by Dennis Crouch

The Federal Circuit's recent nonprecedential decision in Guardant Health v. University of Washington focuses on single-reference obviousness findings.

The vast majority of obviousness cases are based upon two or more references that, when combined, teach each limitation of the claimed invention.  The key question in those cases boils down to whether a person of ordinary skill in the art would have had a sufficient motivation to combine those references to form the invention as well as a reasonable expectation of success in that endeavor.  In the single reference situation, the Federal Circuit in Guardant Health found that neither of those test make sense - particularly when elements appear together in a single embodiment in the prior art.

by Dennis Crouch

IPR institution rates under Director John Squires have begun to climb. My tracking data shows the six-week moving average rising from lows around 15% in August and September 2025 to somewhere in the range of 35-55% by late December 2025 and into January 2026. The rebound remains far below the historic average of roughly 67% that prevailed before Acting Director Coke Morgan Stewart began centralizing discretionary denial authority followed by Director Squires assumption of personal control of all institution decisions in October 2025.

Still, the uptick signals something meaningful: the IPR system is not dead, and a discernible framework for institution has begun to emerge from what initially appeared to be an era of blanket denials. The patterns in recent grants reveal that Director Squires is operating with something resembling an equitable framework that requires petitioners to go beyond the statutory "reasonable likelihood" threshold to encompass broader considerations of fairness and systemic efficiency. The USPTO's recent designation of numerous institution decisions as precedential or informative in early January 2026 provides additional clarity about the principles the Office considers settled enough to guide future practice.

by Dennis Crouch

The Federal Circuit has a new expert witness case -- this time siding with the patentee and finding that two experts were improperly excluded mid-trial. But, the case includes a sharp dissent over where to draw the line between a court's Daubert gatekeeping function and the jury's role as factfinder. Barry v. DePuy Synthes Companies, No. 2023-2226 (Fed. Cir. Jan. 20, 2026).

In the case, the experts had presented testimony that strayed somewhat from the court's claim construction and also included survey results using questionable methodology.  Writing for the majority, Judge Stark concluded that this testimony was (1) permissible applications of the court's claim construction and (2) that methodological criticisms went to evidentiary weight rather than admissibility. Judge Prost dissented, warning that the majority's approach "contravenes the principles embraced in EcoFactor and the 2023 amendments" to Federal Rule of Evidence 702 and "will undermine district courts' abilities to exercise their important gatekeeping function."

by Dennis Crouch

I only recently started using mobile check deposits.  I don't get very many checks these days, but when I do it is a real pain to drag myself to the the bank to deposit -- particularly because I don't carry my ATM card with me.  Great convenience -- and also a great patent story.

USAA is a financial services association cooperatively owned by U.S. military members, veterans, and their families. Because USAA serves military families whether stationed at home or deployed overseas to places like Iraq and Afghanistan, it does not operate a traditional branch network. This created a persistent problem: how could USAA members deposit checks when stationed far from any bank? Starting around 2005, a team at USAA began researching technology that would allow members to deposit checks from anywhere in the world using devices they already owned. The challenge was formidable: as of the 2006 priority date, the banking industry conventional wisdom was that specialized check-scanning equipment was the only way to reliably capture check images meeting the technical requirements for remote deposit under the Check 21 Act. USAA's engineers developed a system using a downloaded mobile app to assist customers in capturing compliant check images without specialized equipment, launching Deposit@Mobile in 2009 as the first mobile check deposit service offered by any U.S. bank. Within a month, it became the number one financial app in the Apple app store, with members depositing over 1.5 million checks in the first year.

• United Services Automobile Ass'n v. PNC Bank N.A., No. 25-853 (petition for cert. filed Jan. 14, 2026).

by Dennis Crouch

The Supreme Court has granted certiorari in Hikma Pharmaceuticals USA Inc. v. Amarin Pharma, Inc., No. 24-889, likely the only patent case this term. In doing so, it takes up the question of whether a generic drug manufacturer can face induced infringement liability when it markets a product using a "skinny label" that fully carves out patented uses.

The case presents the Court's first opportunity to directly address the intersection of patent inducement doctrine and the Hatch-Waxman Act's section viii carve-out provisions, which allow generics to obtain FDA approval for non-patented indications while omitting still-patented methods of use from their labeling. Hikma's generic version of Amarin's Vascepa (icosapent ethyl) received FDA approval only for severe hypertriglyceridemia, with the more valuable cardiovascular risk reduction indication carved out pursuant to section viii.

The Federal Circuit nonetheless permitted Amarin's inducement claims to proceed, finding that Hikma's marketing statements and press releases, combined with its label, plausibly alleged that Hikma encouraged doctors to prescribe the generic for the patented cardiovascular use.

The grant follows the Solicitor General's December 2025 brief recommending review, which argued that the Federal Circuit's approach threatens to undermine Congress's purpose in creating the skinny-label pathway.

