Guest Post by Profs. Masur & Ouellette: Private Third-Party Sales as Prior Art

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Guest post by Professors Jonathan S. Masur (UChicago Law) and Lisa Larrimore Ouellette (Stanford Law).

In our 2024 Stanford Law Review article, “Real-World Prior Art,” we argued that the doctrines surrounding the public-use and on-sale bars—categories of prior art that we collectively called “real-world” prior art—were in some respects confused and misaligned. One of our arguments was that private sales—sales in which the invention has not been put into public use or led to the creation of some other type of prior art—should not provide the seller with a safe harbor against prior art under post-AIA 35 U.S.C. § 102(b)(1)(B), because a private sale by itself does not “publicly disclose” the invention per the terms of the statute. Not long after the publication of our article, the Federal Circuit held just that, in an excellent opinion by Judge Dyk, Sanho Corp. v. Kaijet Tech. Int’l Ltd., 108 F.4th 1373 (Fed. Cir. 2024).

A related argument in our paper—perhaps the central argument—was that the on-sale bar should be “party-specific.” That is, a sale by Aleida, by itself, should not bar independent inventor Bruno from obtaining a patent. Of course, the sale will often lead to the buyer putting the invention into public use, or generate a printed publication, or create some other type of prior art against Bruno. But the sale by itself should not bar Bruno. In our paper, we offered a suite of reasons why this should be the case:

  • Unlike the public-use bar (which is about protecting the public’s reliance interests), the on-sale bar is animated by the goal of preventing any one party from obtaining monopoly profits for more than the twenty-year statutory patent term. Accordingly, the principle behind the on-sale bar is not implicated if Aleida makes a sale but then Bruno files for a patent.
  • For decades, dating back to the famous Learned Hand opinions in Metallizing v. Kenyon Bearing and Gillman v. Stern, and including the canonical 1983 Federal Circuit case Gore v. Garlock, the courts of appeals have treated instances of secret commercial use as party-specific. Only the party engaged in the commercial use was barred from later obtaining a patent. Secret commercial use is best understood as a species of putting the invention on sale, so the same principle that applies to secret commercial use should apply to the on-sale bar writ large.
  • A private sale does not publicly disclose the invention or enrich the store of public knowledge—that’s why it doesn’t trigger the § 102(b)(1)(B) safe harbor. Treating the on-sale bar as party-specific thus creates incentives for otherwise-secret inventions to be publicly disclosed by allowing a second party to patent the invention.
  • If the on-sale bar were not party-specific, an odd situation could arise in which Aleida made a private sale, then Bruno immediately filed for a patent, and then Aleida immediately filed for a patent, and neither of them was able to obtain a patent. Aleida’s sale would bar Bruno but not protect Aleida under § 102(b)(1)(B). Aleida would then be barred by Bruno’s patent filing. This would contradict the intended structure of the America Invents Act, in which the first party to publicly disclose the invention should be entitled to a patent.

As it turned out, the caselaw in this area was highly muddled. On several occasions, the Federal Circuit had stated that the on-sale bar was party-specific and would bar only the party that made the sale. On several other occasions, the Federal Circuit had stated that the on-sale bar was not party-specific and would bar everyone. At the same time, all but one of the cases in which the Federal Circuit stated that the bar was party-specific involved an additional type of prior art—the sale had led to public use, or a printed publication, or some other type of prior art. That called into question whether the Federal Circuit had really intended to hold that the sale by itself was enough to bar third parties from patenting. The situation in the district courts was no clearer, with cases going in every direction—including on October 23 in the District of Delaware. We closed that section of our paper with the plea: “At minimum, the court should clarify this area of law definitively, lest practitioners and lower courts remain at sea.”

An opportunity has arisen for the Federal Circuit to do just that. In Cellulose Material Solutions v. SC Marketing Group (2024), a judge in the Northern District of California held on summary judgment that an April 2016 purchase order from a company called Thermal Shipping invalidated a patent filed in June 2016 by a separate company called Cellulose Material Solutions. The court also stated that Thermal Shipping did not actually deliver the invention to its customer until July 2016, after Cellulose’s filing date. Accordingly, the only prior art that existed as of the time of Cellulose’s filing was Thermal Shipping’s third-party sale—the invention could not yet have been put into public use. Cellulose has appealed the decision to the Federal Circuit, arguing that the April 2016 purchase order cannot, on summary judgment, be held to invalidate its patent under § 102(a)(1) and the § 102(b)(1) exceptions, including due to disputed factual issues.

