Jepson Claims

by Dennis Crouch

The chart above presents the powerful trend in the use of Jepson claim language in US patents over the years. It shows a clear decline in the percentage of patents that include Jepson claim language from 1980 to the present. In the early 1980s, around 8% of patents included at least one claim in Jepson format.  That figure has steadily decreased over the decades, falling to near 0% in recent years.

The Jepson format is a way of writing patent claims where the preamble states the known prior art, and the body specifies the improvements made over this prior art. Typically, the transition phrase will be in the form “wherein the improvement comprises” or “the improvement comprising.”  100+ years ago, patentees were looking for ways to claim an improved device without being directly bound to all the old elements in the device that they hadn’t changed.  They so began putting the known elements into the (substantially) non-limiting preamble and kept the new portions in the body.  The patent office liked this form because to allowed claims that fully embodied the product, not just the disembodied improvement.  In addition, the form facilitated examination because it particularly points out the inventive portions. Ex parte Jepson, 1917 C.D. 62, 243 O.G. 526.

The PTO liked this approach so much that it eventually determined that Jepson claims are the preferred approach.  The patent regulations indicate that any “improvement” invention should be drafted in Jepson format.

Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order: (1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known, (2) A phrase such as “wherein the improvement comprises,” and (3) Those elements, steps and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.

37 CFR § 1.75.

As the chart above shows, this “should” requirement is obviously not being enforced or followed.  “Should” is a middle ground between “shall” and “may” and indicates to me an obligation on the attorney’s part to actually consider whether “the nature of the case admits” such a claim form.  I expect that many U.S. practitioners have pushed the other way and rewritten similar styled claims from European practice when filing the US case.

I previously wrote:

Jespon claims are so nice to read because they actually spell out what has been improved by the invention.  Unfortunately, they also are seen as increasing the chance that the patent will be both narrowly interpreted and found invalid – and that the statement regarding the prior art will be seen as an admission.  For much these same reasons, most patents no longer particularly identify their “invention” beyond stating that it is embodied by each claim taken as a whole.  Prof. Kayton, who trained generations of patent attorneys in his PRG classes was particularly adamant about avoiding Jepson claims.

Gene Quinn on his blog writes “No patent attorney in their right mind would follow this suggestion.” (referring to Rule 1.75(e)).

Crouch, Jepson Claims (Part II), Patently-O (September 2017). Janice Mueller has written that “A long Jepson-format preamble only furthers the impression [to judges and juries] that the claimed subject matter is merely a minor addition to old technology rather than a pioneering advance entitled to broad protection.” The MPEP further explains that “drafting a claim in Jepson format is taken as an implied admission that the subject matter of the preamble is the prior art work of another.” MPEP 2129. Although the text goes on to explain that the admission does not hold if applicant explains that it is not making an admission or if some other justification is provided.

Back in 2017 when I last wrote about Jepson claims, patent attorneys were still coming to grips with the new law of eligibility and the notion that particularly pointing out the technical improvement over the prior art can be a useful strategy in patent drafting and prosecution.  Judge Lourie though seems to have already recognized this.  He explained in his opinion denying en banc review in the Ariosa case that

The claim to this invention, then, might have been better drafted as a so-called Jepson claim, which recites what is in the prior art and what is the improvement. Such a claim might read, perhaps with more details added: “In a method of performing a prenatal diagnosis using techniques of fractionation and amplification, the improvement consisting of using the non-cellular fraction of a maternal blood sample.

Ariosa Diagnostics, Inc. v. Sequenom, Inc., 809 F.3d 1282, 1286 (Fed. Cir. 2015) (concurring opinion by Judge Lourie); See also Ex parte Jepson, 1917 C.D. 62, 243 O.G. 526.

Jepson Formats and Means Limitations Under More Fire

The MPF Resurrection: Still Waiting for a Miracle?


Jepson Formats and Means Limitations Under More Fire

by Dennis Crouch

I have been following the pending Federal Circuit case of In re Xencor.  It is a quirky case involving both a Means-Plus-Function Claim and a Jepson claim.  In its decision, the PTAB went off the rails with its means-plus-function analysis.  In particular, the Board held that the MPF claim was invalid for lack of written description because the specification did not describe equivalents to the disclosed structure.

There is some logic to the decision. Let me try to explain: First, we know that written description doctrine requires a showing of possession of the full scope of the claims.   With MPF claims, we know that the statute requires a particular construction that includes both the structure described in the specification and “equivalents thereof.” 35 U.S.C. 112(f).  What we see here is that equivalents of the disclosed specification are within the literal scope of the claims — ergo, the written description must show possessions of those equivalents.

If you recall, a Jepson claim begins with a recitation something that is known or conventional, and then particularly claims the improvement — typically using a phrase such as “wherein the improvement comprises.”  The Jepson claim issue on appeal is the extent that the preamble portion of the claim must have been sufficiently supported by the original specification — even if the preamble carries no patentable weight for novelty or obviousness.

The patent applicant appealed both of these written description holdings by the PTAB, and briefing has been ongoing for the past few months.

In an opposed motion, the USPTO Solicitor has recently asked the Federal Circuit to remand the case back to the USPTO in order to reconsider the questions presented and issue a revised decision.  Although the motion does not clearly state this, it implies that the case will be heard by the USPTO’s Appeals Review Panel (ARP) that includes the Director (Vidal), the Commissioner of Patents (Udupa), and the PTAB Chief Judge (Boalick).

The request states that Xencor’s claims “present novel questions involving the applicability of the Supreme Court’s and this [Federal Circuit’s] precedent for both Jepson-format and means-plus-function claims in the field of biotechnology, and in particular the antibody art.  The use of Jepson format and means-plus-function claiming in the life sciences is exceedingly rare.

USPTO Request for Remand. Although I agree about the current rarity of Jepsom claims, Means Plus Function claims are not exceedingly rare, even in biotech.

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Claim 8 is written in the Jepson format:

8. In a method of treating a patient by administering an anti-C5 antibody with an Fc domain, the improvement comprising

said Fc domain comprising amino acid substitutions M428L/N434S as compared to a human Fc polypeptide,

wherein numbering is according to the EU index of Kabat,

wherein said anti-C5 antibody with said amino acid substitutions has increased in vivo half-life as compared to said antibody without said substitutions.

Claim 9 is a method claim that includes a means-plus-function limitation:

9. A method of treating a patient by administering an anti-C5 antibody comprising:

a) means for binding human C5 protein; and

b) an Fc domain comprising amino acid substitutions M428L/N434S as compared to a human Fe polypeptide,

wherein numbering is according to the EU index of Kabat,

wherein said anti-C5 antibody with said amino acid substitutions has increased in vivo half-life as compared to said antibody without said substitutions.

Supreme Court on Patent Law: November 2023

by Dennis Crouch

The Supreme Court is set to consider several significant patent law petitions addressing a range of issues from the application of obviousness standards, challenges to PTAB procedures, interpretation of joinder time limits IPR, to the proper scope patent eligibility doctrine. Here’s a brief overview of each case, followed by more details:

  1. MacNeil v. Yita (No. 23-494): This case examines the Federal Circuit’s reversal of a PTAB obviousness decision.  Petitioner argues that the appellate court substituted its own findings in the reversal rather than vacating and remanding.  This could be an important case for revitalizing the importance of secondary indicia of non-obviousness.
  2. Intel v. Vidal (No 23-135): This case challenges the “Fintiv rule” that restricts the initiation of inter partes review in cases where parallel district court litigation is pending.  The PTO is changing its approach, but Intel argues that the Agency isn’t going far enough.
  3. VirnetX v. Mangrove Partners Master Fund (No. 23-315): This case questions the Federal Circuit’s interpretation of time limits for joining IPR partes. Apple joined the petition long after it would have been barred from filing its own.  Although I sympathize with the petition, I believe the Federal Circuit got the statutory interpretation correct.
  4. Realtime Data v. Fortinet (No. 23-491): Here, Realtime Data challenges what it sees as lower court improper expansion of eligibility doctrine.  It asks the court to reiterate that eligibility is generally quite broad, subject to some quite narrow judge-made exceptions.
  5. Tehrani v. Hamilton Technologies (No. 23-575): This case involves a dispute over the PTAB’s obviousness finding and the Federal Circuit’s affirmation, particularly focusing on the qualifications of an expert witness, the proper interpretation of claim terms, etc.  There is some really interesting parts of the petition and case, but the petition largely re-argues the evidence — typically a losing approach at the Supreme Court.
  6. Vanda v. Teva (No. 23-___): I expect Vanda to challenge the Federal Circuit’s decision on the obviousness of its patents covering methods of using a particular drug. Vanda will argue that the court was too quick to jump to its obviousness conclusion.  If cert is granted, this would be a very important case.
  7. Traxcell Techs. v. AT&T (No. 23-574): This case examines whether attorney fees can be awarded based on pursuing litigation deemed “baseless” after a magistrate judge’s non-infringement recommendation but before the district judge finalizes that recommendation.

More detail on each case below: (more…)

Seeing Clearly: Article III Standing of IPR Judicial Review

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, food science, and viticulture. 

Article III standing remains a hot topic at all levels of federal litigation and across many different areas of law. Inter partes review is not unique. In Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC, Case No. 22-1706 (Fed. Cir. Nov. 7, 2023), the Federal Circuit dismissed, in a unanimous opinion by Chief Judge Moore, an appeal of a PTAB final IPR decision before reaching the merits by finding that the IPR challenger did not allege sufficient “injury in fact” to confer standing necessary for Article III judicial review.  

Pterygium is the result of cellular expression of kinase in the cornea that expands beyond control and creates tumors. With surgery as the only viable course of treatment, Cloudbreak Therapeutics created a topical application of multikinase inhibitors to provide a non-surgical treatment to prevent recurring tumors, which is recognized in U.S. Patent No. 10,149,820 (the ‘820 patent). Specifically, nintedanib is one of the most powerful multikinase inhibitors for reducing corneal neovascularization, a principal cause of pterygium.

Pterygium - Eye Doctors

Allgenesis petitioned for IPR of all eleven claims of the ’820 patent.  After the Board instituted, Cloudbreak disclaimed the genus claims, i.e., claims 1–3 and 6–11, leaving only claims 4 and 5, which more narrowly claim the use of nintedanib.  The Patent Trial & Appeal Board issued a final written decision finding that Allgenesis failed to show that the remaining two claims were unpatentable overcoming prior art and motivation to combine asserts. As part of its decision, the Board made a priority decision that a Patent Cooperation Treaty (PCT) application belonging to Allgenesis was not prior art to Cloudbreak’s patent.  While standing was not necessary to file an IPR because of the administrative nature of the PTAB, standing is a constitutional requirement for appeal to the federal courts. 

The Federal Circuit dismissed Allgenesis’s appeal because Allgenesis failed to establish Article III standing to appeal. Article III standing stems from the Constitutional requirement that federal courts only decide actual “cases” and “controversies” and avoid speculative advice administration. Lujan v. Defs. of Wildlife, 504 U.S. 555 (1992) is the seminal Supreme Court case that set forth the requirements for establishing Article III standing – namely that a party must show: 

  1. An “injury in fact” that is concrete, particularized, and actual or imminent (not hypothetical) 
  1. Causation between the injury and the challenged conduct 
  1. Redressability (a favorable court decision would likely redress the injury) 

In Lujan, the Court found the plaintiffs failed to show an imminent, concrete injury since their professed intentions to return to project sites at some indefinite time were insufficient. The Court also held that plaintiffs could not establish standing based solely on a “procedural injury” from violation of the consultation procedure, absent showing impairment of a separate concrete interest. Compare to Allgenesis. Specifically, Allgenesis did not show: 

  • An injury-in-fact based on potential infringement liability from its plans to develop a nintedanib product, because its plans were not sufficiently concrete. 
  • An injury-in-fact from the PTAB’s priority date determination, because any preclusive effect was speculative and Allgenesis did not sufficiently articulate how it impaired its own patent rights. 