In my view, the generic Hikma is likely to win before the Supreme Court.  But, the court is unlikely to create an express skinny-label exception.  Rather, I believe the court will decide the case based upon traditional inducement liability doctrine.  That means that the resolution will shape not only pharmaceutical competition but potentially the scope of inducement liability across all patent-intensive industries.

by Dennis Crouch

The Federal Circuit affirmed a PTAB obviousness rejection in In re Blue Buffalo Enterprises, Inc., No. 2024-1611 (Fed. Cir. Jan. 14, 2026), holding that the claim terms "configured to" and "configured for" mean "capable of" performing the recited function absent specification language suggesting a narrower construction. The nonprecedential decision, authored by Chief Judge Moore and joined by Judge Taranto and visiting District Judge Chun, rejected the applicant's argument that "configured to" should be construed as "specifically designed to" perform the claimed function. Blue Buffalo's application claimed a wet pet food packaging container with deformable sidewalls and an integrated tool portion for tenderizing food. The claim recited sidewalls "configured to be readily deformable" and the integrated tool having projections "configured for use in breaking up and/or tenderizing the food product." The Board construed both phrases as requiring only that the structures be capable of performing these functions, which allowed the Coleman prior art reference to anticipate the limitations. Blue Buffalo conceded at oral argument that it was not challenging the obviousness determination under the "capable of" construction, effectively staking its entire appeal on claim construction.

The case arrives at an apt moment to note that the law surrounding "configured to" claim language has become something of a dog's breakfast. Over the past two decades, prosecutors have increasingly deployed "configured to" as an alternative to means-plus-function language under 35 U.S.C. § 112(f), hoping to capture functional aspects of an invention without limiting claims to the structures disclosed in the specification and their equivalents. The appeal of "configured to" is that it sounds structural while still defining the invention by its functional results. But this strategy carries real risk. In addition to the categorization in this case, the court could have instead found that the language invokes § 112(f) after all.

At oral argument, Chief Judge Moore cut to the heart of the matter with a question that frames the entire dispute. After Blue Buffalo's counsel argued that "configured to" should mean "specifically designed to," Judge Moore responded:

My concern at a high level is that you're taking a product claim that has to have structural limitations and you're infusing an intent element. Intent. That the person had to design this structure with this intent in mind, as opposed to: we designed this structure without that intent, but it happens to actually do that. I feel like that's good enough because it's a product claim.

Oral Arg. at 3:06 (Chief Judge Moore).  Judge Taranto pressed the point further, asking whether "configured to" could become "magic words added anywhere to have the effect that you're talking about, to add this intent element." Oral Arg. at 6:40. Judge Taranto followed up with the key problem of adding an intent element into a product claim:

You [would] have to identify either the ...  defendant's designer or manufacturer, and what that entity or person was thinking about when creating this particular structure.

Oral Arg. at 7:44 (Judge Taranto).

I wanted to add a quick update here on pending Supreme Court cases.

The court has denied cert in two cases: SurfCast v. Microsoft (25-555) (R.36 case) and Vetements v. Stewart (25-215) (international translation in trademarks).  Most notably, it redistributed the skinny label case of Hikma v. Amarin (24-889) to its January 16 - a signal typically seen as increasing the likelihood of grant. Several other patent cases remain in various stages of briefing, with one presenting an unusual procedural posture.

Hikma's redistribution follows the traditional trajectory toward certiorari. The case asks whether a generic drug manufacturer that fully carves out patented uses from its FDA-approved label can face induced infringement liability based on marketing statements and publicly available information about the branded product. The Solicitor General filed a supportive brief in December 2025 recommending that the Court grant review, arguing that the Federal Circuit's approach creates uncertainty about the scope of protection the Hatch-Waxman framework provides for skinny-label generics. See Dennis Crouch, Label-Plus Liability: The Government Warns the Federal Circuit Misread Hatch-Waxman, Patently-O (Dec. 2025). Cases receiving favorable CVSG responses historically have high grant rates, and redistribution to a second conference further increases the odds.

by Dennis Crouch

Director Squires has designated as precedential a new decision restricting parallel IPR petition practice at the PTAB. In PacifiCorp v. Birchtech Corp., IPR2025-00687, Paper 40 (P.T.A.B. Jan. 12, 2026), the Director vacated institution decisions in four inter partes review proceedings where petitioners had filed two petitions against each of two patents. The petitions divided their invalidity arguments according to two separate invalidity theories: (a) pre-priority-date prior art and (b) intervening art that required challenging the patent's priority claim. Director Squires held that this parallel-petition strategy was not justified because petitioners had ample room in each petition to present alternative arguments. The decision follows and cites Acting Director Stewart's June 2025 decision in CrowdStrike, Inc. v. GoSecure, Inc., IPR2025-00068, Paper 25 (P.T.A.B. June 25, 2025) (informative), which similarly vacated dual institutions, but the precedential designation of PacifiCorp nominally converts this guidance into binding Board practice.