We filed an amicus brief supporting Cellulose, arguing that the district court got the law wrong and urging the Federal Circuit to clarify, definitively, that the on-sale bar is party-specific and third-party sales, by themselves, do not bar unrelated inventors from obtaining patents. We are grateful to the excellent faculty and students at the Juelsgaard Intellectual Property and Innovation Clinic at Stanford Law School who helped write and file the brief for us. We have no financial interest in the outcome; we would simply like to see the law clarified in a sensible way, and we hope the Federal Circuit sees the issues as we do!

National Security vs National Treatment: The USPTO’s Ongoing China Problem

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by Dennis Crouch

I was thinking more about the USPTO’s recent embrace of strict real party-in-interest (RPI) requirements for inter partes review (IPR) petitions — and particularly the explicitly stated national security justification.  Director John Squires’s October 28 memorandum names various Chinese entities who have been IPR petitioners and their designation by the Department of Commerce as being adversarial to he interests of the U.S.  Although not stated expressly in the Squires memo, the implication seems clear to me that the agency intends to scrutinize and potentially deny IPR petitions filed by Chinese companies or entities with connections to the Chinese government.  This approach, however laudable its security motivations might be, runs headlong into longstanding U.S. treaty obligations under international intellectual property law. See also, How the AIA Violates TRIPS (2012).

The Paris Convention for the Protection of Industrial Property (1883) and the WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (1994) both mandate that foreign nationals receive treatment no less favorable than domestic nationals in all matters of intellectual property protection, including the procedures for challenging patents. Under TRIPS Article 3, this national treatment obligation extends explicitly to matters affecting the availability, acquisition, scope, maintenance, and enforcement of intellectual property rights.

An IPR proceeding before the USPTO is precisely such a matter. If the USPTO uses RPI disclosures to deny Chinese entities access to IPR while U.S. entities face no equivalent barrier, the differential treatment appears to violate the key national treatment principle that has been centerstage of patent rights for almost 150 years.

National Treatment in Patent Law

The national treatment principle requires that countries treat foreign patent applicants, patent owners, and patent challengers at least as favorably as they treat their own nationals. This obligation traces back to Article 2 of the Paris Convention (1883), which guarantees foreigners "the same protection and the same legal remedy" for patent rights as locals receive. The TRIPS Agreement (1994) reinforced this mandate, requiring WTO members to provide equal treatment in all aspects of intellectual property protection, including administrative procedures for challenging patents.

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PTAB Responds to Director Squires with 101 Reversals

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by Dennis Crouch

The PTAB has demonstrated a striking pivot in its treatment of Section 101 eligibility rejections during October 2025 -- the first month following newly confirmed USPTO Director John Squires' immediate policy interventions on patent eligibility. New data reveal that the PTAB has dramatically reduced its issuance of new grounds for rejection under Section 101 while simultaneously increasing reversals of examiner 101 rejections at unprecedented rates.  ​

The chart below looks at PTAB decisions involving Section 101 eligibility from the same one-month period across four consecutive years.

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USPTO Restores Strict RPI Requirements for IPR Petitions

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by Dennis Crouch

In a memorandum issued Oct 28, 2025, USPTO Director John Squires designated Corning Optical Communications RF, LLC v. PPC Broadband Inc., IPR2014-00440, Paper 68 (PTAB Aug. 18, 2015) (except for § II.E.1) as precedential, formally restoring the Office's prior practice of requiring petitioners to identify all real parties in interest before IPR institution.  This move was foreshadowed by last month's de-designation of SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020), which had relaxed enforcement of the RPI requirement based on policy concerns about the difficulty of determining RPIs in many cases.

The America Invents Act provides that the USPTO may consider an IPR petition  "only if" it "identifies all real parties in interest." 35 U.S.C. § 312(a)(2).  This mandatory language indicates that the the agency must make some consideration of the RPI issue - but the primary questions are (1) whether RPI must be figured out prior to institution; and (2) whether the patentee can amend a petition that contained a faulty RPI statement.  The new answers here are (1) yes; and (2) no amendment.

The result here is opening the door to more IPR petition denials. And, in many cases, refiling will be barred under the 1-year SOL.

