Pour Me Another: The Supreme Court Revisits the ‘Bad Wine’ of the Copyright Discovery Rule

by Dennis Crouch and Timothy Knight

On February 21, 2024, the Supreme Court heard oral arguments in the case of Warner Chappell Music v. Nealy, which deals with a circuit split over the availability of back-damages in copyright infringement cases. Specifically, the Court is examining whether copyright plaintiffs are barred from recovering damages for acts of infringement that occurred more than three years before filing suit, even if the claims are timely under the “discovery rule.” During the arguments, the parties and justices used metaphors of “bad wine vintages” in questioning the pedigree and value of the discovery rule and damages limitation put before them.  [Oral Argument Transcript]

The copyright law has a three year statute of limitations for filing suit that begins when the copyright “claim accrued.” Although “accrual” in copyright cases ordinarily occurs with infringement, the judge-made discovery rule allows copyright claims to accrue when the plaintiff discovers, or reasonably should have discovered, the infringement rather than when the infringing act occurred.  All circuit courts accept some form of the discovery rule, but they disagree over a second point — whether damages can reach back beyond the three-year statute of limitations period measured from the date of filing.  Although the statute does not make any distinction between a right to file an action and a right to back damages, the distinction stems from ambiguous dicta in the Court’s 2014 Petrella v. MGM decision. Although that case focused on laches, the court suggested general allowance for the discovery rule for copyright claims more than three years from filing, but also wrote that Section 507(b) permits “retrospective relief running only three years back from the date the complaint was filed.”  This statement led some courts (including the district court here) to conclude that a copyright holder can sue for wrongful actions that were more than three-years distant, but can only collect damages associated with infringing actions within the three year bubble.  In this case, the Eleventh Circuit sided with the plaintiff (reversing the district court) in holding that claims for back damages also follow the discovery rule — permitting potential distant claims. 

In the certiorari process, the music publishers asked two broader questions that seemed to potentially challenge the discovery rule itself, but the court granted a re-written narrower question that assumed the discovery rule is in place, but questioned whether it also allows damages beyond the three year mark. 

Kannon Shanmugam, representing the music publishers who lost before the Eleventh Circuit, began the argument with a statement that the case “presents a straightforward matter of statutory interpretation” under Section 507(b)’s three-year limitations period. He stated that “a plaintiff can obtain damages for acts of infringement only within three years of filing” and that Petrella supports this position. However, the Justices quickly noted that the question presented “assumes the existence of the discovery rule” and does not revisit whether one should exist at all. This prompted pushback from Shanmugam:

I don’t think that this Court when it rephrased the question presented was accepting any particular version of the discovery rule. . . At most, the rephrased question presented assumes the existence of some version of the discovery rule. It does not take sides on the scope of that rule.

The Justices remained skeptical, with Justice Sotomayor asking “isn’t it artificial for you to raise the most important part of your argument in a footnote” rather than directly asking the Court to revisit the discovery rule. She emphasized that Shanmugam was now trying to make arguments that went beyond the scope of the question presented. Justice Gorsuch echoed this, stating “we’re being asked to decide the scope of something that may or may not exist.”

Respondent’s counsel, Joe Earnhardt, also refused to defend the discovery rule’s validity. He argued the question that was granted certiorari “assumes that there is a discovery rule” and claimed all circuits agree one exists (but disagree as to its scope). Justice Gorsuch then wondered: “Why wouldn’t we just take up that question first” regarding the existence of any discovery rule? But Earnhardt maintained doing so was inappropriate since the issue “wasn’t raised below” and has no circuit split.

Overall, the Justices appear to not be willing to rule expressly on the discovery rule question – whether it exists, even while questioning how to decide a “scope” issue if the rule itself is uncertain. Justices floated the possibility of DIGing the case, meaning dismissing it as improvidently granted (DIG). That had also been suggested by respondent.  Justice Alito noted, it makes little sense to “talk about the second [question of scope] without resolving the first [its existence].” 

Turning to the core question regarding retrospective damages, Shanmugam argued the time-bar stems directly from the statute of limitations provision that a claim must be brought within three years of accrual. “Our submission is simple. As this Court has said, the standard rule is that ‘accrues’ means at the point when you have a complete and present cause of action.” Plaintiff’s attorney Earnhardt contested this reading. He claimed other parts of the Copyright Act authorize full recovery of damages without any “lookback” restriction, such that imposing one would contradict Congress’s intent. It appears that nothing in the Copyright statute provides any hook for separately treating the damages timing from the general accrual limitation.  Justice Sotomayor explained her perspective that “The damages section speaks about damages. The statute of limitations speaks about a time period to file a complaint. You’re automatically tying the two. Tell me how you’re doing it.” Shanmugam argued both that the text demands a three year rule and that the particular damages limitation is derived from the Court’s own prior statements in Petrella.  On the other side Earnhardt agreed with the Justices that there is no such connection between the two statutes.  This core issue may also help explain the court’s difficulty in sifting through whether they must first answer a question about the discovery rule before analyzing how it applies to damages. Under Shanmugam’s theory, the two are inextricably linked, whereas for Earnheart the statute of limitations is entirely separate and distinct from the copyright damages statute. 

Earnhardt insisted Petrella was distinguishable dicta because the plaintiff there “only brought claims for the three-year period” preceding her lawsuit, whereas broader relief would be appropriate if earlier acts were successfully tied to timely claims under the discovery rule. However, Justice Gorsuch noted that Petrella’s language about damages going back “only three years” was seemingly not so limited. Shanmugam argued this was a necessary implication of the prior laches decision — the crux of the decision that laches does not apply to back-damages was the existence of a statute that cuts-off back damages at the three year mark.  Shanmugam cautioned that failing limit damages could entrench an overbroad discovery rule that lets plaintiffs reach back indefinitely. During oral arguments, the Court gave little indication of how it might interpret Petrella‘s meaning or perhaps walk-back its language, although Justice Gorsuch sees the case as clearly stating that “you look back three years and no more.” 

In the end, the Justices asked few questions about the government’s position that Petrella should not bar damages for timely claims and that the Second Circuit “erred” in Sohm v. Scholastic by holding otherwise based on the Petrella dicta. How the Court maneuvers around Petrella to answer the question remains to be seen when a decision is issued.

The key recurring metaphor during oral arguments was that of “bad wine” in reference to the discovery rule for copyright claims. Justice Gorsuch stated, “we also have a lot of cases in this Court casting doubt on the existence of a discovery rule. We’ve called it wine from a bad vintage or something like that.” See, for example, TRW Inc. v. Andrews, 534 U.S. 19, 37 (2001) (Scalia, J. in dissent writing “The injury-discovery rule applied by the Court of Appeals is bad wine of recent vintage.”); and Rotkiske v. Klemm, 140 S. Ct. 355, 360 (2019) (an “expansive approach to the discovery rule is a bad wine of recent vintage”).  Later, Respondent’s counsel argued that the copyright discovery rule is not “bad vintage” because it is inherent to the “accrual” language of the Copyright Act.  Of course, the discovery rule is not explicit in the language of the Act, and Gorsuch responded that it “may or may not” be there “some people say that the wine is there.” Sticking to the metaphor, Gorsuch later seemingly referenced the Petrella precedent and subsequent appellate decisions as “not even the old bad wine. It’s something else. It’s a new bad wine.”  The “bad wine” metaphor has generally captured skepticism amongst the Justices about a broad discovery rule. After all this back and forth over the vintage, both sides likely needed a smooth evening recovery Merlot.  We expect the nine sommeliers to release their opinion by the middle of June 2024. 

The Sky’s the Limit: How Chestek Frees the USPTO

by Dennis Crouch

Earlier this month, the Federal Circuit issued a decision in the case of In re Chestek that, on its face, simply upheld the USPTO’s requirement that trademark applicants provide their domicile address. But contained within the court’s ruling is language that could have some major implications — essentially giving the USPTO carte blanche ability to sidestep administrative rulemaking procedures for any new requirements it imposes, as long as they are deemed “procedural” in nature.  And on this point the Federal Circuit appears to establish a wide permissive definition that the rulemaking is procedural so long as does not affect the substantive patent or trademark standards.  Of course, the USPTO generally does not have substantive rulemaking authority regarding the patent standards, and so everything is procedure.

Chestek centered around amendments made to trademark regulations in 2019 requiring that applicants provide their domicile address, defined as their permanent legal residence or principal place of business — mailing address is insufficient. The USPTO argued that this new address requirement was needed to help enforce its parallel new rule mandating that foreign applicants retain U.S. licensed counsel. Chestek PLLC, a law firm run by Pamela Chestek and specializing in trademark law, challenged the domicile address rule itself, saying its imposition failed to comply with the notice and comment requirements of the Administrative Procedure Act (APA).

