All posts by Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law.

USPTO Timeliness Slipping: Patent Term Adjustment Data Shows Growing Examination Delays

Patent

by Dennis Crouch

The USPTO has two traditional functions: (1) quality examination to ensure applications satisfy the demanding statutory requirements of patentability; and (2) timely and efficient processing of those applications. Recent data suggests the Office is struggling with the second of these mandates, as reflected in a sharp uptick in Patent Term Adjustment (PTA) awards. [Charts below]

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The Rise of ‘Non-Transitory’ Claims: How a Single Word Became Key to Software Patent Eligibility

Patent

by Dennis Crouch

Recent patent prosecution data reveals a striking trend: the percentage of utility patents containing "non-transitory" software claims continued to increase -- from virtually zero 15 years ago to nearly 22% in 2024. This dramatic rise illustrates both the central role of software in our patent system and the peculiar formalistic requirements that have emerged around software patent eligibility under 35 U.S.C. § 101.

The story behind this trend begins with

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Raw Story v. OpenAI: The Constitutional Hurdle That Tripped Up Raw Story’s AI Lawsuit

Patent

by Dennis Crouch

In my view, some of the weakest anti-AI copyright claims have fallen under 17 U.S.C. § 1202(b)(1) – an element of the Digital Millennium Copyright Act (DMCA) that prohibits intentional removal or alteration of copyright management information (CMI).  The statute broadly defines CMI to include not just copyright notices, but also titles, author information, owner information, terms of use, and other identifying information conveyed with copies of works.  Any violation also requires proof that the CMI-remover had “reasonable grounds to know” that such removal would enable or conceal copyright infringement.

In Raw Story v. OpenAI, the online news organization alleged that OpenAI violated § 1202(b)(1) by removing copyright management information (CMI) from thousands of their news articles when incorporating them into training datasets for ChatGPT. Notably, the plaintiffs did not bring direct copyright infringement claims, instead focusing solely on alleged CMI removal. The articles in question were published online with author, title, and copyright information, which plaintiffs claimed OpenAI stripped away when creating its training sets. While OpenAI has not published the contents of these training sets, plaintiffs relied on “approximations” suggesting their articles appeared without CMI. They argued this evidenced intentional CMI removal, reasoning that if ChatGPT had been trained on articles with intact CMI, it would output such information when generating responses.

The most recent news in the case is that S.D.N.Y. Judge Colleen McMahon has dismissed the claims brought by Raw Story (and AlterNet Media) — holding that the plaintiffs lacked Article III standing to pursue the case.

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Federal Circuit Summarily Affirms Invalidity of Geolocation Patent Under Section 101

Patent

by Dennis Crouch

Sitting by designation in Delaware District Court, Federal Circuit Senior Judge William Bryson found claims 1-10 of GeoComply's U.S. Patent No. 9,413,805 ineligible under 35 U.S.C. § 101.  On appeal, the Federal Circuit has now affirmed that judgment -- albeit in a Rule 36 summary affirmance. GeoComply Sols. Inc. v. Xpoint Servs. LLC, No. 23-1578 (Fed. Cir. Nov. 13, 2024). The inventor, Anna Sainsbury, co-founded GeoComply in 2011 and has served as CEO for most of the past 13 years.  GeoComply processes billions of transactions annually - mostly for the online gaming (casino) industry.  The successful defendant in this case - Xpoint - is a key competitor.

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Damages Experts Analysis on the Front Burner: How Much Analysis is Enough for the Hypothetical Negotiation?

Patent

by Dennis Crouch

The Federal Circuit's pending en banc review in EcoFactor v. Google is heating up, to address fundamental questions about the reliability standards for expert damages testimony in patent cases. The case highlights growing tensions between robust judicial gatekeeping under Federal Rule of Evidence 702 and the Constitutional right to a jury determination of all facts at issue.  At base, Google is seeking to create additional  procedural hurdles and appeal off-ramps that help them avoid large damage awards.

In its en banc order, the court directed the parties to brief whether the district court properly applied Rule 702 and Daubert v. Merrell Dow Pharmaceuticals, 509 U.S. 579 (1993) in admitting testimony from EcoFactor's damages expert deriving a per-unit royalty rate from portfolio license agreements. The case presents a critical opportunity for the Federal Circuit to clarify when damages theories "cross the line" from permissible approximation to unreliable speculation.

Google has now filed its opening brief, arguing that EcoFactor's damages testimony failed to meet Rule 702's reliability standards in two key respects: its use of portfolio license "whereas" clauses that contradicted the operative terms of the agreements and its unsupported assumption that various "pressures" on the royalty rate would offset each other. The brief emphasizes that these methodological flaws rendered Kennedy's opinions purely speculative and therefore inadmissible under both Daubert and the recently amended FRE Rule 702.

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USPTO Director Vidal Announces December Departure

Patent

by Dennis Crouch

With Donald Trump’s reelection, leaders within the Biden administration will be stepping down over the next two months. USPTO Director Kathi Vidal has announced her departure from the agency, effective in December 2024. Deputy Director Derrick Brent will serve as Acting Director during the transition period.  Vidal’s announcement indicates that Brent will stay in the position until Trump’s replacement is confirmed.  Of course, that position serves at the pleasure of the president and so could change at any point.

Brent’s offer to stay-on after January 20, 2025 fits with President Biden’s resent statement that the American people deserve a peaceful and orderly transition.  In her  resignation announcement letter to colleagues at the USPTO, Vidal asked that those who remain “stand ready to work with the incoming administration’s team.”  This approach is exactly what is needed and fits the USPTO’s tradition of maintaining operational continuity through political transitions. (more…)

Supreme Court Patent Cases – November 2024

Patent

by Dennis Crouch

Patent law cases continue to be brought to the Supreme Court's attention, even though the court has not granted certiorari in any patent case for some time.  Twelve potential cases have documents on file with the court. Currently, eight certiorari petitions are briefed and pending before the Court, while four additional petitions are anticipated in the coming months based on recently-filed extension requests.

As has been true in recent years, patent eligibility petitions occupy a substantial portion of the docket, mostly focusing on software patents. Two Hatch-Waxman cases are pending as is a case focusing on the on sale bar post-AIA and post-Helsinn.  In addition, two cases focus on the Federal Circuit's ongoing and unjustified use of summary affirmances for a large portion of its docket.

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IP Rights and AI Regulation: Finding the Right Balance

Patent

by Dennis Crouch

I’m excited to share a new article I recently published examining the relationship between intellectual property rights and artificial intelligence regulation, recently published in Volume 89, Issue 3 of the Missouri Law Review. Before diving into the substance, I want to express my sincere gratitude to the Missouri Law Review editors and staff, not only for their exceptional editorial work on this article but also for their tremendous efforts in organizing our March 2024 symposium that I co-organized on “AI and Society: Government, Policy, and the Law.” The symposium brought together dozens of leading scholars to explore the pressing challenges of AI governance, and those discussions helped shape many of the ideas presented in the piece.

The article builds on foundational work of scholars, including Amanda Levendowski, who has explored how copyright law can address AI bias, as well as Mark Lemley and Bryan Casey, whose research on “fair learning” has shaped our understanding of AI training and copyright.  My article argues that we should be cautious about viewing IP as a primary regulatory tool. (more…)

From Chief Judge Markey’s Promise to Rule 36: We Do Not Just Render One-Worded Decisions

Patent

by Dennis Crouch

The Supreme Court currently has before it a unique opportunity to address a longstanding problem with the Federal Circuit’s practice of issuing no-opinion summary affirmances in patent cases. The recently filed ParkerVision petition presents a compelling argument that the Federal Circuit’s heavy reliance on Local Rule 36 judgments violates 35 U.S.C. § 144’s requirement that the court “shall issue… its mandate and opinion” when deciding appeals from the Patent Office. This violation has become particularly acute given the surge in appeals from Patent Trial and Appeal Board (PTAB) decisions in recent years. ParkerVision vs. TCL Indus., 24-518.  While appellate opinions serve fundamental interests of human dignity and the rule of law — interests that take on special significance as here when no other Article III court has addressed the dispute — this case presents an even clearer problem because Congress has specifically mandated through Section 144 that the Federal Circuit ‘shall issue’ an opinion in appeals from USPTO decisions.

The ParkerVision petition arises from the Federal Circuit’s summary affirmance of PTAB decisions that invalidated the patentee’s claims related to wireless communication technology. After TCL and LG Electronics successfully challenged the patents via inter partes review (IPR), ParkerVision appealed to the Federal Circuit raising procedural questions about whether the PTAB improperly relied on arguments that had been waived. Rather than addressing the merits of the arguments, the Federal Circuit instead disposed of both appeals without any opinion and rather simply an “AFFIRMED” judgments under Rule 36, providing no explanation for its decisions.

The question presented thus asks:

Whether 35 U.S.C. § 144, which requires the Federal Circuit to issue ‘opinion[s]’ in PTAB appeals, is a reason-giving directive that prohibits the Federal Circuit’s practice, under Federal Circuit Rule 36(a), of summarily affirming PTAB decisions without issuing opinions.

