by Dennis Crouch

Agilent Technologies has petitioned the Supreme Court to review the Federal Circuit's June 2025 decision affirming PTAB invalidation of two pioneering CRISPR gene-editing patents.  The case turned on a prior art abandoned patent application containing prophetic examples that were never reduced to practice.  Citing prior precedent, the Federal Circuit held that the reference was presumed to be enabling and required no additional proof of efficacy.  The petition challenges these holdings, asking:

1. Should printed publications be presumed to be enabling when a party challenging the validity of issued patent claims asserts that a printed publication is anticipatory prior art, such that the burden of proving that the printed publication is nonenabling lies with the patentee?

2. Should the holding in Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1326 (Fed. Cir. 2005), that “proof of efficacy is not required in order for a reference to be enabled for purposes of anticipation,” be vacated or significantly narrowed?

Agilent Petition. See also, Dennis Crouch, Federal Circuit Clarifies Enablement Standards: Amgen Doesn’t Control Anticipatory Prior Art, Patently-O (June 11, 2025).

The petition arrives at this important moment as AI systems threaten to flood the patent system with billions of speculative disclosures. As most of us have experienced, the difficulty with GenAI outputs is that the technical hypotheses often seem reasonable on the surface and are presented with confident, authoritative language, but they typically suffer from the major defect of having little grounding in reality. With billions of new AI-generated documents published over the past few years, separating the wheat from the chaff ex ante becomes practically impossible.  But after-the-fact, patent challengers will be able to identify the winners in hindsight. The result is a prior art landscape increasingly populated with plausible-sounding but potentially non-operative disclosures that the current legal framework treats as equivalent to genuine inventions.

By Dennis Crouch

USPTO Director John Squires is increasingly positioning the patent system as an instrument of both national and international technology policy.  In October 2025, Dir.  Squires foreshadowed an anti-China approach within the U.S. patent system.  That endeavor appears to now be taking its first steps with a Show Cause order requiring Yangtze Memory Technologies Company (YMTC) to justify why its IPR petitions against Micron patents should proceed despite being named on the Department of Commerce's Entity List as an organization "reasonably believed to be involved, or to pose a significant risk of being or becoming involved, in activities contrary to the national security or foreign policy interests of the United States."  Yangtze Memory Technologies Co. v. Micron Technology, Inc., IPR2025-00098, IPR2025-00099, Paper 33 (USPTO Nov. 10, 2025).  YMTC's Ropes & Gray attorneys have until the 24th of November to reply.

To be clear, YMTC is not an ordinary China-based company.  YMTC reached the Entity List after first being placed on the Unverified List in October 2022 when BIS was unable to complete end-use checks to verify that exported technology was being used as declared. Under President Biden, YMTC was added to the Entity List based on findings that the company creates a major risk of diversion (sharing key technology) with other parties on the entities list, including Huawei and Hangzhou Hikvision.  In January 2024, the Department of Defense also designated YMTC as a "Chinese Military Company Operating in the United States." The company was founded in 2016 by partially state-owned Tsinghua Unigroup with approximately $24 billion in initial investment including substantial funding from the Hubei provincial government and the state-owned China Integrated Circuit Industry Investment Fund, and later received billions more in government capital infusions. Congressional correspondence has highlighted YMTC's alleged ties to the Chinese Communist Party and People's Liberation Army, and noted that some YMTC executives previously worked for Semiconductor Manufacturing International Corporation, another Entity List designee.

So, the idea here is that YMTC is a potential quiet saboteur.  Micron has been ringing this bell loudly for years.  Of course, Micron also has an enormous financial interest in villainizing YMTC.  In addition to its Entity status, Micron has also argued that the Chinese Government is a Real-Party-in-Interest that should have been named in the IPR petition. And, in the background is a legalistic argument that Return Mail should be extended to preclude IPR petitions where a any national government is petitioner or RPI.  Although this post is focused on YMTC, I also want to note that the Entity List has become a principal tool of U.S. economic and technology policy toward China, with hundreds of Chinese entities now listed.

