In our 2024 Stanford Law Review article, “Real-World Prior Art,” we argued that the doctrines surrounding the public-use and on-sale bars—categories of prior art that we collectively called “real-world” prior art—were in some respects confused and misaligned. One of our arguments was that private sales—sales in which the invention has not been put into public use or led to the creation of some other type of prior art—should not provide the seller with a safe harbor against prior art under post-AIA 35 U.S.C. § 102(b)(1)(B), because a private sale by itself does not “publicly disclose” the invention per the terms of the statute. Not long after the publication of our article, the Federal Circuit held just that, in an excellent opinion by Judge Dyk, Sanho Corp. v. Kaijet Tech. Int’l Ltd., 108 F.4th 1373 (Fed. Cir. 2024).

A related argument in our paper—perhaps the central argument—was that the on-sale bar should be “party-specific.” That is, a sale by Aleida, by itself, should not bar independent inventor Bruno from obtaining a patent. Of course, the sale will often lead to the buyer putting the invention into public use, or generate a printed publication, or create some other type of prior art against Bruno. But the sale by itself should not bar Bruno. In our paper, we offered a suite of reasons why this should be the case:

• Unlike the public-use bar (which is about protecting the public’s reliance interests), the on-sale bar is animated by the goal of preventing any one party from obtaining monopoly profits for more than the twenty-year statutory patent term. Accordingly, the principle behind the on-sale bar is not implicated if Aleida makes a sale but then Bruno files for a patent.
• For decades, dating back to the famous Learned Hand opinions in Metallizing v. Kenyon Bearing and Gillman v. Stern, and including the canonical 1983 Federal Circuit case Gore v. Garlock, the courts of appeals have treated instances of secret commercial use as party-specific. Only the party engaged in the commercial use was barred from later obtaining a patent. Secret commercial use is best understood as a species of putting the invention on sale, so the same principle that applies to secret commercial use should apply to the on-sale bar writ large.
• A private sale does not publicly disclose the invention or enrich the store of public knowledge—that’s why it doesn’t trigger the § 102(b)(1)(B) safe harbor. Treating the on-sale bar as party-specific thus creates incentives for otherwise-secret inventions to be publicly disclosed by allowing a second party to patent the invention.
• If the on-sale bar were not party-specific, an odd situation could arise in which Aleida made a private sale, then Bruno immediately filed for a patent, and then Aleida immediately filed for a patent, and neither of them was able to obtain a patent. Aleida’s sale would bar Bruno but not protect Aleida under § 102(b)(1)(B). Aleida would then be barred by Bruno’s patent filing. This would contradict the intended structure of the America Invents Act, in which the first party to publicly disclose the invention should be entitled to a patent.

As it turned out, the caselaw in this area was highly muddled. On several occasions, the Federal Circuit had stated that the on-sale bar was party-specific and would bar only the party that made the sale. On several other occasions, the Federal Circuit had stated that the on-sale bar was not party-specific and would bar everyone. At the same time, all but one of the cases in which the Federal Circuit stated that the bar was party-specific involved an additional type of prior art—the sale had led to public use, or a printed publication, or some other type of prior art. That called into question whether the Federal Circuit had really intended to hold that the sale by itself was enough to bar third parties from patenting. The situation in the district courts was no clearer, with cases going in every direction—including on October 23 in the District of Delaware. We closed that section of our paper with the plea: “At minimum, the court should clarify this area of law definitively, lest practitioners and lower courts remain at sea.”

An opportunity has arisen for the Federal Circuit to do just that. In Cellulose Material Solutions v. SC Marketing Group (2024), a judge in the Northern District of California held on summary judgment that an April 2016 purchase order from a company called Thermal Shipping invalidated a patent filed in June 2016 by a separate company called Cellulose Material Solutions. The court also stated that Thermal Shipping did not actually deliver the invention to its customer until July 2016, after Cellulose’s filing date. Accordingly, the only prior art that existed as of the time of Cellulose’s filing was Thermal Shipping’s third-party sale—the invention could not yet have been put into public use. Cellulose has appealed the decision to the Federal Circuit, arguing that the April 2016 purchase order cannot, on summary judgment, be held to invalidate its patent under § 102(a)(1) and the § 102(b)(1) exceptions, including due to disputed factual issues.

