intellectual Property Law</li>



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



<li>Michael A. Erbele
<ul>
<li>Intellectual Property Law</li>



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



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



<li>Paige S. Stradley 
<ul>
<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>
<li>Joseph W. Dubis Ph.D. 
<ul>
<li>Intellectual Property Law</li>



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



<li>Michael A. Erbele
<ul>
<li>Technology Law</li>
</ul>
</li>



<li>Paige S. Stradley 
<ul>
<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>
<li>Joseph W. Dubis Ph.D. 
<ul>
<li>Intellectual Property Law</li>



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



<li>Michael A. Erbele
<ul>
<li>Technology Law</li>
</ul>
</li>



<li>Paige S. Stradley 
<ul>
<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>
<li>Joseph W. Dubis Ph.D. 
<ul>
<li>Intellectual Property Law</li>



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



<li>Michael A. Erbele
<ul>
<li>Intellectual Property Law</li>



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



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



<li>Paige S. Stradley 
<ul>
<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

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-2032.OPINION.9-18-2024_2386574.pdf">Astellas Pharma, Inc. v. Sandoz Inc., No. 2023-2032 (Sept. 18, 2024)</a>, vacating and remanding the district court’s sua sponte finding of invalidity under 35 U.S.C. § 101.



Sandoz sued Astella and other generic drug manufacturers for infringement of U.S. Patent No. 10,842,780, directed to a sustained-release pharmaceutical composition. Sandoz’s invalidity contentions asserted invalidity under 35 U.S.C. §§ 102, 103, and 112, but not under 35 U.S.C. §&nbsp;101. Sandoz further limited its invalidity defenses before trial, and neither party addressed patent eligibility at trial. In addressing Sandoz’s enablement defense in post-trial briefing, Astella described the inventive concept of the ’780 Patent as “discovering the dissolution rate that would address the food effect and achieving it using previously known formulation technology.” Relying on Astella’s description, the district court sua sponte ruled that the asserted claims were directed to a law of nature and were invalid under 35 U.S.C. § 101.



The Federal Circuit vacated and remanded. The Court emphasized the long-standing principle of party presentation, i.e., the parties frame the issues for decision while the court decides those issues. Although the Court recognized that the party presentation principle is “supple, not ironclad,” it held that finding a patent invalid on a ground not raised by any party was an abuse of discretion. The Court explained that “[o]ne cornerstone” of patent litigation is a patent’s presumption of validity. This means that patent eligibility is not a threshold question that a court is required to determine; instead, a court must only determine whether the patent challenger has met its burden of establishing invalidity on the grounds raised in the litigation. The Court vacated and remanded for adjudication of the issues properly raised by the parties.



The Court denied Astella’s request that the case be reassigned on remand. The Court noted that reassignment is “an exceptional remedy” and explained that errors relating to the propriety of a district court’s analysis do not warrant reassignment. The Court explained that while the district court had expressed personal frustration regarding the pharmaceutical industry, those comments were directed to the entire industry (brand and generic manufacturers), and there was no indication that the judge “cannot resolve the outstanding issues impartially and fairly.”

Federal Circuit Holds District Court Abused Discretion Sua Sponte Finding Patent Invalid Under 35 U.S.C. § 101