One question here is whether USPTO actions against YMTC can be reconciled with U.S. commitments under international patent treaties.

Paris Convention National Treatment Obligations

by Dennis Crouch

The Federal Circuit reversed a district court's indefiniteness holding, ruling that courts have authority to correct an obvious claim error through claim construction where the error is evident on the face of the patent and only one reasonable correction exists. Canatex Completion Solutions, Inc. v. Wellmatics, LLC, No. 2024-1466 (Fed. Cir. Nov. 12, 2025).  The court relied upon its own prior precedent and referred back to the foundational case of I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429 (1926) that permits judicial correction -- while distinguishes Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004) (declining to correct).

Canatex owns U.S. Patent No. 10,794,122, which claims a releasable connection device used in oil and gas wells. The device included two parts ("first part" and "second part") that lock together during normal operations but can be separated. All three asserted independent claims (1, 7, and 13) contain language stating that a locking piston moves "to release the connection profile of the second part." The problem is that the phrase "the connection profile of the second part" had no antecedent basis in the claim.  Rather, the prior portion of the claim identified "a connection profile of the first part."

When defendants challenged the claims as indefinite for lack of antecedent basis, Canatex argued that "second" was an obvious error that should be construed as "first," pointing to the claim language and specification showing that only the first part has a connection profile and that this is what gets released when the two parts disconnect. The S.D. Tex. Judge Alfred Bennett rejected the patentee's argument and instead found the claims invalid as indefinite.

While the appeal was pending, the patentee sought a certificate of correction from the USPTO to change "second" to "first." But the office rejected the petition, finding that the requested correction was "more than a clerical or typographical mistake."

The I.T.S. Rubber Foundation for Judicial Correction

by Dennis Crouch

USPTO Dir John Squires has now issued 34 decisions on IPR institution since assuming personal control of the institution process in October 2025, with all 34 petitions denied. The Director's November 6, 2025 notice denies institution in 21 additional IPRs, following an October 31 notice denying 13 others. These summary orders provide no reasoning or analysis, listing only the denied IPR numbers and stating that "institution of inter partes review is denied." The Director appears to be using institutional silence as a policy instrument to strengthen patent rights by avoiding substantive review. The current 0% institution rate stands in sharp contrast to the PTAB's historic institution rate of approximately 67%.  This raises questions in my mind about whether the IPR system can continue to function as the alternative to district court litigation that Congress envisioned in the America Invents Act.

The statute grants the Director authority to determine whether to institute inter partes review under 35 U.S.C. § 314(a), but assigns the PTAB responsibility to conduct the trial and issue a final written decision under 35 U.S.C. § 318(a). Since the AIA's enactment in 2011, every USPTO Director delegated the institution determination to three-judge PTAB panels. Director David Kappos, who lobbied for the AIA's passage and oversaw its implementation, established this delegation framework. The practice continued for over a decade, with PTAB judges spending hours reviewing each petition, considering the substantive patentability showing and discretionary factors, and drafting reasoned institution decisions that provided guidance to the patent bar.

Acting Director Stewart began reclaiming institution decision authority in early 2025, personally reviewing selected cases where Patent Owners requested discretionary denial. Director Squires has now taken full personal control over all institution decisions. The shift creates a practical problem: PTAB judges previously devoted substantial time to evaluating each petition's technical merits and legal arguments before reaching institution decisions. Director Squires, while simultaneously managing a multi-billion dollar agency with over 10,000 employees, obviously lacks the available time of a cadre of specialized PTAB judges. This resource constraint, combined with the practice of issuing summary notices without written analysis, leads me to infer that petitions are receiving only cursory review. The no-opinion denial format permits this superficial examination while obscuring whether the Director has meaningfully evaluated the substantive patentability showing or merely applied categorical rules based on Patent Owner discretionary denial requests.

by Dennis Crouch

In an emergency shadow docket application filed late last month, the Solicitor General asked the Supreme Court to stay a D.C. Circuit injunction that allows Register of Copyrights Shira Perlmutter to continue serving in her position. The dispute centers on the separation of powers question:

Is the Library of Congress an "Executive agency" subject to the Federal Vacancies Reform Act (FVRA), or did Congress deliberately exclude it from that category (and does Congress even have that power)?

The answer will determine whether President Trump install an acting Librarian who can then remove the Register—or whether only a Senate-confirmed Librarian possesses that authority. Blanche v. Perlmutter, No. 25A478 (Supreme Court Application filed Oct. 2025).  For me, the case boils down to a question of whether we are ready to further enlarge our unitary executive scheme that is currently playing out.  If the answer is yes, then it is probably also time to unite the agencies, creating the United States Intellectual Property Office (USIPO).

• Brief: Blanche v. Perlmutter Application
• Brief: Opposition to Application to Stay
• Brief: Thaler Ltr to U.S. Supreme Court Requesting Hold
• Dennis Crouch, Perlmutter v. Trump: Does the President Control the Copyright Office?, Patently-O (May 2025)
• Dennis Crouch, Shira Perlmutter is (Temporarily) Back in Charge at Copyright Office, Patently-O (Sept 2025)

by Dennis Crouch

The USPTO has extended the deadline for public comments on its proposed rulemaking that would dramatically restrict access to inter partes review (IPR) proceedings. The comment period, originally set to close on November 17, 2025, has been extended by 15 days to December 2, 2025, following requests from a coalition of industry organizations who argued that 30 days was insufficient time to analyze the extensive proposed changes to PTAB practice.

• Original NPRM (Oct. 17, 2025): Revision to Rules of Practice Before the PTAB; docket PTO-P-2025-0025. (Federal Register)
• Extension of comment deadline (Nov. 7, 2025): Federal Register notice extending the comment period to December 2, 2025 (15-day extension), with PDF. (Federal Register)
• Patently-O analysis (Oct. 16, 2025): All Quiet on the PTAB Front: USPTO Proposes More Restrictions on IPR Institution. (patentlyo.com)

The proposed amendments would create three categories of mandatory bars to IPR institution: when claims have previously been found valid in other proceedings, where parallel litigation will likely reach a validity decision first, and where petitioners refuse to stipulate against raising any anticipation or obviousness challenges in other venues.  These changes are part of an overall dramatic shift against IPR institution under President Trump's patent office leadership that began with Dir. Stewart and continues with Dir. Squires.  But, the proposed rules do not include some of the most dramatic changes, including the "settled expectations" standard and the new process of issuing IPR institution rulings without any accompanying explanation.

by Dennis Crouch

In 2025, the USPTO has dramatically shifted its IPR institution practice -- resulting in an almost incredible uptick in institution denials.  One response has been a series of mandamus petitions to the Federal Circuit.  The first three of those have now been denied by a three judge panel.

• In re Motorola Solutions, Inc., No. 2025-134 (Fed. Cir. Nov. 6, 2025) (precedential)
• In re Google LLC, No. 2025-144 (Fed. Cir. Nov. 6, 2025) (non-precedential)
• In re SAP America, Inc., No. 2025-132 (Fed. Cir. Nov. 6, 2025) (non-precedential)

These three focused on the USPTO's February 2025 rescission of Sotera stipulation guidance offered a safe harbor against discretionary denial for petitioners involved in parallel district court litigation over the patent.

The three-judge panel was almost the same of Judges Dyk, Linn (opinion author), and Cunningham (with Stoll replacing Cunningham on the Google decision) rejected constitutional and Administrative Procedure Act (APA) challenges to the policy change, holding that 35 U.S.C. § 314(d) renders institution decisions "final and nonappealable" and that mandamus is ordinarily unavailable to review such discretionary determinations.

The petitioners in all three cases argued that Acting Director Stewart violated due process and the APA by rescinding the Vidal Memorandum and applying that rescission to pending IPR petitions. Motorola Solutions faced the most dramatic procedural harm: the PTAB had initially instituted eight IPRs based on Motorola's Sotera stipulations, but the Acting Director later vacated those institution decisions after rescinding the guidance. Google and Samsung jointly challenged denials of IPR petitions despite Samsung's stipulation, while SAP similarly contested discretionary denials after it had stipulated not to pursue district court invalidity grounds. Each petitioner contended that the policy reversal after they had filed their petitions violated constitutional protections and administrative law principles. The Federal Circuit rejected these arguments across the board, finding no colorable constitutional claim and holding that most APA challenges to institution decisions fall outside the narrow exceptions to § 314(d)'s bar on judicial review.