We filed an amicus brief supporting Cellulose, arguing that the district court got the law wrong and urging the Federal Circuit to clarify, definitively, that the on-sale bar is party-specific and third-party sales, by themselves, do not bar unrelated inventors from obtaining patents. We are grateful to the excellent faculty and students at the Juelsgaard Intellectual Property and Innovation Clinic at Stanford Law School who helped write and file the brief for us. We have no financial interest in the outcome; we would simply like to see the law clarified in a sensible way, and we hope the Federal Circuit sees the issues as we do!

Recently, the Federal Circuit handed down its decision in Recentive v. Fox which the Court stated presented a question of first impression: “whether claims that do no more than apply existing methods of machine learning to a new data environment are patent eligible.” Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205 (Fed. Cir. 2025). As the framing of the question suggests, the Court answered in the negative, confirming that patents that simply take an abstract idea and “do it with AI” are not statutory subject matter.

Since this decision, questions have come up about what this might mean for the patenting of inventions relating to artificial intelligence (AI) in the United States, and by extension, America’s leadership in AI development. Even before this case, the argument has been made that getting patents on AI innovations is difficult or impossible under the current law, and therefore patent eligibility reform is needed. These are important questions. As I have argued for years in my work on the Artificial Inventor Project, and as I testified on in Congress, AI technology is playing a rapidly growing role in the innovation process. We want to make sure the patent system is promoting the development and use of AI so that it can be used to generate socially valuable innovation (and that there are no legal concerns when that happens, including related to inventorship).

My view is that current patent eligibility law as it pertains to abstract ideas best supports the AI development and innovation that we need in the United States. The current approach permits the patenting of all aspects of AI technology – from the development and training of machine learning models to the applications of those models. Recentive gave us a glimpse into how patent eligibility law applies at one end of the AI patenting spectrum, and it reached the right conclusion.

Before delving into Recentive, it is helpful to understand the application of patent eligibility law in a traditional software patenting context. Eligibility analysis relies on the two-step Alice/Mayo test, which first determines whether claims are directed to judicial exceptions to eligible matter, namely abstract ideas, laws of nature, or natural phenomena. Alice Corporation v. CLS Bank International, 573 U.S. 208 (2014); Mayo Collab. Servs. v. Prometheus Lab’ys, Inc., 566 U.S. 66 (2012). If claims are directed to a judicial exception then to be patent eligible they must recite additional elements that amount to “significantly more” than the judicial exception. Mayo, 566 U.S. at 72-73. The Supreme Court has described the second part of the test as the search for an “inventive concept”. See MPEP § 2106. This is the Supreme Court’s way of ensuring that a true, technological invention lies at the heart of the patent and that it isn’t just an abstract idea dressed up to look like a real invention.

For more than a decade, the Alice/Mayo two-part test has been the exclusive test for software patent eligibility analysis. It balances patent incentives with the need to allow the public to utilize “the basic tools of scientific and technical work.” Alice Corp., 573 U.S. at 216. Patents on such tools could do more harm than good and “might tend to impede innovation more than it would tend to promote it.” Id. Claims are not ineligible simply because they involve judicial exceptions, the applications of such concepts remain protectable. Indeed, the Federal Circuit has subsequently clarified that claims directed to software and improvements in computer-related technologies are not inherently abstract. See, e.g., Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see also Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1258 (Fed. Cir. 2017). Judicial exceptions have existed for more than 150 years, and a significant amount of case law has now applied Alice/Mayo in the context of software patents.

