All posts by Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law.

SCOTUS: Pairing RADesign’s Discovery Rule with Jem’s Laches Defense

Patent

by Dennis Crouch

The Supreme Court has rescheduled its consideration of the copyright statute of limitations petition in RADesign v. Michael Grecco (No. 24-768), moving the conference from May 29, 2025, to June 5, 2025. This delay appears strategic, as the Court has simultaneously distributed for the same June 5 conference another intellectual property limitations case: Jem Accessories, Inc. v. Harman International Industries, Inc. (No. 24-1011), which presents questions about laches in trademark law.  Both of these cases are sparked by prior statute of limitations cases - particularly the two laches cases of Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014) (copyright) and SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 580 U.S. 328 (2017) (patent) alongside the 2024 SOL case of Warner Chappell Music, Inc. v. Nealy, 601 U.S. ___ (2024).

The pairing of these cases suggests the Court may be considering extending its trans-doctrinal approach to limitations and laches doctrines across intellectual property law. Both petitions raise basic questions about when rights holders must act to preserve their claims, though they approach the issue from different statutory frameworks.

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Discovering the Crown Jewels: Irreversible Harm in the Digital Age

Patent

by Dennis Crouch

Micron Technology has petitioned the Supreme Court for a writ of mandamus to reverse a discovery order requiring the company to produce 73 pages of its most sensitive source code in paper form to Chinese state-owned semiconductor manufacturer Yangtze Memory Technologies Company (YMTC). The case, In re Micron Technology Inc., presents significant questions about the enforcement of protective order terms and the consideration of national security concerns in patent litigation discovery.  The dispute centers on YMTC's request for printed copies of source code from Micron's "150 Series Traveler Presentation," which apparently describes the company's most technologically advanced 3D NAND semiconductor products and contains code that fewer than a dozen of Micron's 50,000+ employees have access to.  Micron is seeking to turn this into a national security and competitiveness issue based upon the fact that YMTC was only founded in 2016 but has already become the global leader in 3D NAND flash based upon strong support from the Chinese government.  The company is also listed in the "Entity List."

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Maintaining a Speedy and Robust IPR Process Should Be a Major Focus of John Squires’ Patent Quality Efforts

Patent

Guest Post by Shawn Miller, Professor of Practice, University of San Diego School of Law; CodeX Fellow, Stanford Law School; Creator, Stanford NPE Litigation Database

Just a week ago, I began dusting off the half-written paper drafts of two empirical research projects that have mostly sat on my shelf the past year while teaching an overload to aid my colleagues on sabbatical. Brushing up on current events at the USPTO, it is clear that neither patent policy stakeholders nor the second Trump administration waited around for this law professor’s summer break. We have seen several months of the very active Acting USPTO Director Coke Morgan Stewart’s reshaping of the Patent Trial and Appeal Board’s (“PTAB’s”) process of reviewing Inter Partes Review (“IPR”) petitions, particularly in ways that tend to favor patent owners. Additionally, within the past two weeks we have had the Judiciary Committee Hearing of John Squires, the President’s nominee to serve as his permanent USPTO Director.

It seems likely that Squires will be confirmed soon and begin to act on the priorities he outlined at his hearing, two of which just so happen to overlap the topics of the two projects I am scrambling to complete this summer: patent quality and IPR reform. With my slow writing pace and the clear indications that the “reform” the administration has in mind would actually tend to harm patent quality when and where it matters, I asked—and Professor Crouch graciously agreed—to publish this guest post.

To start, what is patent quality? Put simply, it is the likelihood that a granted patent meets all of the statutory requirements for protection. In other words, low quality patents are likely invalid. Different stakeholders naturally emphasize different aspects of patent quality; for instance patent owners might prioritize breadth sufficient to cover potential infringing products or claim sets robust enough to survive validity challenges. In my own research, I have focused on novelty and non-obviousness because granted patents lacking these traits are usually devoid of innovation, and promoting new technology is the primary objective for granting inventors exclusive rights in the first place. I qualify patent quality with “likelihood” because it makes sense to think of inventors’ rights as probabilistic and contingent on unknown or misunderstood information (e.g., prior art) that supports or casts doubt on the validity of the claimed matter down the road when a granted patent is tested during enforcement. (more…)

Federal Circuit Dismisses Patent Owner’s Appeal of Favorable IPR Decision for Lack of Standing

Patent

by Dennis Crouch

In Dolby v. Unified Patents, the Federal Circuit confronted an unusual procedural question: can a patent owner who prevails in an inter partes review (IPR) challenge the PTAB's reasoning underlying that favorable outcome? The court's answer was a resounding no - at least in this instance - dismissing Dolby's appeal for lack of standing.

