Briefs are trickling in for the Supreme Court’s fast-paced battle over the upcoming TikTok ban. The outcome of TikTok v. Garland will likely be a watershed moment for free speech in the digital age — especially with respect to non-US media. This post walks through the six amicus briefs all filed early. Three support TikTok and its content creator co-petitioners; and three agree with the appellate court and U.S. government that the ban is appropriate.
As background: TikTok has over 170 million U.S. users but is ultimately owned by Chinese company ByteDance, which under Chinese law must share data and comply with Chinese Communist Party directives. After years of bipartisan concern about TikTok’s data collection practices and potential for content manipulation, Congress passed the Protecting Americans from Foreign Adversary Controlled Applications Act (PAFACAA) in April 2024 with strong support from both parties, and President Biden signed it into law. The Act effectively requires ByteDance to sell TikTok to non-Chinese owners by January 19, 2025, or face a ban on U.S. operations. TikTok and several content creators immediately challenged the law as violating the First Amendment, but the D.C. Circuit upheld the ban in December 2024, finding that even if strict scrutiny applied, the government’s national security interests justified the restriction. With the divestiture deadline looming, the Supreme Court took the extraordinary step of granting immediate review and scheduling arguments for January 10, 2025, just nine days before the law would take effect. The case presents novel questions about how traditional First Amendment doctrines apply to social media platforms controlled by potentially hostile foreign powers and tests the limits of Congress’s authority to restrict foreign ownership of communications infrastructure. (more…)
On December 24, 20262024, the USPTO issued 6,920 utility patents and 800 design patents. The vast majority of utility patents are published prior to issuance - this week the numbers were 94%.
The utility allowance rate was 86% for the week - calculated as the number patented divided by the number disposed of (patented / (patented + abandoned)). 90% of abandoned cases were - as you might expect - for failure to respond to an office action. A distant #2 was failure to pay the issue fee.
For the week, patent applications in semiconductor and display technologies (AU groups 2620, 2820) show extremely high allowance rates of 97-98%. In contrast, business methods, GUI, and AI-modeling patent applications (AU groups 3680, 2140, 2120) face much lower allowance rates around 59-62%, reflecting stricter scrutiny in these software and "abstract-idea" focused domains.
On December 11, 2024, the Court heard arguments in Dewberry Group, Inc. v. Dewberry Engineers Inc., No. 23-900, addressing profit calculations for trademark misappropriation under Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a). This is the only IP case that has been granted certiorari this term. The dispute stems from a $43 million disgorgement award based on profits earned by companies affiliated with, but legally distinct from, the defendant. The central question is whether courts can consider affiliate revenues without first “piercing the corporate veil.”
During oral argument, the Justices focused heavily on corporate law fundamentals. Several appeared skeptical of the respondent’s argument that courts can treat affiliate profits as evidence of a defendant’s “true financial gain” without disregarding corporate separateness. The Court’s ultimate resolution could significantly impact how companies structure their IP holdings and licensing arrangements between related entities.
Two interrelated petitions examine internet service provider liability for copyright infringement. In Cox Communications, Inc. v. Sony Music Entertainment, No. 24-171, and Sony Music Entertainment v. Cox Communications, Inc., No. 24-181, the Court confronts important questions about secondary liability following a $1 billion jury verdict. The Cox petition challenges the Fourth Circuit’s holding that an ISP “materially contributes” to infringement merely by continuing service to known infringing subscribers. This arguably conflicts with decisions requiring either active promotion of infringement (Second and Tenth Circuits) or at least failure to implement simple preventive measures (Ninth Circuit).
Sony’s cross-petition addresses when ISP infringement qualifies as “willful” under 17 U.S.C. § 504(c). The Fourth Circuit held that knowledge of subscriber infringement suffices, while the Eighth Circuit requires evidence the ISP knew its own conduct was unlawful. This distinction has enormous practical impact—under the Fourth Circuit’s approach, the statutory damages ceiling automatically increases from $30,000 to $150,000 per work for contributory infringers. The Court has invited the Solicitor General to weigh in on both petitions — this will likely be submitted by the Trump Administration after January 20, 2025.
In King for Congress v. Griner, No. 24-321, the Court is presented with a circuit split regarding Rule 68 offers of judgment in copyright cases. The dispute involves the viral “Success Kid” meme, where a congressional campaign was found to be an innocent infringer (i.e., non-willful) yet sought to recover post-offer attorney’s fees under Rule 68. The Eighth Circuit joined the First, Seventh and Ninth Circuits in holding that copyright defendants cannot recover Rule 68 attorney’s fees because the Copyright Act limits fee awards to “prevailing parties.” Griner arguably won, but the total award was just $750.