The Federal Circuit has tended to require patent applications to describe specific improvements over the prior art that improve a process, whether software- or hardware-based, rather than merely performing an existing process on a computer. This has allowed a wide range of computer-implemented claims to be found patent-eligible. See, e.g., McRO Inc. v. Bandai Namco Games America Inc., 837 F. 3d 1299 (Fed. Cir. 2016); Amdocs (Israel) Ltd. v. Openet Telecom Inc., 841 F. 3d 1288 (Fed. Cir. 2016); Ancora Technologies Inc. v. HTC America Inc., 908 F. 3d 1343 (Fed. Cir. 2018). This standard thus encourages research and development into improvements in computer processes, while preventing applicants from broadly tying up the use of computers to perform existing processes and relying on functional claiming (e.g., filtering content on a computer, unless an improvement over the prior art for filtering content; parsing, editing, sorting, and comparing data, absent a specific inventive method for carrying out these functions). See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016); see Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018).

With the foundation of applying patent eligibility law to traditional software patents, we can more fully understand the Federal Circuit’s assessment of patent eligibility in an AI context in Recentive. This case concerned the eligibility of using machine learning, a subset of AI, to generate network maps and schedules for television broadcasts and live events. Recentive was appealing the district court’s ruling that its patents were directed to ineligible subject matter under 35 U.S.C. §101. The Federal Circuit affirmed the lower court on the basis that the patents lacked an inventive concept and were directed to the abstract idea of using a generic machine learning technique in a particular environment.

Preparing network maps is a long-standing practice, if a sophisticated and niche one that has traditionally been performed by human beings. Recentive characterized its patents as applying existing, generic AI approaches to this specific context. In other words, “do it with AI.”

This type of “do it with AI” claim is ineligible under the two-step Alice inquiry.  On the first step, the Court found that the claims were directed to the abstract idea of producing network maps and event schedules using known standard mathematical techniques. Recentive’s patent did not claim or describe how the machine learning technology resulted in a technological improvement. Instead, the patent was just about using AI to perform a task previously done by humans more quickly or efficiently without actually explaining how to accomplish that, which does not create eligibility. This is the same application of the Alice/Mayo test to traditional software patents.

On the second step, which looks at whether additional elements add an “inventive concept” that transforms an otherwise ineligible claim, the Court also found the patents failed. The patents only provided broad, functionally described common computing techniques and devices—again merely claiming an abstract idea.

While the Court framed Recentive as a question of first impression, the Federal Circuit has long held that software claims do not become eligible by limiting their application to a particular field or environment – eligibility does not result from taking an abstract idea and throwing in “do it on a computer” or “do it over the internet.” See, e.g., Intell. Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1366 (Fed. Cir. 2015). Similarly, that applying an existing technology to a new database does not create eligibility.  See, e.g., SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Like the software patent cases that came before it, Recentive just applied AI to an existing framework.

While simply describing an abstract idea and adding “do it with AI” is not patentable (nor should it be), patent protection is available for all aspects of AI innovation. Practitioners have outlined best practices for drafting these patent applications, emphasizing the importance of providing sufficient detail and explaining the technical advantage of the claimed solution. https://www.fr.com/insights/thought-leadership/articles/ai-patent-eligibility-observations-and-lessons-for-the-us-and-china/ (“The key for applicants is to clearly show that their claim improves a technological process rather than merely uses technology to perform an existing process.”) https://www.troutman.com/insights/locke-lord-quickstudy-patenting-ai-inventions.html. (“Draft a strong patent application… Focus on technical aspects and algorithms… Provide experimental evidence and results…”). Of course, applicants must also ensure what is being claimed is commensurate with what was actually invented and not improperly tying up the basic tools of further scientific development. The USPTO’s most recent guidance on patent subject matter eligibility in 2024 provided some examples as well.  See, e.g., https://www.uspto.gov/sites/default/files/documents/2024-AI-SMEUpdateExamples47-49.pdf.

Recent district court decisions applying Recentive have also upheld claim eligibility for AI-related claims. Aon Re, Inc. v. Zesty.AI, Inc., No. CV 25-201, 2025 WL 1938214 (D. Del. July 15, 2025) (“The claim thus implements machine-learning technology in a specific way to address a practical technical problem: how to accurately and quickly assess the physical characteristics and condition of a property from an aerial image using machine learning models.”); Nielsen Co. (US), LLC v. Hyphametrics, Inc., No. CV 23-136-GBW, 2025 WL 1672002 (D. Del. June 13, 2025) (Claimed method provides “an improvement to the technical field of image processing, and, in particular, to improving speed and reliability of detecting overlays in images, with reduced or eliminated human oversight… These claims contain structure because they, inter alia, recite the specific [neural] networks used to perform the detection”).

