The USPTO’s Innovation Double Standard: Which Diversity Initiatives Survive

Patent

by Dennis Crouch

I sometimes have difficulty following doublethink. The recent implementation of the Republican Administration's executive orders on diversity initiatives has created a nuanced and seemingly contradictory landscape in federal agencies, including the USPTO.

In January 2025, the White House issued executive orders "Ending Radical And Wasteful Government DEI Programs And Preferencing" and "Ending Illegal Discrimination and Restoring Merit-Based Opportunity." These orders were followed by a February 5, 2025 memorandum from the Office of Personnel Management providing additional guidance on implementation. At the same time, the White House has repeatedly offered statements and other executive actions that focus particularly on protecting and "defending women."

The USPTO's implementation response has been notably selective.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Federal Circuit Denies Patent Agent Registration for Former USPTO Examiner Who Failed to Disclose Workplace Suspension

Patent

by Dennis Crouch

I am teaching professional responsibility this semester and it is fascinating to read about all the different ways legal professionals can stumble on their own feet. In a recent nonprecedential decision, the Federal Circuit upheld the USPTO's denial of a former patent examiner's application to register as a patent practitioner. Behnamian v. Stewart, No. 24-1139 (Fed. Cir. Feb. 26, 2025). [24-1139.OPINION.2-26-2025_2473270]

The case highlights the importance of candor and truthfulness in registration applications and the high ethical standards expected of those seeking to practice before the USPTO.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

USPTO Facing Additional Cuts: What’s Core vs. Expendable

Patent

by Dennis Crouch

As federal agencies begin to respond to the new Republican Administration's agency reorganization directive, the USPTO finds itself in an unusual position. Unlike many federal agencies, the USPTO operates primarily on user fees rather than appropriated funds. However, this self-funding status does not exempt the agency from the new "Department of Government Efficiency" (DOGE) initiative requiring agencies to develop plans for "large-scale reductions in force" (RIFs) by March 13, 2025.  opm-omb-memo-guidance-on-agency-rif-2-26-2025.

Depending on how Commerce Secretary Howard Lutnick and Acting USPTO Director Coke Stewart interpret and implement these directives, the impact on USPTO operations could be extremely disruptive. Lutnick has indicated he is in favor of major reductions in force, although not speaking directly about the USPTO. These negotiations continue behind closed doors while patent examiners, practitioners and applicants continue to sit in limbo about potential impacts on examination quality, processing times, and the stability of the U.S. patent system.

A new February 26, 2025 memorandum from OMB and OPM directs agencies to take serious steps toward shrinking their activity, workforce, and physical footprint.  Agencies have been directed to focus on "maximum elimination of functions that are not statutorily mandated." The memo notes that agencies should narrowly interpret statutory requirements:

Agency leadership must confirm statutes have not been interpreted in a way that expands requirements beyond what the statute actually requires. Instead, statutes should be interpreted to cover only what functions they explicitly require.

An important note here is that much of the USPTO operation is guided by precedential cases that are effectively already interpreting the statutes. This would seemingly guide any interpretation offered by the agency director.  Although some of this may seem dramatic, the Agency is part of the executive branch, and thus subject to the direction of the President and his sworn duty to "take Care that the Laws be faithfully executed."  Cuts are ongoing, but major systemwide upheavals are unlikely for several more weeks. We should know more after the March 13 agency deadline.

The memo from OPM creates a framework for analyzing which USPTO functions might be vulnerable to cuts -- some aspects of this are discussed in below.  The rest of this post talks through various USPTO functions -- considering ones that are statutorily mandated versus those that are discretionary as one approach to seeing where cuts might occur.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Corporate Shells and Legal Loopholes: The Dewberry Decision’s Trickster Legacy

Patent

by Dennis Crouch

In a unanimous decision released today, the Supreme Court has vacated a $43 million trademark infringement award against Dewberry Group, potentially creating a roadmap for corporate structuring to minimize trademark liability. Dewberry Group, Inc. v. Dewberry Engineers Inc., 604 U.S. ___ (2025). Justice Kagan, writing for the Court, held that when awarding the “defendant’s profits” under the Lanham Act, courts can only include profits “properly ascribable to the defendant itself” – not those of its legally separate, non-party corporate affiliates. While the decision reinforces traditional corporate law principles, it raises serious concerns about the practical enforcement of trademark rights in an era when establishing multiple corporate entities is increasingly simple and commonplace.  23-900_Dewberry Decision.