Litigation

Internet, Cybersecurity, & E-Commerce

Roylyn Wright

Partner

<ul>
<li>Secured a $3 million jury verdict in favor of Proformance Manufacturing, Inc. in a case involving patented window technology.</li>
<li>Served as co-first chair for a generic pharmaceutical manufacturer in patent infringement dispute, resulting in invalidation of three of the brand holder’s patents—one prior to trial under § 101 and two at trial on multiple grounds.</li>
<li>Obtained dismissal of multiple trade dress claims and false advertising claims relating to “Made in the USA” and invalidated competitor patents on summary judgment for HVAC control manufacturer.</li>
<li>Secured payment of lost profits for all past sales and a consent judgment that included an injunction and admission of validity for the Toro lighting company in design patent case.</li>
<li>Represented company in design patent dispute relating to thermoformed plastic packaging, namely bowls and lids for storing food products for display and use in supermarkets.</li>
<li>Obtained finding of liability on behalf of software technology plaintiff in copyright infringement and breach of contract lawsuit.</li>
<li>Represented defendant medical device manufacturer in patent infringement lawsuit that resulted in award of attorneys’ fees from the court and a negotiated settlement.</li>
<li>Represented multiple financial institutions in patent infringement lawsuit brought by non-practicing entity relating to mobile payment technology. Claims of one asserted patent invalidated during claim construction, and case resulted in negotiated settlement.</li>
<li>Represented plaintiff Huber Engineered Woods LLC, a building products manufacturer, in a patent infringement lawsuit involving multiple patents asserted against Georgia Pacific Wood Products LLC. Case resulted in a negotiated settlement.</li>
<li>Represented plaintiff Huber Engineered Woods LLC, a building products manufacturer, in a patent infringement lawsuit asserted against Louisiana-Pacific Corporation. Case resulted in a negotiated settlement.</li>
<li>Served as lead attorney representing plaintiff in lawsuit asserting claims of trademark infringement.</li>
<li>Served as second chair and successfully represented plaintiff HVAC manufacturer in patent infringement lawsuit brought against HVAC competitor relating to circuitry associated with HVAC heating controls. Case resulted in negotiated settlement.</li>
<li>Successfully represented defendant in lawsuit involving antitrust and tortious interference claims as well as claims brought under Colorado Organized Crime Control Act.</li>
<li>Represented defendant in trade secret and breach of contract dispute relating to pulse oximetry technology.</li>
<li>Served as lead attorney representing defendant in patent infringement lawsuit brought by non-practicing entity relating to mobile websites.</li>
<li>Represent trademark holder in multiple enforcement actions before Trademark Trial and Appeal Board, including action resulting in opposition being sustained and registration refused.</li>
</ul>

Paige  S. Stradley

Minnesota State Bar Association 
Former Board Member of the Federal Bar Association – MN Chapter 
Board Member of the Minnesota Center for Environmental Advocacy 
Chair, Millennial Engagement Committee 
Legal Committee 
Intellectual Property Inn of Court – MN Chapter 
The Honorable Jimmie V. Reyna Intellectual Property American Inn of Court 
  Founding Member

Professional Affiliations

Selected as by Best Lawyers in America: One to Watch, 2021-2025
Selected as Up &amp; Coming Attorney by Minnesota Lawyer, 2019
Selected for inclusion in Minnesota Super Lawyers Rising Star, 2019-2020
Merchant &amp; Gould Pro Bono Award, 2016

Awards &amp; Recognition

<h3>Publications</h3>
<a href="/portalresource/Leach-WhatFeaturesMatterInADesignPatentCase-Law360.pdf" target="_blank" rel="noopener">What Features Matter in a Design Patent Case?</a>, Law360, co-authored with Thomas Leach, February 2015
A New Dimension In IP Law: 3-D Printing, Law360, co-authored with George C. Lewis, April 16, 2014
A new dimension for IP law: 3D printing, Minnesota Lawyer, co-authored with George C. Lewis, March 13, 2014
Enhanced Duty of Candor Before the PTO, Today&#8217;s General Counsel, co-authored with Rob Kalinsky, Oct/Nov 2013
The Enhanced Duty Of Candor Before The Patent Office, Law360, co-authored with Rob Kalinsky, April 24, 2013
FBA Government Relations Committee Continues to Pursue the Interests of the Federal Judiciary and the Federal Courts on Capitol Hill, Bar Talk, March 27, 2013
A Vivid Reminder, Bar Talk, December 18, 2012
<a href="/News-Room/Articles/74884/United-States-District-Court-Minnesota-Chapter-of-the-FBA-and-Open-World-Leadership-Center-Host-Delegation-of-Ukrainian-Leaders">United States District Court, Minnesota Chapter of the FBA and Open World Leadership Center Host Delegation of Ukrainian Leaders</a>, Bar Talk, December 12, 2012

Paige S. Stradley

Practices

Industries

Representative Cases

Education

Admissions

Professional Affiliations

Awards & Recognition

Publications & Speaking Engagements

Publications