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When Good Writing Makes Bad Patents: The Synonym Trap in Claim Construction

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by Dennis Crouch

The Federal Circuit's recent decision in Aortic Innovations LLC v. Edwards Lifesciences Corporation, No. 2024-1145 (Fed. Cir. Oct. 27, 2025) is a bit of a cautionary tale for patent drafters. It is essentially the difference between careful writing and careful patent writing.

Writing vs Patent Writing: When I write a blog post, I try to use varied vocabulary and synonyms to create more engaging and nuanced text.  This is also helpful for rounding out context and characters.  But, that approach is in direct conflict with the precision that is sometimes needed for patent claiming where consistent terminology provides clarity and varied usage can create unintended limitations.  In this case, the court affirmed a claim construction narrowing "outer frame" to mean "self-expanding frame" based on the specification's interchangeable use of these terms.

Aortic Innovations asserted patents are directed to transcatheter aortic valve replacement devices. The patents claimed dual-frame configurations with an "outer frame" and an "inner frame" working together. The district court construed "outer frame" to mean "self-expanding frame" (a frame using shape-memory material that springs back to expanded form) rather than its seemingly broader plain meaning that might encompass both self-expanding and balloon-expandable frames (frames requiring balloon inflation to expand). Based on this construction, the parties stipulated to non-infringement.

The Federal Circuit's analysis turned on whether the specification's use of terminology constituted implicit lexicography that redefined "outer frame" to require self-expansion. Under Federal Circuit precedent, a patentee can act as lexicographer by explicitly defining claim terms in the specification or by an implicit definition.  Although the Federal Circuit describes this standard as quite strict (requiring a definition ‘so clear’ that it equals an explicit one), the Aortic court illustrates how that threshold can be satisfied quite easily in practice.

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Instacart Challenges USPTO’s Discretionary IPR Denials in Seventh Pending Mandamus Petition

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by Dennis Crouch

In re Maplebear Inc. (d/b/a Instacart), No. 26-105 (Fed. Cir., petition filed Oct. 21, 2025), adds another voice to the chorus of technology companies asking the Federal Circuit to rein in the Patent Office's increasingly restrictive approach to IPR institution. The mandamus petition was filed a few days after the USPTO published a Notice of Proposed Rulemaking (NPRM) that further curtails access to inter partes review (IPR) proceedings, and argues that the denial of its institution was improperly based upon grounds not supported by the statutory framework.  The petition argues that Dir. Stewart's novel denial criteria were imposed without the notice-and-comment rulemaking required by the Administrative Procedure Act, exceed the Director's statutory authority under 35 U.S.C. § 314(a), and were applied retroactively to Instacart's petition in violation of due process. The petition argues that the NPRM is tacit admission of the rulemaking requirement.

The Maplebear case is the seventh mandamus on the same issue -- arguing that the USPTO's broadened discretionary denial approach is ultra vires. (SAP, Motorola , Google, Samsung, HighLevel, SanDisk, Western Digital, Cambridge Industries, and now Instacart).  These petitions are all sitting before the Federal Circuit - none have been decided yet.  The wave began after Acting Director Coke Morgan Stewart rescinded former Director Kathi Vidal's June 2022 guidance memoranda, which had provided "safe harbors" for petitioners who stipulated not to pursue the same prior art in parallel litigation (so-called Sotera stipulations).  Following that rescission, the PTAB expanded its use of discretionary denials based on expanded Fintiv factors, which balance whether to institute IPR when parallel district court litigation is pending.  But then the policy shift went well beyond Fintiv with Acting Director Stewart introducing two additional discretionary denial grounds through individual PTAB decisions rather than formal rulemaking.

  • Settled expectations: IPR petitions are denied if the challenged patent had been in force for several years (roughly seven+ years in practice), on the theory that patent owners develop stronger reliance interests as their patents age.
  • Roadmapping: IPRs were denied if any prior party (related or unrelated to the current petitioner) had previously challenged the same patent, on the theory that later petitioners would impermissibly benefit from the roadmap provided by earlier proceedings.

These two factors represented a dramatic departure prior IPR practice with the result of hundreds of IPR institution denials.

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Empty Formalism: How Patent Eligibility Lost Touch with Preemption

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by Dennis Crouch

Earlier this year, the Federal Circuit decided its first "do it on AI" case - holding that Recentive Analytics' inventions were ineligible. The key patents at issue focused on training machine learning models for specific applications (event scheduling and network maps).