Dolby successfully defended its patent claims before the PTAB, with the Board concluding that Unified Patents failed to prove any challenged claims unpatentable. Yet Dolby appealed, seeking not to overturn this favorable result but to challenge the Board's refusal to determine whether Unified had properly identified all real parties in interest under 35 U.S.C. § 312(a)(2). This statute requires that a petition "may be considered only if the petition identifies all real parties in interest."

Dolby argued that nine additional entities should have been named as additional real parties in interest, but the Board declined to adjudicate this dispute. Following its precedential decision in SharkNinja, the Board explained that it would not resolve real party in interest disputes unless they were material to time bar or estoppel issues in the current proceeding. Since no such issues were implicated, the Board saw no need to determine the identities of the actual parties behind Unified's challenge.

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Strict Standard for Overriding Patent Lexicography in COVID Vaccine Patent Battle

Patent

by Dennis Crouch

In a decision that reinforces the controlling force of explicit patent definitions, the Federal Circuit affirmed a district court's claim construction that effectively ended Alnylam Pharmaceuticals' patent infringement suit against Moderna over lipid nanoparticle technology used in COVID-19 vaccines. Alnylam Pharmaceuticals, Inc. v. Moderna, Inc., No. 2023-2357 (Fed. Cir. June 4, 2025). Writing for a unanimous panel, Judge Taranto explained that when a patent specification clearly defines a claim term, the patentee faces a demanding standard to establish exceptions to that definition, even where the definition might exclude disclosed embodiments or seemingly conflict with other parts of the specification.

The case centered on whether Alnylam's patents covering cationic lipids for nucleic acid delivery were infringed by Moderna's use of the SM-102 lipid in its SPIKEVAX COVID-19 vaccine. The dispute turned entirely on claim construction of the term "branched alkyl," which the specification explicitly defined as requiring "one carbon atom in the group (1) is bound to at least three other carbon atoms and (2) is not a ring atom of a cyclic group" "[u]nless otherwise specified."

Alnylam argued this definition did not apply to claims covering "branching" at the "alpha position" adjacent to biodegradable groups, where the chemical structure would permit only two carbon-carbon bonds rather than three. The Federal Circuit rejected this argument, finding no clear indication in the intrinsic record that the claims "otherwise specified" a departure from the explicit definition.

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USDOJ: Contributory Infringement Requires Conscious and Culpable Acts

Patent

The Supreme Court is being asked to resolve a high-stakes battle over when Internet Service Providers (ISPs) can be held liable for their users’ copyright infringement. Two petitions — Cox Communications, Inc. v. Sony Music Entertainment (No. 24-171) and Sony Music Entertainment v. Cox Communications, Inc. (No. 24-181) — stem from a Fourth Circuit decision involving a $1 billion jury verdict against Cox for music piracy on its network. In November 2024, the Court invited the Solicitor General (SG) to weigh in. In late May 2025, SG John Sauer filed the government's brief, recommending that the Supreme Court grant Cox’s petition to clarify—and  ultimately narrow—the standard for contributory infringement.

For this post, I take a step back and talk through some of the legal doctrines at issue — contributory & vicarious liability — in the context of ISP copyright infringement and then delve into how they might apply in Cox.

Background: The litigation began when a consortium of record companies and music publishers (including Sony Music) sued Cox Communications for copyright infringement based upon actions by Cox’s internet subscribers. The alleged infringements occurred in 2013–2014, when Cox users engaged in massive peer-to-peer file sharing of music over networks like BitTorrent. At the time, anti-piracy agent, MarkMonitor, sent Cox hundreds of thousands of infringement notices identifying Cox subscribers by IP address. But, Cox’s internal policy was to follow an admittedly lax “thirteen-strike” system: repeat infringers would receive warnings and temporary suspensions, but Cox often declined to permanently terminate paying customers’ accounts. Evidence presented in the case showed Cox implemented its policy haphazardly—terminating only 33 subscribers for copyright abuse while tolerating many more—because it “wanted to avoid losing revenue” from monthly subscriber fees.