Allgenesis argued it had standing based on potential infringement liability from developing nintedanib treatments for pterygium. The court found Allgenesis failed to show concrete plans creating a substantial risk of future infringement as Allgenesis’ VP of Finance declaration did not identify specific plans beyond a Phase II trial years ago, nor any current plans for Phase III trials or any efforts to seek FDA approval for their own nintedanib product. Likewise, settlement talks related to the IPR petition were insufficient to show its activities would likely cause Cloudbreak to assert infringement. 

Allgenesis also argued injury because the Board found the ‘820 patent claims were entitled to a June 2015 priority date, making Allgenesis’ PCT with a June 2015 filing date not prior art. Allgenesis asserted this would have a preclusive effect on its pending application claiming priority to its PCT. However, the court found Allgenesis did not establish any preclusive effect. Importantly, collateral estoppel will not attach to a non-appealable determination like the Board’s determination of priority. Therefore, if an examiner would find that Cloudbreak’s application served as prior art to Allgenesis’ pending application, Allgenesis would be able to challenge that on a separate appeal. For standing, any potential injury that may result from a future examiner’s action is too speculative.  

The precise line for what consists of “concrete plans” seems to be especially uncertain in a highly uncertain business like the life sciences and pharmaceutical business here. Prospectively applying the Court’s position, to even reach the merits, drug development companies that act as challengers in IPR proceedings will need to develop more factual support for standing, including clinical trials, timelines for future events, pending information regarding company target dates with regulatory agencies, economic data, or even sensitive company business data. These disclosure requirements may face resistance for business, competitive advantage, or any number of reasons but should be a relevant factor in determining whether to proceed with IPR petitions. 

= = =

Note from Crouch: One key importance here is that the Federal Circuit demanded evidence of concrete injury.  At oral arguments, Allgenesis attorney Don Mizerk stated plainly that its client was practicing the invention, but that attorney statement was insufficient.

  • Court: I was curious as to what do you think is your best argument for why you have Article III standing?
  • Mizerk: Well, Your Honor, I think it’s a pretty clear case that we have standing. We are practicing the method that is claimed.
  • Court: Where is the evidence? … [W]here’s the proof that you’re doing that?

Although the court did not get into this issue, the Phase II trials conducted by Allgenesis would not likely create infringement liability because of the 271(e) safe harbor.

A Question of First Impression: What Happens When the PTAB Fails to Meet the Statutory Deadline for Issuing a Final Written Decision?

By Chris Holman

Purdue Pharma L.P. v. Collegium Pharm., Inc., 2023 WL8043047 (Fed. Cir. Nov. 21, 2023)

Section 326(a)(11) of Title 35 (the Patent Act) provides that the PTO “shall prescribe regulations… requiring that the final determination in any post-grant review be issued not later than 1 year after [institution],” and that the time can be extended by up to six months for good cause or in the case of joinder (emphasis added).  On its face, the statute seems to establish a statutory deadline of 18 months from institution (one year plus the six-month extension) for the PTAB to issue its Final Written Decision in a post-grant review (“PGR”) proceeding.  In Purdue Pharma L.P. v. Collegium Pharm., Inc., the Federal Circuit answered a question that the court characterized as one of first impression, i.e., what recourse do the parties have if the PTAB fails to meet the statutory deadline? The Federal Circuit concluded that, because the statute does not specify any means for enforcing the PTAB’s compliance with the statutory deadline, the only recourse lies in a petition for a writ of mandamus.

The PTAB’s apparently unprecedented failure to issue its Final Written Decision within 18 months arose out of some unusual circumstances, including Purdue’s filing of a Notice of Bankruptcy Filing and Imposition of Automatic Stay and the Board’s resulting decision to stay the PGR, as well as some turnover on the panel that heard the case. In any event, after the PTAB issued its Final Written Decision finding Purdue’s claims to be unpatentable, Purdue appealed to the Federal Circuit, arguing that the Board lacked the authority to issue a Final Written Decision because it had failed to meet the 18 month deadline.

But the Federal Circuit sided with Collegium Pharma and the PTO, holding that the PTAB has authority to issue a Final Written Decision even after the deadline proscribed in the statute has passed.  The court cited Supreme Court precedent for the proposition that “if a statute does not specify a consequence for non-compliance with statutory timing provisions, the federal courts will not in the ordinary course impose their own coercive sanction.” Responding to Purdue’s argument that the use of “shall” and “requiring” in section 326(a)(11) deprives the Board of authority to issue a Final Written Decision after the deadline, the Federal Circuit noted that in Brock v. Pierce Cnty. the Supreme Court held the “requirement that the Secretary ‘shall’ take action within 120 days does not, standing alone, divest the Secretary of jurisdiction to act after that time.”

The court found it significant that other provisions of the AIA use quite different language to bar action after the passage of a deadline. Section 315(b), for example, contains explicit language denying agency power after a time deadline, saying “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.” (emphasis added).  See also section 321(c) (“A petition for a postgrant review may only be filed not later than the date that is 9 months after the date of the grant of the patent or of the issuance of a reissue patent” (emphasis added)). The Federal Circuit concluded that “[h]ad Congress meant to deprive the agency of power in section 326(a)(11), it knew how to do it, and, significantly, it did not use language in section 326(a)(11) similar to that used in other sections.”

The court found further support in the AIA’s legislative history, noting that “[i]f the Board could not issue a Final Written Decision, the parties would be forced to pursue the issue in district court litigation. This is the exact opposite of the purpose of the AIA, which is meant to create a more efficient alternative to district court litigation.”

The Federal Circuit goes on to state that Purdue’s appropriate remedy would have been a petition for writ of mandamus, which “is available immediately upon the deadline’s expiring, assuming that the other requirements for issuance of the writ are satisfied. There is no requirement to show unreasonable delay in the issuance of the decision—only that the deadline has passed.”

It remains to be seen whether the Federal Circuit’s decision will result in more Final Written Decisions being issued after the expiration of the 18 month statutory deadline, and whether mandamus will prove an effective remedy.

Sermon from the Bench: TTAB May Not “Altar” Course in Silence

by Dennis Crouch

Universal Life Church Monastery v. American Marriage Ministries (Fed. Cir. 2023) (non-precedential)

The case involves Universal Life Church Monastery’s (ULC Monastery) trademark application for the mark GET ORDAINED covering both online retail store services (Class 35) and ecclesiastical services (Class 45) like ordaining ministers. American Marriage Ministries (AMM) filed an opposition asserting that the mark was merely descriptive and failed to function as a mark for both classes of services. However, AMM’s briefing focused solely on the ecclesiastical services and did not present any argument about the online retail store services.

Despite the failure of briefing, the TTAB sustained AMM’s opposition as to both classes of services without addressing ULC Monastery’s argument that AMM waived its claims regarding the online retail services by not briefing them.  On appeal, the Federal Circuit has vacated and remanded, holding that the TTAB acted arbitrarily and capriciously by failing to explain why it did not deem certain unargued claims to be waived.

The TTAB has a set of current practices and procedures set out in its Trademark Trial and Appeal Board Manual of Procedure  (TBMP).  The TBMP provides that ‘[i]f a party fails to reference a pleaded claim or affirmative defense in its brief, the Board will deem the claim or affirmative defense to have been waived.”  In this case, the Board decided the unargued claim without identifying its reasoning.  On appeal, the Federal Circuit held this was arbitrary and capricious:

When the Board ‘departs from [its] established precedent without a reasoned explanation, its decision will be vacated as arbitrary and capricious.’ … The Board may not depart from its prior procedures ‘sub silentio.’

Opinion at 7. On remand, the TTAB will need to explain its waiver decision.  This non-precedential decision confirms that the TTAB must follow its own rules and procedures regarding waiver.

This decision underscores the Federal Circuit’s continued scrutiny of USPTO tribunals’ reasoning and explanations. Yet at the same time, the Federal Circuit frequently issues Rule 36 judgments affirming lower tribunal decisions without any opinion or reasoning. This dichotomy highlights a double standard — while the Federal Circuit demands detailed explanations from the USPTO, the court does not hold itself to that same standard. The court could improve perception of fairness by limiting no-opinion affirmances or providing short explanations of basis. Until then, the court’s warnings about silent departure from past practice ring hollow.

Prior Art as of the Effective Filing Date

by Dennis Crouch

The Patent Trial and Appeal Board recently designated as precedential a portion of its Penumbra v. RapidPulse decision in that provides important guidance on the use of a provisional patent application’s filing date for 102(a)(2) prior art under the America Invents Act. Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (made precedential as to section II.E.3 on November 15, 2023).  This is a pretty long post, but key takeaways are: (1) the PTAB expressly rejected the Federal Circuit’s pre-AIA Dynamic Drinkware rule (we’ll see how it goes on appeal); (2) when using a patent/publication as prior art based on an earlier provisional filing date, a petitioner now only needs to show the provisional describes the relied upon subject matter instead of requiring claims supported under §112; (3) this lowers the bar for leveraging provisionals as invalidating prior art before the PTAB (i.e., makes it easier to invalidate patents); however, (4) it remains unclear whether the courts will adopt the PTAB’s interpretation given the fairly minor statutory distinction underlying the decision. Toward the end of the post, I note that the ultimate questions on appeal may focus on the purposes and policy goals of the 102(a)(2) prior art provision and recognition of the provision’s potential unfairness.  These may push the Federal Circuit toward rejecting the USPTO approach and instead extending Dynamic Drinkware to AIA patents.

= = =

The language of 35 U.S.C. 102(a)(2) is a bit clunky, but its effect is to codify the first-to-file regime created by the America Invents Act of 2011.  The provision recognizes that a prior-filed patent application will typically serve as prior art against another later-application filed by a different inventor and assignee.  The provision does have some important caveats.  Notably, in order to be prior art under 102(a)(2), the application must first either (a) issue as a US patent (under 35 U.S.C. 151) or (2) be published as a US patent application publication (under 35 U.S.C. 122(b)).  Although a PCT application is not actually published under Section 122(b), it is “deemed a publication under section 122(b)” so long as it designates the US.  35 U.S.C. 374.

Foreign patent applications and provisional applications typically do not publish under Section 122(b) or issue as US patents — and therefore do not directly qualify as prior art as of their filing dates.  Here though there is an important caveat — the 102(a)(2) designates the US patent/publication prior art as of its effective filing date.   Section 102(d) then stretches the prior art date back to the earliest priority filing date so long as the US patent/publication “is entitled to claim a right of priority … or to claim the benefit of an earlier filing date.”  By its terms, the Section 102(d) reach-back does not apply to the patent  or published application as a whole. Rather, the statute indicates that the earliest effective filing date for prior art purposes is determined based whether “subject matter described in the patent or application” that is being used as prior art is also described in the priority document.