Recentive has now petitioned the Supreme Court for writ of certiorari.  Conventional wisdom is that a good certiorari petition needs to show the legal error below and also show why the case is important and timely.  The petition follows this dual framing strategy: (1) a doctrinal claim that the Federal Circuit has abandoned preemption as the touchstone of patent eligibility; and (2) a policy argument tied to what I think of as the "new great game" and what the Trump Administration calls "Winning the AI Race."  The case also arrives at the Supreme Court as the USPTO has begun to move aggressively toward limiting its use of eligibility in patent prosecution.

The petition particularly asks whether eligibility doctrine requires model-architecture improvements, whether it is enough to create a practical tool by applying machine learning to new data environments.

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Executive Branch Ethics: Why PTAB Judges Can Own Stock That Would Disqualify Article III Judges

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by Dennis Crouch

In Centripetal Networks, LLC v. Palo Alto Networks, Inc., No. 2023-2027 (Fed. Cir. Oct. 22, 2025), the Federal Circuit held that an administrative patent judge's stock ownership in petitioner did not required vacatur of the PTAB institution and final written decisions.  The case is almost exactly parallel to a prior federal circuit decision vacating a $1.9 billion district court judgment -- with the court explaining the difference being that Article III judges are held to a different ethical standard than PTAB judges.

Although the patentee lost lost the recusal argument, it won on a separate argument -- that the PTAB failed to consider specific evidence of copying in its obviousness analysis. This part of the case thus reinforces the idea that secondary considerations evidence must always be evaluated if presented.

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Call for Applications: 2026–2027 Thomas Edison Innovation Law & Policy Fellowship

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By Dennis Crouch

The University of Akron School of Law’s Intellectual Property Policy Institute (IPPI) is now accepting applications for the 2026–2027 Thomas Edison Innovation Law & Policy Fellowship—a year-long, non-resident program supporting rigorous scholarship on intellectual property, creativity, and innovation law.

Now entering its twelfth year, the Edison Fellowship brings together a small group of U.S. scholars for three intensive, invitation-only roundtables with senior commentators including Professors John Duffy, Erika Lietzan, Michael Risch, and Mark Schultz. Fellows develop a research project from proposal to near-publication, producing a paper suitable for submission to a law or peer-reviewed journal by the end of 2027.

The fellowship provides travel and lodging for in-person sessions and a $3,000 honorarium upon completion of program requirements. Applications are open to tenure-track or tenured law and economics professors, Ph.D. scholars, and practitioners pursuing research agendas in IP or innovation policy.

Application materials—a research proposal (max 5 pages) and CV—should be submitted as a single PDF to IPPI@uakron.edu by Sunday, November 23, 2025 (5:00 p.m. ET).

More information: https://blogs.uakron.edu/ualawip/edison-fellowship/

2025 Economics Nobel: What the Industrial Revolution Teaches About Patent Policy

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by Dennis Crouch

Economic historian Joel Mokyr recently received the 2025 Nobel Prize in Economics (shared with Philippe Aghion and Peter Howitt) for reshaping our understanding of why historic sustained technological progress and economic growth emerged in Europe in the 1700s.  For patent law scholars and practitioners, Mokyr's work offers critical historical perspective on a question that echoes through modern IP policy debates: what institutional arrangements best promote innovation? His historic answer from the Industrial Revolution push against any patent-centric narrative, but still argue that knowledge dissemination is the key factor.

Mokyr's central insight is that the explosion of sustained economic growth beginning around 1750 resulted from an unprecedented accumulation and circulation of what he terms "useful knowledge." Joel Mokyr, Intellectual Property Rights, the Industrial Revolution, and the Beginnings of Modern Economic Growth, 99 Am. Econ. Rev. 349 (2009). This useful knowledge encompasses both propositional knowledge (understanding laws of nature and scientific principles) and prescriptive knowledge (understanding how to do things through practical techniques and skills). What made the Industrial Revolution revolutionary was not simply the existence of clever inventions, but rather the creation of positive feedback loops between scientific understanding and practical application, amplified by new institutions and cultural norms that encouraged the wide dissemination of both types of knowledge. The Enlightenment subsequently fostered what Mokyr calls an "Industrial Enlightenment" where artisans began engaging with natural philosophy and knowledge became viewed as a public good meant to improve human welfare rather than a proprietary secret to be guarded.