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Federal Circuit Takes Center Stage in Trump’s Tariff Campaign

Patent

by Dennis Crouch

On May 28, 2025, the Court of International Trade issued a sweeping permanent injunction against President Trump's unilateral global tariffs, only to have the Federal Circuit grant an immediate administrative stay in a rare en banc order.  The stay is likely to remain in place only for about two weeks as the Court considers (likely en banc) whether to allow the tariffs to remain in place while it considers the merits of the U.S. government's appeal.  The dispute centers on fundamental questions about the scope of presidential emergency powers under the International Emergency Economic Powers Act (IEEPA) and represents one of the most significant judicial challenges to executive trade authority in decades.

The Court of International Trade's decision in V.O.S. Selections, Inc. v. United States, Slip Op. 25-66 (Ct. Int'l Trade May 28, 2025) [CIT Decision], struck down both President Trump's "Worldwide and Retaliatory Tariffs" and his "Trafficking Tariffs" as exceeding congressional delegation of authority.  The underlying legal framework is that the U.S. Constitution grants Congress, not the President, authority to set tariffs.  However, Congress has expressly delegated aspects of that authority to the President - most particularly under IEEPA, which authorizes the President to "regulate . . . importation" of foreign goods during declared national emergencies to address "unusual and extraordinary threat[s]" to national security, foreign policy, or the economy. 50 U.S.C. § 1702(a)(1)(B), § 1701(a). Congress enacted IEEPA in the 1970s after determining that President Nixon had abused a prior, more expansive delegation under the Trading with the Enemy Act (TWEA). See United States v. Yoshida Int'l, Inc., 526 F.2d 560 (C.C.P.A. 1975).

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On the Edge of Claim Construction: Federal Circuit Splits Over What Counts as a Tile’s ‘Edge’

Patent

by Dennis Crouch

Acufloor, LLC v. EvenTile, Inc., No. 2023-1887 (Fed. Cir. May 28, 2025)

Although new, this case offers a classic claim construction debate with three-way divide between the majority, dissent, and district court over what counts as the "edge" of a tile. The patents here cover a tile leveling device used during install to avoid "lippage"—where one tile's edge is higher than an adjoining tile's edge. The key dispute centered on what constitutes the "edge" of a tile when the claims require "edge-to-mortar-to-subfloor contact."  U.S. Patent Nos. 10,704,274 and 10,513,857.

The accused devices operate near the edge of the tile, but do not allow direct tile-to-mortar-to-subfloor contact at the very edge of the tile.  By arguing for a narrow construction of "edge"—limited specifically to the precise boundary line of the tile's surface—the defendants position themselves outside the patent claims.  The district court agreed and narrowly construed edge to "the line at which a surface of a tile terminates."  On appeal, both the the majority (Judge Bryson, joined by Judge Lourie) and the dissent (Judge Stark) agreed that the district court's construction was too narrow—concluding that "edge" of a tile in this patent is wider than the Euclidian edge definition.  However, the majority and dissent disagreed on whether the claimed "edge" contact necessarily include the very edge of the tile.

The majority construes "edge" to include the very boundary line of the tile, but also extends slightly inward to include some portion of the tile's surface adjacent to that line. In contrast, the dissent argues for a broader construction where the claimed "edge" is defined more expansively as a region or area around the tile’s boundary, and thus does not require mortar to reach precisely to the boundary line.

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Uninvited Guests: The Federal Circuit’s Problematic Revival of Waived Arguments

Patent

by Dennis Crouch

In a number of recent opinions, the Federal Circuit decided the case on grounds that were not raised on appeal by either party.  This unusual approach is something bound to happen with expert tribunals such as the Federal Circuit.  The problems with this approach: it undermines the adversarial process, creates a fairness problem, and depriving the parties of a meaningful opportunity to address—and potentially correct—issues pivotal to the court’s ultimate determination. A recently filed petition for certiorari asks the Supreme Court to step-in and provide the CAFC with guidance in the impropriety of the Federal Circuit's sua sponte revival of arguments that the government has impliedly waived in the appeal. In McLeay v. Stewart, petitioner Dr. Matthew McLeay particularly challenges the Federal Circuit's decision to affirm the rejection of his patent application based on enablement sub-grounds that the USPTO had effectively abandoned in its briefing. [Read the Petition].