(d) Patents and Published Applications Effective as Prior Art.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application … (2) if the patent or application for patent is entitled to claim a right of priority … or to claim the benefit of an earlier filing date …, as of the filing date of the earliest such application that describes the subject matter.

35 U.S.C. 102(d).  Thus, for a U.S. patent or published application to be considered effectively filed as of the filing date of an earlier priority application under Section 102(d), (1) the patent or published application must be entitled to claim priority to the earlier application, and (2) the earlier priority application must describe the particular subject matter relied upon in the patent or published application being used as prior art against the claimed invention.  I term these two requirements as “entitlement” and “description” respectively.  As you’ll learn below, the USPTO recently adopted this approach — further delineating the entitlement portion as “ministerial entitlement.”

102(a)(2) serves an important role in post-AIA law because it codifies the rules of the first-inventor-to-file regime.  This was an important change from pre-AIA that, at times, allowed patentees to claim priority back to their provable date of invention. At the same time, 102(a)(2) prior art smarts of some fundamental unfairness because the references are kept secret for (typically) 18 months only to spring forth with a back-dating to the filing date.  Even the most careful and contentious inventors and applicants have no way of organizing their affairs to avoid unintentional duplication or minor extension because the references are kept secret.  This is one reason why in Europe, the parallel prior art is only available for novelty purposes, not for obviousness.

A key question post-AIA has been the extent that this new law changes the rules developed under the old parallel statute previously codified at 35 U.S.C. 102(e).  The main point of contention is the interpretation of the the two requirements  of entitlement and description.

The Federal Circuit faced a parallel issue in its Dynamic Drinkware case, albeit under pre-AIA law. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015).  In Dynamic Drinkware, the Federal Circuit held that for a reference patent to receive the earlier filing date of its provisional application under pre-AIA 35 U.S.C § 102(e), the disclosure of the provisional “must provide adequate written description support for at least one claim of the issued [reference] patent” under 35 U.S.C. § 112, ¶ 1 (2006). In other words, it was not sufficient under the pre-AIA framework for the provisional application to merely disclose the subject matter relied upon in the reference patent to show obviousness of the claimed invention. Instead, Dynamic Drinkware required that the claims in the reference patent itself must also be fully supported by the written description of the priority provisional application under § 112, ¶ 1 in order to reach back to its earlier filing date for prior art purposes.  Without full written description support, the priority filing does not serve as a proper anchor sufficient to justify the priority prior art date.

But, Dynamic Drinkware struck some folks as wrong because it focuses on what was claimed rather than what was disclosed. As I wrote back then:

Anyone who works with prior art knows that this setup is an oddball way to address the situation.  A patent’s disclosure for prior art purposes should not depend upon what was claimed or not claimed but instead should focus on what was disclosed. . . .

Raymond came up with idea at issue first and disclosed it in a provisional patent application that eventually resulted in an issued patent.  But, since Raymond’s non-provisional application included [and claimed] additional subject matter, the provisional disclosure no longer counts as effective prior art.

Crouch, Federal Circuit Backtracks (A bit) on Prior Art Status of Provisional Applications and Gives us a Disturbing Result, Patently-O (Sept. 8, 2015).   I went on

Here comes the new decision.  The USPTO recently designated a PTAB decision as precedential that rejects Dynamic Drinkware as applied to post-AIA patents. Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (made precedential as to section II.E.3 on November 15, 2023).  Although the USPTO does not have authority to overrule Federal Circuit decisions regarding the law of patents and what counts as prior art, it skirted the issue here by noting that the statute was substantially rewritten in the AIA.

IPR2021-01466 involves RapidPulse’s U.S. Patent No. 10,531,883 B1 which relates to an aspiration thrombectomy system used to treat ischemic strokes by removing blood clots. The petitioner, Penumbra, challenged the validity of claims 1-18 of the ’883 patent as obvious over prior art references including Teigen et al. (U.S. Patent No. 11,096,712).

But, Teigen only counts as prior art if it can reach back to its provisional application under 102(d).  RapidPulse argued that Teigen did not qualify as prior art because the petitioner failed to establish written description support in Teigen’s provisional applications for claimed subject matter as required under Dynamic Drinkware.

In the precedential section of the Penumbra decision, the PTAB rejected the application of Dynamic Drinkware for determining whether a patent is entitled to claim priority to provisional applications for prior art purposes under §§ 102(a)(2)/(d) of the AIA.  Under Penumbra, the PTAB identified the two  statutory requiements:

  1. Entitlement: The patent or published application must meet the ministerial/procedural requirements to be entitled to claim priority to the provisional application under 35 U.S.C. §119 or §120. This does not require actually showing the claims are fully supported under §112, but only that the patent document need meets the “‘ministerial requirements’ of §§119 and 120.”
  2. Disclosure: The provisional application must describe the particular subject matter from the patent or published application that is relied upon as prior art against the challenged patent claims.

In other words, under the  AIA statutory framework, a petitioner must show: (1) the reference patent meets certain formalities to claim priority to the provisional, and (2) the provisional application describes the specific portions of the reference patent that are asserted as prior art, even if other portions are not described in the provisional and even if no claims in the prior art patent are fully supported by the provisional.

The PTAB expressly rejects “extending” pre-AIA law, including the Federal Circuit’s Dynamic Drinkware decision, to require establishing §112 support for the claims of the reference patent itself. Only the subject matter relied upon to show obviousness needs written description support in the priority application to reach back to its earlier filing date.

This precedential PTAB decision thus begins to settle the question of whether Dynamic Drinkware applies under the AIA for the effective date of prior art patents and published applications.  The holding particularly lowers the burden for petitioners seeking to rely on provisional and foreign filing dates for asserted references because the challenger no longer needs to show § 112 support for a reference patent’s claim, but rather only needs to show that the subject matter at issue is described in the provisional.

This case will certainly be appealed, and it is not entirely clear that the Federal Circuit will agree with the USPTO’s rejection of its precedent. Although the statutory framework is different, the statutory differences do not clearly indicate a shift in precedent. Thus, there is a good chance that this case will also be reversed on appeal.

The ultimate questions here may focus on the purposes and policy goals of the 102(a)(2) prior art provision and the recognition of the provision’s potential unfairness. Namely, is the provision primarily focused on enforcing the first-inventor-to-file aspects of the law? Or, is the provision’s primary purpose simply to expand the scope of invalidating prior art references?

If the main thrust of 102(a)(2) is to codify a first-inventor-to-file system, then the Dynamic Drinkware approach of requiring full written description support for the claims of a reference patent makes more sense. The claims dictate what has been invented first and claimed first. Provisional support for subject matter disclosed but unclaimed in the prior art patent does not establish first-inventor status.

However, if 102(a)(2) is intended principally to expand prior art, then the PTAB’s focus on merely requiring that the provisional describe the relied upon subject matter is more in line with that goal. Expansion of invalidating art takes priority over only allowing first-claiming inventors to rely on early priority dates.

= = = =

I would be remiss to post this without harping on one of my pet notions that provisional patent applications should all be considered prior art as soon as their file is open to the public.  The USPTO needs to do a better job of making provisional applications publicly available — many include details and descriptions that are not found in the later non-provisional. But, as far as I am aware, there is no searchable database of US provisional applications.

The Fate of Patent Term Adjustment: In re Cellect Seeks Rehearing on Double Patenting

by Dennis Crouch

In August 2023, the Federal Circuit decided an important case questioning how  obviousness-type double patenting (OTDP) is impacted when the terms of two family-member patents that would otherwise expire on the same day are separated by patent term adjustment (PTA) added to the term of one of the patents.  In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023).  One of Cellect’s patents passed through the PTO quickly, but the other was delayed and thus received extra term as required by the statutory “patent term guarantee” codified in 35 U.S.C. 154(b).  In its panel decision, the Federal Circuit held that Cellect should have filed a terminal disclaimer to disclaim the portion added by the statutory term adjustment.  And, since the patentee did not file the disclaimer, the USPTO properly found the claims invalid under the non-statutory doctrine of OTDP. As Cellect’s attorney Paul Andre stated at oral aguments: “The point of this appeal really comes down to whether a statutory extension or adjustment in it by itself enough to invalidate patents.”  The Federal Circuit found the answer to be “Yes.”  The USPTO has argued that the situation creates an unjustified advantage for the patentee: “As this court has already explained in Boehringer, by failing to terminally disclaim a later patent prior to the expiration of an earlier patent, Cellect enjoyed an unjustified advantage, a purported time extension of the right to exclude from the date of the earlier patent.” USPTO attorney Kakoli Caprihan at oral arguments.

Cellect has now petitioned for en banc rehearing and has received support from several amici, including IPO, NYIPLA, and Bob Armitage.  Cellect’s rehearing petition asserts the panel wrongly treated PTA differently than patent term extension (PTE) under 35 U.S.C. §156 for OTDP purposes. In Novartis AG v. Ezra Ventures LLC, 909 F.3d 1367 (Fed. Cir. 2018), the Federal Circuit held PTE for one family member is not invalidating for OTDP. Cellect contends PTA deserves identical treatment, with OTDP assessing pre-PTA expiration dates. The petition argues the panel misapplied precedent and failed to honor Congressional intent for these “technical term adjustment provisions.”

The statute indicates that the term “shall be extended for 1 day for each day” of USPTO delay. But, it also includes a special caveat for disclaimers: “No patent the term of which has been disclaimed beyond a specified date may be adjusted under this section beyond the expiration date specified in the disclaimer.” 35 U.S.C. § 154(b)(2)(B) (emphasis added). As mentioned above, however, the patentee did not file a disclaimer in this case, and so argues that that this disclaimer provision is not applicable.

Three amicus briefs support Cellect’s petition. I’ll include a few interesting notes from each.  Amicus curiae Bob Armitage proposes rethinking OTDP entirely, suggesting res judicata could address any harassment from enforcing indistinct patents. The NYIPLA argues the panel and Board applied the wrong OTDP test by using a one-way analysis instead of the two-way test required for PTO-delay. It further contends the panel improperly ignored the doctrine’s equitable underpinnings by rigidly applying OTDP without assessing misconduct or gamesmanship. The IPO brief echoes Cellect’s arguments that the panel’s interpretation improperly overrides express statutory language that PTA “shall” issue. IPO contends this formalistic use of ODP to invalidate PTA-adjusted patents is unsound policy that will deter innovation.

The USPTO has been asked to file a responsive brief that was originally due November 30, 2023.  The Solicitor’s office has requested an extension to December 14, 2023 “due to the unusually heavy workload in the Solicitor’s Office.” Nothing in the public record indicates whether the request has been granted or denied.

This case is a bit of an unusual situation because the patentee was never asked to file a terminal disclaimer during prosecution — based upon the briefing this was an oversight by the patent examining corps. However, if Cellect wins, then the USPTO will likely receive substantial pressure to allow terminal disclaimers that include an exception for PTA.

Guest Post: Judgment Preservation Insurance and the Federal Circuit

Guest post by Jonathan Stroud and Sam Korte.  Mr. Stroud is the General Counsel of Unified Patents and Mr. Korte is Senior Principal Counsel – IP at Garmin.

An exotic insurance product has recently taken the litigation world by storm.  Judgment preservation insurance, or JPI, was neither offered nor widely discussed, at least publicly, as recently as five years ago.[1]  Now, it’s hard to avoid; a brief Internet search will turn up hundreds of hits and dozens of explainer articles by insurance brokers, law firms, and litigation funders extolling the benefits and pitching such policies to appellants. In IP lit, panels, presentations, and brand-new conferences, insurers and lawyers extol the virtues of these “bespoke” policies.  They now undergird some of the biggest eye-popping judgments on appeal to the Federal Circuit.