Mythological trickster figures such as the Coyote or Loki operate at the boundaries of justice — and are known for exploiting gaps between rules and reality in ways that allow for both ambiguity and transformation.  Writing in Carl Jung’s posthumous book, Joseph Henderson gave a harsh rendition of the trickster: “he [the trickster] is cruel, cynical, and unfeeling.”  Man and his Symbols (1964).   I see Dewberry as a trickster opinion – not necessarily good or bad – but one that creates a tension between legal formalism and practical reality, inviting clever structuring that follows the letter of the law while potentially undermining its purpose.  There is always a reckoning after the trickster acts as we come to grips with the gap between what the law says and what justice requires.  For example, the opinion here may ultimately prompt legislative reconsideration of how trademark remedies function in the modern corporate landscape. (more…)

Patent Office News and Turmoil

Patent

by Dennis Crouch

February 2025 has brought unprecedented changes to the USPTO as part of the broader Republican transformation of the Federal Government. This post highlights six key developments affecting the US patent systems:

  1. Leadership exodus following early retirement incentives;
  2. Billionaire influences on USPTO operations;
  3. New examiner productivity reporting requirements and surveillance concerns;
  4. Uncertainty surrounding the USPTO Director nomination;
  5. Impacts of return-to-office mandates on patent operations; and
  6. Hiring freezes, loss of workers, the growing patent backlog, and likely push toward AI solutions.

We are living in a politically divided world and it is easy to read bias into straightforward reporting—my intent here is simply to convey what's happening at the USPTO as accurately as possible, regardless of political implications.

1. Early Retirement Pressure and Leadership Exodus

The USPTO has experienced a significant leadership vacuum following abrupt emails earlier this February encouraging early retirement of all Federal employees, and an unusual level direct outside communication and control of employees from OPM/DOGE.  Several key USPTO leaders appear to have accepted these offers, including former Commissioner for Patents Vaishali Udupa, Commissioner for Trademarks David Gooder, and senior leader Tom Krause.  The "Fork" deal offered to pay these individuals through September despite no longer having any responsibilities at the agency.  For these leaders, at least a portion of their reason for departure was the end of the work-from-home option.  Will Covey has stepped in as Acting Deputy Director of the USPTO.  He has been part of the General Counsel's office for many years, including substantial time as Director for the Office of Enrollment and Discipline.

My understanding is that examiners who accepted the deal are still doing their daily grind and have not been directly notified of when they can stop.  Based upon second hand information, that date appears to be very soon (March 1, 2025). That timing (mid bi-week) suggests that the decision is once again being imposed on the USPTO.  I would advise examiners to keep doing their job until told otherwise in this confusing time; some in management will be looking for a mechanism to not pay the entire 7-month bonus.

So far, there is no word from the USPTO on how many individuals (1) opted into the fork; (2) have already left the agency voluntarily; (3) were fired or terminated; or (4) had their job offers withdrawn.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Republican Administration Maintains Exclusivity Stance in GLP-1 (Tirzepatide) Compounding Dispute

Patent

by Dennis Crouch

Since late 2022, the extraordinary demand for glucagon-like peptide-1 receptor agonists (GLP-1s) like Eli Lilly's tirzepatide (marketed as Mounjaro for diabetes and Zepbound for weight loss) has created a persistent nationwide shortage. This shortage opened a temporary but lucrative opportunity for compounding pharmacies, which the Federal Food, Drug, and Cosmetic Act permits to produce copycat versions of branded drugs during officially declared shortages. In December 2024, the FDA abruptly determined that the tirzepatide shortage had resolved and removed these products from its shortage list, effectively terminating compounders' legal authority to produce these drugs. With the recent transition to the Trump administration—whose leader has repeatedly criticized pharmaceutical companies for "getting away with murder" on pricing and specifically targeted the cost of weight loss medications—I have wondered whether the FDA might reverse course under new leadership and side with compounders offering lower-priced alternatives.  The FDA's new court filing indicates that the agency is standing firmly with patent holders and the drug approval system that grants market exclusivity.  [FDA Brief ZepBound]

The compounding pharmacies have been providing much cheaper versions of the drugs and apparently different dosing regimens.