Though all aspects of AI can be patented under Alice – and our patent eligibility law aims to ensure that AI patents do not over-claim in a way that would harm further AI innovation and usage – AI has nonetheless become yet another argument in support of patent eligibility reform. Various changes have been proposed over the past decade to expand the scope of section 101. Most recently, Senator Thom Tillis re-introduced the Patent Eligibility Restoration Act (PERA) in the Senate. https://www.congress.gov/bill/119th-congress/senate-bill/1546/text. This Act would eliminate all judicial exceptions to patent eligibility, replacing them with explicit and narrow statutory exclusions: 1) a mathematical formula not integrated into a claimed invention; 2) a mental process performed solely in the human mind; 3) an unmodified human gene as it exists in the human body; 4) an unmodified natural material as it exists in nature; and 5) a process that is primarily economic, financial, business, social, cultural, or artistic in nature. Most relevant to the issue of AI patenting, and what would be patent-eligible if PERA were to become law, the bill includes an eligibility escape hatch. It states that “the claimed invention shall not be excluded from eligibility for a patent if the invention cannot practically be performed without the use of a machine or manufacture.” This would mean that any abstract ideas could be patented if implemented on a computer leveraging computational capabilities. Effectively all AI inventions “cannot practically be performed without the use of a [computer].” This means that under PERA, “do it with AI” patents like the one found to be ineligible in Recentive would be eligible.

As a result, PERA would be a significant shift for patent eligibility of computer-related patents, and one that would harm rather than help the development and use of AI. Problematically, by untethering patent eligibility for abstract ideas from the requirement that patents be about technological improvements, PERA would allow patents that harm the development and widespread usage of actual technology. This in turn is likely to result in more patent thickets which will make AI development increasingly difficult and expensive, it will give incumbents more leverage over startups, and it risks holdups from foreign adversaries abusing the patent system. This is precisely the type of approach that allowed a flood of “do it on a computer” and “do it on the internet” patents to harm software development and usage for years. It is not a standard that is likely to help the United States remain the world’s leader in AI development.      Nor is it a standard that will support innovators using AI as part of their development process.

And that is where our focus should lie: making sure our patent system is helping to incentivize AI technology development and usage in order to move the field forward. Patent eligibility has a pivotal gatekeeping role in the system, as the Federal Circuit correctly showed in Recentive. The line that has been drawn and applied in a software context for years is also the right one for AI.

The author represents that he is not being paid to take a position in this post. In addition to being an academic, the author is a practicing attorney and represents clients with interests on both sides of the post’s subject matter.

It’s time for the annual Federal Circuit statistics update! As I’ve done for the past few years, below I provide some statistics on what the Federal Circuit has been doing over the past year. These charts draw on the Federal Circuit Dataset Project, an open-access dataset that I maintain containing information on all Federal Circuit decisions and docketed appeals. The court’s decisions are collected automatically from its RSS feed, and my research team uses a combination of Python-based algorithmic processing and manual review to code information about each document.

One of my goals with this dataset is to make it publicly accessible so that anyone can use it in their own research. A complete copy of this year’s release is archived at https://dataverse.harvard.edu/dataverse/CAFC_Dataset_Project, and the codebook is also available there. If you’re a researcher interested in using the dataset, feel free to reach out—I’m happy to help you work with the data or answer questions about it.

On to the data!

Figure 1

Figure 1 shows the number of Federal Circuit opinions and Rule 36 summary affirmances by origin since 2010. These represent individual documents (i.e., a single opinion or Rule 36) rather than docket numbers (which is how the Federal Circuit reports its own metrics). Overall, about 20% of the Federal Circuit’s merits terminations were issued as Rule 36 summary affirmances.