Briefly, JPI is a when a civil litigant (or funder) who has won a money judgment—let’s say, $100m—purchases an insurance policy guaranteeing some percentage of the judgment.[2]  In this example—taken from a pitch—a $12.5m policy premium might offer a guarantee of 80% recovery, or $80m, if the appeal results in a settlement, or if full recovery is otherwise stymied—remand, lack of collectability, or another adverse intervening event.  Here the plaintiff-appellant, while out the immediate $12.5m, now has a policy worth at least $80m, against which they can borrow or otherwise book the judgment at some predictable gain; perhaps to continue the appeal or offset recovery costs.  Sellers promote policies alongside litigation financing portfolios to de-risk and otherwise encourage litigation.  And litigation financiers are bundling these verdicts (with their other litigations) and selling shares in the result.  Thus, JPI provides them a floor for these bundled “securities” and allows them a way to assure gains.

Developer Appian secured a $2 billion judgment in a trade secret case, and publicly disclosed to the Wall Street Journal they insured it, including the terms. There, the $47.5m policy ($57.3m including fees) guaranteed 25% (at least $500m) of the judgment. A policy that large held by a publicly traded company whose total revenue in 2022 was, by comparison, $468 million, turned heads.  It has been explained as a smart (if expensive) way to hedge against the high risk of reversal of these supersized judgments.

The policies themselves, at the guaranteed rates currently offered, seem terribly risky. We have heard experienced insurers complain of competing brokers offering guarantees of 50%-80%, and in one case, 96%; clearly, actuarial tables don’t exist for judgment collection, but the reversal rate in appeals from the District Courts was 57% in 2022—and there can be remands and other appeals.

Now, to spread risk and reduce the harm when policies are called, insurance underwriters employ tranches and towers—multiple insurers—and will often sell off insurance liability. But the incentive to compete to sell policies and earn premiums is likely driving these guarantees higher than reasonable.  Given reversal and recovery rates, maybe a 25% policy is sensibly balanced in the patent context based on known reversal rates and settlements; case-specific issues, like preexisting judgments or bad facts, might push it higher.  But anything much higher than that seems, to most in the field, foolish.  Perhaps there’s a sales volume that justifies that risk, and many more policies than estimated are being written; or perhaps we are riding an insurance bubble in this niche market.  Either way, if JPI insurers write policies for Federal Circuit damages appeals at higher rates, plaintiff-appellants will take them—if offered at such eye-catching terms, they have rational attraction.

In-house counsel told us that within hours of receiving patent mega-judgments—which we arbitrarily peg as above $100m—multiple insurance brokers reached out, some directly by phone within hours, to discuss JPI policies.  We have been told by many that the $2.2 billion Intel v. VLSI judgment was insured, though for how much and by who hasn’t been publicly disclosed, as far as we know.

Federal Circuit district court reversal rates and recovery being what they are—as high as 43%, depending on the year—if insurers are willing to offer 80% (or more) at reasonable premiums, why wouldn’t most plaintiff-appellants take them?  Even cash-rich plaintiff-appellants could likely further monetize the guarantee.  Plaintiff-appellants could borrow against that policy, calm investors, or incentivize holding out through the length of an appeal, which currently average 418 days.[3]

But are JPIs good policies for the insurers?  The math suggests not, at least at these high rates of guarantee.  To be sure, insurers and underwriters are not generally reckless.  It’s likely at least some of the risks have been analyzed and justified or accounted for.  There are many ways insurers de-risk alternative insurance products—through “insurance towers,” by drafting agreements that give them some control over the appeal, or to include terms to continue incentives for the appealing party not to settle at a loss to the insurer.  One would imagine that insurers in some appeals can and might need to subrogate, stepping into the shoes of the appellant when necessary to defend their risk—or writing policies that set a settlement floor to collect.

Nonetheless, analysts, insurers, and reinsurers may not truly understand how volatile and persnickety patent appellate recovery can be—particularly given the trend of nuclear judgments being reversed on appeal.  Maybe they do; maybe they don’t care; maybe this is such a (relatively) small slice of the alternative insurance market, and it’s been analyzed and de-risked so well, that it won’t matter.  It is a brand-new “bespoke” insurance product with a brand-new market, no oversight, and is yet little understood.  While we’re not sure those broker incentives mentioned earlier don’t naturally tilt toward overselling of risky policies unlikely to pay off in the long run, we’re also not sure it matters, if the policies have been de-risked.  But they remain, on their face, incredibly risky.

And then there is the disclosure gap problem. Since the 1970s, all Federal litigants have been required to disclose insurance agreements under Federal Rule of Civil Procedure 26, for myriad compelling reasons explained in the comment to the rule.[4]  (One reason being that it is possible both sides are insured by the same or related insurers, and the parties might be unaware of the obvious conflict.)   No similar rule exists in the Federal Rules of Appellate Procedure—understandable given insurance purchased after judgment and targeting appeals—JPI—did not exist at the time.  There’s an argument that those policies must be disclosed on any remand, though docket searches suggest that’s not happening.

The disclosure gap affects other rules, too—for instance, FRAP and local Federal Circuit Rule 33 address the Federal Circuit’s Mediation Program (link).  While the Federal Circuit loosened its language earlier this year and no longer requires mandatory settlement discussions between the parties (link to this year’s amendments), JPI certainly changes, and in some cases may frustrate or eliminate entirely, the possibility of settlement, contrary to the intent of those rules. It may also change the real party in interest on appeal, if the insurance company holding the policy subrogates the claim or the policy is written such that they are the real appellant.  And it could introduce conflicts if related insurers are on both sides of a dispute.  At a minimum, FCR 33 should be amended to require disclosure of JPI and to include insurers in the mediation program.

Regardless of whether the Court and the Judicial Conference yet realize it, though, JPI is here in force, and is being offered widely, at terms both attractive and likely to alter settlement dynamics.  It is affecting appeals.  And while it seems likely that at least some of these policies are riding an insurance bubble and will pop, that moment has yet to come. Perhaps we are entering a phase where available insurance coverage is the rule, and not the exception.  It would be a shame if premature overselling of risky policies or settlement disputes led to a bubble popping and a painful contraction.

[1] See Aviva Will & David M. Perla, United States: Litigation Funding Comparative Guide, Burford Capital, March  23, 2023 (noting that “in recent years” the “legal finance market has witnessed “the growth of a new finance-adjacent product: litigation insurance policies on affirmative recoveries by companies and law firms.”);

[2] For a general explainer, see Certum Group, Judgment Preservation Insurance (video), available at (last accessed Nov. 14, 2023).

[3] Morrison Forrester offers a rather useful instant tool that can show you the current pendency rates for Federal Circuit appeals.  For patent cases originating from district court, it’s currently an average of 418 days from filing of the notice of appeal to decision.  See Statistics, Federal Circuitry, Morrison Forrester (interactive tableau tool), available at (accessed and tabulated Nov. 14, 2023).

[4] The comment to the 1970 FRCP amendment:

“Disclosure of insurance coverage will enable counsel for both sides to make the same realistic appraisal of the case, so that settlement and litigation strategy are based on knowledge and not speculation. It will conduce to settlement and avoid protracted litigation in some cases, though in others it may have an opposite effect. The amendment is limited to insurance coverage, which should be distinguished from any other facts concerning defendant’s financial status (1) because insurance is an asset created specifically to satisfy the claim; (2) because the insurance company ordinarily controls the litigation; (3) because information about coverage is available only from defendant or his insurer; and (4) because disclosure does not involve a significant invasion of privacy.

Disclosure is required when the insurer “may be liable” on part or all the judgment. Thus, an insurance company must disclose even when it contests liability under the policy, and such disclosure does not constitute a waiver of its claim. It is immaterial whether the liability is to satisfy the judgment directly or merely to indemnify or reimburse another after he pays the judgment.”


The MPF Resurrection: Still Waiting for a Miracle?

by Dennis Crouch

I have been thinking about the potential rise in the use of means-plus-function (MPF) claims as a reaction to indefiniteness cases such as Williamson v. Citrix as well as pressure from other doctrines, including enablement, written description, and eligibility.  But, my preliminary data show that the foretold rise has not yet come.  As the chart above illustrates, MPF claims continue their descent into obscurity, with no sign from the preliminary data of rising from the grave any time soon.

The chart above shows a visualization of the percentage of issued patents that include means-plus-function (MPF) claims over time, with two separate estimates based on the wording used in the claims. MPF claims are a particular type of claim in patent law that allows an inventor to claim an invention based on the function that it performs, rather than the specific structure or materials used. 35 U.S.C. 112(f).  Although MPF claims may seem broad on their face, the statute limits their scope to cover only the corresponding structures disclosed in the patent document (the specification) and their equivalents.

The chart shows a clear trend: a decline in the use of MPF claims from 1980 through to the mid-2020s. The high estimate in the chart indicates the broader inclusion of MPF claims that use the word “Means,” shows a more substantial presence and a steeper decline than the low estimate, which tracks claims specifically using the phrase “Means For” or “Means To.”

The decline in MPF claims can be linked to several legal decisions and changes in patent doctrine. Historically, MPF claims were indeed a powerful tool, as they allowed patent holders to claim a range of equivalent structures that performed the same function, without having to list them all out.  However, this breadth of protection has been significantly curtailed by precedential decisions that have limited the scope of the claims (as required by the statute) and invalidated many MPF claims as indefinite (something that I believe is not required by the statute). These decisions from the 1980s and 1990s began the downward drive of MPF usage.

Functional claiming is a constant lure for patent drafters.  The an invention’s function (what result it obtains) is typically tied more directly to the market and business goals than the particular structure or technological details used to reach that end. A functional claim limitation offers the tantalizing ideal of broad coverage and technological flexibility. By defining an invention by what it does rather than the nuts and bolts of how it is accomplished, functional claims can appear to encompass any means for achieving the stated function. This breadth can deter competitors by making it more difficult for them to design around the patent. Additionally, defining an invention functionally may allow the claim scope to adapt to future technological advances that arise after the patent filing date, as long as the new technologies perform the claimed function. The functional format also simplifies claim drafting for complex inventions and supports filing patents amidst technological uncertainty before landing on a final design.

As MPF claims were declining, patent applicants still felt the draw for functional limitations and began to use alternative claiming strategies.  Rather than a “means for” performing an algorithm, applicants began claiming a “processor configured to” perform the algorithm, or other alternatives that avoided the magical words “means.” Under the (old) precedent, the use of alternative words such as “processor for” were ordinarily not treated as means-plus-function form and therefore did not have the narrow construction and invalidity risk mentioned above.

In its important 2015 decision in Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc), the Federal Circuit changed the law again — going after these non-means nonce words.  Williamson established the absence of the term “means” no longer creates a strong presumption against applying MPF construction.  Thus, words such as “mechanism for,” “module for,” “device for,” and “member for” are all likely to be treated as invoking 112(f) means-plus-function construction absent some indication that the limitation directly imparts a structural limitation.