Several other petitions are pending, but (in my opinion) none of them raise substantially more compelling claims and so are also very likely to be denied.

The decisions carry troubling implications for an even more recent development in IPR practice. In October, 2025 Director John Squires took personal control over all IPR institution decisions (reversing the longstanding practice of delegating that responsibility to PTAB panels) and began issuing summary denial of institutions without any explanation or justification (again, reversing longstanding practice that IPR institution decisions have always offered a reasoned analysis).

The Federal Circuit's treatment of the arbitrary-and-capricious challenge in Motorola suggests that the court may see complaints about summary denials equally unreviewable. In Motorola, the court held that arguments challenging the Acting Director's failure to "offer any reasons for the change" in policy are "the kinds of arguments that we have said are not reviewable in light of § 314(d)" because they ultimately challenge the Director's weighing of factors. The result is what I have called an "unexplained and unreviewable" regime where the Director can deny institution without providing any grounds and courts cannot (or will not) intervene.

by Dennis Crouch

The Federal Circuit's recent decision in Merck Serono S.A. v. Hopewell Pharma Ventures, Inc. provides important clarification on when a patent reference qualifies as prior art "by another" under pre-AIA law 35 U.S.C. § 102(e).  It also highlights ways that the AIA has subtly changed this category of "secret springing prior art" that is now codified under § 102(a)(2) and the special exceptions found in § 102(b)(2) and §102(c).

The case comes as we also have a pending Supreme Court petition in Lynk Labs challenging whether this secret prior art qualifies as a "printed publication" that can serve as the foundation for an inter partes review (IPR) challenge.  That petition is set for consideration by the Court later this week.

by Dennis Crouch

On October 31, 2025, USPTO Director John Squires issued a one-page Notice of Decisions on Institution denying institution in thirteen pending inter partes review proceedings without a single word of explanation. The notice, signed solely by Squires, lists only the IPR docket numbers and concludes: "Petitions are denied, and no trial is instituted," citing 35 U.S.C. § 314(a). No panel composition, no reasoning, no indication of PTAB participation appears on the face of the order, which denied institution petitions filed by Apple, Snap, Amazon, AT&T, and others.

This marks the first wave of Director-level institution decisions since Squires’s October 17 memorandum reclaiming full control of AIA-trial institution from the Board and promising “summary notices” for routine outcomes. He has now made good on that promise. For the first time since the AIA’s enactment, an entire slate of IPR petitions was denied with no public reasoning.  This departs from traditional PTAB practice and even from Acting Director Coke Morgan Stewart’s centralized, expanded discretionary-denial process, which still produced reasoned written analyses.

by Dennis Crouch

In a memorandum issued Oct 28, 2025, USPTO Director John Squires designated Corning Optical Communications RF, LLC v. PPC Broadband Inc., IPR2014-00440, Paper 68 (PTAB Aug. 18, 2015) (except for § II.E.1) as precedential, formally restoring the Office's prior practice of requiring petitioners to identify all real parties in interest before IPR institution.  This move was foreshadowed by last month's de-designation of SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020), which had relaxed enforcement of the RPI requirement based on policy concerns about the difficulty of determining RPIs in many cases.

The America Invents Act provides that the USPTO may consider an IPR petition  "only if" it "identifies all real parties in interest." 35 U.S.C. § 312(a)(2).  This mandatory language indicates that the the agency must make some consideration of the RPI issue - but the primary questions are (1) whether RPI must be figured out prior to institution; and (2) whether the patentee can amend a petition that contained a faulty RPI statement.  The new answers here are (1) yes; and (2) no amendment.