A number of plaintiffs sued the FDA in 2024, seeking a preliminary injunction to permit ongoing compounding. Outsourcing Facilities Ass'n v. U.S. Food & Drug Admin., No. 4:24-cv-00953-P (N.D. Tex. filed 2024).   In its brief opposing the preliminary injunction, the FDA defends its data-driven conclusion that "Lilly's supply is currently exceeding demand and will meet or exceed projected demand across all strengths of Mounjaro and Zepbound." The FDA's determination relied heavily on confidential data provided by Lilly. I expect that this brief will effectively end the case for the plaintiffs, although they will likely continue to fight for some time.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Privilege Gone Too Far? How a 250-Year-Old Privilege Cost Atturo $10 Million

Patent

by Dennis Crouch

A new petition for certiorari in Atturo Tire Corp. v. Toyo Tire Corp. highlights an interesting procedural quirk in Illinois law that may require Supreme Court intervention to resolve an important state law question about the scope of litigation privilege. The case started as a patent importation dispute that Toyo filed with the ITC against various tire manufacturers, but not against Atturo. Toyo settled those cases with provisions requiring the settling parties to stop selling Atturo's tires. After Atturo won a $10 million jury verdict under Illinois law for tortious interference and related claims, the Federal Circuit reversed based on Illinois' absolute litigation privilege.  Atturo believes the scope of litigation privilege should be referred to the Illionois Supreme Court.  But, the Supreme Court's rules only allows certification from the US Supreme Court or Seventh Circuit -- that meant that the Federal Circuit could not certify the case.

Atturo has asked the Supreme Court to exercise its unique certification authority to get definitive guidance from the Illinois Supreme Court. See Ill. Sup. Ct. R. 20(a).

Read my post about the Federal Circuit's original decision here: Dennis Crouch, Treading Carefully: Federal Circuit Expands “Absolute Litigation Privilege” and Affirms Trade Dress Invalidity in Toyo Tire v. Atturo Tire, Patently-O (October 6, 2024).

The rest of this post talks through both the scope of litigation privilege and the certification process.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Bane and Antidote: Copyright Statute of Limitations

Patent

by Dennis Crouch

Statutes of limitations occupy a peculiar position in our legal system - both shield and sword. While they play a vital role in promoting social stability by preventing stale claims and encouraging prompt resolution of disputes, their rigid application can sometimes feel like permitting theft by other means. When an otherwise valid claim is barred simply because time has passed, the law effectively transforms a wrongful act into a permitted one.  The Supreme Court recognized this tension nearly 150 years ago in Wood v. Carpenter, acknowledging that statutes of limitations were both "bane and antidote," necessary for societal order yet potentially harsh in their operation. 101 U.S. 135 (1879). This fundamental tension is particularly acute in copyright cases where the limitations period is quite short - only three years and where creative works can be exploited for years before their owners discover the infringement.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

The Doctrinal Merger No One Asked For: How Enablement Swallowed Utility

Patent

by Dennis Crouch

The Federal Circuit's recent decision in In re McLeay offers a glimpse into the evolving relationship between utility and enablement in patent law.  Although the decision is short and non-precedential, I think it offers some important insights on how both the USPTO and Federal Circuit judges are thinking about the issues.