Moreover, enablement and written description requirements have clamped down on non-MPF-style functional claims. For example, in Amgen v. Sanofi, the 2023 Supreme Court invalidated Amgen’s broad functional genus claim covering for monoclonal antibodies that bind to PCSK9 to lower cholesterol.  The case suggests that some broad functional limitations might never be enabled even with extensive disclosure.  Eligibility cases raise similar issues with functional limitations undergoing significant scrutiny. In Electric Power Group, for instance, the Federal Circuit explained that the “result-focused, functional character of claim language has been a frequent feature of claims held ineligible under § 101.”

One seeming solution to all of these arising issues is for patent applicants to more directly assert MPF claim limitations and include a number of embodiments.  But, for now at least, the miracle resurgence of MPF remains elusive.

= = =

Just to confirm that there not a lagging rise in MPF usage, I did the parallel analysis on claims found in published applications and found similar results with continued decline of the use of “means” and “means for” language up through applications published in 2023.

GUI Guidelines: The Old Rules are New Again

By Sarah Burstein, Professor of Law at Suffolk University Law School

USPTO Notice, 88 FR 80277 (Nov. 17, 2023)

Last week, the USPTO released a document entitled “Supplemental Guidance for Examination of Design Patent Applications Related to Computer-Generated Electronic Images, Including Computer-Generated Icons and Graphical User Interfaces.” In it, the USPTO reaffirmed its prior interpretation of the phrase “design for an article of manufacture” and did not—as many had hoped—expand its interpretation of that phrase.

The statutory subject matter provision for design patents, 35 U.S.C. § 171, states: “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title” (emphasis added).

In the 1990s, the USPTO interpreted the phrase “design for an article of manufacture” to cover designs for “computer-generated icons”:

The PTO considers designs for computer-generated icons embodied in articles of manufacture to be statutory subject matter eligible for design patent protection under section 171. Thus, if an application claims a computer-generated icon shown on a computer screen, monitor, other display panel, or a portion thereof, the claim complies with the ‘‘article of manufacture’’ requirement of section 171.

61 Fed. Reg. 11380, 11381 (footnotes omitted). This interpretation has been criticized by myself and others.

In support of this interpretation, the USPTO cited its own 1992 decision in Ex parte Strijland for the proposition that “[c]omputer-generated icons, such as full screen displays and individual icons, are two-dimensional images which alone are surface ornamentation.” Id. at 11382 (citing 26 U.S.P.Q. 2d 1259, 1262 n.2 (Bd. Pat App. & Int. 1992). In these original GUI Guidelines, the USPTO also suggested that it believed the relevant “article of manufacture” to be the “computer screen, monitor, other display panel, or portion thereof.” 61 Fed. Reg. 11380, 11381–82.

In late December 2020, the USPTO published a request for information on “The Article of Manufacture Requirement.” In this document, the USPTO sought “public input on whether its interpretation of the article of manufacture requirement in the United States Code should be revised to protect digital designs that encompass new and emerging technologies.” In particular, the USPTO asked for input on the protectability of designs for thing like “projections, holographic imagery, or virtual/augmented reality”—i.e., designs that “do not require a physical display screen or other tangible article to be viewable” or, as I call them, disembodied designs. The tone of the request seemed to suggest that USPTO wanted to expand its definition of § 171 to cover designs “not applied to or embodied in a physical article.”

In the request for information, the USPTO again pointed to Strijland but focused on a different part of that decision, the part that talked about icons being “integral to the operation of a computer.” See 85 Fed. Reg. 83063, 83064–65. (By contrast, the original GUI Guidelines did not mention the word “integral” at all. See 61 Fed. Reg. 11380.)

In February 2021, the USPTO published 19 comments that were submitted in response to the request, including these comments submitted by myself and other design law professors.

Over a year later, in April 2022, new USPTO Director Vidal announced the release of a “summary of public views on the article of manufacture requirement of 35 U.S.C. § 171” and announced that the USPTO would “immediately turn to reviewing the ‘Guidelines for Examination of Design Patent Applications for Computer-Generated Icons’ and the surrounding law.” The tone of the announcement, which framed the issue as whether the USPTO’s rules should be “reevaluated to incentivize and protect design innovation in new and emerging technologies,” seemed to suggest that the USPTO was planning to expand its interpretation of § 171. (For more on that summary, see this post.)

But it didn’t. In the “supplemental guidance,” the USPTO doubled down on its “it’s okay if it’s on a screen” interpretation of the statute but did not extend its interpretation of “design for an article of manufacture” to cover disembodied designs:

[T]he mere display of a computer-generated electronic image that is not a computer icon or a GUI (i.e., that is not an integral and active component in the operation of a computer) shown on a display panel does not constitute statutory subject matter under 35 U.S.C. 171. However, the USPTO considers a computer icon or a GUI shown on a display panel, or a portion thereof, to be more than a mere display of a picture on a screen because a computer icon or a GUI is an integral and active component in the operation of—i.e., embodied in and/or applied to—a programmed computer displaying the computer icon or the GUI. Therefore, a computer icon or a GUI is eligible under 35 U.S.C. 171, if properly presented and claimed (e.g., the drawing(s) fully discloses the design as embodied in the article of manufacture).

So what’s different here? The USPTO added “or a GUI” to the same category as “icons.” But that seems to be a codification of USPTO practice, not an actual change in policy. See, e.g., D1,001,156 (issued to Google in October for a “design for a display screen or portion thereof with graphical user interface”); D436,580 (issued to Sony in 2001 for a design for a “design for graphical user interface for a display screen”).

If anything major has changed, it’s the USPTO’s justification for its screen rule. The USPTO is now leaning hard on the “integral and active component” language from Strijland. But while that part of Strijland suggested the relevant article is the “programmed computer,” the USPTO seems to be sticking with its conclusion that the relevant article is the screen. And it remains to be seen just how expansively the USPTO will interpret and apply the phrase “integral and active component.”

Comment: Although many in the design patent community will no doubt be disappointed that the USPTO refused to expand its interpretation of § 171, the USPTO was right not to do so. As we pointed out here, providing protections for disembodied designs would raise serious First Amendment concerns, among other problems.

And as I pointed out here, disembodied designs are already automatically (and costlessly) protected by copyright as long as they can meet the low standard of creativity mandated by Feist v. Rural. That’s really what this debate is about—whether design patents can and should be awarded for designs that fail to meet the low bar set by copyright law. (And, no, the Feist standard is not subsumed by the requirements of § 102 and 103. For more on that issue, see this forthcoming article.)

As for the USPTO’s new defense of the status quo, the new justification is no more persuasive than the old one. But at least the USPTO didn’t make the situation worse.

Further Thoughts on Patent Eligibility and Predictability

By Chris Holman

I enjoyed reading the recent article by Professors Rantanen and Datzov, and was not surprised by their conclusion that the courts are generally applying the Supreme Court’s patent eligibility precedent in a relatively predictable manner. I have not conducted such a systematic review of patent eligibility decisions, but over the years I have read quite a few of them, and for some time I have felt that I can usually predict which way the court will go in deciding these cases.

The two-part Alice/Mayo framework for assessing the patent eligibility of method claims, which formally involves determining whether a patent claim is “directed towards” one of the judicial exceptions (law of nature, natural phenomenon, or abstract idea), and if so, to determine whether there is “enough” additional “inventive concept” to render the claim a patent eligible “application” of that judicial exception, seems quite indeterminate on its face. But Alice provides some important clarifying language:

[Petitioner’s method claims do not] purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer. Under our precedents, that is not “enough ” to transform an abstract idea into a patent-eligible invention.

The message I have taken from this paragraph is that technological innovations, including software that “improve[s] the functioning of [a] computer,” generally remain patent eligible. And I have found that, when reading judicial decisions addressing the patent eligibility of method claims relating to computers and computer programs , if it looks and feels like the purported innovation is technological in nature, the claim is likely to be upheld. On the other hand, if the claimed method feels less technological, e.g., a method of playing bingo on the Internet, or a “business method,” I expect it to be struck down. Occasionally I am surprised by a decision, but from what I have seen the courts are generally treating the “abstract ideas” exception as a bar to the patenting of non-technological innovations.

The “natural phenomena” and “laws of nature” exceptions tend to be invoked in the context of life science innovations, and it seems to me that most method claims arising out of the life sciences will be deemed patent eligible unless the court deems it to be directed towards a “diagnostic method,” i.e., an analytical method based on the discovery of a correlation between a biomarker and some clinically significant information, e.g., a genetic sequence and the likelihood of developing cancer, or a chemical metabolite and the optimal dosage of a drug.  If a claimed method relating to the life sciences can plausibly be characterized as something other than a diagnostic claim, e.g., a method of preparing some sort of biological product, or treating a disease, etc., it is generally going to be found patent eligible.  But if the court concludes that it is a diagnostic method, it is going down.

In the Federal Circuit’s decision denying en banc rehearing of Athena Diagnostics, all of the judges on the Federal Circuit seemed to agree that, under the court’s current interpretation of Mayo, diagnostic methods are essentially patent ineligible per se. They also seem to agree that this is an unfortunate state of affairs, given the tremendous medical benefits that innovative diagnostic methods can provide, as exemplified by the claims struck down in Athena Diagnostics. The major split revealed by the various opinions dissenting and concurring with the court’s en banc decision to deny rehearing is that a majority of the judges on the Federal Circuit believe that their hands are tied by Supreme Court precedent, particularly Mayo, while a significant number of dissenting judges disagreed, arguing that the Federal Circuit had unnecessarily tied its own hands with respect to diagnostic methods, and that, properly interpreted, Mayo left open the possibility of finding at least some diagnostic methods patent eligible.

Some of the Federal Circuit judges seemed to voice approval for the way in which Alice has been deployed in the abstract idea context to invalidate claims directed towards business methods and other non-technological inventions.  On the other hand, they voiced concern that in the laws of nature/natural phenomena context Mayo was resulting in the invalidation of meritorious diagnostic method claims.  In any event, when it comes to the life sciences and method claims, the Federal Circuit seems inclined to interpret Mayo relatively narrowly, and uphold the eligibility of method claims, so long as the claimed invention can plausibly be characterized as something other than a diagnostic method.

Failures to Function and Likelihood of Confusion: Takeaways from Two Recent Federal Circuit Trademark Decisions

The U.S. Court of Appeals for the Federal Circuit recently affirmed two Trademark Trial and Appeal Board (TTAB) decisions. In In re GO & Associates, LLC, 2022-1961 (Fed. Cir. Nov. 13, 2023), the Federal Circuit affirmed the TTAB’s refusal to register the mark EVERYBODY VS RACISM because it failed to function as a trademark. In Trek Bicycle Corp. v. Isaacs, 2022-1434 (Fed. Cir. Nov. 15, 2023), the Federal Circuit affirmed the TTAB’s dismissal of Trek’s opposition to the registration of the RANGER TREK mark, finding no likelihood of confusion with Trek’s registered marks, and that Trek’s bicycle fame did not extend to backpacks.

In re GO & Associates

In In re GO & Associates, GO sought to register the mark EVERYBODY VS RACISM for various goods and services, including (1) apparel, (2) bags, and  (2) services promoting racial reconciliation. The examining attorney refused registration under 15 U.S.C. §§ 1052 and 1053, finding that the mark failed to function as a source identifier and instead conveyed an informational message.

In order to qualify for federal trademark registration under the Lanham Act, a mark must be able to function as a source identifier. In other words, it must be able to indicate the source of the applicant’s goods or services and distinguish them from others. This requirement stems from the core purpose of trademark law, which is protecting the ability of consumers to readily identify the sources of goods and services.