In what appears to be largely a test case, Chestek applied to register the mark CHESTEK LEGAL, but refused to include her personal home address.  She argued that for privacy reasons her personal home address is not generally known and that its submission risks major breaches in privacy. But, the USPTO refused to register her mark based upon her failure to comply with the domicile rule. After losing at the USPTO, Chestek appealed to the Federal Circuit.

On the core issue, the Federal Circuit sided resoundingly with the USPTO. The court held that the domicile address rule was clearly procedural in nature rather than substantive, and thus was exempted from APA notice and comment strictures. The key passage from the court reads:

[T]he new rule requires additional information about applicants, i.e., their domicile address. Requiring different or additional information from applicants regarding their addresses merely ‘alter[s] the manner in which the [applicants] present themselves…to the agency.’ It does not alter the substantive standards by which the USPTO evaluates trademark applications.

Chestek at 8 (Quoting JEM Broadcasting Co. v. F.C.C., 22 F.3d 320 (D.C. Cir. 1994).   In other words, because the domicile address rule does not itself change the substantive legal criteria for granting or denying trademarks, the court sees it as merely a procedural step in the application process. And crucially, procedural rules are exempt from notice and comment requirements under APA section 553(b)(A).

Under the statute, an agency must publish notice of proposed rules prior to them becoming law. BUT the requirement does not apply “(A) to interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice; or (B) [when] impracticable, unnecessary, or contrary to the public interest.” 5 U.S.C. § 553(b).  I.e., the notice-and-comment requirements don’t apply to changes of agency procedure or practice.  Although the rule was deemed procedural, it still has substantial impact — i.e., Chestek loses her rights.  Of course any lawyer will agree failing to follow procedures can result in major consequences.

In finding the address rule procedural, the court asked the simple question: Does the rule “affect the substantive trademark standards by which the Office examines a party’s application.”  Here, the answer is clearly “no” and therefore, according to the Federal Circuit, the rule is procedural and thus exempt from notice-and-comment rulemaking.

Having found the challenged rules within the procedural exception to notice-and-comment rulemaking, we need not address Chestek’s argument that the proposed rule failed to provide sufficient notice of the domicile address requirement.

I am not worried about trademark applicants providing a residential address (although Chestek’s privacy argument seems to have some merit).  But, the Federal Circuit’s decision here appears quite sweeping and may provide the USPTO with enough authority avoid almost any future notice-and-comment in its rulemaking.

The notice and comment requirements serve a vital purpose, even when an agency does not incorporate public feedback into the final rule. The process provides transparency by allowing the public to understand what changes an agency is considering and why. It also fosters deliberation – the agency must provide a reasoned explanation if it rejects commenters’ concerns and proceeds to adopt the rule as originally proposed. Additionally, notice and comment creates a record for judicial review. If a party challenges the rule, the court can examine whether the agency fully considered and responded to material critiques raised during the process. An agency does not have free rein just because it technically “considered” comments before rejecting them. The record must substantiate that it took serious public input under advisement and had adequate grounds for sticking with the original course. Simply going through the motions of notice and comment without meaningfully wrestling with opposing views raised by stakeholders risks reversal upon legal challenge – and is bad policy for a nation that sees itself as promoting popular sovereignty. Even if not determinative, airing criticism, gathering diverse perspectives, and requiring a reasoned response uphold good governance norms and the model of administrative law. Allowing agencies to bypass this process denies public participation that bolsters legitimacy.

The logic of this case sweeps broadly and sets up the USPTO to potentially make more “procedural changes” without meaningful external input or following the traditional notice-and-comment approach.

Carl Oppedahl has been writing about the impact of the new .DOCX standard associated with a $400 fee for non-compliance as a typical procedural rule with substantive impact created without notice-and-comment because it merely involves procedural aspects of the patent application process — despite the large penalty for noncompliance. Other potential examples:

  • Requiring that every application include a signed statement from the inventor explaining their contribution in detail, or face immediate abandonment.
  • Mandating that the background section of specifications provide explicit citations to the closest statement of the problem as found in the prior art
  • Imposing a $1000 processing fee for any application that the USPTO deems improperly formatted

None of these hypothetical new rules have any direct bearing on the substantive bases on which the USPTO evaluates patentability. But forcing applicants to jump through more procedural hoops and face steeper penalties would clearly make pursuing and maintaining protection more onerous. Without formal notice and comment, however, aggrieved parties would have little recourse to contest such impositions or to help guide the potential policy decisions.

One potential catch, alluded to in passing in Chestek, is the stipulation that procedural rules cannot “affect individual rights and obligations.” And indeed, one could argue that layered procedural requirements that make the patenting process drastically more expensive or convoluted would impinge on inventors’ substantive rights. Moving forward we will have to see which of these threads of thought the court and the PTO will follow.

To be clear, I believe the Federal Circuit followed administrative law precedent here, and I raise the issue just to recognize the power of the USPTO.  We can also recognize that, for the most part, USPTO leadership is generally open to hearing direct feedback and suggestions from constituents.  The notice-and-comment approach is not so necessary because the Patent Bar remains much like a small town. where many of us know each other at a personal level.  In Chestek, for instance, the USPTO has heard the privacy complaints regarding requiring home address, but ultimately weighed that against the ongoing problems facing the agency from faulty foreign applications.  That is effectively the same approach as notice-and-comment. The key difference though, is that USPTO official availability is a choice that might not be made by every administration, whereas notice-and-comment are required by law.

Beyond the Limit: The Battle Over Copyright Back-Damages in Warner Chappell Music v. Nealy

By Dennis Crouch and Timothy Knight*

The Supreme Court is set to hear oral arguments on February 21 in an important copyright case – Warner Chappell Music v. Nealy. The central issue is whether copyright plaintiffs can recover damages for infringing acts that occurred more than three years before filing suit, under the “discovery accrual rule.” 


Obviousness: Is a Reasonable Expectation of Success Sufficient

by Dennis Crouch

In Vanda v. Teva, the Federal Circuit confirmed the obviousness of Vanda’s claims covering use of tasimelteon (Hetlioz) to treat circadian rhythm disorders (Non-24-Hour Sleep-Wake Disorder).  Teva and Apotex, filed Abbreviated New Drug Applications (ANDAs) with the FDA seeking to market generic versions of the $100m+ drug.  Vanda sued, but lost on obviousness grounds — with the court holding that the claimed combination was obvious because it was directed to a set of known elements and a person of ordinary skill would have a “reasonable expectation of success” in reaching the resulting invention.  The rulings here included a conclusion that – even if the particular limitations were not obvious, it would have been obvious for a skilled artisan to try them out.

Vanda argues that the law of obviousness requires more than simply a reasonable expectation of success. Rather, in their petition to the Supreme Court, the patentee argues that the resulting invention must have been “predictable” or an “plainly indicated by the prior art.”

The question presented is: Whether obviousness requires a showing of “predictable” results, as this Court held in KSR, or a mere “reasonable expectation of success,” as the Federal Circuit has held both before and after KSR?


A new amicus brief strongly supports the petition with an interesting historical review of obviousness doctrine from the past 150 years.  The brief, filed by The National Association of Patent Practitioners and Professor Christopher Turoski (current NAPP president) brief argues that the Federal Circuit’s “reasonable expectation of success” standard for assessing obviousness departs from longstanding Supreme Court precedent on obviousness that was subsequently codified in 35 U.S.C. § 103.  NAPP Amicus Brief.

Under Pre-1952 “Invention” Standard

The brief traces the obviousness requirement back to Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1850), where the Court held that simply substituting one known material for another in an otherwise unchanged device was obvious and lacked “that degree of skill and ingenuity which constitute essential elements of every invention.” In the 100 years of “invention” cases following Hotchkiss, the Court consistently held that an invention “must be the result of invention, and not the mere exercise of the skill of the calling or an advance plainly indicated by the prior art.” Altoona Publix Theatres, Inc. v. Am. Tri-Ergon Corp., 294 U.S. 477 (1935). The key question was whether the advance would “occur to any mechanic skilled in the art” or was “plainly foreshadowed by the prior art.” Loom Co. v. Higgins, 105 U.S. 580, 591 (1881); Textile Machine Works v. Louis Hirsch Textile Machines, Inc., 302 U.S. 490, 498 (1938).  None of the Supreme Court cases, either pre- or post-1952, rely upon reasonable expectation of success as a determinative factor in assessing the obviousness of an invention.

In Altoona Publix Theatres, the patentee sought to enforce its patent covering covering the use of a flywheel to sound recording and reproduction equipment in order to make the film movement more uniform. The Supreme Court held the patent claims invalid for lack of invention. The Court explained that a flywheel was a very old and common mechanism for improving uniformity of motion in machinery. Its addition here merely involved “the skill of the calling” rather than the inventive faculty, as the flywheel’s use was plainly indicated by prior art showing flywheels applied in other sound recording devices. The Court relied on longstanding precedent that an improvement is not patentable unless it required invention, not just ordinary skill, and was not “plainly indicated” in the prior art.

An improvement to an apparatus or method, to be patentable, must be the result of invention, and not the mere exercise of the skill of the calling or an advance plainly indicated by the prior art. . . . The inclusion of a flywheel in any form of mechanism to secure uniformity of its motion has so long been standard procedure in the field of mechanics and machine design that the use of it in the manner claimed by the present patent involved no more than the skill of the calling. . . . [The prior art] plainly  foreshadowed the use made of the flywheel in the present patent, if they did not anticipate it. The patentees brought together old elements, in a mechanism involving no new principle, to produce an old result, greater uniformity of motion. However skilfully this was done, and even though there was produced a machine of greater precision and a higher degree of motion-constancy, and hence one more useful in the art, it was still the product of skill, not of invention.

Altoona Publix Theatres, Inc. v. Am. Tri-Ergon Corp., 294 U.S. 477 (1935).  In Altoona, the court thus concluded that the added flywheel failed this “invention” test, so the patent claims were held invalid.  The standard in Altoona of “plainly indicated” in the prior art is foreshadowed in the Supreme Court’s prior cases such as Slawson v. Grand Street, P.P. & F.R. Co., 107 U.S. 649 (1883) (cannot patent “an idea which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures”); see also Altantio Works v. Brady, 107 U.S. 192 (1883).

Similar “plainly indicated” language comes from the Supreme Court’s decision in Textile Machine Works v. Louis Hirsch Textile Machines, Inc., 302 U.S. 490 (1938). The invention at issue in the case was an attachment for flat knitting machines to allow reinforcing and split-seam designs to be added to the knitted fabric. The Court held the patent claims invalid as obvious and embodying no more than “the skill of the calling.”

The Court explained that “[t]he addition of a new and useful element to an old combination may be patentable; but the addition must be the result of invention rather than the mere exercise of the skill of the calling, and not one plainly indicated by the prior art.” Id.

One confusing element of this history is that the Supreme Court also began to talk of invention in terms of the “flash of creative genius” or other similar language. See Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941). According to Cuno Engineering, to be patentable, a device “must reveal the flash of creative genius, not merely the skill of the calling.” Id.

Section 103 Codifies Prior Precedent

Prior to 1952, the patent act did not include a statutory obviousness standard. Rather, both the statute and the US constitution simply required an “invention.”

Congress created Section 103 obviousness standard in the 1952 Patent Act that we all rely upon today.  But, in its key and still leading analysis of the statute, the Supreme Court explained that the new law was “intended merely as a codification of judicial precedents embracing the Hotchkiss condition.” Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Assessing obviousness under § 103 thus follows the Hotchkiss line of cases by determining whether the advance was “plainly evident from the prior art” such that one skilled in the art “would immediately see” that it was obvious based on the existing disclosures.

Of course, one change with the addition of Section 103 is the final sentence of the provision stating that the “manner in which the invention was made” will not negate patentability. The legislative history and Graham are both clear that this provision was intended “to abolish the test [Congress] believed [the Supreme Court] announced in the controversial phrase ‘flash of creative genius,’ used in Cuno.”  What is left then is a focus on whether the invention would be within the mere skill of the calling and plainly evident from the prior art. In its most recent analysis of KSR, the court did not use the plainly evident standard, but rather focused on situations where the elements of an invention were all known and the combination was nothing more than “predictable use of prior art elements.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Throughout this time the Supreme Court has never used a “reasonable expectation of success” test.

Departure from Binding Precedent

According to the petition and the amicus brief, the Federal Circuit’s “reasonable expectation of success” test sets a lower bar, finding obviousness wherever a skilled artisan might reasonably expect to achieve the result, even if it was not plainly foreshadowed in the prior art.  This includes situations where it might be obvious to pursue a research question — but where the answer to the question is unknown or unpredictable.

The first court reference that I have found for “reasonable expectation of success” standard appears to have originated in the case of Cmmw. Engr. Co. of Ohio v. Watson, 293 F.2d 157 (D.C. Cir. 1961).The Patent Office Board had originally stated that “Appellant has merely applied an old process to another analogous material with at least reasonable expectation of success. It is well settled that this does not constitute invention.”  The District Judge affirmed this holding in a Section 145 action, as did the D.C. Circuit Court on appeal. Cmmw. Engr. Co. of Ohio v. Watson, 188 F. Supp. 544 (D.D.C 1960), aff’d, 293 F.2d 157 (D.C. Cir. 1961).

I did also find a 1925 decision by the Commissioner of Patents office affirming a rejection. Ex parte McElroy, 337 Off. Gaz. Pat. Office 475 (1925).  In the case, the patent applicant argued that the cited reference was not sufficient to render the invention unpatentable — arguing “a reference must do more than suggest a possibility, that it must also postulate a reasonable expectation of success.”  The Assistant Commissioner rejected this argument, stating that Richter “carefully sets out the process of the present application and indicates its success.” The decision appears to agree with the  reasonable expectation of success standard, but concluded that the reference provided at least that level of teaching. But, it is not clear to me when this standard became sufficiently “settled” as recited in the 1960-61 Commonwealth Engineering decisions.  It was not until 1995 that reasonable-expectation-of-success was added to the MPEP, but by that time there had already been a number of Federal Circuit decisions on point.

In any event, I hope the Supreme Court will take up this case and push it forward — hopefully further developing obviousness doctrine.  Respondents in the case Teva and Apotex had waived their right to respond, but the Supreme Court expressed some interest in the case by requesting a response in a February 15 order (due March 18, 2024).


  • Vanda Pharmaceuticals Inc., Petitioner, represented by Paul Hughes (McDermott Will & Emery)
  • Apotex Inc. and Apotex Corp., Respondent, represented by Aaron Lukas (Cozen O’Connor)
  • Teva Pharmaceuticals USA, Inc., Respondent,  represented by J.C. Rozendaal (Sterne Kessler)

Amici Curiae

  • American Council of the Blind, Blinded Veterans Association, and PRISMS, Amicus Curiae, represented by Mark Davies (Orrick)
  • Professor Christopher M. Turoski and The National Association of Patent Practitioners, Amicus Curiae, represented by Ryan Morris (Workman Nydegger)
  • Salix Pharmaceuticals, Inc. and Ocular Therapeutix, Inc., Amicus Curiae, represented by Justin Hasford (Finnegan)


Federal Circuit Decisions – 2023 Stats and Datapack

By Jason Rantanen

It’s time for the annual Federal Circuit statistics update! As I’ve done for the last few years, below I provide some statistics on what the Federal Circuit has been doing over the past year. These charts draw on the Federal Circuit Dataset Project, an open-access dataset that I maintain that contains information on all Federal Circuit decisions and docketed appeals. The docket data is collected directly from PACER, and the court’s decisions are collected from via its RSS feed. My research team then uses a combination of algorithmic processing via Python code and manual review to code information about each document

One of my goals with this dataset is to make it publicly accessible so that anyone can use it in their own research. A complete copy of this year’s release is archived at https://dataverse.harvard.edu/dataverse/CAFC_Dataset_Project.  We also continue to make a historic version of the dataset available through an RShiny user interface available through https://empirical.law.uiowa.edu, but as will no longer be updating the RShiny interface with new data.  A copy of the codebooks are available at these locations as well. In addition, if you are a researcher who would like help using the dataset, please reach out to me – I’m happy to help make it easier to work with the data or answer questions about it.

Onto the data!

Federal Circuit decisions by origin and year

Figure 1

Figure 1 shows the number of Federal Circuit opinions and Rule 36 summary affirmances by origin since 2010. These represent individual documents (i.e.: a single opinion or Rule 36) rather than docket numbers (which is how the Federal Circuit reports its metrics).

Opinions vs. Summary Affirmances

Once again, the highest number of merits decisions arose from the PTO, and the overall number of merits decisions was about the same as in 2022. However, the number of decisions arising from the district courts continued to decline: the court issued just 95 merits decisions in appeals arising from the district courts in 2023, as compared with 117 in 2022 and a high (or this period) of 238 in 2014. The direct cause of fewer decisions isn’t a mystery: there were only 286 appeals arising from the district courts docketed in 2021 as compared with over 500 a year in the period 2013-2015. But the bigger point is that we’re currently seeing fewer appeals (and decisions) arising from the district court while the number of appeals and decisiosn from the PTO remains high.

Types of CAFC decisions arising from DCT and USPTO by year

Figure 2

Figure 2 shows the number of opinions versus Rule 36 summary affirmances arising from the District Courts and PTO. The court continued its downward trend in the use of Rule 36 affirmances. Even as the total number of merits decisions arising from the District Courts and PTO increased from 264 (2022) to 285 (2022), the number of Rule 36 summary affirmances dropped from 86 (2022) to 81 (2023).  In relative terms, just 15% of the decisions arising from the district courts were disposed of through a summary affirmance while 35% of the Federal Circuit’s decisions arising from the PTO were summary affirmances. These are the lowest rates that I’ve observed for at least the last fifteen years. Kudos to the Federal Circuit for its increased rate of opinions.

What about the type of opinion that the court is issuing? It turns out that this increased rate of opinions is coming in the form of more nonprecedential opinions – and in the case of the PTO, quite a few more nonprecedential opinions.

Type of Federal Circuit opinion by origin and year

Figure 3


Figure 4 shows the general disposition of Federal Circuit appeals – in other words, whether the panel affirmed, affirmed-in-part, reversed-in-full, etc.

General dispositions of appeals arising from PTO and District Courts per year

Figure 4

Last year I observed that the Federal Circuit’s affirmance rate for appeals arising from the District Courts dropped compared to the preceding few years.  That affirmance rate rose back to historic norms in 2023: the court affirmed-in-full in appeals arising from the district courts 75% of the time in 2023. (The purple line indicates the average 68% affirmance-in-full rate over the 12-year time period). As a reminder, these graphs do not include petitions for writs of mandamus. The affirmance rate for appeals arising from the PTO remained consistent: 83% in 2023, as compared with a 14-year average of 80%.

In addition, the Federal Circuit’s website now appeal terminations even if that termination takes the form of something other than an opinion or Rule 36 summary affirmances.  Figure 5 shows the distribution of terminating documents for 2023. About 56% of terminating documents were opinions or Rule 36 summary affirmances. Most of the remainder were dismissals (which includes voluntary dismissals), with a small number of transfers and remands without opinion (typically these occur through orders).

Figure 5

As with the previous figures, the record unit for Figure 5 is a document – i.e.: an opinion or order. It’s possible for a single document, such as an opinion, to decide multiple appeals.

In comparison, Figure 6 shows the number of docketed appeals by origin. As Figure 5 shows, there was a big drop in appeals filed in 2021, followed by an increase in appeals filed in 2022 and then again in 2023.

Figure 6

Note that our statistics on appeals filed is slightly different from the counts that the Federal Circuit reports (even if you look at the data on a Financial Year (Oct – Sept) basis rather than a calendar year basis. My understanding is that this is because the Federal Circuit treats an appeal that is reinstated as a separate count in its numbers, while we treat that as a single appeal. The differences are minor, however.

Miscellaneous Dockets

Finally, what about Petitions for Writs of Mandamus? These, along with Petitions for Permission to Appeal, are shown below. Figure 7 indicates that the number of decisions on Petitions for a Writ of Mandamus went up slightly last year, although nothing like 2021.

Figure 7

Focusing in on the 39 decisions involving Petitions for a Writ of Mandamus arising from the district courts, the Federal Circuit granted in whole or part 7  (21%), denying or dismissing the remaining 32. This is lower than the grant rate for 2022 (37%) or 2021 (43%). Of those 7 granted petitions, 6 arose from the W.D. Tex. (out of 23 total terminations of petitions for Writs of Mandamus arising from W.D. Tex.).

Replication materials for blog post: Rantanen, Jason, 2023, “Replication Data for “Federal Circuit Decisions Stats and Datapack””, https://doi.org/10.7910/DVN/HPARYR, Harvard Dataverse, V2

Document dataset: Rantanen, Jason, 2021, “Federal Circuit Document Dataset”, https://doi.org/10.7910/DVN/UQ2SF7, Harvard Dataverse, V5, UNF:6:IFV+cSbcrBOMsCWg0GoHGg== [fileUNF]

Docket dataset: Rantanen, Jason, 2021, “Federal Circuit Docket Dataset”, https://doi.org/10.7910/DVN/EKSYHL, Harvard Dataverse, V5, UNF:6:mgpnlh/ZznOQNIkSPHe4Tg== [fileUNF]

Incorporation by Reference Rules at the Federal Circuit

by Dennis Crouch

Promptu Systems v. Comcast (Fed. Cir. 2024)

The Federal Circuit released two opinions today involving these two parties.  The first sides with Promptu on claim construction – remanding the case back to the Pennsylvania district court for further development.  The second concludes that reprimands Comcast’s attorney for trying to sneak-in extra words into its appellate brief.  This post will focus on the second case.

Mark Perry is a leading appellate expert from Weil, Gotshal & Manges LLP representing Comcast in the litigation and various IPRs between the parties.  There are four related IPRs on appeal, and in its briefing petitioner used somewhat different arguments in its briefs and then stated that it was “incorporation by reference” arguments made in other briefs.  The problem here is that appellate judges see the briefing word limit as a feature of the appellate system — forcing parties to limit their briefs to their best arguments rather than allowing scattershot appeals.  Perry noted that his incorporation by reference was targeted to only about 2000 words from one brief that he hoped would aid in court efficiency.  At oral arguments, the Federal Circuit ordered counsel to show cause why he should not be sanctioned for violating its prohibition on using incorporation by reference “to exceed word count.” The court explained this is “fundamentally unfair” and forces the opposing party to respond to arguments beyond the permitted length.  This is not the court’s first time addressing this issue — it did so previously in with the same result. Microsoft Corp. v. DataTern, Inc., 755 F.3d 899 (Fed. Cir. 2014).

In response to a show-cause order, counsel argued he was simply trying to “enhance efficiency,” “streamline the briefing,” and “save the time and resources of the Court.”  In a brief filed and signed only by Perry, he stated that “Comcast and its counsel were unaware of this Court’s decision in Microsoft, until Promptu’s reply brief was filed.”  It is not clear what is limited to “counsel,” but the crazy aspect of this case is that the same firm – Weil Gotshal – was chastised in that case for similar actions. The brief here was joined by attorneys at Farella Braun & Martel LLP.

Counsel argued that he and Appellee were unaware of our decision in Microsoft until Appellant’s Reply Brief was filed, Show Cause Br. at 3, and had they been aware, they would not have included the incorporation by reference, id. at 4. Microsoft is not only a precedential decision of this Court, but a precedential decision of this Court that admonished the exact same law firm before us now for the exact same behavior. We accept as true Counsel’s claim that he was not aware of the Microsoft decision until the Reply Brief referenced it. When it becomes apparent that a lawyer has violated a court rule, as an officer of the court, it would be best for that lawyer to bring it to the court’s attention and withdraw the improper argument. Here, Appellee was made aware of our case law, but chose to do

The court’s statement here is important – the rule for attorneys is that they have an affirmative duty to correct misstatements to the court.

Perry argued that the Federal Circuit had not previously ruled on incorporating arguments between companion appeals — the Microsoft case was about incorporating from other-party briefs. But, the court quickly rejected this weak distinction.

The Federal Rules of Appellate Procedure allow parties to incorporate by reference certain materials rather than reproducing them. Fed. R. App. P. 28(a)(viii). But the Federal Circuit has repeatedly held Rule 28 does not permit incorporating substantive legal arguments between briefs. See also Medtronic, Inc. v. Teleflex Life Scis. Ltd., 86 F.4th 902 (Fed. Cir. 2023). Parties cannot use incorporation to end-run word limits or avoid repeating arguments responding to the unique issues in each appeal.

In the end, the court decided not to sanction Perry, Comcast, or the Weil firm.  I’m sure Mr. Perry’s longstanding and excellent reputation helped him avoid direct penalty.  If I were the court, I would have put more pressure on the firms itself to ensure excellence.

On the merits, Perry’s approach won, with the Federal Circuit affirming the PTAB judgment cancelling claims in a R.36 judgment.

