In a pair of nonprecedential decisions, the Federal Circuit affirmed three PTAB inter partes review decisions–finding BillJCo’s patents unpatentable as obvious under 35 U.S.C. § 103.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.
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.
I just read Atrium Medical’s SCOTUS petition — asking the court help resolve a circuit split involving the the Brulotte & Kimble doctrines that bars collecting royalties after a patent expires, even if agreed-to by contract.
In 1964, the Supreme Court established in Brulotte v. Thys Co. that “a patentee’s use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se.” 379 U.S. 29 (1964). The Court reaffirmed this rule in 2015 in Kimble v. Marvel Entertainment, LLC, where it held that “a patent holder cannot charge royalties for the use of his invention after its patent term has expired.” 576 U.S. 446 (2015). The Kimble Court explained that this rule should be “simplicity itself to apply.” A court “need only ask whether a licensing agreement provides royalties for post-expiration use of a patent. If not, no problem; if so, no dice.” Importantly, license agreements can properly extend beyond a patent’s expiration date if the post-expiration royalties are payments for something else—such as unexpired patents, trade secrets, or know-how—rather than for the continued use of the expired patent. Despite this straightforward directive, the circuits have split on how to determine what royalties are actually “for.”
In an interesting decision affecting one of the most high-profile patent disputes in biotechnology, the Federal Circuit has partially vacated and remanded a PTAB decision that awarded priority of invention for CRISPR-Cas9 technology in eukaryotic cells to scientists at the Broad Institute. Regents of the University of California v. Broad Institute, Inc., Nos. 2022-1594, 2022-1653 (Fed. Cir. May 12, 2025). The court determined that the PTAB applied an incorrect legal standard for “conception,” a fundamental concept in patent law’s priority determination under the pre-America Invents Act first-to-invent system.
Understanding Conception Under Patent Law: The court reiterated the classic definition of conception as “the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” Burroughs Wellcome Co. v. Barr Lab’ys, Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994). The court emphasized that “conception is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.”
However, conception is not complete invention — something that also requires construction to practice, either actual or constructive. Notably, it is the process of reduction to practice that truly shows that the invention works. Backtracking, this means that for conception “an inventor need not know that his invention will work for conception to be complete.” (more…)
The copyright world experienced a major shift in May 2025 with the abrupt dismissal of Dr. Carla Hayden (Librarian of Congress), followed by the release of a landmark U.S. Copyright Office report on AI training that concluded many current industry practices likely do not qualify as fair use, and culminating in the firing of Shira Perlmutter (Register of Copyrights) just after the report’s publication. This drama is not a resolution of the legal question, but rather seems to intensify and further politicize the debates over whether AI developers must seek permission and pay for the copyrighted works they use to train their systems. As the report’s opening paragraphs explain: “The stakes are high, and the consequences are often described in existential terms.”
The report released last week in “pre-publication” form, titled “Copyright and Artificial Intelligence, Part 3: Generative AI Training,” is the latest installment in the Copyright Office’s attempt at comprehensive examination of AI’s intersection with copyright law. AI training often requires uploading of entire copyrighted works into the systems, and so is easily categorized as prima facie copyright infringement — absent a license or fair use excuse. The 100+ page report offers a nuanced analysis, but ultimately suggests that in many situations the use will not be fair use.
The quick release of this report appears to have circumvented folks in leadership outside of the Office. Although it has not formal legal weight, courts are likely to consider its reasoning as persuasive authority as they decide the dozens of AI training copyright cases currently pending.
Update: Todd Blanche and Paul Perkins have been tapped by President Trump to be acting Librarian of Congress and Copyright Registrar, respectively. Todd Blanche, recently appointed as Deputy Attorney General at DOJ has spent the past two decades litigating fraud and corruption issues, either as a prosecutor or for the defense. Most recently, Blanche was defense attorney during a 2024 New York criminal trial, which resulted in Trump’s conviction on 34 felony counts. Perkins has been with DOJ since 2016, and is an Associate Deputy Attorney General. Perkins spouse, Hilary Perkins was tapped earlier this year to be chief counsel for the Food and Drug Administration. However, Senator Josh Hawley forced her removal with arguments that she was pro-abortion. (more…)
This is a follow-up on my recent discussion of Ingenico v. IOENGINE, a potentially groundbreaking decision that appears to have unintentionally upended fundamental principles of IPR estoppel. The Federal Circuit’s ruling threatens to undermine Congressional intent and, as a consequence, dramatically shift the AIA balance in favor of IPR challengers and against patent owners. Yet the opinion shows no signs that the panel recognized the far-reaching implications of their interpretation. Given the sweeping nature of this change to settled patent law practice and the apparent lack of conscious intent to revolutionize IPR estoppel doctrine, this case presents compelling grounds for sua sponte panel or en banc rehearing before the precedent takes root.
