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.

• Petition for a Writ of Certiorari
• Response to Petition for Writ of Certiorari
• Dennis Crouch, Zebra's Stripes: Just So Stories about Patent Standing, Patently-O (Aug. 11, 2024)
• Dennis Crouch, Post-Default Creditor's Right to Assign, License and Enforce Patent does not Disturb Patentee's Separate Right to Sue Infringers, Patently-O (May 1, 2024)

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.

by Dennis Crouch

In a pending petition for certiorari, the Maltese company Celanese Int'l is poised to ask the Supreme Court to resolve an important question about the scope of the AIA's on-sale bar: whether sales of products made using a secret process can bar later patent protection for that process. The issue arises from a Federal Circuit decision upholding the ITC's invalidation of Celanese's patents covering methods for manufacturing the artificial sweetener Ace-K. Celanese Int'l Corp. v. Int'l Trade Comm'n, 67 F.4th 1361 (Fed. Cir. 2024).  The court recently granted Celanese with an extension of time to file its formal petition for writ of certiorari, due December 10, 2024.  As is typical, the petitioner used its request for extension as a first opportunity to highlight the importance of the case and preview its primary arguments.

• Application for Extension of Time.

I have been following this case for some time:

by Dennis Crouch

In a recent decision, the PTAB affirmed an examiner's obviousness rejection of claims related to an anodizing process for aluminum and magnesium alloys. Ex parte Eidschun, Appeal 2023-003437 (PTAB Oct. 16, 2024). The case offers an example of a R132 declaration from the inventors that was deemed insufficient to provide evidence of unexpected results in order to rebut obviousness arguments.  To be more precise, the declaration appears to have overcome the examiner's obviousness rejection, but the Board provided new reasoning (based on the same references) and so sustained the rejection based upon these new grounds.

by Dennis Crouch

This post offers some insight into four patent-focused academic articles that I've been reading lately.

1. A textualist approach to patent eligibility under § 101;
2. Reflections on the Myriad, ten years later
3. Message to Competition Regulators: Patents are not simply a necessary evil
4. Philosophical critique of AI inventorship

These pieces offer insights into ongoing debates within patent law and policy. Although I don't necessarily agree with the conclusions made by the various authors, each article provides fodder for continued discussion on these important topics.

We continue to see lots of action focusing on obviousness-type double patenting (ODP) in the U.S. patent law context.  In Allergan v. MSN, the Federal Circuit created a major loophole for patentees and undermined the 2023 Cellect decision by holding that extended PTA in one family-member patent does not create an ODP problem so long as the extended term is in a first-filed, first-issued patent. Allergan USA, Inc. v. MSN Laboratories Priv. Ltd., 111 F.4th 1358 (Fed. Cir. 2024).  Sun Pharma has petitioned for en banc rehearing - hoping to invalidate Allergan's protected patent.

Prior posts:

• En Banc Review in Allergan: Rehearing Petition Tackles ODP Safe Harbor and WD Essential Elements
• Family Planning Patent Style: Allergan, Cellect, and the ODP Maze

Two amicus briefs were recently filed supporting the petition - One by the Association for Accessible Medicines (AAM) and the other by a corporate group led by Alvogen PB.

by Dennis Crouch

The USPTO has issued final rules aimed at expanding opportunities for practitioners to appear before the Patent Trial and Appeal Board (PTAB). The rules, which go into effect on November 12, 2024, make several changes to the requirements for counsel in AIA-trial proceedings. However, the final rules do not go as far as some had proposed in allowing non-registered practitioners to take lead roles.  In other words, lead counsel must be a registered patent practitioner.

by Dennis Crouch

The landscape of patent litigation has been dramatically reshaped by the rise of third-party litigation funding (TPLF) over the past decade. As someone who has been involved in patent law issues for 20+ years, I can confidently say that if I were asserting a patent today, I would actively seek litigation finance to mitigate risk, even if I had sufficient resources to self-fund (which I don't). The availability of TPLF allows patent holders to create high-caliber legal teams and can also provide a strategic advantage by demonstrating to opponents that the case has been vetted by sophisticated investors willing to back it financially.

However, this trend toward litigation finance comes with complications and controversies. While TPLF has undoubtedly increased access for many patent holders, it has also given rise to significant ethical concerns and abuses. One of the most pressing issues is the potential for effectively sidelining the nominal plaintiff – the actual patent holder – in favor of the financial interests of funders and attorneys. In addition, there is some notion that TPLF is often channeled into the US via foreign sources -- something that has raised concerns that this could somehow destabilize the rule of law.

At the same time, it's important to acknowledge the positive impacts of TPLF. The availability of litigation finance has allowed larger, more established law firms to take on plaintiff-side patent cases that they might have previously declined due to risk or resource constraints. Anyone working in a law firm knows how difficult it is to convince partners to take on risk, and TPLF offers guaranteed partial payouts from funders even if the defendant wins.  That means that these firms can assemble formidable legal teams, potentially leveling the playing field against well-resourced defendants and improving the overall quality of patent litigation.

by Dennis Crouch

In a stunning development, the USPTO recently terminated proceedings in approximately 3,100 patent applications due to the fraudulent use of a practitioner's signature. This mass termination, announced on October 2, 2024, stems from an investigation that uncovered misconduct involving the unauthorized use of a registered patent agent's electronic signature.

The outcome here appears potentially over the top in the way that it punishes the patent applicants -- almost all Chinese companies -- for unknowingly participating in the fraud.  As one attorney who is now representing one of the impacted applicants explained to me: "punishing the applicants for the actions of the practitioner goes a bit far, especially where the punishment is termination with no remedy."  A number of the applicants used Chinese counsel who identified and hired the offending firm (W&K) years ago and worked with them for some time without issue.  I would not be surprised if some of these applicants push for judicial review, perhaps by filing an APA action.

by Dennis Crouch

The Supreme Court has denied certiorari in all of the patent cases it considered in its  first conference of the October 2024 term:

• Denied: 23-1349 Provisur Technologies, Inc. v. Weber, Inc..  Does an on sale product constitute a printed publication that can be asserted in an IPR.
• Denied: 23-1298 United Therapeutics Corporation v. Liquidia Technologies, Inc. Whether the IPR statute and SAS require the Federal Circuit to review de novo, or only for an abuse of discretion, the PTO's reliance on new grounds and new printed publications—not raised in the initial petition?
• Denied: 23-1231 Cellect, LLC v. Vidal.  Whether a patent procured in good faith can be invalidated on the ground that statutory Patent Term Adjustment created an improper term extension under the judge-made doctrine of obviousness type double patenting.
• Denied: 23-1217 Chestek PLLC v. Vidal. Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2).
• Denied: 23-1184 Eolas Technologies v. Amazon.com, Inc. Whether the claims recite patent-eligible subject matter under 35 U.S.C. § 101 and Alice Corp.
• Denied: 23-1142 Surti v. Fleet Engineers, Inc. Whether the Court erred in denying proper compensation.

Only a handful of cases are still pending before the court: