All posts by Dennis Crouch
Discussing Stern’s “Myth of Nonrivalry” for Patent Law
USPTO ARP Panel Restores MPF Sanity, but Still Rejects Xencor’s Claims
Navigating the USPTO’s Regulatory Wave: Key Comment Deadlines for Summer 2024
The Legacy of A.B. Dick and Motion Picture Patents: How these 100+ Year Old Ruling Reshaped Patent Law
by Dennis Crouch
I see the US Supreme Court's 1912 decision in Henry v. A.B. Dick Co. as a major turning point in American patent and antitrust law. 224 U.S. 1 (1912). The Court's 4-3 decision favored the patentee and allowed the patent owner to place restrictions on the use of its patented product even after sale. But, that decision sparked a major reform effort. Just a few years later, the Supreme Court reversed course in Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917), effectively overruling A.B. Dick and signaling a new largely anti-patent-monopoly era.
In A.B. Dick,
PREP Act Immunity and its Silent Treatment of Intellectual Property Rights
by Dennis Crouch
Although the Federal Circuit has dismissed Copan v. Puritan on jurisdictional grounds, I use the case to talk through COVID-19 immunity under the PREP Act, and whether patent infringement is included within its scope.
The 2005 Public Readiness and Emergency Preparedness (PREP) Act provides immunity for
How Chestek Impacts USPTO’s Rulemaking Authority and the Push to Restore
by Dennis Crouch
The Federal Circuit's recent decision in Chestek v. Vidal opened the door to extensive USPTO rulemaking that entirely avoids the notice and comment process required by the Administrative Procedure Act (APA). In re Chestek PLLC, 92 F.4th 1105 (Fed. Cir. 2024). Chestek has now filed her petition for writ of certiorari to the U.S. Supreme Court asking: Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2).
Gorsuch’s “Dead Letter” Prophecy: Hearst v. Martinelli may Settle Copyright’s Discovery Rule following the Warner Chappell Avoidance
by Dennis Crouch
The pending Hearst v. Martinelli case may be the "dead letter" offered by Justice Gorsuch. This time, the Supreme Court might actually decide whether the "discovery rule" applies to the Copyright Act's statute of limitations.
Copyright law provides
Terminal Disclaimers: A Growing Concern in Patent Practice
by Dennis Crouch
In a recent post, I discussed major proposed changes to terminal disclaimer practice that could significantly impact the landscape of patent law. Today, I want to briefly note a trend that underscores why these proposed changes are more pertinent than ever: the increasing percentage of U.S. utility patents bound by a terminal disclaimer.
Major Proposed Changes to Terminal Disclaimer Practice (and You are Not Going to Like it)
Supreme Court Affirms Availability of Back-Damages Under Copyright Discovery Rule
By Dennis Crouch and Timothy Knight
On May 9, 2024, the Supreme Court issued its opinion in Warner Chappell Music v. Nealy, No. 22-1078, 601 U.S. ___ (2024), resolving a circuit split over the availability of back-damages in copyright infringement cases. In a 6-3 decision authored by Justice Kagan, the Court affirmed the Eleventh Circuit's ruling, permitting recovery of damages for acts that occurred more than three years before the filing of the lawsuit under the "discovery accrual rule."
For those of you who have not been following the case, the Plaintiff Sherman Nealy, a music producer, helped create musical works in the 1980s with his collaborator, Tony Butler. Nealy was incarcerated from 1989 to 2008 and again from 2012 to 2015
Finding More Than Studs: Domestic Industry Nexus Tightens
by Dennis Crouch
I always struggle to use these stud finders; I think its hard for them to focus when I'm around.
Zircon Corp. v. International Trade Commission, No. 2022-1649 (Fed. Cir. May 8, 2024)
Eolas Seeks Supreme Court Review of Federal Circuit’s Patent Eligibility Decision
Patenting Informational Innovations: IOEngine Narrows the Printed Matter Doctrine
by Dennis Crouch
This may be a useful case for patent prosecutors to cite to the USPTO because it creates a strong dividing line for the printed matter doctrine -- applying the doctrine only to cases where the claims recite the communicative content of information.
IOEngine, LLC v. Ingenico Inc., 2021-1227 (Fed. Cir. 2024).