At this time, encyclopedias, technical journals, public lectures, and open demonstrations allowed practical knowledge to spread rapidly. The Royal Society of Arts promoted useful inventions through prizes and encouraged inventors to publish their methods rather than seek patents. Scientific academies in France and elsewhere operated similarly, offering pensions and honors to inventors who contributed to public knowledge. What emerges from Mokyr's account is a picture of innovation as fundamentally a social and cumulative process, with inventors standing on the shoulders of giants, as captured by Newton's famous phrase.

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Supreme Court on Patents Fall 2025

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by Dennis Crouch

The Supreme Court's docket heading into its November and December conferences includes six pending certiorari petitions focusing on patent law and Federal Circuit procedure. I have loosely ranked them here according to some combined score that considers both the importance of the case and its likelihood of being granted certiorari.

The leading contender is Hikma Pharmaceuticals USA Inc. v. Amarin Pharma, Inc., No. 24-889, which asks whether a generic drug manufacturer that fully carves patented uses out of its FDA-approved label can nonetheless face induced infringement liability simply by calling its product a "generic version" of the brand-name drug or referencing publicly available information about the branded product's sales. The petition challenges a Federal Circuit decision that permitted inducement claims to proceed even when Hikma's FDA-approved label omitted all direct references to Amarin's patented method of use. Under the Hatch-Waxman Act's framework, generic manufacturers can obtain approval with so-called "skinny labels" that exclude patented indications, allowing them to market their products for unpatented uses only. 35 U.S.C. § 271(e)(2).

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Automated Search Pilot: USPTO’s First Step Toward AI-Assisted Examination

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By Dennis Crouch

The USPTO Automated Pre-Examination Search Pilot Program launched today.  Here is how it works: Applicants filing original utility applications can petition to receive an Automated Search Results Notice (ASRN) before human examiner review. The pilot is currently limited to only 1,600 applications over the next six months. [PTO-P-2025-0011].  The ASRN program represents a modest but significant implementation of AI-assisted examination concepts I explored in a February 2025 proposal for pre-filing certification. While my proposal envisioned a comprehensive automated pre-filing examination, the ASRN happens after filing.  While both approaches share the core insight that automated prior art analysis before human examiner review can streamline prosecution and provide applicants with earlier intelligence about patentability, the timing shift from pre-filing to post-filing reflects the USPTO's preference particularly for streamlining the examination processes. This first step allows the agency to evaluate AI performance within established quality frameworks before considering more radical reforms.

To participate, applicants must file original, noncontinuing, nonprovisional utility applications electronically through Patent Center and enroll in the Patent Center e-Office Action Program. The petition also requires a $450 petition fee under 37 CFR 1.17(f) (discounted for small/micro entities) that should be filed with the application. The USPTO will process petitions after pre-examination processing completes, granting the petition if eligibility requirements are met or dismissing it without opportunity to correct deficiencies.

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Assignment of Future Patents: Continuations-in-Part

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by Dennis Crouch

Causam Enterprises, Inc. v. International Trade Commission, No. 23-1769 (Fed. Cir. Oct. 15, 2025).

This case is ultimately about patent ownership -- and turns on whether a 2007 assignment covers "continuations-in-part."  The assignment document lists  certain covered patents along with "divisions, reissues, continuations and extensions," but does not particularly list "continuations-in-part."  Holding: The assignment does not include continuations-in-part.

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CSU Law’s IP+ Conference 2025

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On Friday, November 14, I’ll be in Cleveland to speak at CSU|LAW’s annual IP+ Conference (with a simultaneous livestream).  I’m excited about the line up with Professors Donald Chisum and Janice Mueller as a keynote duet, followed by a fireside chat with retired Federal Circuit Judges Kathleen O’Malley and Richard Linn. I’ll join them for an afternoon “State of IP” panel that will dig into the ongoing generational shift in our patent and copyright systems. It’s a huge honor to share a stage with scholars and jurists whose work shapes so much of what we teach and practice.  In my patent law course I assign Janice Mueller’s hornbook; in class we work through opinions authored by Judges O’Malley and Linn; and like nearly everyone in our field, I regularly lean on Chisum on Patents as the treatise of record.