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Injury vs. Discovery: The Goldilocks Problem and Copyright’s Statute of Limitations

Patent

by Dennis Crouch & Tim Knight

The Supreme Court will hold its conference on May 29, 2025, to decide whether to grant certiorari in RADesign, Inc. v. Michael Grecco Productions, Inc. (No. 24-768), a case that could fundamentally reshape how copyright’s three-year statute of limitations operates. The petition, which has attracted significant attention from copyright scholars and practitioners, presents a deceptively simple question with profound implications: whether a copyright infringement claim “accrues” when the infringement occurs (the “injury rule”) or when the copyright holder discovers or reasonably should have discovered the infringement (the “discovery rule”).  Although the circuit courts all appear to agree that some form of a discovery rule should persist, we believe the deeper question is the rule’s form.  We believe in this case that the district court offered the better approach by permitting the discovery rule, but only after taking a contextual approach requiring reasonable diligence that considers the copyright holder’s circumstances while maintaining meaningful protections against fraudulent concealment.

Michael Grecco, a professional photographer, took photographs of model Amber Rose in 2017, wearing shoes designed by Ruthie Davis. Grecco alleges that Davis’s company, RADesign, reposted some of these photos on its website and social media platforms without authorization.  Although the photos were posted in 2017. Grecco claims he did not discover this infringement until February 2021 and filed suit in October 2021, four years after the alleged infringement began but less than one year after his claimed discovery.

The copyright statute of limitations, § 507(b), requires any lawsuit be filed “within three years after the claim accrued,” and RADesign moved to dismiss the case as time-barred since it was filed four years after the infringing acts. The district court agreed, although it did consider whether to extend the statute of limitations based upon the copyright holder’s delay in discovering the infringement.  Applying a “reasonable diligence” standard, the court concluded that someone in Grecco’s position—specifically, a sophisticated copyright holder with extensive enforcement experience—should have discovered the infringement within the three-year limitations period.  This sophistication includes the filing of 100+ copyright infringement actions. Grecco’s own complaint touted his extensive history of actively policing infringements and litigation, making late discovery implausible under those specific circumstances.

On appeal, however, the Second Circuit reversed. The appellate court held that the discovery rule uniformly determines when copyright claims accrue, irrespective of a plaintiff’s sophistication or enforcement history. According to the panel, there is no special diligence standard for sophisticated plaintiffs; instead, the discovery rule must be applied objectively, uniformly, and without presumptions. Since the complaint itself did not conclusively show that Grecco should have discovered the infringement earlier, the Second Circuit reinstated the suit.  One takeaway from the Second Circuit decision is that it creates the anomalous result where undercapitalized first-time participants with no legal experience or monitoring capabilities are asked to conduct the same level of monitoring as the  largest, most sophisticated copyright holder with vast monitoring resources.  We think this is wrong.  To be clear, we are not necessarily arguing for two different standards, but rather an approach that places the reasonableness within the factual context – what would have been reasonable for the copyright holder to do in the given situation.

Further, the objective standard adopted by the Second Circuit is not in the spirit of the discovery rule. The core of the discovery rule is based on a known or should have known standard. While there may be a debate on the requisite level of monitoring diligence by the copyright holder, the Second Circuit essentially eliminates this standard. Rather, the appellate court’s opinion more effectively reduces the discovery rule to merely a knowledge standard.

RADesign’s pending Supreme Court petition challenges the Second Circuit’s interpretation and presents the following question: Does a copyright infringement claim accrue when the infringement occurs (injury rule) or when the infringement is discovered or reasonably should have been discovered (discovery rule)? The petition is set for conference on May 29, 2025, with extensive briefing and amici participation already completed. This includes an excellent amicus brief from Prof. Tyler Ochoa.  Although the circuit courts appear to be continuing to maintain a discovery rule in copyright cases, Justice Gorsuch’s 2024 dissent in Warner Chappell Music v. Nealy argued strongly against the discovery rule as inconsistent with the statutory text and traditional limitations principles. (more…)