In affirming the USPTO's rejection of claims for treating COVID-19 with aerosolized ribavirin, the court's February 18, 2025 ruling (No. 23-2338) shows that the Full Scope Enablement Doctrine has effectively assumed the gatekeeping role traditionally assigned to Section 101's Utility Doctrine -- especially for pharmaceutical treatment claims. This shift reflects a broader pattern where enablement requirements under Section 112 are increasingly shouldering the substantive work of ensuring inventions are genuinely useful—work that the relatively permissive Utility Doctrine has largely abandoned.  I enjoyed the case also noting that it was argued by the patent applicant's twin brother Bart McLeay (Kutak Rock LLP).

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Reimagining Patent Examination: A (Half-Baked) Proposal for Pre-Filing Certification

Patent

by Dennis Crouch

In 2025, the Trump administration is in the process of substantially reducing the federal workforce while also signaling interest in increasing reliance on Artificial Intelligence in federal government operations. In this environment of rapid transformation, where once-unthinkable changes are becoming daily realities, the opportunity for radical reform of government institutions has never, in my lifetime, been more tangible.

Amid this dramatic reshaping of federal operations, I wanted to explore a potential structural reform: allowing patent applicants to obtain pre-filing certification of their applications through rigorous outside examination equivalent to USPTO standards. This certification could then facilitate expedited examination at the USPTO, similar to how the Patent Prosecution Highway (PPH) program operates for international applications, but with important distinctions that could make it more effective.  The U.S. patent examination system faces persistent challenges of long pendency times, substantial unpredictability, variable quality despite the USPTO’s continued efforts at improvement, and high costs. Although not without potential serious concerns, the proposal could address many of these elements.

The core idea is straightforward:

Before filing, applicants would submit their application to a certification entity that would conduct a thorough prior art search and patentability analysis.  There may be a certification process – that requires the entity to meet quality metrics parallel to those used by the USPTO internally. Applications certified as meeting patentability requirements would then be eligible for highly streamlined USPTO registration process.

Although AI tools would not be a required element of this process, I expect that they would be integral to the process of both certification entities and patent applicants seeking to navigate this new system effectively. Modern AI systems, particularly those built on large language models and specialized patent examination databases, could dramatically enhance the preliminary examination process by identifying relevant prior art, conducting an analysis for both anticipation and obviousness, suggesting claim amendments, and flagging potential §112 issues.  Leaving quality aside for a moment, the benefit of the AI system is its potential cost effectiveness and its timeliness. In particular, this process could compress the examination process into a single day rather than the multi-year scenario that 95% of applicants face.

While this proposal is primarily a thought experiment, its greatest value may be in demonstrating how AI-driven preliminary analysis and immediate feedback could be implemented within the USPTO’s existing framework to improve patent examination. (more…)

New USPTO Leadership on the Horizon: Lutnick Confirmed as Commerce Secretary, Squires Expected as Director

Patent

by Dennis Crouch

Yesterday, the Senate voted to confirm Howard Lutnick as Secretary of Commerce. Lutnick, has been CEO of Cantor Fitzgerald and a prolific inventor named on over 400 U.S. patents. Commerce has a wide coverage, including housing the USPTO.

Meanwhile, Dani Kass at Law360 is reporting that John A. Squires, currently a partner at Dilworth Paxson and former chief IP counsel at Goldman Sachs, is expected to be nominated as the next USPTO Director.  Like Lutnick, Squires has extensive fintech experience.

The Director position requires presidential nomination and Senate confirmation under 35 U.S.C. § 3(a)(1). The statute specifically requires that the Director be a U.S. citizen with a professional background and proven ability in patent or trademark law.  I expect that Sec. Lutnick will play a key role in advancing Squires’ potential nomination through the process.

Squires brings significant private sector IP experience to the potential role. At Goldman Sachs, he founded and led the investment bank’s intellectual property practice from 2000 to 2009. This was at the same time that Lutnick at CantorFitz was deeply involved on the technical side.  Squires’ practice at Dilworth Paxson has continued to focus on emerging technologies including AI, blockchain, and fintech.  He also previously helped to create the Fortress’ IP Investment group’s $4 billion.

