April 2025

No Provisional Rights for Expired Patents

Patent

by Dennis Crouch

In a unique decision, the Federal Circuit has dismissed an appeal seeking to obtain a patent that would have issued after its expiration date. In re Forest, No. 2023-1178 (Fed. Cir. Apr. 3, 2025).   The dismissal on jurisdictional grounds holds that the would-be patent owner (here, the inventor) has no standing to appeal because any resulting patent would have no zero patent term.  (Note - I might have written "appears to hold" since the court does not actually use the term "standing")

The focus of the decision is on a novel argument about provisional rights under 35 U.S.C. § 154(d).  Ordinarily, we think of a patentee having only inchoate rights until the patent issues. While that is generally true, "provisional rights" provide some potential of back-pay for infringement that occurs between publication and issuance.  In particular, once a patent issues, the a patentee can collect a reasonable royalty from parties were infringing the claims even while pending - so long as they were on actual notice of the application publication and the issued claims are "substantially identical" to those that in the published application.  Importantly, as suggested, these provisional rights can only be enforced retroactively after a patent actually issues.

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Judge our 14th Annual Patent Moot Court Competition

Patent

Calling IP Attorneys — Come Judge our 14th Annual Patent Moot Court Competition taking place via Zoom on April 14th and 16th, 2025. This is a memorable capstone experience for the students but it requires your expertise.

This year’s group is larger than usual and that means I need more judges. No Presidential Appointment is necessary, but you do need a JD, IP law experience, and most importantly passion for supporting the next generation of attorneys. Connect with talented law students and other judges passionate about patent and IP law; Engage with complex, current issues in patent law; etc.

I have modeled the competition after a recent pair of PTAB final written decisions in Meta v. VL (VideoLabs), both of which include a dissenting opinion by Judge McKone.  The appeals are currently pending before the Federal Circuit with both sides expected to file cross appeals.

I’ll provide a comprehensive judge’s brief and preparation meeting so that you don’t have to.

Multiple time slots available (evenings on April 14th and 16th)

Interested? Sign up here: https://lnkd.in/gZPG8Us9

Please share with colleagues who might be interested in contributing to legal education.

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Here are the IPR Decisions that serve as the basis of the moot court.

Challenging the Server Test for Image Embedding

Patent

by Dennis Crouch

McGucken v. Valnet, Inc., No. 24-1040 (Supreme Court 2025)

Photographer Elliot McGucken has petitioned the Supreme Court to review a Ninth Circuit decision involving what has become known as the "Server Test" in copyright -- law has permitted websites to avoid copyright infringement by embedding images hosted on third-party servers rather than storing and hosting them directly.  Another name for this may be the "Embedding Liability Shield." Embedded images and video can appear seamlessly on a website even though the media is not served by the site's servers.

In McGucken v. Valnet, Inc., the basic setup is that Valnet embedded on its thetravel.com site a number of links to McGucken's Instagram posts.  To be clear, the Instagram posts are authorized by the photographer, but he argues that others should not be permitted to embed his Instagram posts into their sites. The Ninth Circuit sided with Valnet, but McGucken has now petitioned the Supreme Court for review.

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The Return of Robust Discretionary Denials

Patent

by Dennis Crouch

Last week, Acting USPTO Director Coke Morgan Stewart granted Director Review and vacated the PTAB's decision instituting several inter partes reviews (IPRs) in Motorola Solutions, Inc. v. Stellar, LLC. [IPR2024-01205, -01206, -01207, -01208 Director Review Decision] Stewart's March 28 decision applies the Fintiv factors more aggressively than the Board, signaling a shift toward increased discretionary denials under 35 U.S.C. § 314(a). This is a situation where denial seems appropriate in my opinion. The Stellar's infringement lawsuit was filed in August 2024, with Motorola waiting 11 months to file IPR petitions.  District Court Judge Sam Jordan (E.D.Tx) has has already issued Markman orders and parties have filed their summary judgment. A jury trial is set for July 2025.

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Convoyed Sales: Federal Circuit Washes Away $2.6M in Patent Damages

Patent

by Dennis Crouch

The Federal Circuit’s March 2025 decision in Wash World v. Belanger, attempts to clarify an important distinction between apportionment and convoyed sales in patent damages jurisprudence, dissolving nearly $2.6 million from a jury’s $9.8 million lost profits award. Wash World Inc. v. Belanger Inc., No. 2023-1841, slip op. at 26 (Fed. Cir. Mar. 24, 2025). A jury found that Wash World’s “Razor EDGE” car wash system infringed Belanger’s U.S. Patent No. 8,602,041, which claimed a vehicle spray washer with lighted spray arms.  Adding lights is a simple transformation, but apparently the particular arrangement of flashing lights running down the length of each during vehicle entry to create a “goalpost effect” that guides drivers to position their vehicles.

The infringed claim covers a “a spray-type car wash system” that expressly recites a carriage and spray arms with their lighting system. Although other components such as dryers are traditionally part of the wash system and sold together, the claims themselves do not recite anything about the dryers or additional components.

In denying JMOL, the district court analyzed the damage award under the apportionment standards of Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978).  The judge concluded that the patentee Belanger sufficiently accounted for apportionment of lost profits between patented and unpatented features by satisfying the Panduit factors. I.e., the jury had enough evidence to reach its decision.   On appeal though, the Federal Circuit shifted focus — holding that the non-patented features required a convoy analysis under Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir. 1995). Ultimately, the court issued a remittitur — ordering the district court to shrink the ultimate award. (more…)