As I examine the case, and underlying materials, I’m becoming convinced that the appellate panel did not intend the far-reaching potential consequences of the decision. Certainly, the court’s opinion did not expressly recognize or contend with the sweeping change it was making. This approach reflects a particular judicial philosophy that prioritizes strict textual interpretation. The opinion follows a formalist approach that focuses on narrow statutory interpretation without fully engaging with the broader policy implications or contextual factors that might inform the analysis. This interpretive style, while internally consistent, can lead to impractical outcomes that may not align with underlying legislative goals or intent.
The Federal Circuit recently affirmed a decision from the Trademark Trial and Appeal Board (TTAB) that refused registration of the mark “US SPACE FORCE” based on false suggestion of a connection with the United States. In re Thomas D. Foster, APC, No. 2023-1527, slip op. at 1 (Fed. Cir. May 7, 2025). The precedential outcome of the case is important — I believe this is the first CAFC case affirming the four-part test for false connection that had been developed by the Board — although the holding indicates that the test is more flexible than previously suggested.
During his first term, President Trump started the United States Space Force — 20 December 2019. Trump had actually proposed the agency that he simply called the “Space Force” in a March 13, 2018 speech. Within the week, IP attorney Thomas D. Foster filed an intent-to-use registration application Section 1(b) of the Lanham Act to register “US SPACE FORCE” for various goods and services on behalf of his eponymous law firm. It was not until later that the U.S. government formally announced the US Space Force. (more…)
The Supreme Court recently received a petition for certiorari from NexStep, Inc., challenging a Federal Circuit decision that epitomizes a four-decades-long trend of restricting the doctrine of equivalents (DOE). The petition in NexStep, Inc. v. Comcast Cable Communications, LLC (No. 24-1137), presents a fundamental question: Has the Federal Circuit improperly shackled the doctrine of equivalents with rigid, formulaic requirements contrary to Supreme Court precedent? More particularly, the petition asks: “Whether a patentee must in every case present ‘particularized testimony and linking argument’ to establish infringement under the doctrine of equivalents.”
The case also has a nice baseball analogy. The patent requires a “single action” performed by a user, and the accused device needs three button pushes. The patentee’s expert, when presenting the DOE case to the jury, used a baseball pitcher analogy – recognizing that throwing a ball includes numerous small steps to accomplish the single action of throwing. The argument here, which the jury agreed was meritorious, is that the three button pushes – while not literally the same as a single action – was the equivalent and thus infringing. The Federal Circuit wanted more – holding that the jury did not have enough evidence to reach that conclusion. (more…)
In a significant decision narrowing the scope of Inter Partes Review (IPR) estoppel, the Federal Circuit has held that a patent challenger who previously pursued an IPR can still rely on system prior art in district court litigation, even when that system was fully documented in publications that could have been raised during the IPR. A key implication from this case is that despite the estoppel provision, a printed publication from an IPR can be later used in the litigation as part of the same combination of references used in the IPR, so long as the publications are categorized by the patent challenger in the litigation as proving that the invention was known/used/on-sale. Ingenico Inc. v. IOENGINE, LLC, No. 23-1367 (Fed. Cir. May 7, 2025). Writing for a unanimous panel, Judge Hughes explained:
IPR estoppel does not preclude a petitioner from relying on the same patents and printed publications as evidence in asserting a ground that could not be raised during the IPR, such as that the claimed invention was known or used by others, on sale, or in public use.
The decision resolves a long-standing split among district courts regarding the proper interpretation of the term “ground” in 35 U.S.C. § 315(e)(2), which bars IPR petitioners from asserting in district court “any ground that the petitioner raised or reasonably could have raised during that inter partes review.” The Federal Circuit held that “ground” refers to the specific statutory basis for invalidity (e.g., anticipation or obviousness based on patents or printed publications), not the prior art references themselves. The Federal Circuit clarified that ‘ground’ refers specifically to the statutory bases available in an IPR (anticipation or obviousness via patents/printed publications). As such, petitioners remain free to use identical prior art evidence to support district court invalidity grounds not available in IPR—such as prior public use or sale. (more…)
The Federal Circuit’s May 6, 2025 decision in Jazz Pharmaceuticals v. Avadel focuses on the scope of injunctive relief for infringement under 271(e). The appellate court held that a district court may not enjoin a pharmaceutical company from initiating new clinical trials or offering open-label extensions where such activities are protected by the Hatch-Waxman Act’s safe harbor provision, even when the company’s commercial product has been found to infringe a valid patent. The court reversed the portions of the injunction that would have prohibited these activities, and vacated and remanded the portion that barred seeking FDA approval for new indications.