Although Squires has not published his list, I expect that the following will be some of his focal points as he jumps into the fray:

  1. Ensuring the patent system is both accessible and valuable to small startups.
  2. Expanding patent eligibility through legislation, especially for Software/Fintech.
  3. Expanding the use of AI tools in the examination process to create a more efficient and predictable process.
  4. Reducing the backlog and patenting delays.
  5. Considering ways to link the patent system with national security.

The USPTO had expanded a number of DEIA related initiatives under Directors Iancu and Vidal. Those have been eliminated already and so are unlikely to be a focus of Squires’ tenure.

Generic Drugs, Skinny Labels, and Liability for Off Label (Infringing) Use

Patent

by Dennis Crouch

I mentioned in a recent post that Hikma's petition for writ of certiorari was due on Valentines Day, February 14 2025.  The company has now filed its petition and it des a powerful job of presenting the problems of the Federal Circuit's "skinny label" decision.  Hikma particularly asks the Court to clarify when marketing a generic drug with a "skinny label" can trigger liability for actively inducing patent infringement under 35 U.S.C. 271(b). Petition for Certiorari - Hikma v Amarin.

The case centers on Hikma's generic version of Amarin's Vascepa (icosapent ethyl), which was originally approved to treat a form of heart disease, severe hypertriglyceridemia (SH). While that use is no longer patent-protected, Amarin later obtained patents covering Vascepa's use for the somewhat overlapping category of reducing cardiovascular (CV) risk. Following established practice under the Hatch-Waxman Act, Hikma obtained approval for and ultimately launched its generic version with a "skinny label" that carved out the still-patented CV indication. See Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S, 566 U.S. 399 (2012) (explaining Congress designed this system "to speed the introduction of low-cost generic drugs to market").  This situation is extremely important because the majority of new FDA approvals are for new uses of already approved drugs.

We want a system that works to both incentivize development of further uses of the known drugs -- and that allows for low cost access for uses that are no longer protected by patent rights.  I also want to recognize here that drug prices for patented uses can be prohibitively expensive for individuals, while insurers and pharmacy benefit managers are looking for ways to lower their cost and stay competitive. So, any system we have in place needs to recognize these strong incentives and the pragmatic realities driving behavior in the pharmaceutical marketplace.  In other words, the system needs to maintain the practical viability of skinny labels without unduly trampling valid patent rights. The current situation creates an unsustainable political tension around new uses for existing medicines.  In order to be politically acceptable, we're going to need a system that continues to permit wide use of the old drugs.  Otherwise we'll see mounting pressure to eliminate new use patents that many see as improper evergreening that blocks legitimate generic entry.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Supreme Court Patent Challenges February 2025

Patent

by Dennis Crouch

The Supreme Court's 2024-2025 patent docket has a growing number of cases awaiting consideration. I count fifteen pending cases that could reshape multiple facets of patent law. At the heart of this term lies a set of challenges to the Federal Circuit's Rule 36 summary affirmance practice, with five separate petitions (ParkerVision, Island IP, ATOS, Audio Evolution Diagnostics and Converter Manufacturing) arguing that the court's frequent use of one-word affirmances undermines transparency and violates statutory requirements for reasoned decision-making and demands supervision from the Supreme Court. This procedural theme extends beyond Rule 36 to encompass broader questions about how patent cases should be adjudicated, with three petitions (BBiTV, Island IP, and Brumfield) challenging the Federal Circuit's approach to resolving factual disputes at summary judgment, particularly in patent eligibility cases. Impact Engine and Audio Evolution Diagnostics also challenge the eligibility framework, with Audio Evolution specifically questioning whether medical diagnostic machine patents should be considered abstract ideas under Alice/Mayo.

Two cases raise what I see as core substantive patent law issues outside of eligibility:

  • Converter Manufacturing questions the court's long-standing approach to prior art enablement.
  • Celanese raises questions the the scope of the on-sale bar under the America Invents Act, particularly for secret processes.

These substantive challenges are complemented by cases addressing remedial issues, including DISH Network's questions about attorney fee liability and IPR-related costs, and Provisur's challenge to the Federal Circuit's review of jury willfulness findings.