Opinions vs. Summary Affirmances

For 2024, the overall number of merits decisions increased by about 70 compared to 2023. As in recent years, the highest number of merits decisions arose from the PTO. However, decisions arising from the district courts increased by about 20% in 2024. The court issued 115 merits decisions from the district courts in 2024, up from 95 in 2023 and close to 117 in 2022. In contrast, there was a decline in decisions arising from the PTO—from 190 in 2023 to 165 in 2024.

Figure 2a

Figure 2b

Figures 2a and 2b show the number of opinions versus Rule 36 summary affirmances arising from the district courts and PTO. In 2024, the Federal Circuit continued to issue Rule 36 affirmances fairly often in appeals from the PTO but only rarely in appeals from the district courts. Figure 3 displays the overall frequency of Rule 36 affirmances relative to opinions across all origins.

Figure 3

What about the opinions the court is issuing? As shown in Figures 4a and 4b, the court continues to issue nonprecedential opinions regularly in appeals from the district courts, and somewhat less frequently in appeals from the PTO. In other words, the court typically issues an opinion (rather than a Rule 36) in appeals from the district courts, but when it does, it’s just as likely to be nonprecedential as precedential. Conversely, while opinions in PTO appeals are less common, they are more likely to be precedential.

Figure 4a

Figure 4b

Dispositions

Figure 5 shows the general disposition of Federal Circuit appeals – in other words, whether the panel affirmed, affirmed-in-part, reversed-in-full, etc. Overall, affirmances in appeals from the district courts were a little less frequent last year (65% affirmance in full; 76% affirmance in full or part), while affirmances in appeals from the USPTO continued to be common (84% affirmance in full; 92% affirmance in full or part).

Figure 5a

Figure 5b

Figure 6 shows the distribution of terminating documents of any type for 2024 regular appeals. About 57% of terminating documents were Opinions or Rule 36 summary affirmances (i.e., merits decisions). Most of the remainder were dismissals (including voluntary dismissals), with a small number of transfers and remands (typically issued through orders). Note that these terminations are counted per document, and appeals dismissed for procedural reasons (such as failure to prosecute) are sometimes later reinstated—so the percentage of appeals ultimately terminated via dismissal is somewhat lower than shown in this figure.

As with the previous figures, the unit of record for Figure 6 is a document—i.e., an opinion or order. A single document, such as an opinion, may decide multiple appeals.

Miscellaneous Dockets

What about petitions for writs of mandamus? These, along with petitions for permission to appeal, are shown below. Figure 7 indicates a slight decrease in the number of decisions on petitions last year. Nearly all (42) of the 2024 decisions on miscellaneous docket matters involved petitions for writs of mandamus.

Figure 7

What were the outcomes of these petitions? Of the 20 decisions on writs of mandamus arising from the district courts in 2024, just one was granted—a substantial shift from recent years.

If you’d like to explore the data yourself, it’s archived on the Harvard Dataverse. I’ve also updated the docket dataset to include appeals filed in 2024. A printout of the Jupyter Notebook used to generate this report is available there, along with an Excel file containing the underlying data tables. If you use the datasets, please cite them as follows:

• Replication materials for blog post:
  Rantanen, Jason, 2023, “Replication Data for ‘Federal Circuit Decisions Stats and Datapack'”, https://doi.org/10.7910/DVN/HPARYR, Harvard Dataverse, V6

• Document dataset:
  Rantanen, Jason, 2021, “Federal Circuit Document Dataset”, https://doi.org/10.7910/DVN/UQ2SF7, Harvard Dataverse, V7, UNF:6:cbz6tO1MyVSewzIAncqf2A==

• Docket dataset:
  Rantanen, Jason, 2021, “Federal Circuit Docket Dataset”, https://doi.org/10.7910/DVN/EKSYHL, Harvard Dataverse, V6, UNF:6:io8bOGQ323wHBLZMlUsm+w==

This blog recently covered the Federal Circuit’s important decision in In re Entresto (Novartis Pharmaceuticals v. Torrent Pharma), 125 F.4th 1090 (Fed. Cir. 2025), which upheld patent claims even though they covered after-arising technology that was not described or enabled in the specification. As Dennis noted, the Federal Circuit appeared to depart from well-established prior law on the subject. But as we explain in our forthcoming article, Disclosure Puzzles in Patent Law, we believe the court should move the law further still from where it stands—and it should correct some of its reasoning along the way.