Inherent Disclosure and Implicit Construction

Patent

by Dennis Crouch

Sigray, Inc. v. Carl Zeiss X-Ray Microscopy, Inc., --- F.4th --- (Fed. Cir. 2025)

The Federal Circuit established an important precedent regarding inherent disclosure and implicit claim construction in this IPR appeal, holding that the Board's  purported interpretation of the prior art was rather an implicit claim construction that neither party requested.  The decision, went rely heavily on the Federal Circuit inherency decision in SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331 (Fed. Cir. 2005), allowing for inherency finding even for miniscule or undetectable features found in the prior art.  As I dug into the case though, I was surprised to find that the PTAB did not cite or reference SmithKline, nor did any of the briefs filed in the appeal.  As Judge Dyk wryly stated at oral arguments: "but of course, nobody showed them the SmithKline case." 

This case involved x-ray optics, with claims requiring "magnification of the projection x-ray stage is between 1 and 10 times." Although neither party ever asked for claim construction, the appellate panel went ahead to determine that this claim scope - based upon its "plain meaning" - "includes tiny, even undetectable, magnification" rejecting the PTAB's implicit construction that seemed to require a meaningful divergence from parallel.

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Perlmutter v. Trump: Does the President Control the Copyright Office?

Patent

By Dennis Crouch

In an extraordinary lawsuit filed today, Register of Copyrights Shira Perlmutter has sued President Trump and several administration officials, challenging her purported removal from office and the President's attempt to install Deputy Attorney General Todd Blanche as acting Librarian of Congress. Perlmutter v. Blanche, No. 25-cv-1659 (D.D.C. filed May 22, 2025). The case raises fundamental questions about the separation of powers and the unique status of the Library of Congress within our constitutional structure.

The controversy began on May 8, 2025, when President Trump fired Librarian of Congress Dr. Carla D. Hayden via email. Two days later, the administration terminated Ms. Perlmutter, who had served as Register of Copyrights since 2020.   The President then purported to appoint Deputy Attorney General Todd Blanche as acting Librarian of Congress under the Federal Vacancies Reform Act (FVRA) as well as Paul Perkins as acting Register of Copyrights. When Mr. Blanche's representatives arrived at the Library on May 12 to assume control, Library staff refused to recognize his authority and contacted the Capitol Police.  The standoff crystallized a fundamental question: Does the President have the power to unilaterally control Congress's library and the US Copyright office housed within?

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Rapunzel, Rapunzel, Let Down Your Generic Hair (and Let Us In)!

Patent

by Dennis Crouch

Rebecca Curtin – a law professor and parent who purchases princess dolls – filed a TTAB opposition against United Trademark Holdings’ application to register the mark “RAPUNZEL” for dolls and toy figures (Class 28). Curtin alleged the mark should not be registered because “RAPUNZEL” is a generic name, is merely descriptive, and fails to function as a trademark for doll products. UTH moved to dismiss the opposition, arguing that Curtin lacked standing (i.e., lacked “entitlement to a statutory cause of action”) under the Lanham Act’s opposition provision, 15 U.S.C. § 1063. Initially, the TTAB allowed Curtin’s case to proceed – relying on the Federal Circuit’s older, more permissive standing test from Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999), which had held that “any person who believes that she would be damaged” by a registration may oppose if she shows a real interest and a reasonable belief of harm. But by the final decision, the TTAB reversed course. Citing the Supreme Court’s intervening decision in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), and the Federal Circuit’s own decision in Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020), the Board dismissed Curtin’s opposition for lack of a statutory cause of action. The TTAB concluded that “mere consumers” generally are not entitled to oppose a trademark registration under § 1063, because their interests fall outside the zone of interests protected by that statute.

The Federal Circuit has now affirmed that dismissal in Curtin v. United Trademark Holdings, Inc., No. 23-2140 (Fed. Cir. May 22, 2025).  Judge Hughes penned the opinion holding that: to oppose a trademark under § 1063, an individual’s interests and alleged injuries must fall within the Lanham Act’s protected zone of interests, and those injuries must be proximately caused by the mark’s registration.  See also, Rebecca Curtin, Zombie Cinderella and the Undead Public Domain, 85 Tennessee Law Review 961 (2018).