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Redefining Patent Continuation Strategy: Sonos v. Google Appeal

by Dennis Crouch

One of the more shocking patent decisions of 2023 was Judge Alsup’s holding in Sonos, Inc. v. Google LLC, No. C 20-06754 WHA, 2023 WL 6542320 (N.D. Cal. Oct. 6, 2023).  The scathing opinion left two Sonos multi-zone smart-speaker patents unenforceable due to prosecution laches and a rejection of the $32 million jury verdict.  Sonos had amended its claims after after learning of Google’s particular product, and Judge Alsup found that approach inequitable, concluding that the patentee was “wringing fresh claims to read on a competitor’s products from an ancient application.”  But, Sonos’ prosecution approach in the case is a widespread practice in the field and so the case raises significant questions about both patent enforcement strategies and equitable loss of rights based upon “late claiming” where claims are amended in response to market conditions.

The Appeal Brief: A Closer Look

Sonos has now filed an appeal brief that challenges Judge Alsup’s decision on several grounds, emphasizing the fairness of their patent prosecution process and arguing against the application of prosecution laches. The brief details the timeline of Sonos’s patent filings, innovations, and claim amendments, arguing these were done in good faith and within the bounds of patent law norms.  I’ll reprint the introduction here:

The district court has strong views about “the way the patent system should work.” But those views conflict with the Patent Act, the Federal Rules of Civil Procedure, and this Court’s precedent. Undeterred, the district court rewrote patent law and reconstituted the judicial role to erase a $32.5 million jury verdict and throw out other patent claims that should have been tried.

To override the jury verdict, the district court recast the doctrine of prosecution laches in an unprecedented way to declare two of Sonos’s patents unenforceable. The court recognized that Sonos prosecuted the patent family diligently through several continuation applications off a 2006 provisional application. The court also acknowledged that Sonos did nothing that extended its patents’ terms. Yet the court held that Sonos took too long to prosecute the specific claims it asserted against Google here. The court was most troubled that Sonos added the asserted claims in a continuation application after Google brought its infringing products to market. But Sonos disclosed the invention years before Google even began investing in those products, and informed Google about that patent family. In fact, Sonos had already secured patents in the same family with broader claims covering Google’s products. At any rate, “amend[ing] [to] insert claims intended to cover a competitor’s product” is not “in any manner improper”—and, in fact, is entirely compatible with Congress’s design. Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 874 (Fed. Cir. 1988). If this Court condones this novel application of prosecution laches, it will endanger many thousands of patents secured through standard continuation practice and discourage the early and complete disclosure of new innovations.

The district court also found the asserted claims invalid on the ground that Sonos did not supply adequate written description as of the claimed priority date. The court had previously rejected Google’s summary judgment motion on written description, and Google did not try that defense or a priority-date challenge to the jury. Yet the court took the reins of Google’s defense and crafted a narrative of Sonos’s subterfuge to justify its invalidity ruling. The court hinted at this story for the first time in the middle of trial, but waited until after trial to recount it fully, depriving Sonos of any opportunity to present testimony refuting it. The court found that written description for the asserted claims depended on a single sentence that Sonos added to the specification by amendment in 2019. It ignored that the specification contained additional support for the claims and the sentence in question had been incorporated by reference into every earlier application in the priority chain. Nevertheless, the court concluded that Sonos had tricked the Patent Office into allowing the amendment. That finding was inconsistent with the record evidence and depended on multiple disputed facts that would have been for jurors to decide—if anyone had ever presented the issues to them.

These intrusions into the jury’s domain were not isolated to the two patents that went to trial. On two other patents, the district court granted Google summary judgment of invalidity. But it did so only by resolving factual disputes about the prior art. This is not how Congress said the patent system should work, nor how the Federal Rules say the judicial system should work. This Court should reverse the post-trial laches and invalidity rulings on the ’885 and ’966 patents. And it should vacate the summary judgment rulings on the ’615 and ’033 patents to allow Sonos to try its case to a jury.


The outcome of the appeal could have significant implications for how patents are prosecuted and enforced. A reversal of Judge Alsup’s ruling might affirm the validity of strategic claim amendments, provided they are done within the legal boundaries.  Conversely, upholding the decision could set a precedent that restricts how patent holders can amend claims in response to emerging technologies and competitors.

Sonos lead appellate counsel is Joshua Rosenkranz (Orrick), and the team includes George Lee (Lee Sullivan).  Dan Bagatell (Perkins Coie) is lead appellate counsel for Google.  Google has 40 days to file its responsive brief.

Joint Inventorship: AI-Human Style

by Dennis Crouch

The U.S. Patent and Trademark Office (USPTO) recently published examination guidance and a request for comments on the treatment of inventorship for inventions created with the assistance of artificial intelligence (AI) systems.  Inventorship Guidance for AI-Assisted Inventions.

The key takeaway here is that the USPTO believes that an AI-developed invention is patentable so long as a human satisfies the joint-inventorship standard of “significantly contributing to the invention.” A human who provides a significant contribution may be the sole inventor and original owner, even in situations where the AI provided the greater contribution.

The PTO’s approach here is fairly broad and will likely serve current AI use cases in most situations because most AI invention models of today are tightly controlled and managed by humans rather than simply arising from AI autogeneration or broad prompting. Thus, from a practical effect, there will likely be at least one natural person who satisfies the joint inventorship standard in the vast majority of cases. (Recognizing here that mere control of an AI is insufficient. Rather, the human must provide significant inventive contribution).

Although I am very sympathetic to recognizing human contributions, I also want a patent system that broadly encourages innovation without either prescribing or proscribing particular approaches. The flexibility of this guidance allows room for both human and machine intelligence to intersect in the creative process. But, we should continue monitoring the effects the policy to ensure it does not unduly constrain AI’s eventual capacity to autonomously formulate inventive concepts. But for now, the USPTO’s basic framework reasonably balances competing interests.

But, the USPTO’s approach is not fully grounded in the law because it allows for patenting of an invention in a situation where no human or combination of humans fully conceived of and originated the invention. Rather, we are simply looking for at least one human who provided a significant contribution. The guidance does not particularly address this issue and, by declining to specifically justify the legal grounds why human “significant contributions” suffice even without complete conception, the USPTO leaves the door open to contrary arguments. Opponents could contend that full conception remains legally required for inventorship and that this expansion of the inventorship doctrine exceeds the statutory language.  It is not clear who will have standing to make this particular argument.


Judge Newman’s D.C. Lawsuit Against Fellow Judges Largely Dismissed on Jurisdictional Grounds

by Dennis Crouch

Federal Circuit Judge Pauline Newman has been fighting for her right to judge after charges implicating her fitness for office.  Earlier this month, a committee of federal judges upheld Newman’s one-year suspension from new case assignments for refusing to cooperate with a misconduct investigation.  Newman had separately sued her colleagues in DC District Court, but Judge Cooper has now dismissed most of that lawsuit on jurisdictional grounds. While a few counts remain, the court’s ruling deals a serious blow to Judge Newman’s attempt to challenge the judiciary’s self-policing procedures.  Newman v. Moore, 23-cv-01334 (D.D.C., February 12, 2024). Newman v. Moore Decision. (more…)

Playing From The Rough: Kirkland Signature™ Irons and The Doctrine of Equivalents

Guest Post by Jordan Duenckel.  Jordan is a third-year law student at the University of Missouri and a registered patent agent.  He has an extensive background in chemistry and food science. Before law school, he was a greenskeeper at a local golf course. 

TaylorMade Golf Company teed off a dispute over golf club design and filed a patent infringement lawsuit on January 31st, 2024, in the Southern District of California against Costco and Southern California Design Company alleging infringement and false advertising relating to five of TaylorMade’s patents related to golf irons. The two defendants have not responded to the complaint but users of X, formerly Twitter, are abuzz with speculation and comments about the implications for golf at an affordable price.  

TaylorMade is one of golf’s true bluebloods and releases new clubs regularly. Played by PGA Tour professionals, these clubs are not cheap with a full set of TaylorMade irons, the P790 series at issue here, running about $1400 new. Costco is more famous for membership-based bulk grocery distribution than luxury sports goods. Costco has a variety of goods that they sell in their stores as “house brand” Kirkland Signatureproducts, with the 7-piece player’s irons set designed by Southern California Design Company selling for $499.99.  

TaylorMade P790 Iron (Exploded)

Kirkland SignatureIrons (Exploded)

For patent infringement, TaylorMade alleges infringement of five patents that contain “revolutionizing” technologies that TaylorMade asserts their patent covers.  Facially, it seems the clubs look similar and may contain similar elements. Proving infringement will likely be more difficult. TaylorMade will likely attempt to find the fairway with the doctrine of equivalents. The doctrine of equivalents states that someone can infringe on a patent even if they do not literally meet all of the elements of a patent claim, as long as their product or process is equivalent to the claimed invention. 