ParkerVision vs. TCL Indus., 24-518 (petition for writ of certiorari).

More reading:

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Oral Arguments Preview: Teva v. Amneal Tests Scope of Orange Book Device Patent Listings

Patent

by Dennis Crouch

Today at 2pm Eastern, the Federal Circuit will hear arguments in a case that could significantly shape pharmaceutical patent listing practices under the Hatch-Waxman Act. In Teva v. Amneal (No. 24-1936), the court will consider whether device patents that don't explicitly recite active drug ingredients can be properly listed in FDA's Orange Book. William Jay of Goodwin Procter will argue for Teva; Steven Maddox of Procopio will represent Amneal.  The judges are not yet listed for the case, but I expect it will be three judges picked from these six: Chief Judge Moore, Judge Dyk, Judge Prost, Judge Chen, Judge Hughes, or Judge Stark.  (Update: It is judges: Prost, Taranto, and Hughes).

The case centers on several Teva patents related to its ProAir HFA inhaler device and dose counter. After Amneal filed an ANDA for a generic version, it counterclaimed--seeking delisting of these patents from the Orange Book. The N.J. district court granted Amneal's motion, ordering Teva to delist the patents. The key question on appeal is whether device patents must explicitly claim the active drug ingredient to qualify for Orange Book listing under 21 U.S.C. § 355(b)(1)(A)(viii).  The key benefit to patentees is an automatic 30-month stay of FDA approval that kicks in if the patentee sues a generic ANDA filer. This effectively blocks generic entry during litigation without requiring the patentee to show likelihood of success or irreparable harm as would be needed for a preliminary injunction.

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The Federal Circuit’s Antisuit Injunction Decision in Ericsson v. Lenovo has Broader Implications for Global SEP Litigation

Patent

I previously wrote about the Federal Circuit’s FRAND international injunction decision in Ericsson v. Lenovo, but also invited Prof. Jorge Contreras to provide his insight.  Contreras is one of the world’s leading experts on FRAND litigation and standards-essential patent licensing.  His analysis of the Federal Circuit’s decision in Ericsson particularly highlights the court’s new limits on injunctive relief for FRAND violators and suggests renewed U.S. court engagement in global rate-setting disputes. — Dennis Crouch

= = =

Guest Post by Professor Jorge L. Contreras

On October 24, 2024, the Court of Appeals for the Federal Circuit (No. 24-1515, 2024 U.S. App. LEXIS 26863) cleared the way for Lenovo to seek an antisuit injunction against Ericsson in the parties’ global FRAND litigation. In doing so, it established important precedent for cases involving standards-essential patents.

Background

The case stems from the dispute between Ericsson and Lenovo over licenses to their respective portfolios of patents essential to the 5G wireless telecommunications standards (standards-essential patents or SEPs). Under the applicable rules of the European Telecommunications Standards Institute (ETSI), each of the parties committed to grant licenses under its SEPs to manufacturers of standardized products on terms that are fair, reasonable and nondiscriminatory (FRAND). As the parties, after years of negotiation, were unable to agree on the FRAND royalties for a cross-license of these SEPs, they each initiated litigation in various jurisdictions including the United Kingdom, Brazil, Colombia, the US International Trade Commission and the U.S. District Court for the Eastern District of North Carolina (EDNC). In the EDNC, each party accused the other of infringing its 5G SEPs and breaching its contractual FRAND obligations to ETSI.

In late 2023, Ericsson obtained injunctions against Lenovo’s sale of 5G-enabled phones in Brazil and Colombia. In response, Lenovo petitioned the EDNC for an antisuit injunction (ASI) (technically, a temporary restraining order), which would have barred Ericsson from enforcing its Brazilian and Colombian injunctions against Lenovo until the resolution of the FRAND dispute in the U.S. court. In February 2024, the EDNC denied Lenovo’s motion for an ASI (No. 5:23-CV-00569-BO, 2024 U.S. Dist. LEXIS 26060, 2024 WL 645319).  Lenovo appealed to the Federal Circuit, which reversed and remanded. (more…)

Text vs. Purpose: The Hughes-Reyna Divide Reaches Veterans’ Benefits in Soto

Patent

by Dennis Crouch

The Supreme Court has before it another important petition highlighting the Federal Circuit's approach to statutory interpretation and administrative authority. Soto v. US stems from a Federal Circuit appellate decision focusing on the statute of limitations for awarding back pay associated with Combat-Related Special Compensation. The Supreme Court also recently heard oral arguments in Bufkin v. McDonough, which presents another important question about veterans' benefits - specifically whether the Court of Appeals for Veterans Claims must independently review the VA's application of the "benefit-of-the-doubt" rule in veterans' cases. The University of Missouri Veterans Clinic has played an active role in both of these pending cases as amicus counsel.

The pending Soto v. US petition highlights a recurring philosophical divide between Federal Circuit Judges Hughes and Reyna, with Hughes taking a formalist approach requiring specific statutory language while Reyna advocates for a more functional analysis that favors the underdog (disabled veterans). This post first walks through the Soto case and pending petition and then delves a bit deeper into the contrast between these two leading jurists at the Federal Circuit.

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A Tale of Two Dewberries: Corporate Structure vs. Trademark Remedies

Patent

by Dennis Crouch

The Supreme Court is set to hear arguments in Dewberry Group v. Dewberry Engineers (No. 23-900) in December 2024, addressing the trademark-specific question of whether courts can disgorge profits earned not by the defendant itself, but also by legally separate non-party corporate affiliates.  In many ways, I see this case largely as a corporate "structure of the firm" case.  Does trademark law permit business owners to formally structure their set of closely related businesses to avoid spillover liability?  Most notably, corporate attorneys are regularly looking at ways to divide companies to limit spillover liability. The golden target is to create low-profit (or non-profit) entities that hold all the potential liability; and then shift profits to other corporate affiliates that do not have any liability.  In the trademark sense, you may have a media holding company that does all the infringing advertising; and then a set of franchisees that don't do any advertising themselves, but do reap the profits.

Background: The Dewberry dispute involves two real estate-related companies: Dewberry Group (defendant/petitioner) and Dewberry Engineers (mark-holder/respondent). After finding that Dewberry Group had infringed Dewberry Engineers' trademarks, the district court ordered Dewberry Group to disgorge nearly $43 million in profits. But here's the twist - those profits were earned not by Dewberry Group itself (which actually showed losses), but by its affiliated companies that were never parties to the litigation.

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Supreme Court Asked to Address Constitutionality of Judge Newman Removal

Patent

by Dennis Crouch

Miller Mendel, Inc. has petitioned the Supreme Court to review a Federal Circuit decision invalidating its background check software patent in a case that raises questions about both judicial independence and patent eligibility standards. The petition comes after both the district court and Federal Circuit found Miller Mendel's US Patent No. 10,043,188 ineligible under § 101 as directed to an abstract idea.

The Patent and Technology at Issue: The '188 patent covers a software system for managing pre-employment background investigations. The claimed system automates many aspects of the background check process, including collecting and storing applicant information, managing communications with references via email hyperlinks, and automatically generating suggested lists of law enforcement agencies based on an applicant's residential address.  Miller Mendel accused the City of Anna police department (northern Texas) of infringement through its use of Guardian Alliance Technologies' background check platform. The City successfully moved for judgment on the pleadings arguing patent ineligibility under § 101. The court characterized the claimed automation features as merely implementing conventional background check steps on generic computer components.

Three Questions for Supreme Court Review

The petition, filed by Kurt Rylander of Rylander & Associates, presents three questions that go to fundamental issues in patent law and judicial administration:

1. Constitutionality of Removing Article III Judges

The most striking issue challenges the Federal Circuit's effective removal of Judge Pauline Newman from judicial duties for refusing to submit to mental health evaluations. The petition argues that the Federal Circuit's self-policing usurped Congress's exclusive constitutional authority to remove Article III judges through impeachment. 

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IP & Ski 2025: The Ultimate Intellectual Property Conference Returns to Vail

Patent

by Dennis Crouch

Mark your calendars for January 8-11, 2025, as the IP & Ski Conference returns to the slopes of Vail, Colorado. This unique conference combines some of the most engaging intellectual property speakers with world-class skiing — all at the ski-in/ski-out Grand Hyatt Vail. (Although I often stay at the Minturn hostel to save some money).  But, where else can you discuss the latest IP law developments with leaders in the field while riding a chairlift up to 11,500 feet.  [I’ll note that every year a good number of folks spend the day with non-skiing activities.]

