August 2025

The Federal Circuit’s Heavy Lifting on Automation Patents

Patent

by Dennis Crouch

In a decision that should provide welcome clarity for mechanical device patents, the Federal Circuit reversed a district court's dismissal of patent infringement claims involving automated exercise equipment, holding that claims incorporating an electric motor to automate previously manual dumbbell weight selection are not directed to abstract ideas under Alice step one. PowerBlock Holdings, Inc. v. iFit, Inc., No. 24-1177 (Fed. Cir. Aug. 11, 2025).  While the decision provides a victory for mechanical automation patents, the court's reasoning appears to turn primarily on the physical nature of the claimed system - using an electric motor to move mechanical components.

A few issues buried inside:

  • Mechanical vs. software distinction - Court emphasized the physical nature of the invention (electric motor moving mechanical components) as distinguishing it from purely software-based automation patents. In other words physical automation is much more likely eligible.
  • CAFC Erred in decided on narrow claim - Court focused analysis on detailed claim 1 then summarily declared broader claim 20 also eligible, despite parties arguing the claims separately and meaningful distinctions between them.  I see this as an error that should get a rehearing.
  • Section 101 boundary warning against ignoring old elements - The decision included an explicit caution to "parties and courts" against conflating patent eligibility with novelty/obviousness inquiries by ignoring conventional elements in the eligibility analysis.  The interesting bit is that the court inverted quotes from Mayo and Flook to justify its statements.

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Rapunzel, Rapunzel, Let Down Your Generic Hair (and Let the Supreme Court In)!

Patent

by Dennis Crouch

Rebecca Curtin, an IP-focused Suffolk law professor and a parent who purchases princess dolls, is setting up to file her petition for writ of certiorari to the Supreme Court on her pending trademark case.  In Curtin v. United Trademark Holdings, Inc., No. 23-2140 (Fed. Cir. May 22, 2025), the Federal Circuit affirmed the TTAB dismissal of Curtin’s opposition to United Trademark Holdings’ application to register “RAPUNZEL” for dolls and toy figures under International Class 28. Curtin had challenged the mark as generic, merely descriptive, and failing to function as a trademark – arguing that registration refusal is necessary to protect the public’s right to use common language to describe categories of goods. The Federal Circuit’s ruling, however, concluded that consumers like Curtin lack statutory standing to bring such challenges under 15 U.S.C. § 1063, effectively limiting opposition proceedings to commercial actors with competitive interests in the marketplace.

Any person who believes that he would be damaged by the registration of a mark upon the principal register . . . may, upon payment of the prescribed fee, file an opposition . . .

The statute – quoted above – appears quite broad, but the Federal Circuit has tightly limited its application.  Curtain’s brief is now due October 3, 2025.

The case represents a significant departure from earlier Federal Circuit precedent and raises fundamental questions about the scope of public participation in the trademark registration process. (more…)

USAA v. PNC: Costume Changes in the IPR Theatre

Patent

by Dennis Crouch

Last week a friend of mine was stopped by the police for jaywalking across Ninth Street here in Columbia, Missouri. If you know that block by Sparky's, you know it functions almost like a pedestrian mall. She was asked to sit on the curb while the officer wrote the ticket -- meanwhile a dozen other folks made the same cross‑over. Same place, same manner of crossing, but only one citation. The experience was mildly absurd and somewhat humiliating and it captures a basic fairness intuition that also animates administrative law: treat like cases alike.

That is the theme of a new petition for certiorari in USAA v. PNC, arguing that the USPTO's IPR decision was "arbitrary and capricious" because it failed to "justify a different result reached on saliently similar facts, but involving a different party."  [20250805161943722_1. Petition][20250805161952153_1a. Petition Appendix]

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CAFC: Even Anticipation Requires Explanation

Patent

by Dennis Crouch

American Science and Engineering v. Stewart, No. 23-2127 (Fed. Cir. 2025)

In this short non-precedential opinion, the Federal Circuit vacated and remanded the PTAB's anticipation conclusion -- finding too many gaps in the Board's analysis.  The invention here is an X-Ray inspection system used for moving objects.  The claims require two "pencil-beams" shot in specific perpendicular directions with reference to the object's direction of motion. Detectors are then used to collect the scattered radiation and integrate the overlapping bi-directional results.  In the IPR, the PTAB found a number of claims anticipated by "Seppi" and AS&E appealed - arguing that the finding lacked substantial evidence.