If a mark fails to function as a source identifier, it cannot be registered as a trademark under the Lanham Act. The Trademark Manual of Examining Procedure (TMEP) § 1202.04 explains that certain types of informational content, such as slogans used by the public to convey sentiments, are typically not registrable because the public is unlikely to perceive them as trademarks or service marks identifying a single commercial source. The threshold determination is whether the public perceives the mark as a source identifier rather than an informational message or sentiment.

Here, the TTAB affirmed the refusal, finding substantial evidence that the mark was commonly used by the public in a non-trademark manner to convey an anti-racist sentiment. The Federal Circuit agreed, emphasizing that “[i]f the PTO were to allow the registration of marks that are used by the public in such a way that they cannot be attributed to a single source, the purpose of trademark law would be undermined.” As the Supreme Court recently stated, “a trademark is not a trademark unless it identifies a product’s source.” Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S. 140 (2023).

GO raised the pending case of Elster v. Vidal that is focused on the mark “TRUMP TOO SMALL.” In that case, the Federal Circuit had concluded that the TTAB’s refusal to register was an unconstitutional violation of speech.  In that  Elster, as well as others such as the FUCT case and MAKE AMERICA GREAT AGAIN registration, many commentators have suggested that the marks should be rejected for failure to function.  In the GO appeal, the Federal Circuit found no precedential merit in those cases because failure to function was not an issue on appeal there.   The court also refused to call into question the USPTO’s “informational matter doctrine” — explaining that “[c]ontrary to GO’s position, nothing in the Lanham Act prohibits registration of a mark containing informational matter, so long as the mark also functions to identify a single commercial source.”

Because substantial evidence showed that the public was unlikely to associate EVERYBODY VS RACISM with a single source for GO’s goods and services, the Federal Circuit affirmed the denial of registration.

Trek Bicycle Corp. v. Isaacs

In the second case, Trek opposed the registration of the RANGER TREK mark for apparel and bags, arguing a likelihood of confusion with its previously used and registered TREK marks. Applying the DuPont factors, the TTAB dismissed Trek’s opposition, finding insufficient evidence of likely confusion.

I see the TREK mark as conceptually weak because it is so suggestive of outdoor activities.  The TTAB and Federal Circuit noted that:

  • Dictionary definitions defined “trek” as an “arduous journey” or “difficult journey, hike or trip,” suggesting the word trek refers to outdoor activities.
  • There were third-party registrations containing the word “TREK” for apparel and bags, showing the word is commonly used in connection with those goods.
  • These dictionary definitions and third-party registrations demonstrated that “trek” is a suggestive term for apparel and bags used for outdoor trekking and hiking.

At the same time, TREK is a famous mark — but only for bicycles, not for backpacks.   In the end, the court gave most weight to the lack of evidence of  similarity and confusion. The court agreed that the addition of RANGER to TREK “resulted in the parties’ marks having a different overall commercial impression.”

Although speech was not a central aspect of these decisions they offer a glimpse into how trademark law has been designed to help accommodate speech interests. While marks that primarily function as source identifiers can be registered even if they contain expressive content, the bar for registrability remains high for marks whose primary purpose is simply to convey a message.

14,000 Words to Win It: Why Medtronic’s Appeal Strategy Backfired

by Dennis Crouch

The Federal Circuit’s new decision in Medtronic v. Teleflex delves into the old pre-AIA law of inventorship and prior art.  It also provides an important appellate procedure lesson with the court finding the appellant waived a key argument. 

Teleflex’s U.S. Patent No. RE46,116 claims methods for using a special extension for its guide catheter. Medtronic filed a pair of IPR petitions, asking the USPTO to cancel the claims. Although the PTAB granted the petitions, it eventually sided with the patentee — agreeing that one of the asserted references did not qualify as prior art.  On appeal, the Federal Circuit has affirmed.

The basic question is whether Itou (7,736,355) qualifies as prior art against Teleflex’s patent (RE46,116). The Itou application was filed about nine-months before the Teleflex application.

Under the AIA Teleflex would clearly lose. Itou was filed first and eventually published and therefore qualifies as prior art under AIA 102(a)(2).  And,  the AIA limited 1-year grace period under 102(b)(2) would not apply since Teleflex did not first disclose the invention. But, these applications are all pre-AIA.

In this situation, Medtronic wants Itou to qualify as prior art as of its application filing date.  That means that we apply pre-AIA 102(e).  35 U.S.C. 102(e) provided that a person shall not be entitled to a patent if the claimed invention was described in a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.   Thus, Itou is prior art so long as it was filed prior to the Teleflex invention date.

Proving Invention Date.  Establishing invention date requires determining when the inventor both conceived of the complete invention and then reduced it to practice.  Conception is typically seen as the most important aspect of invention, but invention is not complete until it is reduced to practice. Conception occurs when an inventor forms a definite and permanent idea of the complete and operative invention in their mind. This is the critical inception of the invention. However, conception alone is not enough – the inventor must also reduce the invention to practice. This can occur either by actually building and testing the invention to show it works for its intended purpose (actual reduction to practice).  But, in patent law we also observe the legal fiction that filing a patent application describing the invention in sufficient detail to enable a person skilled in the art to make and use it will also qualify (constructive reduction to practice).

When proving a prior invention date, the law allows inventors to claim all the way back to their provable date of conception, so long as they also show reasonable and continuous diligence by the inventor to reduce the invention to practice.  Thus, if the inventor conceived the invention but then set it aside for a long period before filing a patent application or resuming diligent efforts to reduce it to practice, this can negate the prior invention date.  Once the invention is reduced to practice, diligence is no longer required, but the inventor must be careful not to unduly delay in filing for patent protection because it could create abandonment, estoppel, or laches issues.

In this case, the PTAB agreed with Teleflex that Itou was not prior art, finding that the invention was both actually and constructively reduced to practice before Itou’s filing. On appeal, the Federal Circuit affirmed on the grounds of constructive reduction to practice, declining to reach the issue of actual reduction to practice. Constructive reduction to practice requires (1) conception prior to the filing date of the asserted reference, and (2) reasonably continuous diligence from just before the reference’s filing until the priority application.

Here, Teleflex provided dated technical documents about the “GuideLiner” product it was developing sufficient to prove diligence and submitted declarations and other supporting evidence showing ongoing development of the invention through the filing date of the patent application.   These included records of prototypes, emails, testic documents, manufacturing prep, etc.

On appeal, Medtronic argued that the PTAB erred in finding that Teleflex established an actual reduction to practice before Itou’s filing date. Specifically, Medtronic asserted that the plain language of Teleflex’s claims requires in vivo testing, as the claims recite steps like “advancing a distal end of a guide catheter . . . through a main blood vessel to an ostium of a coronary artery.” According to Medtronic, Teleflex’s bench testing in an anatomical model was insufficient to meet this limitation and demonstrate actual reduction to practice.  In response, Teleflex contended that actual reduction to practice allows some flexibility rather than rigidly requiring that every claim limitation be performed exactly as stated. Teleflex pointed to cases like In Re Spiller finding reduction to practice despite variations from the explicit claim language. However, the Federal Circuit panel questioned whether Spiller actually supports such flexibility, and whether the Board properly construed the precedent it relied on.

Ultimately, the Federal Circuit declined to decide the issue of actual reduction to practice, affirming solely on the grounds of constructive reduction to practice since Medtronic had seemingly waived its diligence arguments on appeal through improper incorporation by reference.

Incorporation by Reference Doesn’t Work: For anyone appealing to the Federal Circuit, the waiver aspect of this case will be the most important part.   Appellants get 14,000 words in their appeal brief. Although that word length is quite a lot — it gets eaten up pretty quickly and appellants are regularly cutting arguments that they feel could be winners. Here, Medtronic attempted to incorporate 20 pages of briefing from another case by reference that detailed its argument on lack-of-diligence.  The brief itself only included a cursory statement that if the Federal Circuit vacated the diligence finding in the parallel case, it should also vacate and remand on diligence here. But, Medtronic did not substantively argue against the PTAB’s diligence analysis in the brief proper. During oral arguments, Judge Chen offered the following remarks:

We have a 14,000 word count limit to our briefing. You’re at 13,979 and on page 41 you want to incorporate 20 pages of briefing from a separate appeal, which would obviously blow right through the 14,000 word count.  So I’m trying to figure out what to do here. We’ve got 14,000 word count limit that’s being blown through. And likewise, we have a pretty strong precedent that says you’re not allowed to incorporate by reference arguments made in other documents into your briefing. So I don’t know if we can read this as a permissible incorporation by reference.

In the decision, the court concluded that the 14,000 word count limit for principal briefs under Federal Circuit Rule 32(a) along with prior precedent prohibits incorporation by reference to ensure parties fully develop their arguments within the allotted word limits. Despite Medtronic asserting the diligence issue was fully briefed in the other case, the Federal Circuit held Medtronic waived any challenges to the PTAB’s diligence determination and affirmed on the basis of Teleflex’s constructive reduction to practice. According to the court, Medtronic made a strategic decision (a bet) regarding how to allocate its words, and could not undo that choice by asking the court to consider extra-record briefing (without a successful motion to extend the word count).  Thus, while Medtronic contested the finding of diligence before the PTAB, the Federal Circuit found this challenge waived on appeal due to inadequate briefing.


Predicting Eligibility

by Dennis Crouch

I have really enjoyed reading the new article by Professors Rantanen and Datzov providing empirical evidence that eligibility outcomes are now quite predictable.  When the Supreme Court decided Bilski back in 2010, I was quite concerned about predictability and co-authored a BTLJ article with Prof. Rob Merges on the topic.  If you recall though, in Bilski the Supreme Court offered no decision making framework beyond suggesting a case by case approach.  At the time, there were only a sparse few prior cases to guide future decisions.  But a more complete legal framework was developed fairly quickly in the subsequent cases of Alice Corp and Mayo, and the lower courts decided several hundred eligibility cases that provided substantial guideposts that so often seek in our common law system.

Although I was initially surprised at their reported high affirmance rate of eligibility decisions — on reflection it has begun to make sense. The framework provided a key procedural process and hundreds of decisions gave the opportunity to work through ambiguities. In our 2010 article, Merges and I were particularly concerned about USPTO patent examiners being able to follow the atextual guidelines offered by Bilski, but the Patent Office also acted to create and then repeatedly modify its eligibility examination guidelines in a way that offered a straightforward path for non-lawyer examiners to substantially follow the law set out by the Court.

The article addresses the rhetoric of unpredictability and argues that “there is significant reason to think the popular narrative that § 101 and the Mayo/Alice framework cannot be predictably applied, particularly by judges, may be more of a misconception than an accurate narrative.”

For folks fighting through eligibility cases these days, the biggest concern is no longer unpredictability, but that the law has pushed too far against patentability.  Many like the pendulum analogy because it suggests a return — that the pendulum will swing back.

In my view, the pendulum will (and is) swinging back, but not via a change in the law.  Most of the patents that have been invalidated were those applied-for prior to the Supreme Court’s radical change in eligibility law.  Since then patent prosecution attorneys have substantially modified their approach to drafting patent applications in ways that provide more detailed technical analysis, focusing on technical solutions to technical problems, clearly defining the computer hardware elements, and tying the claims to these technical embodiments.  Likewise, patent litigators are wary of asserting claims that are likely to be found ineligible and so shy away from those potential case killers.   The result then is that I expect to see far fewer eligibility cases in the coming years, but that will reflect in a change in practice rather than another change in the law.