This year’s program features an extraordinary lineup of speakers, including Judge Kara Stoll from the Federal Circuit, Judge Alan Albright from the Western District of Texas, and top in-house counsel, including from Microsoft, Cisco, and Novartis. I’ll be part of two sessions on Saturday morning, one focusing on AI’s impact on patent practice and a review of 2024’s most significant patent cases.  Prof. Jeanne Fromer of NYU will deliver the trademark review.  (If you have not encountered her, Prof. Fromer is amazing). (more…)

AI’s Role in U.S. Elections: Republican vs. Democratic Views

Patent

Our guest author today is a very bright high school student, Kavya Gundlapalli, who is considering a career in law. – DC

Guest Post by Kavya Gundlapalli*

As America heads toward the 2024 presidential election, artificial intelligence (AI) has emerged as a surprising campaign flashpoint. From voter targeting to political advertising, AI is reshaping how candidates connect with voters – and exposing a divide over how this powerful technology should be governed.  A partisan split in this area mirrors broader ideological differences about government regulation, with Republicans championing market freedom and innovation, while Democrats tend to advocate for the same, but with stronger federal oversight and ethical guardrails.  (more…)

Federal Circuit Issues Twin Decisions in Cellspin Cases: Procedure and Timing Matter

Patent

by Dennis Crouch

The Federal Circuit today issued two related opinions in long-running patent litigation between Cellspin and various technology companies including Fitbit, Nikon, Nike, and others. The decisions highlight important procedural issues in patent litigation while also addressing the timing requirements for judicial recusal motions.  Collectively, they highlight the reality that the outcome of complex civil litigation often turns on procedural issues.

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Federal Circuit’s “Red Flags” Fee Analysis Under Fire: DISH Seeks En Banc Review

Patent

by Dennis Crouch

DISH Network is seeking en banc review of a Federal Circuit panel decision that vacated a $3.9 million attorney fee award to the victorious defendant in Realtime Adaptive Streaming L.L.C. v. Sling TV, L.L.C., 113 F.4th 1348 (Fed. Cir. 2024).  The petition challenges the panel's approach to reviewing district court fee determinations under 35 U.S.C. § 285, arguing that it contradicts Supreme Court precedent of both Octane Fitness and Highmark, which provided district courts with substantial autonomy in determining whether to award attorney fees.

The case stems from Realtime's assertion of patents related to digital data compression against DISH. After protracted litigation including inter partes review proceedings and multiple stays, the District of Colorado ultimately found Realtime's asserted claims from U.S. Patent No. 8,867,610 patent ineligible under 35 U.S.C. § 101. The district court judge, R. Brooke Jackson, then deemed the case "exceptional" under § 285 and awarded DISH $3.9 million in attorney fees.

After talking through the en banc petition, this post spends some time focusing in on another recent fee award - this one a $9 million award against Dartmouth College and its exclusive licensee ChromaDex.

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Federal Circuit Vacates Denial of Anti-Suit Injunction in FRAND Dispute, Clarifying “Dispositive” Analysis

Patent

Dennis Crouch

The Federal Circuit has vacated the E.D.N.C. Judge Boyle’s denial of an anti-suit injunction in a major FRAND licensing dispute between Ericsson and Lenovo. Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., No. 24-1515 (Fed. Cir. Oct. 24, 2024). The decision provides important guidance on when U.S. courts should issue anti-suit injunctions to prevent SEP holders from enforcing foreign injunctions while FRAND obligations are being adjudicated domestically.  Importantly, the Federal Circuit adopted the Ninth Circuit test from Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012), and added some further refinement making anti-suit injunctions easier to obtain. (more…)

The Enduring Patent Owner/Licensee Standing Distinction

Patent

by Dennis Crouch

In Zebra Technologies Corporation v. Intellectual Tech LLC, No. 24-114, IT has filed its brief in opposition to Zebra's petition for writ of certiorari. The case focuses on patent-owner standing in situations where multiple entities share patent rights — particularly whether a patent owner loses Article III standing when because of a patentee default that provides a third party (here, a security interest holder) the right to license the patent.

This portion of the case stems from a 2011 loan agreement where OnAsset Intelligence (IT's parent company) pledged the asserted patent (US7233247) as collateral to Main Street Capital. After OnAsset defaulted in 2013, the security agreement gave Main Street significant rights, including the ability to "sell, assign, transfer, pledge, encumber or otherwise dispose of the Patents." OnAsset later assigned the patent to its subsidiary IT, who then sued Zebra for infringement. The key question is whether Main Street's post-default rights stripped IT of the exclusionary rights necessary for Article III standing. The Federal Circuit sided with the patentee - finding that IT retained sufficient rights as the patent owner even though Main Street had the concurrent ability to license the patent. That outcome is now being challenged at the Supreme Court, with Zebra arguing that the ability to obtain a license from Main Street negates IT's standing to sue for infringement.

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