The policy rationale behind the doctrine is that patentees should be able to have appropriate coverage for their inventions even if competitors make insubstantial changes that allow them to evade the literal scope of the patent claims. If competitors could easily make small, trivial changes and avoid infringing, then patent protection would not be very meaningful. 

There are three primary tests courts use to determine equivalency under this doctrine: 

  1. The function-way-result test – The alleged equivalent product or process must perform substantially the same function, in substantially the same way, to achieve substantially the same overall result as the claimed invention. This is an objective assessment focused on comparing the major operational aspects.
  2. The insubstantial differences test – Courts look at whether the differences between the patented invention and the alleged equivalent are insubstantial compared to the invention as a whole. Typically only minor, trivial differences that contribute little will allow a finding of equivalence. 
  3. The known interchangeability test – If persons reasonably skilled in the technology know that the substitute element and claimed element are interchangeable, this helps support a conclusion of equivalence. 

However, there are limitations to the doctrine of equivalents. It cannot be used to effectively erase a substantive claim limitation in its entirety or vitiate a limitation. Additionally, amendments made during patent prosecution to narrow claims can estop or preclude arguments for equivalence. Finally, the prior art restricts the scope of equivalence that can be found – the alleged equivalent cannot encompass subject matter that would not have been patentable over the prior art during prosecution. 

Some may question how different the clubs can be or how many ways to possibly design a golf club so the ultimate question of infringement will depend on how close Costco’s clubs come to the patent claims. Equally interesting is the false marketing claim that asserts that Costco and SCDC made false statements in advertising the Costco clubs, specifically concerning the “injected urethane insert” that is shown as the red insert on the above right photo. TaylorMade believes that both the infringement and false advertising are willful and designed to take customers from TaylorMade.  

 “The statement by Defendants that the accused products contain an ‘injected urethane insert’ is literally false, or in the alternative, is misleading and … has actually deceived or has a tendency to deceive consumers in a way that influences purchasing decisions. … Defendants’ false advertising has misled golf journalists and customers to believe the accused products are similar to or equivalent to the TaylorMade P790 irons.”  

Redditors have been cited as an example of folks who would love to buy functionally premium clubs at a third of the price. Beyond Reddit and golf influencers, the broader public seems to be interested in the irons as Costco sold out of the irons in mere hours. Adding to the drama is the allegations that a former TaylorMade engineer helped to design the Kirkland Signatureirons.  

The irons are visually very similar, and the claim charts affixed to the complaint as Exhibits 6-10 make a compelling case for infringement by equivalent. If I were to make a prediction, I would guess that the parties settle as TaylorMade did with PXG in 2019 in a similar iron design action but only time (and maybe claim construction) will tell.  

Don’t Judge a Range by its Cover: Federal Circuit Sides with Patentee on Written Description Support

by Dennis Crouch

In a recent decision, the Federal Circuit held that a claimed range reciting narrower values than those described in the patent specification can still satisfy the written description requirement under 35 U.S.C. § 112(a). RAI Strategic Holdings, Inc. v. Philip Morris Prods. S.A., No. 22-1862 (Fed. Cir. Feb 9, 2024). Reversing a PTAB post-grant review decision, the court ruled that claims reciting a heating element with having a length of 75-85% of the disposable aerosol-forming substance had adequate written description support even though the specification only described broader ranges, such as “about 75% to about 125%.” Id.


Broad Bayh-Dole March-In Licensing Rights Affirmed in Alzheimer’s Mouse Patent Dispute

by Dennis Crouch

The Federal Circuit recently upheld the US government’s royalty-free license rights over an Alzheimer’s disease research patent under the Bayh-Dole Act. University of South Florida Board of Trustees v. United States, 22-2248 (Fed. Cir. February 9, 2024). The decision confirms the broad scope of the government’s licensing rights under the Act — namely that it can include work that predates the funding agreement. It also comes at a salient time, as the Biden Administration weighs the idea of more aggressively exercising “march-in rights” under the Act to promote affordability of taxpayer-funded inventions. Read the Decision.

The dispute centered on U.S. Patent No. 5,898,094, which covers transgenic mice expressing mutated genes linked to Alzheimer’s. Scientists at the University of South Florida (USF) and Mayo Clinic developed the mice with partial funding from a National Institutes of Health grant. USF sued the government for infringement after a government contractor used the patented mice without authorization.

In its defense, the government argued the work that led to reducing the patented invention to practice occurred “under” its grant funding agreement with Mayo Clinic. The Bayh-Dole Act gives federal funding agencies certain rights over federally-sponsored inventions, including “a nonexclusive, nontransferrable, irrevocable, paid-up license” under 35 USC §202(c)(4).

With respect to any invention in which the contractor elects rights, the Federal agency shall have a nonexclusive, nontransferrable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention throughout the world [with some further caveats].

35 USC §202(c)(4). The Court of Federal Claims agreed with the government’s interpretation and entered judgment of noninfringement.

On appeal, USF argued the statute requires the funding agreement predate the inventive work. It claimed the subcontract between Mayo and USF was not executed until months after the critical experiments. However, the Federal Circuit affirmed based on the breadth of the statutory language. It held that a subsequent agreement  can cover prior work, if payment for the prior work is within the grant’s scope. Since USF eventually accepted grant funds for the experiments under its subcontract with Mayo, §202(c)(4) applied.

[A necessary premise of USF’s argument] is that any “funding agreement” adequate to trigger § 202(c)(4) must be in place at the time of the relevant work (here, a first actual reduction to practice in April 1997), so that the November 1997 subcontract (whose execution and effective date were later than April 1997) does not suffice to trigger § 202(c)(4).

The court rejects this premise, finding the statutory language does not impose strict timing requirements for funding agreements to establish government license rights:

The Act says that “funding agreement” includes “any . . . subcontract of any type” for the performance of work under a funding agreement. § 201(b). That breadth-indicating language supports inclusion within the provision of a subcontract that provides for, among other things, payment for work already performed before the subcontract is executed or its “effective date.

The court later reaffirms this conclusion. “We reject this suggested temporal limitation on the scope of the relevant Bayh-Dole Act language.”

This conclusion is strongly bolstered by the record in this case, which suggests that what occurred here is not an uncommon fact pattern in government funding of research conducted in part by non-grantee members of a consortium called for in a government grant. Specifically, the record makes clear that subcontracts are commonly not executed until sometime after the grant is awarded, yet the grant-covered work proceeds without waiting for the inking of a subcontract.

Id. This decision endorses broad government rights under Bayh-Dole when research funding and contracting arrangements evolve over long timelines. The court refused to impose strict timing requirements not evident from the statutory text. As government witnesses observed, delays in memorializing inter-institutional agreements are commonplace in collaborative grant projects.

The ruling also comes amidst attention on the proper scope of Bayh-Dole march-in rights. USF’s lawsuit invoked the related §1498, where the government assumes liability for third-party patent infringement. Exercising march-in rights under §203 lets the government grant licenses to third parties for health or safety needs, yet this authority has almost never been affirmatively used. The Biden Administration recently sought public input on utilizing march-in rights to promote affordable access to publicly-funded inventions. Among other limitations, commenters noted march-in rights likely do not authorize the government to set product prices.

The case here highlights that the Government has broad power in situations where parties have accepted federal funding. It does not, however, answer when exertion of that power is sound policy.

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I received several emails and comments about this post unfairly treating Section 202 and 203 rights as the same thing.  I agree that I was cavalier in my post by not distinguishing the two. Although both involve actions that the Federal Government can take with regard to federally-funded inventions, Section 202 licenses are regularly relied upon, while Section 203 march-in rights are almost never relied upon (but the Biden admin would like to expand their use.)

Section 202 provides the Federal Government with a nonexclusive, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention throughout the world.  Section 203 allows the U.S. government to go further an grant a narrow “reasonable” license to a “responsible applicant” if the patent resulted from federally funded research and certain conditions are met.  The government can only exercise Section 203 march-in rights if it determines that action is necessary because the patent owner has not achieved “practical application” of the invention or because public health/safety needs are not being reasonably satisfied. So there must be a specific triggering condition.  Those limits are not in place for Section 202 license rights.


Federal Circuit Reverses PTAB on Printed Publication Status of Operating Manuals

by Dennis Crouch

It is interesting that we continue to have cases fighting over what counts as a “printed publication” under 35 U.S.C. § 102.

In Weber, Inc. v. Provisur Technologies, Inc., Nos. 2022-1751, 2022-1813 (Fed. Cir. Feb. 8, 2024), the PTAB sided with the patentee, but on appeal the Federal Circuit reversed — finding that Weber’s food slicer operating manuals was a printed publication.  The case shows that documents with quite limited distribution, such as operating manuals sent to ~10 customers, may still meet the public accessibility standard for prior art depending on the circumstances of disclosure and expectations around further dissemination.