Design Patent Bar Now Reality

by Dennis Crouch

The USPTO is officially establishing a separate design patent practitioner bar with its final rule published on November 16, 2023 and effective January 2, 2024.  This is an historic change that opens the door to becoming a patent practitioner to a much wider audience and will likely lend itself to further growth in this specialty area. After proposing the idea in May 2023 and receiving positive feedback, the USPTO implemented the design patent practitioner bar through its rulemaking authority under 35 U.S.C. 2(b)(2).

Currently, a single patent bar governs registration for anyone seeking to practice before the USPTO in utility, plant, and design patent matters. Applicants must meet the fairly high scientific and technical requirements before being permitted to join the bar.  Of course, ornamental design is often a different creature from utility patents. Good design is now very much ensconced within the formal education — but outside of traditional engineering and science programs.  So, although these designers are often design patent inventors, they have been prohibited from becoming patent practitioners.  The new rules introduces an additional path focused on visual arts credentials. To qualify, applicants need a bachelor’s, master’s, or doctoral degree in one of the following fields or an equivalent:

  • Industrial design
  • Product design
  • Architecture
  • Applied arts
  • Graphic design
  • Fine/studio arts
  • Art teacher education

These align with degrees the USPTO currently accepts for design patent examiner roles.  Equivalent design field degrees will also be accepted on a case-by-case basis.

The setup here is that the design patent practitioner bar will be separate and distinct from the patent bar.

  • Regular Patent Bar: Can continue to prepare and prosecute utility, design, and plant patents.
  • Design Patent Bar: Can only prepare and prosecute design patents.

Design patent bar applicants will take take and pass the existing registration exam. This critical step demonstrates knowledge of patent laws, rules, and procedures. All applicants also undergo a moral character evaluation.

I like what the USPTO has done here.  I love good design, and I believe that design patent attorneys and agents can be helpful in that process in a way that circles back to increase innovation in the field.

The Predictability of the Mayo/Alice Framework – A New Empirical Perspective

By Jason Rantanen and Nikola Datzov. Professor Datzov is an Assistant Professor  at the University of North Dakota School of Law.

The Mayo/Alice framework used to determine patent eligibility has been a lightning rod for criticism since the Supreme Court’s decisions a decade ago. Some have argued that the two-step framework is inconsistent with earlier patent eligibility precedent, while others have focused their objections on its purported negative effects on innovation. But arguably the most popular narrative is the asserted fatal flaw that the framework lacks administrability and cannot be applied predictably.

Too many critics to count—including academics, practitioners, legislators, and judges—have lambasted the patent eligibility framework as an unpredictable morass of confusion. Even some judges on the Federal Circuit have labeled the eligibility framework as an “incoherent doctrine”[1] that might tempt district courts into “an effective coin toss,”[2] while others have openly confessed that “the nation’s lone patent court … [is] at a loss as to how to uniformly apply § 101.”[3] The latest legislative attempt to reframe patent eligibility is similarly premised on “extensive confusion and lack of consistency [in applying the 101 exceptions] throughout the judicial branch of the Federal Government and Federal agencies.”[4] These concerns for unpredictability are undoubtedly echoed by countless practitioners who have been in the trenches of litigating this polarizing issue. Given the particular emphasis on bringing predictability to patent law in creating the Federal Circuit, these criticisms raise a grave concern regarding one of the most important areas in patent law.

Yet, empirical analysis suggests that those claims of unpredictability may stand on shaky grounds. In an attempt to better understand whether judges have been able to predictably apply the doctrine, we analyzed the Federal Circuit’s entire body of 368 cases on § 101 from 2012-2022 at a more granular level than any prior study. To evaluate the level of predictability within § 101 jurisprudence, we used a multi-dimensional approach that considered: (1) whether lower tribunals are reaching the legally correct outcome (i.e., reversal rates); (2) whether lower tribunals are correctly applying existing law in each case (i.e., error rates); and (3) whether appellate judges demonstrate disagreement in applying the law (i.e., dissent rates).

What we found shocked us. It turns out that patent eligible subject matter jurisprudence looks remarkably like other patent law issues at the Federal Circuit and lacks the kinds of empirical hallmarks that we would expect given the rhetoric for unpredictability. In fact, under one of the most well-established metrics for measuring the predictability in the law, § 101 proved to be more predictable than other areas of patent law over the past decade.

Importantly, our goal was not to examine or argue where the line should be drawn for determining what is eligible for a patent. Instead, we just sought to evaluate whether judges can tell where the line has been drawn by the Supreme Court in Mayo. In other words, whether the Mayo/Alice framework has proven workable and predictable through ten years of litigation. As to that question, our analysis suggests that the popular narrative that § 101 and the Mayo/Alice framework cannot be predictably applied, particularly by judges might be more of a misconception than an accurate narrative.

Below are some of our key findings regarding predictability from the research study.  If you’d like to jump ahead to the draft paper itself, here’s a link:

 A Historically High Affirmance Rate

Our examination of the Federal Circuit’s body of case law on § 101 revealed that from the Federal Circuit’s perspective, the district courts and the PTO are getting the right result nearly every time, boasting an overall 87.2% affirmance rate.

Graph of affirmance rates for Section 101

Figure 1

Figure 1 shows that the Federal Circuit believes district courts and the PTO are getting the right result in a very high percentage of cases. This is especially notable given that 98.2% of the district court decisions reviewed by the Federal Circuit arose in the context of a Rule 12 motion, summary judgment, or JMOL—procedural postures in which the standard of review on appeal owes no deference to the district court.

Thinking about these numbers in context, the high affirmance rate on patent eligibility is not only a far cry from the Federal Circuit’s one-time 50% affirmance rate on claim construction, it’s higher than the Federal Circuit’s track record on obviousness. In fact, this may be the highest affirmance rate of any significant patent law issue tracked over a significant period of time.

District Courts Very Rarely Err in Their Analysis

To take a deeper look, we also examined the Federal Circuit’s analysis when it did affirm to see whether maybe the lower tribunal got the right result but for the wrong reason.  Although an analysis of affirmance rates has been an established and important marker in measuring the predictability of the law, it provides a somewhat incomplete picture of judges’ ability to apply the law predictably because it focuses only on the outcomes and not the process of making the decision. It’s possible that a judge can err in the legal analysis (or incorrectly apply a legal standard) and still reach the correct overall result—in other words, get the right result for the wrong reasons. Thus, looking beyond mere outcomes to determine how often a judge applies the correct analysis is an important perspective in determining whether a law can be predictably applied.

We found that district court and PTAB judges not only rarely get the outcome wrong, they also make very few errors in applying the law. When district courts reached the right outcome (i.e., complete affirmance on § 101), the Federal Circuit noted a mistake in the district court’s § 101 analysis a mere 4.5% of the time—and 0% of the time for PTAB judges. There were a mere 7 errors in 153 affirming opinions (excluding Rule 36 affirmances). If looking only to precedential opinions (those written for the bar and interested persons other than the parties), there were 4 errors in 67 opinions, resulting in a comparable 6.0% error rate. Overall, taking into account reversals and vacated decisions, more than 80% of the time for the district court—and 95.5% of the time for the PTAB—the judge’s Mayo/Alice analysis was error free.

This type of granular examination of appellate outcomes has been largely absent from earlier empirical studies, so it’s difficult to put the § 101 error rate in historical context. Still, the low rate of errors in district court and PTO § 101 decisions appears to be remarkably low for an area of law identified to be in crises.  Indeed, it appears to be another strong indicator that district courts and the PTO understand how to apply the law, overall.

Federal Circuit Judges Rarely Disagree Regarding § 101 Outcomes

Athena Diagnostics v. Mayo, 927 F.3d 1333 (Fed. Cir. 2019) and American Axle v. Neapco, 966 F.3d 1347 (Fed. Cir. 2020) are § 101 decisions frequently cited as exemplars of what some—including several judges on the Federal Circuit—have argued to be a complete breakdown among the Federal Circuit on how to apply § 101 law. Surprisingly, despite the attention § 101 has received, there have been almost no empirical studies to examine this question on a deeper level.

Yet, in what may be the most surprising finding from our study, in all but a few cases, Federal Circuit judges have shown remarkable agreement (93.5%) in deciding § 101 issues over the past decade. In fact, under this measure of predictability, § 101 proved to be more predictable than the other areas of patent law.  In the 368 § 101 cases decided by the Federal Circuit from 2012 to 2022, there were just 24 dissenting opinions relating to § 101. As shown below, the number of cases in which there was a dissenting opinion on § 101 has remained consistently low and peaked in 2019-2020:

Graph of dissents in Sectino 101 decisions

Figure 2

Putting the § 101 dissent rates over the past decade in historical and subject matter context further indicates that § 101 law has not been the subject of more disagreement than other areas of patent law.

Table of dissent rates at the Federal Circuit

Figure 3

The summary tables above show that the dissent rate in Federal Circuit decisions involving § 101 over the period 2012-2022 is identical to the rate among all other Federal Circuit decisions, and was lower than in non-101 patent decisions. And while the rate of dissents in § 101 opinions is somewhat higher than in all other opinions that don’t involve § 101, it’s still lower than the dissent rate in non-101 patent opinions generally and nearly identical for patent opinions arising from the district courts—likely because a substantial number of § 101 appeals are summarily affirmed. With that in mind, it’s remarkable that the dissent rate for § 101 decisions (including Rule 36 affirmances) arising from the district courts is actually lower than the court’s dissent rate in appeals from the district courts that don’t involve § 101.


More details on the methodology and analysis—as well as additional findings on the types of appeals, procedural posture of decisions, breakdowns by exception type, and invalidity outcomes—can be found in the working draft paper on SSRN: In addition to our core findings on predictability, we also provide updated data on § 101 issues studied by previous scholars. Comments are welcome, and can be communicated by email to Jason Rantanen.

[1] Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1348 (Fed. Cir. 2018) (Plager, J., concurring-in-part and dissenting-in-part).

[2] Realtime Data LLC v. Reduxio Sys., Inc., 831 F. App’x 492, 493 (Fed. Cir. 2020) (emphasis added).

[3] Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 977 F.3d 1379, 1382 (Fed. Cir. 2020) (Moore, J., concurring).

[4] Patent Eligibility Restoration Act of 2023, S. 2140, 118th Cong. § 2(3) (2023)

AI as an Inventing Tool – it’s Implications for Patent Law

by Dennis Crouch

Berkely Center for Law & Technology is hosting a great half-day virtual-conference this week: “AI as an Inventing Tool – it’s Implications for Patent Law” organized by Prof. Rob Merges, Dr. Yuan Hao (PhD), and Prof. Colleen Chien.


I’ll be there participating along with a great set of academics, government officials, law practice leaders, and tech developers.  Hope to see you online!

In a recent talk about the Future of IP, I noted that I have never been comfortable with the Winslow Tableau. The basic idea from this old CCPA case is that we assume that the PHOSITA is sitting in his shop with all the relevant prior art posted to the wall.

We think the proper way to apply the 103 obviousness test to a case like this is to first picture the inventor as working in his shop with the prior art references — which he is presumed to know — hanging on the walls around him.