Although all modern theories indicate that consumer protection is a primary purpose of trademark law, Curtin’s consumer-focused concerns did not satisfy the statutory requirements (according to the court).  Still, I'm drawn by her arguments -- as Curtin's attorney Ryan Morris (Workman Nydegger) explained:

With regard to the purposes of the Lanham Act, it absolutely has everything to do with consumers. . . . The interests of the consumers are at the heart of the Lanham Act. And to exclude them arbitrarily doesn't make a lot of sense.

Oral args. 29:05.

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The Remedies Remedy is Almost Complete: EcoFactor v. Google

Patent

by Dennis Crouch

The Federal Circuit’s en banc decision in EcoFactor v. Google marks a significant tightening of standards for admitting patent damages expert testimony. The court (in an 8–2 split) overturned a $20 million jury award by excluding the patentee’s expert evidence as insufficiently reliable under Federal Rule of Evidence 702 and Daubert. Writing for the majority, Chief Judge Moore treated what traditionally might have been viewed as a factual dispute over “comparable” license agreements as, instead, a matter of contract interpretation for the court. In doing so, the majority held that the trial judge failed in his gatekeeping duty by allowing the jury to hear an expert opinion founded on speculative leaps—namely, the assumption that prior licensees agreed to a particular royalty rate that was not reflected in the actual license terms. Two dissenting judges (Judges Reyna and Stark) each criticized the court for overstepping the proper scope of Rule 702 and for usurping the jury’s role in weighing evidence.  As I discuss below, I believe that the dissents have the better view of this case.  [Read the Decision]

I see this case as part of a crafted doctrinal transformation that I call the “Remedies Remedy,” that began with the Supreme Court’s undermining of injunctive relief in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) and was then followed by a series of Federal Circuit decisions tightening the requirements for proving monetary damages. For example, the court abolished the old 25% rule of thumb for royalties as arbitrary and unreliable (Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011)), reinforced the requirement to apportion damages to the patented feature’s value (LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51 (Fed. Cir. 2012)), and demanded closer scrutiny of “comparable” license agreements used as benchmarks (Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009); ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860 (Fed. Cir. 2010)). The thrust of these cases is a clear message: patent damages must be grounded in sound economic reasoning and actual evidence, not rules of thumb or tenuous analogies.  And, without sufficient expert testimony, juries will not be permitted to hear the evidence. (more…)

Federal Circuit Confronts “Divide and Conquer” Briefing Strategy in Patent Appeal

Patent

by Dennis Crouch

In a display of judicial frustration with attorney conduct, the Federal Circuit (i.e., Chief Judge Moore) recently confronted two appellants for apparently attempting to circumvent word count limitations through a "divide and conquer" briefing strategy.  The parties have responded to the court's show cause order in Focus Products Group International v. Kartri Sales Co., and we are now waiting for the court to act both on the merits of the case and potential sanctions.

The conduct dispute centers on how appellants Kartri Sales and Marquis Mills structured their briefs in appealing a district court decision that found the parties infringed both patents and trade dress related to shower curtain designs. The case was heard before a Federal Circuit panel consisting of Chief Judge Moore, along with Circuit Judges Clevenger and Chen. Patrice Jean of Hughes Hubbard & Reed represented Kartri Sales, Donald Cox his own firm represented Marquis Mills, and Morris Cohen of Goldberg Cohen represented the Sure Fit appellees.

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An IDS is Now the Best Defense Against IPRs: Ecto World v. RAI

Patent

by Dennis Crouch

In a significant development for PTAB practice, Acting USPTO Director Coke Morgan Stewart has issued a precedential decision that conclusively establishes IDS-cited art as grounds for discretionary denial while creating a narrow exception for "mega-IDSs." Ecto World, LLC v. RAI Strategic Holdings, Inc, IPR2024-01280_paper_13_20250519. The case places a burden on petitioners to demonstrate examiner error in situations where the ground for the IPR petition relies upon art that had been formally considered by the examiner during original prosecution.

This decision comes amid Stewart's broader transformation of PTAB practice since early 2025, characterized by the rescission of prior guidance limiting discretionary denials, the introduction of bifurcated review processes separating discretionary decisions from merits analysis, and the Director's personal involvement in discretionary determinations. The cumulative effect signals a decisive shift toward a more patent-owner friendly posture at the USPTO, with IPR institution rates reportedly dropping significantly over the past two months.