The following list loosely categorizes the pending cases and you'll find details about each via the hyperlink.

Federal Circuit Rule 36 Challenges

Patent Eligibility Cases

Other Core Patent Law Issues

Additional Procedural & Remedial Issues

Pending/Potential Filings

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

The Burden of Proving Prior Art Enablement

Patent

by Dennis Crouch

Federal Circuit recently issued a Rule 36 summary affirmance in Converter Manufacturing, LLC v. Tekni-Plex, Inc. (Fed. Cir. Sept. 9, 2024).  The case is now on petition for writ of certiorari to the US Supreme Court and raises significant questions about the burden of proving enablement of prior art references in patent cases.  The case also raises a challenge to the Federal Circuit's aggressive approach to issuing judgments without opinion. [Read the petition in 24-866]

Converter Manufacturing holds a number of patents covering thermoformed plastic food trays with rolled edges.  The dispute in the IPR centered primarily on whether the three prior art references were sufficiently enabling.  While creating rolled edges on circular plastic items (like cups) was well-known, doing so on rectangular trays presented a pretty tricky challenge because the plastic would pucker and wrinkle at the corners where the material has to travel different distances compared to the straight edges. This technical difficulty explains why industry participants considered rolled edges on rectangular trays "impossible" before CM's invention, despite the seemingly simple concept.

Science fiction is fun to read, but it typically cannot invalidate real innovations because (typically) the SciFi author does not actually teach the details of how to make the futuristic technology -- i.e., the work does not enable the invention.  Even in cases involving real prior invention, the public nature of patent law requires that the prior art evidence enable the invention. This requirement serves a crucial policy goal: ensuring that patents are only invalidated by prior art that genuinely placed the claimed technology within public possession, not by mere conceptual descriptions that fail to teach the public how to actually implement the invention. 

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

When Properties Define Structure: Eligibility of Composition Claims

Patent

by Dennis Crouch

The Federal Circuit has reversed a controversial ITC decision that had invalidated composition of matter claims as abstract ideas. US Synthetic Corp. v. Int'l Trade Comm'n, No. 23-1217 (Fed. Cir. Feb. 13, 2025). This case marks an important limitation on the seemingly ever-expanding realm of patent ineligibility under Section 101. Writing for a unanimous panel, Judge Chen wrote that US Synthetic's patent claims covering polycrystalline diamond compacts (PDCs) used in drill bits are patent eligible, rejecting the ITC's determination that claims defining a composition by its material properties could be deemed abstract ideas.

As I wrote in an October 2024 post, this case raised fundamental questions about whether composition of matter claims could ever be considered abstract ideas simply because they included functional limitations or defined the composition through its properties rather than manufacturing steps. The ITC's decision had drawn criticism from PhRMA and others as an unprecedented expansion of abstract idea analysis.

At oral arguments, Judge Dyk explained that the court was taking the case seriously:

This case is breaking new territory. If we were to affirm, then this very crude tool of patentability, known as patent eligibility, start running random through composition of matter claims, just as it has through computer software and diagnostic claims.

Oral args at 15:10.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Federal Circuit Tightens Expert Testimony Standards in Trudell, Previewing Potential Approach to EcoFactor

Patent

The Federal Circuit's recent decision in Trudell Med. Int'l Inc. v. D R Burton Healthcare, LLC, 23-1777 (Fed. Cir. Feb. 7, 2025), follows a framework for excluding expert testimony that either (1) violates discovery obligations or (2) contradicts claim construction. The appellate court rejected a jury verdict of non-infringement after finding the district court abused its discretion by admitting expert testimony that both failed to comply with Fed. R. Civ. P. 26's expert disclosure requirements and violated Federal Rule of Evidence 702's reliability standards.  The case also notably resulted in judicial reassignment after the Federal Circuit found the district judge's conduct and statements demonstrated an improper emphasis on rapid case disposition over careful consideration of the issues.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Docket This: Working with Clients to Manage the USPTO Continuation Surcharges

Patent

by Dennis Crouch

The USPTO's new fee structure, which took effect on January 19, 2025, introduces significant changes that will reshape patent prosecution strategy in the coming years. While the update includes generally higher fees across the board, one notable development is a substantial surcharge targeting continuation applications filed long after their earliest benefit date (EBD). Under this new structure, applicants now face a $2,700 surcharge for continuations filed six years after the EBD, with the fee jumping to $4,000 for applications filed nine or more years out. Small and micro entities receive their typical discounts. This change forces patent practitioners to reconsider long-established prosecution timing strategies, particularly the common practice of sequential continuation filings. The impact will be especially significant for foreign applicants and companies maintaining large continuation portfolios, requiring some immediate attention to docketing practices and client communication schedules.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Patent Applications After Final Rejection: A One-Year Follow-Up Study

Patent

by Dennis Crouch

I have been looking at after final practice, and potential changes going forward in how applicant's respond to this important decision point.

The chart above looks at fate of patent applications that received final rejections in January 2024 -- and shows an optimistic picture one-year out. Among the 15,813 applications tracked, nearly half (48%) have issued as patents or at least received a notice of allowance, suggesting that a final rejection, while a significant hurdle, is far from the end of the road for many applications. And, that an allowance may well be on the horizon. A substantial percentage of these cases used the now defunct After Final Consideration Pilot (AFCP 2.0) to transform the rejection into allowance.  Moving forward, applicants will likely instead need to file a Request for Continued Examination (RCE) or appeal.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

From Sculptors to Headnotes: Chiseling Out Copyright Protection for Westlaw Content

Patent

by Dennis Crouch

In a surprising decision today, Judge Stephanos Bibas ruled that ROSS Intelligence's use of Westlaw content to train its legal AI system constituted copyright infringement. Thomson Reuters Enter. Ctr. GmbH v. Ross Intel. Inc., No. 1:20-cv-613-SB (D. Del. Feb. 11, 2025).  I have been following a number of AI intellectual property challenges. Most of these have favored the makers and users of AI over the owners of the IP (typically copyright holders).

In 2023, Judge Bibas largely denied Thomson Reuters' motions for summary judgment on copyright infringement and fair use. Thomson Reuters Enter. Ctr. GmbH v. Ross Intel. Inc., 694 F. Supp. 3d 467 (D. Del. 2023). However, while preparing for the scheduled August 2024 trial, the judge reconsidered his earlier ruling.  The new opinion granted Thomson Reuters summary judgment on direct copyright infringement for 2,243 specific headnotes (detailed in a sealed appendix), including a finding of no fair use.  It looks like the only remaining factual issue for trial regarding these headnotes is whether some of their copyrights have expired.  There are also another set of headnotes that the judge concluded were not original enough to be clearly copyrightable -- those would go to a jury for consideration. [Read the Decision: 1739288038966]

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Different Burdens of Proof Prevent IPR Estoppel from Extending to Non-Challenged Claims

Patent

The Federal Circuit has significantly limited the reach of inter partes review estoppel in Kroy IP Holdings, LLC v. Groupon, Inc., No. 2023-1359 (Fed. Cir. Feb. 10, 2025). The court held that a PTAB unpatentability finding cannot create collateral estoppel (issue preclusion) against asserting other claims from the same patent in district court - even if those other claims are materially identical for invalidity purposes. The decision, authored by Judge Reyna, emphasizes the critical distinction between IPR's preponderance standard and district court litigation's clear and convincing evidence requirement.  This case builds upon ParkerVision, Inc. v. Qualcomm Inc., 116 F.4th 1345 (Fed. Cir. 2024).

The case arose after Kroy sued Groupon for infringing U.S. Patent 6,061,660, which relates to incentive programs over computer networks. After Groupon successfully challenged some claims in IPR proceedings, Kroy amended its complaint to assert different claims that had not been challenged in the IPRs. The district court dismissed the case, finding that collateral estoppel barred assertion of the new claims since they were not materially different from the claims found unpatentable by the PTAB.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.