In this decision, the Federal Circuit partially reversed a PTAB invalidity finding against several IOEngine patent claims. The most interesting portion of the opinion focuses on the printed matter doctrine. Under the doctrine, certain "printed matter" is given no patentable weight because it is deemed to fall outside the scope of patentable subject matter. C R Bard Inc. v. AngioDynamics, Inc., 979 F.3d 1372 (Fed. Cir. 2020). In this case though the Federal Circuit concluded that the Board erred in giving no weight to IOEngine's claim limitations requiring "encrypted communications" and "program code."
The printed matter doctrine a unique and somewhat amorphous concept in patent law that straddles the line between patent eligibility under 35 U.S.C. § 101 and the novelty and non-obviousness requirements of §§ 102 and 103.
Cycling Towards Confusion: Is there room for iFIT Fitness Services and iFIT Safety Glasses?
by Dennis Crouch
In its initial decision, the TTAB dismissed iFIT's opposition to ERB's I-FIT FLEX registration -- finding no likelihood of confusion because the goods were in separate markets. iFIT is a major manufacturer of exercise equipment like treadmills and stationary bikes and holds several trademark registrations for IFIT marks covering fitness machines, online fitness training services and content, software, and some ancillary products like apparel. ERB Industries applied to register I-FIT FLEX for protective and safety eyewear sold at hardware stores such as Home Depot. Although the two brands are at-times sold in the same online store (Amazon.com and Walmart.com) this type of overlap was not sufficient for the TTAB. In its decision, the TTAB rejected iFIT's relatedness argument using an analogy to racecar drivers and chemists. The TTAB reasoned that while some racecar drivers and chemists may use safety glasses, that doesn't mean safety glasses are related to racecars or to chemicals like ammonia.
iFIT appealed the Federal Circuit, and most recently Federal Circuit granted
Amazon Patent Enforcement Process Can Create Personal Jurisdiction
by Dennis Crouch
In a significant decision on personal jurisdiction in patent cases, the Federal Circuit held that using Amazon's patent enforcement process (APEX) to target an alleged infringer's listings can subject the patent owner to specific personal jurisdiction in the alleged infringer's home state. SnapRays, LLC v. Lighting Def. Grp. LLC, No. 2023-1184 (Fed. Cir. May 2, 2024).
Plaintiff SnapRays (d/b/a SnapPower) is a Utah company that designs and sells electrical outlet covers with USB ports and night lights. Defendant Lighting Defense Group (LDG), a Delaware company based in Arizona, owns a patent on outlet cover technology. In 2022, LDG initiated an action against SnapPower through Amazon's Patent Evaluation Express (APEX) program
Federal Circuit Untangles Trademark Dispute
by Dennis Crouch
Araujo v. Framboise Holdings Inc., No. 23-1142 (Fed. Cir. Apr. 30, 2024).
In this appeal, the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision sustaining an opposition proceeding and refusing registration of the standard character mark #TODECACHO for hair combs. Procedural and Substantive: the Federal Circuit held that the TTAB properly allowed Framboise to extend its trial period; and that substantial evidence supported the TTAB's finding that Framboise established prior use. Opinion by Judge Lourie, joined by Judges Linn and Stoll.
In Brazilian Portuguese the colloquial phrase - "to de cacho" - is often used to mean "I am angry." In the context of this case, however, it references difficult to control curly hair.
Post-Default Creditor’s Right to Assign, License and Enforce Patent does not Disturb Patentee’s Separate Right to Sue Infringers
Discerning Signal from Noise: Navigating the Flood of AI-Generated Prior Art
by Dennis Crouch
This article explores the impact of Generative AI on prior art and potential revisions to patent examination standards to address the rising tidal wave of AI-generated, often speculative, disclosures that could undermine the patent system's integrity.
The core task of patent examination is identifying quality prior art. References must be sufficiently accessible, clear, and enabling to serve as legitimate evidence of what was previously known. Although documents are widely available today via our vast network of digital communications, there is also increasing junk in the system -- documents making unsubstantiated claims that are effectively science fiction. Patent offices prefer patent documents as prior art because they are drafted to meet the strict enablement standards and filed with sworn veracity statements. Issued patents take this a step further with their imprimatur of issuance via successful examination. Many of us learned a mantra that "a prior art reference is only good for what it discloses" -- but in our expanding world of deep fakes, intentional and otherwise, is face value still worth much?
In a new request for comments (RFC), the USPTO has asked the public to weigh in on these issues -- particularly focusing on the impact of generative artificial intelligence (GenAI) on prior art.