Purdue Pharma has filed a petition for certiorari asking the Supreme Court to review what it characterizes as the Federal Circuit’s overly rigid application of the “nexus” requirement for objective indicia of non-obviousness. I agree with the petition that the Federal Circuit’s approach contradicts the Supreme Court’s longstanding precedent requiring a flexible and expansive analysis of obviousness factors, exemplified both by the court’s 2007 KSR decision as well as older cases, such as Minerals Separation v. Hyde, 242 U.S. 261 (1916).
The Federal Circuit’s 1993 decision in In re Rijckaert, 9 F.3d 1531 (Fed. Cir. 1993), set an important boundary on the use of inherency in obviousness determinations. I recently reread the case and wanted to reintroduce the case that continues to be regularly cited in both patent prosecution and litigation.
Rijckaert involved a patent application for a magnetic recording apparatus that established a precise mathematical relationship between time expansion/compression and three variables: α (the wrapping angle of tape around the drum), n (the number of head pairs), and M (non-recording intervals). This relationship—expressed as α*n/(180*(M+1))—allowed for optimal track filling on the magnetic tape. The approach was designed to allow reduction of acoustic noise by positioning heads close together with rigid mechanical coupling, while maintaining proper signal timing and track alignment regardless of drum wobble or other mechanical imperfections. The PTO rejected the application as obvious two prior art references, despite neither reference teaching the claimed relationship or even discussing all three variables in combination.
The Board of Patent Appeals upheld the rejection by assuming that the relationship would be inherently satisfied if one assumed specific values for the variables. The Federal Circuit, however, reversed, emphasizing that the prior art failed to establish a prima facie case of obviousness because it neither disclosed nor suggested the claimed relationship. (more…)
I enjoyed reading Professor S.I. Strong’s new article on AI-lawyering and her proposed solution that inspired by the English legal profession’s structure. Although I think this is all still early stage, emerging empirical research is showing how generative AI usage often triggers “metacognitive laziness” and “cognitive offloading” in users. Studies particularly with law students show reduced motivation to learn, diminished ability to self-regulate, and less deep engagement with material—gaining only improved short-term performance on individual tasks. Routine reliance on AI usage is also showing an atrophy of other critical skills. Namely, when professionals have confidence in GenAI’s ability to perform a task, those folks spend much less effort thinking critically about the issues.
In a case highlighting the ongoing challenge of claim construction in software patents, the Federal Circuit has affirmed the district court’s determination that Fintiv’s asserted claims are invalid as indefinite. Fintiv, Inc. v. PayPal Holdings, Inc., No. 2023-2312 (Fed. Cir. Apr. 30, 2025). In the software-element two-step, the court first held that the claim terms “payment handler” and “payment handler service” should be treated as “mean-plus-function” limitations under 35 U.S.C. § 112(f) because the claim terms used lacked inherent structural meaning; and then as a result found the claims invalid as indefinite because the specification lacked sufficient structural support. U.S. Patent Nos. 9,892,386, 11,120,413, 9,208,488, and 10,438,196.
The Statutes at Issues:
35 U.S.C. 112(b) Conclusion. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
35 U.S.C. 112(f) Element in Claim for a Combination.
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Although the Supreme Court permits color itself to serve as a trademark, the cases have generally not been strongly supportive. The Federal Circuit’s recent decision on green medical examination gloves fits this standard like a … glove. In re PT Medisafe Technologies (Fed. Cir. April 29, 2025). The decision particularly focuses on color mark genericness, holding that the dark green color for chloroprene medical examination gloves was “so common in the industry that it cannot identify a single source.”