Canadian Standards Association v. P.S. Knight Co., No. 24-537 asks whether privately-developed technical standards lose copyright protection when incorporated by reference into law. The Fifth Circuit, applying its prior decision in Veeck v. Southern Building Code Congress Int’l, Inc., 293 F.3d 791 (5th Cir. 2002), held that both the government edicts doctrine and merger doctrine strip such standards of protection, regardless of their private authorship. The petitioner argues this conflicts with Georgia v. Public.Resource.Org, Inc., 140 S. Ct. 1498 (2020), which emphasized that copyrightability turns on the identity of the author rather than whether content carries legal force. The case has significant implications for U.S. treaty obligations under the Berne Convention and the sustainability of private standards development, as many technical codes relied upon by federal agencies are created by organizations seeking copyright licensing revenue.
The dispute in BMC Software v. IBM, No. 24-569 arose when IBM used its IT outsourcing position to help customer AT&T replace BMC’s licensed mainframe software with IBM’s competing products—violating a license provision prohibiting IBM from using its access to “displace” BMC’s software. The Fifth Circuit reversed a $1.6 billion damages award, holding the license restriction was likely unenforceable as a restraint on trade because it could limit AT&T’s software choices. BMC argues this creates a circuit split with four courts of appeals that recognize software owners have a “presumptively valid business justification” for license restrictions. The case raises fundamental questions about the intersection of copyright and antitrust law, particularly regarding restrictions designed to prevent competitors from leveraging privileged access to unfairly compete.
Rutstein v. Compulife Software, No. 24-634 raises a novel trade secret issue: whether automated web scraping should be treated differently than manual data collection under the Defend Trade Secrets Act (DTSA). The Eleventh Circuit held that using automated tools to collect insurance premium quotes from Compulife’s public website constituted misappropriation by “improper means,” even though manually collecting the same data would be legal. Critics argue this creates an arbitrary distinction based on collection efficiency rather than the nature of information access. The case could provide crucial guidance on how trade secret law should adapt to automated data collection technologies that power much of the modern internet.
Finally, T-Mobile v. Simply Wireless, No. 24-637, presents a circuit split over maintaining common law trademark rights. The Fourth Circuit held that once rights are established through “extensive use,” they persist until abandoned under Section 45 of the Lanham Act, 15 U.S.C. § 1127—even during extended periods of non-use. This allowed Simply Wireless to pursue infringement claims against T-Mobile despite having made no use of its mark during multiple multi-year periods. This approach conflicts with other circuits requiring continuous use until alleged infringement begins. The case could resolve whether the continuous use requirement applies only to establishing common law rights or extends to maintaining them, with significant implications for dormant mark enforcement.
These cases highlight a recurring challenge in patent law – how to analyze infringement when a claim requires components controlled by different actors. The issue is particularly salient for modern technology systems that often involve both vendor-operated backend servers and customer-operated frontend devices. (more…)
The Supreme Court has not granted certiorari in any patent cases this term. But the 2024 docket includes a number of important petitions -- some focusing on procedural issues and others on fundamental patent law questions. Here is a quick review of those currently pending before the high court:
The European Patent Office (EPO) has again rejected Dr. Stephen Thaler’s patent application that attempted to name his artificial intelligence system DABUS as an inventor. The EPO examining division’s decision reinforces the foundational principle that inventors must be natural persons under European patent law. Article 81 of the European Patent Convention (EPC) requires a mandatory designation of inventor, and according a prior precedential decision that went against Thaler, the inventor “must be a natural person.” The examining division emphasized that this requirement stems from the interconnection between Article 81 EPC (designation of inventor) and Article 60(1) EPC (right to European patent).
Article 81: Designation of the inventor — The European patent application shall designate the inventor. If the applicant is not the inventor or is not the sole inventor, the designation shall contain a statement indicating the origin of the right to the European patent.
Article 60: Right to a European patent — (1) The right to a European patent shall belong to the inventor or his successor in title. . .
Of course, neither of these articles expressly state that the inventor must be human, but the implication from Article 60(1) in particular is that the inventor is someone with the capability of holding title. (more…)
In a major decision clarifying the scope of Orange Book patent listings, the Federal Circuit has ruled that device patents must claim at least the active ingredient to be properly listed. Teva Branded Pharm. Prods. R&D, Inc. v. Amneal Pharms. of N.Y., LLC, No. 24-1936, -- F.4th --, 2024 WL 2923018 (Fed. Cir. Dec. 20, 2024). The court rejected Teva's attempt to list patents covering only inhaler components, explaining that the listing statute requires patents to "claim the drug" - which means they must particularly point out and distinctly claim at least the active pharmaceutical ingredient.