To review, In re Entresto involved a patent that claimed a pharmaceutical composition of two hypertension drugs, valsartan and sacubitril, “in combination.” When the patent was filed, the only known method of combining these chemicals was in a physical mixture. That is the only combination method disclosed in the specification. In the intervening years, however, scientists have discovered a means of combining the two chemicals in a “complex,” an arrangement in which they are connected by weak chemical bonds. This is the method used to make the accused infringing drug. The patent owner argued successfully that the claim language (“in combination”) was broad enough to cover this mode of combination. But the fact that the use of a complex was after-arising technology—and thus the specification said nothing about it—raised written description and enablement issues.

The Federal Circuit upheld the patent against both challenges for basically the same reason: that the specification demonstrated that the patentee possessed and enabled the full scope of the claims at the time the patent application was filed. In other words, the patent claimed the two chemicals “in combination,” and the specification had indeed described and enabled the two chemicals “in combination.” But the court’s reasoning was peculiar. The court asserted that the after-arising technology—the combination of the two chemicals into a complex—“is not what is claimed.” To argue otherwise, the Federal Circuit declared, would be to “erroneously conflate[] the distinct issues of patentability and infringement.”

It is hard, however, to see how this could be right. The parties stipulated that the version of this invention made with a complex infringed the claims. That necessarily meant that the version of the invention using a complex was within the scope of the claims—that it was encompassed by the language “in combination.” If that is the case, then in what sense is the version made with the complex not claimed by the patentee?

On written description, the Federal Circuit nonetheless arrived at the right answer, though for misguided reasons. As Dennis noted, Entresto appears to conflict with the Federal Circuit’s prior decision in Chiron v. Genentech, 363 F.3d 1247 (Fed. Cir. 2004). But we think this is a good thing. As we explain in our article, after-arising technology is not the type of problem that the written description doctrine was developed to police. Written description exists to deal with a particular type of problem: patentees who write claims that would capture embodiments of the invention that could be made at the time of filing, but that the patentee did not actually invent. If Chiron’s reasoning were taken seriously, it would essentially always invalidate claims that capture after-arising technology. Otherwise-valid patents could be invalidated due to technological developments that the patent drafters could not have foreseen. Clarifying that written description shouldn’t be used to invalidate claims that cover after-arising technology is a step in the right direction.

Enablement is more complicated, and here we think the Federal Circuit failed to identify the right questions. The seminal case is In re Hogan, 559 F.2d 595 (C.C.P.A. 1977), under which it is irrelevant whether a specification enables after-arising technology. As we explain in our article, we agree with Hogan that if a claim is fully enabled at the time of filing, then it should be enabled forever.

However, completely ignoring the enablement of after-arising technology violates the principle that the scope of a patent should be commensurate with its disclosure. Thus, as a matter of infringement, the claim should capture after-arising technology only if a PHOSITA with access to the specification plus the new technology could implement the embodiment with that new technology. If it would take undue experimentation to figure out how to implement it, then the claim shouldn’t reach the nonenabled after-arising variant. Reading a claim to cover after-arising technology that is not enabled by the patent specification plus the new technology itself would give the patentee a property right over a version of the invention that she has not taught anyone to make or use.

Our article suggests multiple doctrinal routes by which courts could reach this enablement result, including claim construction, the reverse doctrine of equivalents (for literal infringement), or a broadened ensnarement doctrine (for infringement by equivalents). In re Entresto hints at one doctrinal resolution of this issue by stating that “valsartan-sacubitril complexes … include the claimed invention along with additional unclaimed features.” If the use of a “complex” is an “unclaimed element,” then it is blackletter law that this element need not be enabled or described.