The central complaint is that the Board failed to explain its intermediary fact finding -- i.e., that "the Board failed to find Seppi’s scatter detectors can detect scattered radiation from two perpendicular pencil beam sources."

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Red-Lining Revelations: Edits between Patent Families Continue to be Highly Relevant to Claim Construction

Patent

by Dennis Crouch

The Federal Circuit recently expanded its doctrine associated with specification changes in family member patent applications -- using minor changes in the specification justify differing claim construction across a patent family.  FMC Corporation v. Sharda USA, LLC, No. 24-2335 (Fed. Cir. Aug. 1, 2025).  This is helpful for careful patent attorneys, but also requires care when drafting non-provisional applications claiming priority back to a provisional.  Notably, in both FMC and the 2024 DDR case, the construction hurt the patentee.

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Exception Meets Exception: The Federal Circuit’s Collateral Estoppel Morass

Patent

by Dennis Crouch

The Federal Circuit has denied en banc rehearing in Kroy IP Holdings, LLC v. Groupon, Inc., leaving in place a February 2025 panel decision that significantly limits the collateral estoppel effect of Patent Trial and Appeal Board (PTAB) unpatentability determinations. The denial includes contrasting from Chief Judge Moore and Judge Dyk. [23-1359.ORDER.8-1-2025_2553055]

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OED: Supreme Court Petition Challenges USPTO’s Moral Character Standards

Patent

by Dennis Crouch

A former USPTO patent examiner has petitioned the Supreme Court to review his exclusion from practicing before the USPTO.  Shah Behnamian argues that the USPTO wrongfully denied his application to register as a patent attorney based on a disciplinary suspension that he claims was discriminatory retaliation. The case raises some questions about how the USPTO evaluates the moral character of former employees seeking to practice before the agency, and whether patent examination itself constitutes a "profession" warranting certain procedural protections under federal regulations. Behnamian v. Coke Morgan Stewart, No. 25-5251 (U.S. July 26, 2025) (Behnamian Petition) (Behnamian Appx).

Behnamian worked as a patent examiner from 2009 until May 2020, advancing to GS-14 level primary examiner with consistently outstanding performance ratings until close to the end of his employment. He ultimately resigned following what he alleges was discriminatory suspension related to his wife's pregnancy.  In particular, in 2019, he was charged with being Absence Without Leave (AWOL) for 30 hours and 15 minutes over several days between April and June 2019, while still allegedly logging hours.  He received a five-day suspension that he served in March 2020 and resigned a couple of months later.

After resigning, Behnamian applied to practice before the USPTO as a patent agent.  The USPTO Office of Enrollment and Discipline initially granted his application, but then reversed course after learning (1) about the suspension that (2) Behnamian did not disclose in his registration application.  Behnamian has been pursuing registration since then, in litigation that has now reached the Supreme Court.

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Mandamus Denied: Fintiv’s Trial Moves Forward

Patent

by Dennis Crouch

In a brief order, the Federal Circuit has denied Fintiv's mandamus petition seeking relief from Judge Alan Albright's decision to move forward with an expedited trial in Fintiv v. Apple.  Jury selection started this week and the trial is set to begin on Monday, August 4, 2025.

Bravo to the Federal Circuit for handling this efficiently.

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Federal Circuit Extends EcoFactor Framework to Patent Damages Apportionment in Jiaxing Decision

Patent

by Dennis Crouch

The Federal Circuit's decision in Jiaxing Super Lighting Electric Appliance Co. v. CH Lighting Technology Co., decided July 28, 2025, represents the first significant application of the court's recent en banc EcoFactor decision to patent damages expert testimony.  The appellate panel vacated the $14 million damages award and remanded for a new trial once the district court applies EcoFactor's heightened reliability standards to evaluate the damages expert's testimony regarding apportionment of portfolio license agreements.

Separately, the court also reversed a JMOL of no-invalidity regarding two other patents -- finding that the district court abused its discretion by excluding key evidence that would have supported the invalidity defense.  In the post, I take these issues in reverse order - first the JMOL then Damages.

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