[O]ur analysis of the numerous relevant statutory provisions and the relevant case law leads us to only one conclusion: To list a patent in the Orange Book, that patent must, among other things, claim the drug for which the applicant submitted the application and for which the application was approved. And to claim that drug, the patent must claim at least the active ingredient. Thus, patents claiming just the device components of the product approved in an NDA do not meet the listing requirement of claiming the drug for which the applicant submitted the application.
The dispute centers on five Teva patents related to components of its ProAir HFA albuterol inhaler - specifically the dose counter and canister features. After Amneal filed an Abbreviated New Drug Application (ANDA) seeking approval for a generic version, Teva sued for patent infringement, triggering an automatic 30-month stay of FDA approval. Amneal counterclaimed seeking delisting of the patents from the Orange Book, arguing they did not properly "claim the drug" as required by 21 U.S.C. § 355(b)(1)(A)(viii). The district court granted Amneal's motion for judgment on the pleadings, ordering Teva to delist the patents because they "contain no claim for the active ingredient at issue, albuterol sulfate" but instead "are directed to components of a metered inhaler device." Teva appealed, and the Federal Circuit stayed the delisting order pending its review. However, the appellate panel now affirmed the delisting order.
The Federal Circuit's December 19, 2024 decision in Altria (Philip Morris) v. R.J. Reynolds offers important guidance on patent damages methodology while potentially previewing issues soon to be addressed en banc in EcoFactor v. Google. The case centered on Reynolds' VUSE Alto e-cigarette product and its infringement of three Altria patents. U.S. Patent Nos. 10,299,517, 10,485,269, and 10,492,541. While the court addressed multiple issues, I want to focus here on the damages analysis - particularly regarding comparable licenses and apportionment. Although the case is non-precedential, it includes both a majority opinion (authored by Judge Prost and joined by Judge Reyna) and a dissent (by Judge Bryson). Like Judge Reyna's decision in EcoFactor, the case involves the use of lump-sum licenses to create a running royalty calculation, as well as the proper approach to apportioning damages so that the award is for the use of the patented invention.
The damages dispute focused primarily on how Altria's expert derived a 5.25% royalty rate from comparable license agreements, particularly a license between Fontem and Nu Mark. Under this agreement, Nu Mark paid Fontem a $43 million lump sum for rights to practice Fontem's patents through 2030. Following established precedent from Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009), Altria's expert analyzed Nu Mark's sales projections to convert this lump-sum payment into an effective royalty rate. The expert identified projections showing that a 5.25% royalty applied to sales from 2017 to 2023 would yield approximately $44 million in payments - close to the actual $43 million lump sum paid.
The Senate Judiciary Committee’s Subcommittee on Intellectual Property recently held a new hearing focusing on the RESTORE Patent Rights Act, a deceptively simple one-sentence bill that could dramatically reshape patent enforcement in the United States. The hearing highlighted the stark divide between those who believe stronger injunctive relief is needed to protect patent rights and those who warn that presumptive injunctions could harm innovation.
At its core, the RESTORE Act would establish a rebuttable presumption that courts should grant permanent injunctions when patent infringement is found. The key language is as follows:
If . . . the court enters a final judgment finding infringement of a right secured by patent, the patent owner shall be entitled to a rebuttable presumption that the court should grant a permanent injunction with respect to that infringing conduct.
This would partially reverse the Supreme Court’s 15-year-old decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) which eliminated the near-automatic granting of injunctions in patent cases and instead required courts to apply a four-factor test considering irreparable harm, adequacy of monetary damages, balance of hardships, and the public interest. Under the proposal, the four factors would (I presume) continue to apply, but with the burden shifted to adjudged infringers to show that they do not support injunctive relief. In my mind, the bill also highlights an aspect of eBay that is not much discussed. The Supreme Court said nothing explicit about whether a presumption of irreparable harm persists — that elimination of even a presumption of irreparable harm came from the Federal Circuit most notably in Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142 (Fed. Cir. 2011). In Bosch, the Federal Circuit took the additional step of interpreting eBay to eliminate the presumption of irreparable harm. Overruling Smith Int’l, Inc. v. Hughes Tool Co., 718 F.2d 1573 (Fed. Cir. 1983) (“where validity and continuing infringement have been clearly established, immediate irreparable harm is presumed.”).
The December 18, 2024 hearing was led by Senators Coons and Tillis and included four witnesses.