The event is organized by CSU Law Professor Christa Laser, the school’s IP Program Director.  Many thanks to Prof. Laser for putting this program together. Registration is free for students and cheap ($25) for attendees seeking CLE. In-person and virtual options are available.

Unexplained and Unreviewable: The New Normal for IPR Institution

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by Dennis Crouch

The USPTO continues to move quickly with sweeping changes to its "popular" inter partes review (IPR) process.  On October 17, 2025, the agency announced that Director John Squires  is reclaiming personal authority over all IPR and PGR institution decisions. In an "Open Letter" titled "Bringing the USPTO Back to the Future," Director Squires announced that effective October 20, 2025, he will personally determine whether to institute trial proceedings rather than delegating this function to PTAB panels. The announcement came on the same day that the agency published a notice of proposed rulemaking (NPRM) to create mandatory bars to IPR institution in multiple categories.  These actions follow a rapid ramping-up of discretionary denials over the past nine months under President Trump.  Together, these developments represent a coordinated effort to dramatically restrict access to IPRs in ways that favor patent owners under the banner of restoring "quiet title" to issued patents.

I believe we will see a major downturn in IPR petitions in the coming months.  Over the past decade, the IPR process has been an extremely effective tool used by accused infringers to cancel patents as obvious. Director Squires has argued that it is too effective with high institution rates and successful invalidity challenges destabilizing patent rights and undermined validity confidence that issued patents should enjoy. From this perspective, patents survive examination by expert examiners only to face a "second bite at the apple" through PTAB review, creating uncertainty that discourages innovation and investment. The Director frames these reforms as restoring proper respect for the Patent Office's examination process and the presumption of validity that issued patents deserve.  But there's a reason accused infringers prefer IPRs to litigation: although obviousness can also be challenged in court, history shows that a novice jury is much less likely to find the claims obvious than would a PTAB panel of subject matter experts.

Background:

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Prosecution Disclaimer Across Time: Later Continuation Statements Limit Already-Issued Patents

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by Dennis Crouch

In Barrette Outdoor Living, Inc. v. Fortress Iron, LP, No. 2024-1231 (Fed. Cir. Oct. 17, 2025), the FedCir affirmed a non-infringement judgment based on prosecution disclaimer, holding that statements made during prosecution of a later-filed continuation application limited the scope of already-issued patents from the same family.  This reinforces a similar holding in Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015) (statements in prosecution files of related patents are relevant to claim construction "regardless of whether the statement pre- or post-dates the issuance of the particular patent at issue.").  Most US patents are part of a larger family and the risk created by these decisions has potential implications for a large number patent holders.

What are your best practices when making an argument in a continuation case about the scope of a particular claim limitation that part of an already issued patent?  In this case, one solution would have been to amend the continuation to spell out the limitation rather force the limitation by argument. This path would have separated the two patents and better protect against that carry over.

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All Quiet on the PTAB Front: USPTO Proposes More Major Restrictions to Inter Partes Review Institution

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by Dennis Crouch

The USPTO has published a notice of proposed rulemaking (NPRM) that would dramatically restrict access to inter partes review proceedings. Revision to Rules of Practice before the Patent Trial and Appeal Board, 90 Fed. Reg. [TBD] (Oct. 17, 2025).  The proposed amendments to 37 CFR Part 42 would create mandatory bars to IPR institution in three categories:

  1. When claims of the challenged patent have previously been found valid in other proceedings;
  2. Where parallel litigation involving the patent will likely reach a validity decision first; and
  3. Where petitioners refuse to stipulate against raising any anticipation or obviousness challenge against the patent in other venues.

The rules formalize and expand practices that have emerged through both PTAB decisions and recent Director-level denials, converting discretionary factors into more categorical requirements.  Comments are due in a short 30 day window via www.regulations.gov (docket number PTO-P-2025-0025).  Notably, the USPTO simultaneously withdrew a proposed rule on discretionary denial under Former Director Vidal citing changes in administrative priorities.

Meanwhile the Federal Circuit is in the midst of considering a bolus of mandamus petitions arguing that the USPTO's already ramped-up discretionary denial approach has moved past the ultra vires threshold into the realm of actionable shenanigans. Director Vidal (back at Winston) recently filed an amicus brief to the FedCir on behalf of the Public Interest Patent Law Institute (PIPLA) arguing that the Settled Expectations denial doctrine goes too far: "The USPTO's own data reveals that its new 'settled expectations' rule protects the very patents most likely to be invalid."