Application of Winslow, 365 F.2d 1017 (C.C.P.A. 1966).  The Winslow Tableau presents an unrealistic conception of the PHOSITA possessing encyclopedic knowledge of all prior art. As Judge Rich described, the PHOSITA is envisioned sitting in a shop with all relevant references figuratively hanging on the walls around him, available for mental combination. While a useful thought experiment, this assumption of comprehensive awareness of the state of the art has always been out of touch with how ordinary creation truly occurs. However, recent advances in AI provide a more natural model for the hypothetical PHOSITA.  Importantly, LLMs know the references and have their key points accessible for dynamic consideration and analysis.

And, although AI may be an automated system, its responses are closer to the “common sense” reasoning suggested by Chief Justice Roberts in KSR rather than the discarded “automaton” approach.

With these new models, Winslow is suddenly less ridiculous and instead much more prescient.  It is then interesting to think about whether the level of skill in the art is changed by the addition of AI.  One way to answer this is ‘no’ – AI does not change the level of skill in the art in any legal sense. Rather, its addition changes the potential creation methodology to no match the level of skill already required in cases like Winslow.  The legal fiction is becoming reality.


Guest post by Hampole, Truffa & Wong: Breaking the Glass Ceiling: The Power of Female Peer Networks

Guest post by Menaka Hampole, Assistant Professor of Finance, Yale School of Management, Francesca Truffa, Postdoctoral Scholar, Stanford Graduate School of Business, Ashley Wong, Assistant Professor of Economics, Tilburg University. This post is part of a series by the Diversity Pilots Initiative, which advances inclusive innovation through rigorous research. The first blog in the series is here and resources from the first conference of the initiative are available here.

The glass ceiling — the barrier obstructing females and minorities from obtaining upper-level positions— persists. Even with decades of advancements in labor force participation and university enrollment, companies still underrepresent women in top corporate leadership roles. For instance, women constitute 40% of the workforce in the S&P 1500 companies, yet they only occupy 6% of CEO positions. The gender gap expands at every level of the corporate hierarchy.

In our recent study, we look at MBA graduates from a top U.S. business school in the last two decades, and we find a big gender gap in management roles. While almost all male and female grads step into management roles within 15 years of graduation, women have a 24% lower chance of reaching senior positions. This difference appears within a year of getting their MBA and lasts for at least 15 years, and this gap exists even when you consider factors like experience or the type of company they work for.

Figure 1. Representation in the Corporate Pipeline Among MBA Graduates in the First 15 Years Post-Graduation by Gender

Grap of probability of holding manage position by genderNotes: We plot the percentage of male and female graduates who ever held any managerial positions, a VP or Director position, SVP positions, and C-level Executive position within fifteen years since graduation. We display the 95% confidence intervals from the t-test of gender equality. Sample includes students of the graduating classes 2000-2018, excluding 2009.

If managerial talent exists equally across genders, the scarcity of women in executive roles suggests current leaders are misallocating talent.  Executives significantly shape performance and innovation outcomes within their firms, so when firms lose female talent moving up the corporate ladder, they are likely reducing employee productivity, inventive capacity, and firm value.  Furthermore, female managers can serve as role models and enact policies that lower obstacles for other women. Consequently, female leaders can foster a more gender-diverse and inclusive corporate environment. Given the potential widespread impacts of having too few women in executive roles, it’s crucial to understand what policies can help reduce the leadership gap.

Can access to a larger network of female peers in business school help women reach leadership positions?

Women can gain insights from other women on companies that support their career growth and how to make the most of benefits like maternity leave. However, connecting with men, who often have wider networks and hold powerful positions, might offer more advantages. So, it’s a real question whether female peers truly help close the management gender gap.

Our study documents that having a higher share of female peers in school has a positive impact on women’s advancement into senior leadership positions.  We find that adding 5 more women to a section of 60 students would increase women’s likelihood of achieving senior managerial positions from 39% to 45%. In contrast, there is no effect on male students. This overall effect translates into a 26% reduction in the management gender gap.

This effect is largest in male-dominated industries like tech and manufacturing, where women are underrepresented the most, suggesting that female peer networks are most important in industries where women are more likely to face barriers in accessing informal networks in the workplace.

When we looked into company features, we found that women with strong networks of female peers often get promoted to top roles in companies that are supportive of women. What’s interesting is that women tend to join these companies six to ten years after getting their MBA, around the time they might have young kids. This hints that having support from other women might be most helpful when challenges in their careers are growing.

In our interviews with female MBA graduates, many shared that their female friends offered emotional support, pointed them to job openings, gave tips about work opportunities, and advised on balancing work with family life. This feedback shows how crucial female friendships are for women’s career success. By adding more women to MBA programs and encouraging them to network together, we might finally shatter that stubborn glass ceiling.

To all the innovators and patent pioneers out there, please take note. The insights we’ve gathered from MBAs are incredibly relevant, especially in the competitive, male-dominated world of innovation. Think about it – by actively nurturing female peer networks right from the get-go with young recruits, you could help to ignite real change.  Let’s champion this approach and bring a fresh wave of diversity and creativity to the forefront of innovation.

Three main takeaways:

  1. Persistent Gender Gap in Leadership: Even with advancements in education and labor force participation, a significant gender gap persists in top corporate roles. Women make up 40% of the workforce in major companies but only hold 6% of CEO positions. This disparity is evident even among MBA graduates from top U.S. institutions, where women face a 24% lower likelihood of reaching senior positions within 15 years of graduation.
  2. Importance of Female Peer Networks: Female MBA graduates benefit significantly from having strong female peer networks during their studies. Such networks can increase a woman’s chances of attaining senior management roles, especially in male-dominated sectors like tech and manufacturing.
  3. Implications for Innovation & Patenting: The underrepresentation of women in leadership roles can reduce a company’s productivity and inventive potential. By actively promoting and valuing female peer networks from early career stages, innovators and patent professionals can drive greater diversity in leadership and subsequently benefit from broader perspectives and increased innovation.

If you find this insight compelling and want to stay informed on the latest developments, sign up for the DPI research updates today!

Guest Post by Alice Li: Tips for Strengthening Innovation Ecosystems and Technology Transfer

Guest post by Alice Li, Cornell University, Executive Director of the Center for Technology Licensing, AUTM Board Member. This post is part of a series by the Diversity Pilots Initiative, which advances inclusive innovation through rigorous research. The first blog in the series is here and resources from the first conference of the initiative are available here.

Myriad inventions in history have been created based on the foundational research done by universities and academic institutions worldwide. Consider the following examples: Google, the search engine we use every day; COVID vaccines, which saved hundreds of thousands of people amidst the pandemic; and even Honeycrisp Apples, which many enjoy daily, are all widely used inventions with direct links to academic studies. In fact, from 1996 to 2020, nearly 500,000 inventions were created by academic institutions, and more than 17,000 startups were formed based on such inventions.

Given that technology transfer is a bedrock of the innovation ecosystem, it must be an inclusive step that helps ensure equality in the innovation and commercialization process.  For this reason, the Association of University Technology Managers (“AUTM”) has developed an equity, diversity, and inclusion (“EDI”) strategy to encourage the active participation of all demographic groups in technology transfer.  As the leading association of technology transfer professionals, with more than 3,000 members and 800 institutions globally, including universities, research centers, hospitals, businesses, and governmental organizations, AUTM has a crucial role to play in ensuring that the knowledge created by academic institutions is disseminated to a broader audience at many different organizations, improving the world and drives innovation forward.

But EDI should not be considered a separate pillar or task.  Instead, for best results, EDI should be integrated into everything technology transfer managers: educate, promote, and create professional networks and connections.  To achieve these strategic goals, AUTM established an EDI Committee that reports directly to the AUTM Office of the Chair.

The EDI Committee has two prongs to its strategy: first, to promote diversity in AUTM, the network of technology transfer professionals, and second, to promote diversity in the innovation ecosystem itself, which includes all inventors, entrepreneurs, and industry partners in the community. To pursue these goals, the EDI Committee has done Member Surveys to establish EDI objectives, developed Baseline Metrics for EDI in AUTM, and provided toolkits for EDI to technology transfer offices in more than 800 institutions. A few years ago, for instance, the AUTM EDI Committee officially released the Woman Inventor’s Toolkit, followed by the EDI Toolkit released last October. AUTM’s efforts to promote EDI in the profession continue.

Thus, today, I urge all the universities, institutions, technology transfer professionals, and diverse innovators to consider, once again, AUTM’s goals to promote EDI in the innovation ecosystem. First, I ask universities, agencies, and related institutions to incorporate the Innovator EDI Data into their metrics for innovation. AUTM has collected metrics data for the past thirty years. AUTM’s comprehensive dataset will provide organizations with a strategic and holistic guide to promote diversity in their research and operations.

Second, I ask technology transfer professionals to participate in the AUTM Biannual Demographic Survey. Your participation will allow a better understanding of the demographic makeup of the technology transfer and knowledge exchange in the innovation ecosystem. Such understanding will lead to more opportunities, improvements, and advancements in our community.

Third, I ask women and diverse innovators to join mentoring programs as mentors and supporters.  Last year, the AUTM EDI Committee developed a pilot program to support the growth and careers of university professionals who are at Minority Serving Institutions (MSI) and interested in the commercialization of academic research and technology transfer. AUTM provides participants access to the AUTM community, mentorship, and Association benefits through this program. AUTM has approached more than 30 universities since the program’s initiation, and currently, twelve are actively participating in it. Also, AUTM provided up to five individuals with complimentary memberships in each TTO, an eGroup that the EDI committee members facilitate for information sharing and mentoring. Furthermore, AUTM is actively supporting other programs in the community, such as Equalize, the National Pitch Competition, and Mentor Program to empower academic women entrepreneurs. Your participation in such programs as a mentor or a supporter can provide new women and diverse innovators in the field with ample resources and practical guidance.

Fourth, I ask institutions and organizations to assist with reaching out to diverse candidates.  For instance, Cornell has started the Ignite gap funding series. The gap funding program is designed to help entrepreneur scientists and engineers start new companies. In an academic research environment, gap funding provides critical support to promising technologies and innovations with significant commercial potential, but which are still “too early” for licensing or external investment. Applications for gap funding and other programs to accelerate innovation are due in the fall.  At Cornell’s Center for Technology Licensing, we look forward to supporting future successful diverse entrepreneurs in their journey in innovation.

Collective action and joint efforts involving all stakeholders are vital to building a robust system for technology transfer and creating a diverse innovation ecosystem. Please join us in our efforts to stimulate technology transfer and promote diversity in invention.

For more information, please feel free to contact us.

  1. To incorporate Innovator EDI Data into metrics for innovation: Lisa Mueller:
  2. To get information of the AUTM Demographic Survey: Colleen Loeffler
  3. To join the Equalize Competition and Mentor Program: Kristen Leute; Nichole Mercier
  4. To assist with reaching out to diverse candidates to apply for the Ignite Gap Funding Fellow Positions: Alice Li

Main takeaways:

  1. Partner with AUTM for Tech Transfer: Many inventions and technologies came from initial studies done by universities and research institutions worldwide. Therefore, technology transfer is vital in the field of innovation. AUTM is a leading association of technology transfer professionals.
  2. Incorporate Innovator Data: To promote diversity in technology transfer, AUTM encourages you to incorporate the Innovator EDI Data into your metrics for innovation, participate in the AUTM Demographic Survey, join mentoring programs as mentors or supporters, and reach out to and educate diverse candidates for gap funding programs for entrepreneur scientists and engineers.

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