The Supreme Court’s December 18, 2024 order in TikTok v. Garland is an extraordinary intervention by the Court (especially for its speed) and will likely address a number of novel constitutional questions about government regulation of social media and national security, especially in light of the ongoing economic “war” with China. The order consolidates two emergency applications seeking to block enforcement of the Protecting Americans from Foreign Adversary Controlled Applications Act (PAFACAA) before its January 19, 2025 effective date. That statute would effectively ban TikTok from operating within the US unless it is fully divested from Chinese government control.
PAFACAA, signed into law on April 24, 2024, specifically targets applications controlled by designated foreign adversaries, with TikTok being the only platform currently affected. The legislation prohibits entities from distributing, maintaining, or updating foreign adversary controlled applications within U.S. borders through app stores or internet hosting services. For TikTok, these prohibitions take effect on January 19, 2025, unless the platform executes a “qualified divestiture” that would sever its ties to ByteDance and, by extension, the People’s Republic of China (PRC).
In Palo Alto Networks, Inc. v. Centripetal Networks, LLC, No. 2023-1636 (Fed. Cir. Dec. 16, 2024), the Federal Circuit vacated and remanded a Patent Trial and Appeal Board (PTAB) decision. Judge Stoll's opinion identified two critical flaws in the PTAB's obviousness analysis: (1) Failure to make clear findings on motivation to combine references; and (2) Analysis of prior art references in isolation rather than as a combined whole.
The Intellectual Property Owners Association (IPO) has sent a detailed letter to President-Elect Trump outlining its recommended qualifications for the next USPTO Director. [IPO-Recommendations-re-USPTO-Director-Qualications-and-cover-letter] Although I do not expect a nomination from the President until well after inauguration on January 20, transition teams are compiling and vetting short lists of potential candidates, and so the letter comes at an important time in the process. IPO President Krish Gupta (Dell) emphasized in the letter that the USPTO Director "should be a top-caliber individual with strong organizational management and leadership skills and in-depth knowledge of patent and trademark law and practice."
Under 35 U.S.C. § 3, the Director must be appointed by the President and confirmed by the Senate. The statute requires that the Director "shall be a person who has a professional background and experience in patent or trademark law" (ideally both) and must perform duties in a "fair, impartial, and equitable manner." These statutory requirements set a baseline, but IPO argues for qualifications well beyond these minimums.
BBiTV has signaled its intent to seek Supreme Court review of the Federal Circuit's rejection of its electronic program guide patents, teeing up important questions about patent eligibility for software innovations. The case highlights persistent tensions in how courts evaluate patent eligibility for screen-based user interfaces under 35 U.S.C. § 101. Broadband iTV, Inc. v. Amazon.com, Inc.
In a terse order issued December 4, 2024, the Federal Circuit significantly narrowed the scope of the pending en banc review in EcoFactor, Inc. v. Google LLC, rebuking Google for its opening brief that strayed well beyond the court’s limited grant of en banc review. The order specifically targets pages 41-58 of Google’s 61-page brief—the entire section addressing apportionment of patent damages—and instructs EcoFactor not to address those arguments in its response. Going forward, the case now focuses on an expert’s use of prior license agreements as evidence of reasonable royalty damages, particularly when those agreements involve a different payment calculation approach (lump-sum vs royalties) and “performative” clauses crafted with an eye toward future litigation. (more…)
The Supreme Court will soon consider whether to review what I see as an important Federal Circuit decision finding personal jurisdiction based solely on a patentee's use of Amazon's private patent enforcement system. In Lighting Def. Grp. LLC v. SnapRays LLC, No. 24-524 (petition filed Nov. 5, 2024), Arizona-based LDG submitted a patent infringement complaint against Utah-based SnapPower through Amazon's Washington-based Patent Evaluation Express (APEX) program. To be clear: this is a private arbitration system that relates to selling on Amazon - it is not a federal court case. Under APEX, Amazon notifies accused sellers who have three weeks to either participate in Amazon's evaluation process, settle with the patent owner, or file a declaratory judgment action - otherwise their listings are removed.
SnapPower sued in Utah federal court seeking a declaratory judgment of non-infringement and invalidity. However, the district court dismissed for lack of personal jurisdiction since LDG (an AZ company) had no contacts with Utah. On appeal, the Federal Circuit reversed, holding that LDG's use of the APEX system knowing it would affect SnapPower's Utah operations was sufficient to create jurisdiction there. The cert petition argues this conflicts with Supreme Court precedent requiring contacts with "the forum State itself, not the defendant's contacts with persons who reside there." Walden v. Fiore, 571 U.S. 277 (2014).
Four new amicus briefs were filed last week in ParkerVision v. TCL, bringing the total to eight and adding substantial firepower to the challenge against the Federal Circuit’s practice of issuing summary affirmances without opinion. I wanted to quickly run through the briefs and talk through their various perspectives on why the court’s Rule 36 practice warrants Supreme Court review.
