All posts by Dennis Crouch
Supreme Court Denies Certiorari in Three Patent Cases
Federal Funded Innovation and March-In Rights
by Dennis Crouch
The Biden Administration is seeking comment on its proposed framework for how how agencies should evaluate exercising “march-in rights” over federally funded inventions. For those familiar with march-in rights, this guidance has been a long time coming. While these powers have technically existed for years under the Bayh-Dole Act, the lack of clear procedures around their use has rendered them largely theoretical. This proposal could change that.
Sharon Israel, PTO New Chief Policy Officer
Congratulations to Sharon Israel on her new leadership role at the USPTO. I was happy to learn that Director Vidal has appointed Sharon Israel as its new Chief Policy Officer and Director for International Affairs. Ms. Israel has been a leader of the patent bar for many yeas and will bring tremendous expertise to this important role overseeing the USPTO's policy and international programs. For the past few years, she has been a partner at Shook Hardy focusing on patent litigation -- primarily on the defense side.
Plagiarism Police come for Winston & Strawn
Hsuanyeh Law Group v. Winston & Strawn, 23-cv-11193 (S.D.N.Y. 2024)
A recent copyright infringement lawsuit filed by small Boston intellectual property boutique Hsuanyeh Law Group PC (HLG) against international giant Winston & Strawn LLP focuses a dividing line that can highlight when copying the work of another firm is permissible. I believe that Winston & Strawn will eventually prevail based upon a fair use defense, but it is still an embarrassing situation for the firm and attorneys involved. I hope that they did not overbill the client. The role of attribution is also receiving increasing focus as attorneys begin to rely more heavily on AI outputs for their legal documents.
Federal Circuit Affirms Invalidity of Genus Claims to Stevia Production Method Lacking Written Description and Narrower Claims as Combining Natural Phenomena with an Abstract Idea
by Dennis Crouch
In PureCircle USA Inc. v. SweeGen, Inc., No. 22-1946 (Fed. Cir. Jan. 2, 2024) (non-precedential) [PureCircle Decision], the Federal Circuit affirmed a district court summary judgment siding against the patentee, PureCircle. The court concluded that the stevia production method claims were all invalid, either for: (1) lack of written description for the genus claim or (2) lack of eligibility because the claims are directed to a natural phenomenon combined with an abstract idea. Judge Dyk authored the opinion of the court that was joined by Judges Schall and Stark affirming the ruling of C.D.Cal Judge James Selna.
The written description portion of the opinion parallels the Supreme Court's 2023 Amgen decision that focused on the sibling doctrine of enablement. Although non-precedential, the eligibility portion appears important because of the way it combines prohibited eligibility categories and rules that method claims requiring a particular purity level are themselves an abstract idea absent requirement of specific steps on how that purity level is achieved.
The First Precedential Patent Decision of 2024: Dexcom v. Abbott Diabetes Care
by Dennis Crouch
The U.S. Court of Appeals for the Federal Circuit has begun 2024 [2023] with its first precedential patent decision in DexCom, Inc. v. Abbott Diabetes Care, Inc., 2023-1795 (Fed. Cir. January 3, 2024). In an opinion by Judge Stoll, the court affirmed a district court decision denying DexCom’s motion for a preliminary injunction. The patentee had requested an order barring Abbott from pursuing its IPR challenges - based upon a forum selection clause that was part of a prior settlement between the parties. Judges Dyk and Hughes were also on the panel.
Patent Law Exam 2023: Are you Smarter than a Law Student?
by Dennis Crouch
The following is my patent law exam from this past semester. As in years past, the exam was worth less than half of the final grade because the students did other substantial work during the semester, including a major moot court competition. Students were permitted access to their book/notes/internet, but were barred communications with another human during the exam.
This year's exam is very loosely based upon an interesting patent that I found associated with the Tow Whee product created by Eric Landis. See US11167164, US11731470, and US11724148. But, the events described are entirely my creation.
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Patent Grant Total 2023
Trademark Influencers and Aspen Mountain
Artificial Intelligence and Copyright in China: Lessons from a Recent Court Case
Federal Circuit Appellate court Grants Emergency Stay of Apple Watch Ban
by Dennis Crouch
The patent battle between Masimo and Apple over pulse oximetry technology in the Apple Watch took a new turn on December 27th. Despite the recent import ban imposed by the U.S. International Trade Commission (ITC), Apple was granted a temporary stay by the U.S. Court of Appeals for the Federal Circuit. For now, this emergency ruling blocks the government from enforcing the exclusion order on certain Apple Watch models through at least mid-January. However, the legal fight is far from over. For Masimo, this short-term win for Apple weakens its bargaining position as the two companies continue their protracted patent dispute in courts and before regulatory agencies.
Fed Cir affirms PTAB decision Invalidating 1996 Patent on Mobile Base Stations
Emergency Appeal of the Apple Watch Ban
by Dennis Crouch
December 25th, marked the deadline for President Biden to reject the U.S. International Trade Commission's (USITC) ruling banning imports of certain Apple Watch models. With no action from the White House, Apple now faces a federal government order to halt imports and sales of Apple Watch Series 9 and Ultra 2 devices because it incorporates light-based pulse oximetry technology covered by the claims of Masimo's U.S. Patent Nos. 10,945,648 (claims 24 and 30) and 10,912,502 (claim 22).
Merry Christmas and Happy Holidays from Patently-O
No Patent for Robot Inventions: UK Supreme Court Rules on AI Inventorship in Thaler v. Comptroller-General
Dismissal but no Vacatur: Federal Circuit Declines to Disturb PTAB’s Upholding of Dafni’s Hair Brush Patent
Serving Foreign Defendants: Navigating the Hague and Texas Substituted Service
The Battle Over Domicile Disclosure by Trademark Applicants
by Dennis Crouch
In the pending appeal of In re Chestek, PLLC, No. 22-1843, a trademark applicant is opposing the USPTO requirement that all applicants must disclose their domicile address. This requirement, referred to as the “domicile address rule,” has been controversial since the USPTO adopted it in a 2019 rulemaking. For individuals, this rule requires an actual residential address. See Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants, Final Rule, 84 Fed. Reg. 31498 (July 2, 2019). The outcome could have significant implications for privacy and transparency in the trademark registration system. For a variety of reasons, many people do not publicly disclose their place of residence. In the US, the most common reasons stem from domestic violence and stalking. Although the USPTO is attempting to offer a mechanism to protect domestic residence from public view, it also recently had a major data loss of that information -- and effectively all domestic residence information is available in various sources online. A decision favoring the petitioner would also be seen as bolstering the Administrative Procedure Act’s notice and comment requirements.
The best place to begin any analysis is probably with the statute.