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IPR Fact Findings Don’t Bind District Courts (What about IPR Legal Conclusions?)

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by Dennis Crouch

Issue preclusion (also called collateral estoppel) prevents parties from relitigating issues already decided in prior proceedings. To apply issue preclusion, courts generally require: (1) the issue was actually litigated and decided in the prior proceeding; (2) the determination was essential to the judgment; (3) the party against whom preclusion is asserted had a full and fair opportunity to litigate; and (4) the party against whom preclusion is asserted was a party (or in privity) in the prior proceeding. Issue preclusion can sometimes dispose of an entire case, but it can also apply more narrowly -- operating to prevent relitigation of any individual issue of law or fact that was already resolved in a prior proceeding.

Issue preclusion has the potential of arising often in patent cases -- especially because most patent cases these days involve two different proceedings (1) the IPR; followed by (2) the district court litigation.

A key way this comes up is when an IPR cancels several claims, but then the patentee subsequently amends the lawsuit to assert other claims that are similar but not identical to those cancelled. An example here might be that the cancelled claim involved elements A, B, C, and D; and the newly asserted claim covers A, B, C, and Δ.  The accused infringer would hope to invoke issue preclusion, arguing that it is a settled fact that the prior art teach A, B, C, and D, leaving only the question of whether the Δ modification is obvious.

But, the Federal Circuit has generally prohibited this approach because in IPRs facts are are decided under the lower preponderance-of-the-evidence standard while invalidating a patent in court requires the higher clear-and-convincing standard for invalidity. In issue preclusion lingo, this means that the IPR decision is not the same issue being decided in litigation.   The court has addressed this issue in some prior cases, including ParkerVision, Inc. v. Qualcomm Inc., 116 F.4th 1345 (Fed. Cir. 2024), and Kroy IP Holdings, LLC v. Groupon, Inc., 127 F.4th 1376 (Fed. Cir. 2025).

The court's newest decision makes clear the broad scope of the rule:

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Once Upon a Time, Consumers Had Standing

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by Dennis Crouch (This is a long blog post about TM opposition standing - buried inside though is a roadmap for how Director Squires could administratively restrict IPR petitioner standing using the same Lexmark framework).

Professor Rebecca Curtin has filed her petition for writ of certiorari  seeking rights to challenge United Trademark Holdings' application to register RAPUNZEL for dolls and toy figures.  Curtin has a great case that the mark is generic. The problem with Curtin's case is procedural.  Curtin is a consumer, not a competing doll maker, and the Federal Circuit ruled that consumers do not have standing to oppose trademarks based upon their genericness, descriptiveness, or failure to function as a trademark. Curtin v. United Trademark Holdings, Inc., 137 F.4th 1359 (Fed. Cir. 2025).

The statute allows opposition proceedings to be filed by "[a]ny person who believes that he would be damaged by the registration of a mark upon the principal register."  15 U.S.C. § 1063.  And, a textual approach would seem to allow consumer oppositions -- and even those who would read an implicit "reasonableness" into the statute ("reasonably believes he would be damaged"). Here, for instance, Curtin offered a clear basis for harm that is particularized to her as a longtime, avid collector of classic fairy-tale dolls and toy figures, including those depicting Rapunzel. She demonstrated that registration would reduce marketplace competition for Rapunzel products she collects, likely increase costs for such dolls, and chill the creation of new interpretations of the character that she values and seeks to add to her collection.

But, the Federal Circuit offered a narrow interpretation of the standing requirement  (eliminating consumer standing) that stems from a somewhat parallel situation in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014).  The basic question to the Supreme Court is whether they intended the litigation standing requirements of Lexmark to extend to administrative actions before the USPTO.

Whether a party desiring to participate in an administrative agency proceeding, including a trademark opposition proceeding at the United States Patent and Trademark Office, must satisfy the zone-of-interests and proximate-causation tests set forth in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), for causes of action in federal court.

Curtin Cert Pet.  Curtin is a trademark law professor and so it's not surprising that the brief is well written.  Folks at Workman Nydegger (Salt Lake City) filed the brief with a team that included John Stringham, Matthew Barlow, David Todd, and Ryan Morris.

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