You can read in the links below that I have written several times about this pending case and more generally about the no-opinion judgment problem. The basic background is that the Federal Circuit has an ongoing and extensive practice of issuing no-opinion judgments in a substantial percentage of its cases. ParkerVision argues, inter alia, that this practice violates 35 U.S.C. § 144’s explicit requirement that the Federal Circuit “shall issue . . . its mandate and opinion” when deciding Patent Office appeals.
The ParkerVision docket, along with companion case Island IP, has been distributed internally within the Supreme Court and scheduled to be discussed at the court’s January 10, 2025 conference. (more…)
The Northern District of Illinois’ “cottage industry,” Schedule A litigation, depends on mass joinder of defendants. Plaintiffs accuse dozens, hundreds—sometimes over a thousand—defendants of IP infringement in a single case. This allows the plaintiffs to save money on filing fees and maximize this litigation model’s profitability.
But lately, a number of judges are pushing back on joinder and raising that issue sua sponte. (more…)
The Federal Circuit has ruled that Crown Packaging's high-speed necking machine patents are invalid under the pre-AIA on-sale bar, reversing a Virginia district court's summary judgment decision. Crown Packaging Technology, Inc. v. Belvac Production Machinery, Inc., Nos. 2022-2299, 2022-2300 (Fed. Cir. Dec. 10, 2024). The court held that a detailed price quotation marked "subject to written acceptance" can still constitute an invalidating offer for sale and not merely an invitation to make an offer.
Ooh la la ... high speed necking. For those wondering, "necking" in the beverage can industry refers to the manufacturing step of reducing a can's diameter at the top to create the tapered shape we drink from. Crown's patents at issue in the case (U.S. Patent Nos. 9,308,570; 9,968,982; and 10,751,784) protect their horizontal, multi-stage necking machines designed for such high-speed production.
Relationship expert John Gottman famously identified "stonewalling" as one of his "Four Horsemen of the Apocalypse" that predict relationship failure. Stonewalling occurs when one partner withdraws from interaction, refusing to engage or respond meaningfully to the other's concerns. The behavior is particularly toxic because it leaves the other party feeling ignored and invalidated, while also preventing any real progress toward resolution. In many ways, the Federal Circuit's prevalent use of Rule 36 summary affirmances operates as a form of institutional stonewalling - responding to carefully crafted legal arguments with a single word "AFFIRMED" while refusing to explain its reasoning. That practice is now under intense scrutiny, with Island IP pressing a two-front challenge through Supreme Court filings this week. In addition to filing its reply brief in Island Intellectual Property LLC v. TD Ameritrade, Inc., No. 24-461, Island IP has also submitted an amicus brief supporting the parallel petition in ParkerVision, Inc. v. TCL Industries Holdings Co., No. 24-518.
Patent attorneys know that amending the specification can directly impact claim interpretation. The Federal Circuit in Phillips v. AWH Corp. placed the specification alongside claim language as foundational intrinsic evidence for claim construction, recognizing that the specification provides focused context for understanding claim terms as they would be understood by skilled artisans. 415 F.3d 1303 (Fed. Cir. 2005). Amendments made during prosecution carry particular weight because they represent deliberate choices by the applicant to alter a known baseline. Although practitioners don't always think of it this way, one of the most significant opportunities for "amending" patent disclosure comes when moving from a parent to a child application. This transition - particularly when moving from a provisional to a non-provisional application - often serves as a natural inflection point where attorneys engage in cleanup, clarification, and refinement. But as recent Federal Circuit decisions make clear, these often routine editorial choices between applications can have profound implications for claim scope, even without rising to the level of formal prosecution disclaimer.
The case prompting this post is the DDR Holdings, LLC v. Priceline.com LLC, No. 2023-1176 (Fed. Cir. Dec. 9, 2024), claiming methods and systems for generating a composite web page that combines content along with ads from third-party “merchants.” U.S. Patent No. 7,818,399. I think the idea here is similar to create a white-label or embedded shopping experience. When a user clicked on a product link, instead of being redirected to the merchant's site, they would see a new composite web page that maintained the host website's look and feel while displaying the merchant's product information. Although the ability to embed shopping experiences is integral to web technology today, it wasn't so clear back when DDR filed its original provisional application back in 1998.
The dispute centered on whether the claim term "merchants" was limited to sellers of goods or could also include service providers. Travel companies like Booking.com and Priceline.com are quintessential service providers - they don't sell physical goods but rather facilitate services like hotel bookings, airline tickets, and car rentals.