Although this case involves pre-AIA 35 U.S.C. § 102(b), the same “printed publication” language is found in post-AIA 35 U.S.C. § 102(a).

The case involved a dispute between competitor food slicer manufacturers Weber and Provisur. Provisur sued Weber for infringing two of its patents relating to high-speed mechanical slicers used to slice and package meats and cheeses. U.S. Patent Nos. 10,639,812 and 10,625,436. Weber filed two inter partes review petitions asserting that the patents were invalid as obvious based on Weber’s own operating manuals for its commercial slicers, in combination with other prior art references. IPR2020-01556, IPR2020-01557.

The Board initially found in its institution decisions that Weber provided enough evidence to support the public availability of the manuals as printed publications. But in its final written decisions, the Board changed course and found that the manuals were not sufficiently publicly accessible due to limited dissemination and confidentiality restrictions.

On appeal, the Federal Circuit against the patentee. Writing for the panel, Judge Reyna explained that “[t]he touchstone of whether a reference constitutes a printed publication is public accessibility” and that “[t]he standard for public accessibility is whether interested members of the relevant public could locate the reference by reasonable diligence.”

The scope and content of the prior art is a question of fact. Thus, the Federal Circuit gave deference to the PTAB’s determination of inadequate public accessibility, but ultimately concluded that the Board’s decision was not supported by substantial evidence:

The record evidence shows that Weber’s operating manuals were accessible to interested members of the relevant public by reasonable diligence. For instance, Weber employees testified that the operating manuals could be obtained either upon purchase of the Weber food slicer or upon request directed to a Weber employee.

Id. The Board had relied heavily on the Federal Circuit’s decision in Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009).  In Cordis, the court faced the question of whether two two academic monographs describing an inventor’s work
distributed to several university and hospital colleagues as well as two companies interested in commercializing the technology.  Although there was no express confidentiality agreement, the court found that “academic norms” included an expectation that the disclosures would remain confidential. With regard to the distribution to commercial entities, the court found found that the inventor had requested and expected confidentiality. The court noted the lack of evidence showing these types of entities typically made such documents publicly available or that they had incentives to do so. Dr. Palmaz also testified that confidentiality was requested and honored in practice.  The written agreement with one of the companies expressly disclaimed any confidentiality obligations, but the court still found that the document was kept within the company and that the expectation of confidentiality was reasonable.

On appeal, the Federal Circuit distinguished Cordis from the situation in Weber:

Weber’s operating manuals were created for dissemination to the interested public to provide instructions about how to assemble, use, clean, and maintain Weber’s slicer, as well as guidance for addressing malfunctions that users might encounter.

Id.  Somewhere between 10 and 40 entities received the manuals. But, the Federal Circuit concluded that “No minimum number of occasions of access is dispositive of the public accessibility inquiry in all cases.”  Accessibility does not actually require that it was accessed.

The commercial slicers were quite costly and so the manual was only distributed to this small number of companies. The manual also included a copyright notice that the Board found prevented substantial distribution.  On appeal, the Federal Circuit found these limits inadequate.  The purchasers were the interested public that obviously could “afford the high-cost slicers.” And, “Weber expressly instructed customers who were re-selling their slicers to transfer their operating manuals to purchasing third parties.”

I wonder how the court would have ruled if the manuals distributed to customers included a stronger confidentiality expectation.

Panel: Judges Reyna, Hughes, Stark. Opinion by Judge Reyna.
Arguing counsel: Richard Crudo (Sterne Kessler) for Weber, Inc. and Michael Babbitt (Willkie Farr) for Provisur Technologies, Inc.

AI and Patent Attorney Misconduct

Yesterday in my patent prosecution course, students turned to AI tools to help them draft patent claims.  None of the AI-proposed claims were ready for prime-time, but they served as a useful starting point as the students organized their thoughts.  More and more attorneys are turning to these same AI tools to help them be more productive and efficient while delivering a higher quality work product.  It is tough, for instance, to read all the prior art. AI tools can help mine the references for potential obviousness problems — and provide a pin cite to the key language in the art.

USPTO Director Vidal recently released a new memorandum concerning the use of artificial intelligence (AI) in patent office proceedings.  directorguidance-aiuse-legalproceedings. The memo recognizes that AI tools can be powerful both for applicants and for USPTO examiners.  But, AI tools cannot be used to avoid ethical duties.  The memo thus provides firm guidance that existing ethics rules on candor and misconduct apply even when AI tools are used to generate legal filings and evidence. This comes on the heels of several high-profile cases of “AI hallucination” outside of the PTO context, where language models like ChatGPT produced false information that lawyers presented as fact or law.

For example, submissions to the USPTO generally require a signature, and by affixing a signature, the signatory-who has to be a person-certifies, among other things, that “All statements made therein of the party’s own knowledge are true,” that “all statements made therein on information and belief are believed to be true,” that “after an inquiry reasonable under the circumstances” any “legal contentions are warranted by existing law” or “by a nonfrivolous argument for the extension … or reversal of existing law,” and that “factual contentions have evidentiary support” or likely will have evidentiary support after a reasonable opportunity for discovery.

Quoting from USPTO Rule 11.18.  This rule is based directly on the Federal Rule of Civil Procedure , Rule 11 that has been applied in the AI context.  Dir. Vidal goes on to highlight a few particular circumstances:

  • Simply assuming the accuracy of an AI tool is not a reasonable inquiry.  
  • A submission (including an AI-generated or Al-assisted submission) that misstates facts or law could also be construed as a paper presented for an improper purpose because it could “cause unnecessary delay or needless increase in the cost of any proceeding before the Office.”
  • Etc.

Be careful out there everyone!


Judicial Misconduct Sanction Against Judge Newman Affirmed

by Dennis Crouch

The Judicial Conduct and Disability Committee has denied Federal Circuit Judge Pauline Newman’s petition challenging the Federal Circuit Judicial Council’s misconduct finding against her. The Committee includes seven Federal Judges from around the country, chaired by Fourth Circuit Judge Traxler. The particular finding here is an affirming the Federal Circuit’s determination that Judge Newman committed serious misconduct by refusing to undergo a requested medical examination to assess whether she has a disability rendering her unable to discharge her judicial duties. In re Newman.

The complaint originated in March 2023 when the Federal Circuit Chief Judge Moore identified concerns about Judge Newman’s fitness for office based on incidents suggesting significant cognitive impairment. A Special Committee of Federal Circuit judges was appointed to investigate whether Judge Newman has a disability. The Committee ordered Judge Newman to undergo neurological and neuropsychological testing to make this determination. Judge Newman refused, arguing the special Committee lacked reasonable basis for the testing and her due process rights were violated.

The Special Committee and Judicial Council (consisting of all Federal Circuit judges except for Judge Newman) found Judge Newman’s refusal to comply constituted serious misconduct under the Rules for Judicial-Conduct and Judicial-Disability Proceedings. Her failure to cooperate meant that her “fitness” could not be determined.  As sanction, Judge Newman was barred from hearing cases for one year, subject to renewal if she continues refusing to comply.

In her petition to the Broader Committee, Judge Newman argued the Council abused discretion by not transferring her case to another circuit and that alleged due process violations established good cause for her noncompliance. She also challenged the sanction as exceeding the Council’s authority.

The Committee upheld the misconduct finding and sanction.  It found the Chief Judge and Judicial Council properly exercised discretion not to request a transfer per the Rules’ exceptional circumstances standard. Judge Newman’s due process arguments also failed since she received required procedures and access to evidence. The one-year case suspension comported with the Council’s responsibility to ensure effective court administration under the circumstances and was “not grossly in excess of other suspensions imposed under the Act.”

By unanimously affirming the finding against Judge Newman, the Committee reinforced judicial councils’ broad authority to investigate disability complaints and impose sanctions for noncompliance. However, its opinion indicates that a transfer may be warranted if, for instance, Judge Newman calls Judicial Council members as witnesses regarding her fitness in future Judicial Council proceedings.

Judge Newman’s lawsuit in the D.C. Circuit is ongoing, with the district court considering the motion to dismiss filed by her co-judges.  Newman v. Moore, et al., Docket No. 1:23-cv-01334 (D.D.C. Filed May 10, 2023).