Alternatively—and perhaps more consistently with the district court’s claim construction—the after-arising “complex” method is one variant of the explicitly claimed “in combination” element. In that case, the relevant question is whether combining valsartan and sacubitril in a complex involved a simple and predictable application of the “complex” method to this context (in which case the courts were right to find this claim valid and infringed), or whether this involved additional extensive experimentation (in which case the claim should be non-infringed). The patent owner’s argument that it later patented the “nonobvious discovery of valsartan and sacubitril in the form of a complex” suggests there may be evidence for the latter—but we don’t know because this wasn’t a question the courts asked. The important point is that rather ignoring enablement issues for after-arising variants of an invention, courts should consider whether patentees are seeking scope disproportionate to what they invented and disclosed.

As we suggested in Disclosure Puzzles in Patent Law, the modern enablement and written description doctrines give rise to a great number of conceptual puzzles, particularly when they interact with after-arising technology. Entresto is evidence of both the puzzles’ complexity and their importance. It is also evidence that the Federal Circuit has made some progress in thinking through these puzzles, but that more remains to be done.

As readers of this blog are aware, organizations such as the European Telecommunications Standards Institute (ETSI), IEEE, and others promulgate standards that enable products such as smartphones and other complex technological devices to interoperate.  These standard-setting organizations (SSOs) encourage their members to commit to licensing patents that may be essential to the practice of the relevant standards on fair, reasonable, and nondiscriminatory (FRAND) terms.  Because SSOs do not define the meaning of FRAND, however, when the owners of these standard-essential patents (SEPs) and the companies that implement them fail to reach terms, litigation is often the result.  And because patents are territorial rights, FRAND litigation often spans the globe—though because of its importance to the European market, Germany has been home to many of the most important FRAND cases over the past decade.  The German FRAND case law, in turn, is based in part on the German courts’ interpretation of European Union competition (antitrust) law, and differs in important respects from the approaches taken in FRAND cases in other leading jurisdictions, including the United Kingdom, the United States, and China.

In this context, I am pleased to announce the publication this month of FRAND: German Case Law and Global Perspectives (Peter Georg Picht, Thomas F. Cotter & Erik Habich eds., Edward Elgar Publishing), part of Elgar’s Intellectual Property Law and Practice series.  Our book consists of two parts.  The first is a distillation of the relevant German case law, translated into English and arranged thematically into individual chapters addressing willingness to license; the FRAND offer; reaction duties and the FRAND counteroffer; confidentiality; FRAND licensing and SEP transfer; damages claims; and anti-antisuit injunctions.  The second consists of essays contributed by coeditors Peter Georg Picht, Erik Habich, and me, plus leading judges, practitioners, and academics from Germany, the United Kingdom, the United States, and China.  My own essay, for example, titled U.S. and German FRAND Disputes:  Like Ships That Pass in the Night, highlights what I view as the salient differences between the U.S. and German approaches to FRAND.  These include not only the many procedural differences between U.S. and German litigation generally (regarding matters such as jury trials, discovery, and the use of expert witnesses), but also matters relating specifically to patent litigation.  Probably the two most important of these are the relevance of antitrust law to FRAND disputes in Germany (compared to its comparative irrelevance in the U.S., under current case law), and the German courts’ frequent granting of injunctive relief in FRAND cases.  Perhaps the most fundamental difference between the U.S. and German approaches, however, is that the German courts see their role as facilitating an ultimate agreement between the parties, and thus have yet to establish the terms of FRAND licenses themselves— whereas U.S. courts have determined FRAND royalties in several decisions now, and in recent years courts in the U.K. and China have adopted the practice of adjudicating the terms of global FRAND licenses in some cases.

As we state in the book’s foreword, in today’s connected, global marketplace, patent professionals cannot rely exclusively on their knowledge, however expert, of domestic or regional law.  Rather, professionals today must think strategically about when and where in the world their clients should litigate, if given a choice—as well as how best to respond if it is their opponents who have seized the initiative.  It is for this reason that we hope our book will prove useful to patent lawyers, judges, academics, government policymakers, and law students, not only in Europe, but (perhaps even more so) in the United States and elsewhere.  And so, we invite you to take a look—and, as always, to share your thoughts with us on how FRAND litigation will, or should, develop in the years to come.