The result here is opening the door to more IPR petition denials. And, in many cases, refiling will be barred under the 1-year SOL.

by Dennis Crouch

In re Maplebear Inc. (d/b/a Instacart), No. 26-105 (Fed. Cir., petition filed Oct. 21, 2025), adds another voice to the chorus of technology companies asking the Federal Circuit to rein in the Patent Office's increasingly restrictive approach to IPR institution. The mandamus petition was filed a few days after the USPTO published a Notice of Proposed Rulemaking (NPRM) that further curtails access to inter partes review (IPR) proceedings, and argues that the denial of its institution was improperly based upon grounds not supported by the statutory framework.  The petition argues that Dir. Stewart's novel denial criteria were imposed without the notice-and-comment rulemaking required by the Administrative Procedure Act, exceed the Director's statutory authority under 35 U.S.C. § 314(a), and were applied retroactively to Instacart's petition in violation of due process. The petition argues that the NPRM is tacit admission of the rulemaking requirement.

The Maplebear case is the seventh mandamus on the same issue -- arguing that the USPTO's broadened discretionary denial approach is ultra vires. (SAP, Motorola , Google, Samsung, HighLevel, SanDisk, Western Digital, Cambridge Industries, and now Instacart).  These petitions are all sitting before the Federal Circuit - none have been decided yet.  The wave began after Acting Director Coke Morgan Stewart rescinded former Director Kathi Vidal's June 2022 guidance memoranda, which had provided "safe harbors" for petitioners who stipulated not to pursue the same prior art in parallel litigation (so-called Sotera stipulations).  Following that rescission, the PTAB expanded its use of discretionary denials based on expanded Fintiv factors, which balance whether to institute IPR when parallel district court litigation is pending.  But then the policy shift went well beyond Fintiv with Acting Director Stewart introducing two additional discretionary denial grounds through individual PTAB decisions rather than formal rulemaking.

• Settled expectations: IPR petitions are denied if the challenged patent had been in force for several years (roughly seven+ years in practice), on the theory that patent owners develop stronger reliance interests as their patents age.
• Roadmapping: IPRs were denied if any prior party (related or unrelated to the current petitioner) had previously challenged the same patent, on the theory that later petitioners would impermissibly benefit from the roadmap provided by earlier proceedings.

These two factors represented a dramatic departure prior IPR practice with the result of hundreds of IPR institution denials.

by Dennis Crouch

Earlier this year, the Federal Circuit decided its first "do it on AI" case - holding that Recentive Analytics' inventions were ineligible. The key patents at issue focused on training machine learning models for specific applications (event scheduling and network maps).

Recentive has now petitioned the Supreme Court for writ of certiorari.  Conventional wisdom is that a good certiorari petition needs to show the legal error below and also show why the case is important and timely.  The petition follows this dual framing strategy: (1) a doctrinal claim that the Federal Circuit has abandoned preemption as the touchstone of patent eligibility; and (2) a policy argument tied to what I think of as the "new great game" and what the Trump Administration calls "Winning the AI Race."  The case also arrives at the Supreme Court as the USPTO has begun to move aggressively toward limiting its use of eligibility in patent prosecution.

The petition particularly asks whether eligibility doctrine requires model-architecture improvements, whether it is enough to create a practical tool by applying machine learning to new data environments.

• Recentive Certiorari Petition (Oct 2025)
• Dennis Crouch, “Do it on AI” Claims Are Abstract Ideas, Patently-O (Apr. 18, 2025) (discussing the Federal Circuit’s ruling that generic AI use is an abstract idea).
• Ryan Abbott, Reflections on Recentive v. Fox: To Do or Not To Do It With AI?, Patently-O (Oct. 9, 2025) (guest post analyzing Recentive v. Fox and AI-patent eligibility).
• Dennis Crouch, Preemption Lost: The Federal Circuit’s Abandonment of Supreme Court Patent Eligibility Doctrine, Patently-O (Feb. 7, 2025) (examining how the Federal Circuit largely ignores the Supreme Court’s preemption doctrine).
• Dennis Crouch, USPTO AI Strategy, Patently-O (Jan. 14, 2025) (outlining the pre-Trump administration AI strategy).