Livestream of LKQ v. GM

The Federal Circuit is hearing oral arguments today in the design patent case of  LKQ Corporation v. GM Global Technology Operations LLC 21-2348.  Judge Stoll’s opinion in the case sides with the patentee GM on the issue of obviousness — affirming a PTAB decision in favor of the patentee.  LKQ’s appellate team led by Prof. Mark Lemley argues that Federal Circuit’s obviousness standard (known here as the Rosen-Durling test) makes it too difficult to actual reject or cancel design patent claims.  Lemley argues for a much more flexible and common sense approach as required by KSR.  The USPTO’s amicus agrees Federal Circuit law should be expanded, but not as far as suggested by LKQ.  GM argues for the status quo.

According to the listing, the en banc panel today consist of Chief Judge Moore,  and Circuit Court Judges Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, and Stark.  Not listed is Judges Cunningham and Newman.  

Livestream below: (more…)

The US Constitution as an Interpretive Tool for Obviousness Law

by Dennis Crouch

LKQ’s brief for today’s en banc rehearing begins with the following interesting statement: “As with utility patents, the U.S. Constitution and the Patent Act prohibit design patents on ordinary innovations.” It is the Constitutional question that is most interesting and calls forth the concurring opinion by Justice Douglass in the Great A&P Case.

The attempts through the years to get a broader, looser conception of patents than the Constitution contemplates have been persistent. The Patent Office, like most administrative agencies, has looked with favor on the opportunity which the exercise of discretion affords to expand its own jurisdiction. And so it has placed a host of gadgets under the armour of patents—gadgets that obviously have had no place in the constitutional scheme of advancing scientific knowledge. . . . The fact that a patent as flimsy and as spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

Great A&P Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 156 (1950). Although case applied pre-1952 law, the reminder here is poignant. Justice Douglas goes on:

It is worth emphasis that every patent case involving validity presents a question which requires reference to a standard written into the Constitution. . . .  The Congress does not have free reign, for example, to decide that patents should be easily or freely given. . . . Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science—to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge. That is why through the years the opinions of the Court commonly have taken ‘inventive genius’ as the test. It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end—the advancement of science.

The standard of patentability is a constitutional standard; and the question of validity of a patent is a question of law.

Id.   Later, in Deere, the Supreme Court suggests found that the newly written Section 103 was properly seen as statutory codification of the court’s standard “which exists in the law and has existed for more than 100 years, but only by reason of decisions of the courts.”  And, that standard is derived from the Court’s understanding of the U.S. Constitution’s requirement that the patent laws be designed to “promote the Progress of Science and useful Arts.”

The Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose. Nor may it enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby. Moreover, Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available. Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must ‘promote the Progress of * * * useful Arts.’ This is the standard expressed in the Constitution and it may not be ignored. And it is in this light that patent validity requires reference to a standard written into the Constitution.

Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 5–6 (1966).

Bringing this back to design patents and the LKQ case, the patent challenger here does not deeply engage with the constitutional question, but rather appears to use it as a constant interpretative reminder. GM’s brief does not mention the Constitution or its requirement to “promote the Progress.”  Likewise, none of the Federal Circuit’s obviousness decisions from the past year discussed the doctrine in light of the Constitutional requirement.


LKQ Corporation v. GM Global Tech: Design Patent En Banc

by Dennis Crouch

On Monday, February 5, 2024, the Federal Circuit will sit together for the first time in years to hear an en banc patent case.  In LKQ Corporation v. GM Global Technology Operations LLC, the court will consider whether to apply a more stringent obviousness test to design patents.  In a 2010 article, I concluded that “the current design patent examination system operates as a de facto registration system” with very little obviousness analysis except in cases of clear copying.  Although design patent examination has become more rigorous, obviousness rejections remain relatively rare in comparison to their utility patent brethren.

Oral arguments will include the 11 Federal Circuit judges (absent Judge Newman) along with Mark Lemley (arguing for the accused infringer and seeking a more rigorous obviousness test); Joe Herriges (arguing for the patentee GM largely seeking to preserve the status quo); and USPTO Acting Solicitor Farheena Rasheed (for amicus USPTO).  The case particularly focuses on whether the Supreme Court’s flexible test for obviousness from KSR v. Teleflex also applies to design patents.  In particular, the Federal Circuit’s Rosen-Durling test for design patent obviousness requires a primary reference as a starting point that is “basically the same” as the design being patented.  Lemley would throw out this approach entirely.  In its brief, the USPTO agrees that KSR requires more flexibility and that Rosen-Durling is “overly restrictive in several respects.” However, the USPTO suggests retaining the basic framework as a standard approach to obviousness, while permitting other approaches as necessitated by particular cases — allowing for both flexibility and the application of common sense.

On Feb 6 I am gathering online for a Suffolk Law School event to debate the case and its potential outcome and impact.  I will be joining Suffolk professor Sarah Burstein along with Meredith Lowry (Wright Lindsey); Darrell Mottley (Banner + Howard University); and Laura Sheridan (Google). See you there (REGISTRATION).

Two Mandamus Petitions: Transfer Granted, Improper Service Denied

by Dennis Crouch

A Federal Circuit panel recently released a pair of mandamus orders dealing with important civil procedure issues – one granting a petition to transfer venue under 28 USC 1404(a) , the other denying a petition challenging substitute service of process for a foreign defendant.

In the first case, In re Honeywell Int’l Inc., Honeywell was sued for patent infringement in the Western District of Texas. Lone Star SCM Systems, Ltd. v. Honeywell International Inc., Docket No. 6:21-cv-00843 (W.D. Tex., Filed Aug 12, 2021). Honeywell moved to transfer the case to the Western District of North Carolina under 28 U.S.C. § 1404(a), arguing that the bulk of the evidence and witnesses were located there — making that location much more convenient. The district court analyzed the private and public interest factors but denied transfer, mainly based on the plaintiff’s choice of forum and judicial economy.  In particular, Judge Albright has two other cases filed by the same plaintiff pending for several years in his courtroom and he has developed substantial understanding of the patents at issue.

Honeywell petitioned the Federal Circuit for a writ of mandamus directing the district court to transfer the case. The appellate panel of Judges Dyk, Bryson, and Taranto concluded that keeping the case in the Western District of Texas amounted to a “clear abuse of discretion leading to a patently erroneous result.” Several factors favored transfer, while nothing significant tied the case to Texas. The court held that the “incremental gains” in judicial economy were insufficient to justify the inconvenience of litigating in an improper venue.  The district court opinion is entirely under seal, and so we cannot know exactly how Judge Albright justified his decision not to transfer.

In contrast, in In re Aputure Imaging Industries Co., Ltd., the district court granted the plaintiff’s motion to serve the Chinese defendant Aputure by emailing the summons and complaint to Aputure’s attorney. Aputure petitioned for mandamus, arguing that the Hague Convention required the plaintiff to first attempt service in China.

The Federal Circuit denied Aputure’s petition. First, Aputure failed to show a post-judgment appeal would be inadequate. Second, Aputure did not establish a clear and undisputable right to relief.  Mandamus is seen as an extraordinary relief, and both of these must be shown in order for an appellate court to take action.  Ultimately, the appellate panel concluded that district court exercised reasonable discretion in permitting alternative service without requiring strict compliance with the Hague Convention.

The Federal Circuit recognized the district court’s broad discretion to authorize alternative means of serving foreign defendants under FRCP Rule 4(f)(3), which permits service by “other court-ordered means not prohibited by international agreement.”

If you had a stickler professor for civil procedure, you learned that service of process in the US is a really complicated mess of Constitutional principles, Federal Rules, State Laws, and common practices. FRCP Rule 4(f) sets out rules for serving “an Individual in a Foreign Country.”  It would thus not directly apply to serving the company (Aputure) defendant in this case. R.4(h) provides the additional guidance that a company can be served “at a place not within any judicial district of the United States, in any manner prescribed by Rule 4(f) for serving an individual, except personal delivery under (f)(2)(C)(i).” So, while personal hand delivery abroad is an option for serving an individual under 4(f), that specific provision does not extend to foreign companies. But the other subsections of Rule 4(f) detailing options for foreign service by court order, internationally agreed means, etc. can be utilized for companies.

Here, the patentee Rotolight made multiple attempts to serve Aputure at addresses linked to Aputure’s own website and business listings. When those efforts failed, Rotolight sought court approval to email the complaint and summons to Aputure’s US attorney. The district court reasonably found this would effectively provide notice and an opportunity for Aputure to respond. Given Rotolight’s documented service attempts and the court’s finding that email service would be effective, the Federal Circuit concluded it was not prepared to say allowing substitute service was a clear abuse of discretion warranting the extraordinary remedy of mandamus relief. The order permitting alternative service was within the district court’s broad latitude under Rule 4. Since service is proper, the infringement action will continue to move forward in the Eastern District of Texas.