Last week, Acting USPTO Director Coke Morgan Stewart vacated Final Written Decisions invalidating two semiconductor patents, remanding the cases back to the PTAB with instructions to permit discovery into potential privity relationships. Semiconductor Components Industries, LLC v. Greenthread, LLC, IPR2023-01242, IPR2023-01243, IPR2023-01244 (April 24, 2025). This represents a significant rebuke of the PTAB’s handling of time-bar issues and privity allegations under 35 U.S.C. § 315(b), and is yet another general victory for patentees seeking relief from IPR cancellations. IPR2023-01242 -1243 -1244 Semiconductor v Greenthread DR Decision
Although the privity issue is juicy because it suggests backroom dealing, two additional aspects of the decision may end up being more important: the Board’s refusal to hear certain arguments about prior art disclosures and its improper exclusion of district court claim construction orders.
In 2024, the USPTO released its AI inventorship guidance that established a “significant contribution” standard for human inventorship for AI-assisted innovation situations. This short essay argues that the USPTO’s approach creates a fundamental legal inconsistency with patent law’s bedrock requirement of complete human conception. Because the USPTO’s approach lacks both legal weight and legal merit, it ultimately threatens the validity of patents covering inventions generated with substantial AI-assistance. (more…)
Although most of our fare is IP related, I have also been keeping an eye on other Federal Circuit cases. On April 28, 2025, the Supreme Court hears oral arguments in one of those, Soto v. US, a case could significantly impact thousands of combat-disabled veterans seeking retroactive benefits. The Court will decide whether veterans can receive full retroactive Combat-Related Special Compensation (CRSC) payments or are instead limited to six years of backpay under the federal Barring Act.
Background: Marine veteran Simon Soto served in Mortuary Affairs during Operation Iraqi Freedom, where he retrieved fallen service members, often under combat conditions. This obviously stressful assignment led to severe PTSD, resulting in his medical retirement in 2006. In December 2008, the Department of Veterans Affairs rated him 100% disabled due to combat-related PTSD, which qualified him for CRSC under a 2008 program expansion that opened benefits to all medically retired veterans with combat-related disabilities.
However, Soto did not apply for these benefits until 2016, approximately eight years after becoming eligible. While the Navy approved his claim, it only provided retroactive payments dating back six years (to December 2010), citing the six year statute of limitations found in the “Barring Act.” 31 U.S.C. § 3702. Soto argues that the CRSC statute itself (10 U.S.C. § 1413a) contains its own settlement mechanism that displaces the Barring Act’s time limitation. The Barring Act provides “authority to settle claims” against the U.S. Government, and particularly identifies a settlement process with the six-year statute of limitations to be used “except as provided [by] another law.” The question then is whether the CRSC statute does, in fact, provide, alternative settlement authority. The basic problem is that the CRSC statute does not expressly state that it is providing “settlement” authority and it contains no statute of limitations. On this second point, Soto suggests that the absence of a SOL is a feature
As I wrote last November, the Federal Circuit split 2-1 in reversing the district court’s ruling in favor of Soto. Judge Todd Hughes, writing for the majority, applied a formalist approach requiring specific statutory language. Hughes concluded that nothing in the CRSC statute expressly supersedes the Barring Act, looking for “magic words” such as specific authorization to “settle” claims or an alternative limitations period. Judge Jimmie Reyna dissented, advocating for a more functional analysis that would benefit the disabled veterans. Reyna argued that the majority’s test was unnecessarily rigid, pointing out that over a century ago, the Supreme Court defined “settle” in this context to simply mean making an administrative determination of the amount of money due on a claim. In his view, the CRSC process unquestionably meets that definition. This divide between Hughes and Reyna reflects a broader philosophical tension I’ve observed across multiple cases, with Hughes typically adopting a text-focused formalist approach and Reyna favoring a more purposive or justice-oriented analysis that considers practical impacts. (more…)
“You only get one shot, do not miss your chance to blow. This opportunity comes once in a lifetime, yo.” Emenim
The Federal Circuit recently affirmed the District of Delaware’s denial of Franz Wakefield’s motion for relief from judgment under Rule 60(b), underscoring the importance of timely raising arguments during the normal appeal process. Wakefield v. Blackboard Inc., Nos. 2024-2030 (Fed. Cir. Apr. 23, 2025).
Wakefield, proceeding pro se, sought to reopen a judgment invalidating his U.S. Patent No. 7,162,696 based on indefiniteness grounds more than two years after the district court’s original judgment and more than a year after the Federal Circuit’s affirmance. The Federal Circuit panel of Judges Lourie, Dyk, and Chen had little difficulty concluding that the district court did not abuse its discretion in finding the Rule 60(b) motion untimely. As the court emphasized, Rule 60(b) is not a substitute for appeal. (more…)