A major caveat: the precedential status of this decision does not actually constrain USPTO institution practice since institution decisions are no longer decided by the Board but rather by Dir. Squires himself.  To borrow from James Madison in Federalist No. 48, this designation is a mere 'parchment barrier.' It provides the appearance of structural constraint, but the Director holds the power to both legislate the rules and decide the cases. And, as the government recently argued before the Federal Circuit, the Director is not bound by PTAB precedent. One might recall the apocryphal boast attributed to Louis XIV: "L'État, c'est moi." Designating a decision as binding on "the Board" is a semantic distinction without a difference when the Director is the entire patent office; or as it were, "L'Office, c'est moi."

Second Decision: Director Squires has also issued an informative decision in Top Glory Trading Group Inc. v. Cole Haan LLC, IPR2025-01395, Paper 18 (P.T.A.B. Jan. 12, 2026), refusing discretionary denial in a design patent case.  Petitioner The Patentee had argued that settled expectations should shield the patent from review, but the Director rejected this argument based upon the unique design patent circumstances.  In particular, the Federal Circuit's 2024 decision in LKQ Corp. v. GM Global Technology Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024), fundamentally changed design patent obviousness doctrine and thus removed assurances that the patent was properly examined for obviousness.

Notably, the decision confirms that settled expectations  generally remains an important discretionary consideration under current USPTO policy, but clarifies that a significant change in law can overcome reliance-based arguments.

by Dennis Crouch

The PTAB is likely to undergo a dramatic transformation in 2026 based upon the convergence of two parallel developments.  (1) The ex parte appeal inventory has plummeted from approximately 27,000 pending appeals in FY2012 to under 3,000 today, with the trajectory suggesting near-zero inventory within months. (2) Simultaneously, Director John Squires has effectively shut down inter partes review through aggressive use of institution denials. The combination means the PTAB's role is shrinking on both fronts, raising fundamental questions about what happens to an institution built for a workload that no longer exists.

The workforce implications are stark. Before President Trump's inauguration, the PTAB employed approximately 230 Administrative Patent Judges plus roughly 120 support staff. That number has already dropped to fewer than 200 APJs through DOGE attrition and early retirement incentives. But I believe this reduced headcount is still dramatically oversized for the emerging workload. 

by Dennis Crouch

In Technology in Ariscale, LLC v. Razer USA Ltd., No. 2024-1657 (Fed. Cir. Jan. 6, 2026), the Federal Circuit affirmed the district court's judgment that claims 1 and 14 of U.S. Patent No. 8,139,652 are invalid under 35 U.S.C. § 101 for claiming patent-ineligible subject matter. The nonprecedential decision, authored by Judge Cunningham, illustrates continuing difficulty patentees face when attempting to frame mathematical signal processing operations as concrete technological improvements. The case also demonstrates how a patent's own specification can undermine eligibility arguments in situations where the disclosed benefits do not map directly to the actual claim language.

by Dennis Crouch

Things look pretty thin. The Supreme Court has not granted certiorari in any patent cases this term and only four are still pending before the Court. But the ones that are pending include some important questions. Of the four, one stands out as the most likely candidate for certiorari: Hikma Pharmaceuticals v. Amarin Pharma, a Hatch-Waxman induced infringement case that received a supportive call-for-the-views-of-the-Solicitor-General (CVSG) response. The January 9, 2026 conference also includes one other patent cases along with one trademark dispute. A two additional patent cases remain in briefing: Lynk Labs v. Samsung and Agilent v. Synthego.

by Dennis Crouch

The Patent Trial and Appeal Board (PTAB) has doubled its rate of reversing Section 101 rejections since Director John Squires took office, according to my new analysis of ex parte appeal decisions involving eligibility challenges from 2024 and 2025.  The reversal rate, which hovered between 8% and 12% for most of 2024 and early 2025, jumped to 18% in October 2025 and spiked to 29% in November. A recent rehearing decision in Ex parte Mercer, Appeal 2024-002371 (PTAB Oct. 31, 2025), illustrates one aspect of the Board's new approach: demanding evidentiary support for findings that claimed elements are "well-understood, routine, conventional activity" under Alice step two.

The chart above shows the percentage of Section 101 rejections reversed by the Board (without a new ground of rejection) in ex parte appeals, by month.  As I discussed in October, the Board's Section 101 reversal rate began climbing shortly after Director Squires took office. Dennis Crouch, PTAB Responds to New Director with Increased § 101 Reversals, Patently-O (Oct. 2025). The trend has accelerated. The November 2025 reversal rate of 29% represents nearly a threefold increase from the rates that prevailed through most of 2024.

by Dennis Crouch

The USPTO issued ~325,800 utility patents in calendar year 2025, a figure virtually unchanged from the ~325,600 issued in 2024. This stability marks another year in what has become a post-pandemic plateau for utility patent issuances, with annual totals hovering around this mark since 2021. The days of dramatic year-over-year growth appear to be behind us, at least for now.  Over the past two years, allowance rates have also remained virtually unchanged.

Design patents tell a different story. The 52k design patents issued in 2025 represent a 10% increase over 2024 and mark the highest annual total on record. This growth reflects the continued global importance of design protection, with non-U.S. applicants increasingly seeking design patent rights in the American market. The design patent surge stands in contrast to the flat utility numbers and suggests that different forces are shaping these two branches of patent protection.