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Thin Ice That Held: Samsung’s IPR Strategy Survived Scrutiny at the Federal Circuit

Patent

by Dennis Crouch

Power2B, Inc. v. Samsung Elecs. Co., Ltd., Nos. 23-2184, 24-1399, 24-1400 (Fed. Cir. May 19, 2025)

Two key canons of claim construction are that of claim differentiation and claim term differentiation - each patent claim  is presumed to have its own scope and coverage, as is each element of each claim.  The use of different terms in different claims "connotes different meanings." CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308 (Fed. Cir. 2000).  But, these are not an incredibly strong presumptions, and the court has regularly construed different terms in separate claims to cover the same subject matter. See, Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322 (Fed. Cir. 2009) and Nystrom v. TREX Co., 424 F.3d 1136 (Fed. Cir. 2005).

In its recent decision in Power2B v. Samsung, the Federal Circuit found another case where differing language did not differ the construction.  Power2B, Inc. v. Samsung Elecs. Co., Ltd., Nos. 23-2184, 24-1399, 24-1400 (Fed. Cir. May 19, 2025). The patents at issue describe a handheld device that uses a light-emitting stylus with various functionality.   The PTAB sided with petitioner Samsung on almost all claims of the two challenged patents: US7952570 and US8547364. But, a divided PTAB found that claim 20 of '364 patent had not been proven unpatentable, with the majority concluding that Samsung had not properly argued the "generating control signals by the input circuitry" limitation of claim 20.  On appeal, Samsung argued that the Board abused its discretion because that claim 20 limitation was not materially different from claim 13's "output indication" limitation, which Samsung had properly addressed, and that these different terms merely expressed the same concept.  Samsung that nothing in the specification or claims identifies any difference between an "output indication" and a "control signal."

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Federal Circuit on Negative Limitations and Secondary Considerations

Patent

by Dennis Crouch

In a pair of nonprecedential decisions, the Federal Circuit affirmed three PTAB inter partes review decisions--finding BillJCo's patents unpatentable as obvious under 35 U.S.C. § 103. BillJCo, LLC v. Apple Inc., Nos. 23-2189 (Fed. Cir. May 16, 2025); and No. 23-2188 (Fed. Cir. May 16, 2025). The cases were both decided by the same three-judge panel, with Judge Stoll authoring one opinion and Judge Chen the other. In reading the cases, one key take-away is that the cases represent another example of the Federal Circuit's rigid approach to secondary considerations of non-obviousness. I recently highlighted this same phenomenon in discussing Purdue Pharma's pending petition for certiorari. See Dennis Crouch, The Federal Circuit's Rigid Approach to Secondary Considerations, Patently-O (May 5, 2025). The opinions also illustrate the court's approach to claim construction, particularly regarding interpreting a claim term to include a negative limitation. One case also relies upon a key prior art from now Secretary of Commerce Howard Lutnick.

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Jurisdictional Boundaries in Patent Licensing Disputes: Misuse Counterclaim Creates CAFC Jurisdiction

Patent

by Dennis Crouch

I was researching my recent Brulotte / Kimble post and stumbled across a new decision from the Fourth Circuit ceding appellate jurisdiction to the Federal Circuit based upon a defendant's assertion of a patent misuse defense (in the form of a counterclaim) after being sued for breach of contract.

In Honeywell International Inc. v. OPTO Electronics Co., Ltd., --- F.4th ----, 2025 WL 1226294 (4th Cir. Apr. 29, 2025), the Fourth Circuit dismissed a cross-appeal in a patent licensing dispute, holding that the Federal Circuit has exclusive appellate jurisdiction when a party asserts a patent misuse counterclaim seeking patent unenforceability.  The opinion, authored by my law school classmate Judge Jay Richardson, has to go through several levels of analysis to reach the endpoint.  I dug into the briefs and found that Judge Richardson's decision is more his own creation than that of the parties - basing the decision on a theory not presented by either side. And, I think the court stretched the Supreme Court's Gunn v. Minton precedent perhaps a bit too tight.

The case is now pending in the Federal Circuit, and that court will certainly revisit its jurisdictional basis and will need to through some of the bumps and failings of the Fourth Circuit's decision. I think that there is some potential that the case will be ping-ponged back to the Fourth Circuit.

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