Comments for Patently-O

Comment on Verdict Deflated: Fed Circuit Punctures Coda’s $64M Win Over Goodyear by paulf

paulf — Mon, 08 Dec 2025 20:50:44 +0000

The technology of this CAFC reversed trade secrets Coda v. Goodyear jury decision is in self-inflating (wheel air pump) tire apparatus. That is technology that could, and should logically have been, patented. The alleged trade secrets [even if more specifically identified] would not have survived even the first sale of a product using that kind of self-apparent technology. This is not software, chemical, or manufacturing technolgy better protected by trade secrecy. Thus, wondering why patent protection was not obtained and asserted might have been a factor here?

Comment on The Mythic Source of USPTO Institution Discretion? by paulf

paulf — Sun, 07 Dec 2025 19:31:06 +0000

In reply to paulf. P.S. I was told by a few active patent litigators that the biggest beneficiaries of the denial of almost all recent IPR requests by Trump’s PTO Director [and these proposed rules for more] are PAEs and their foreign and U.S. investors, and that patent suit filings in East and West Texas are already substantially increasing in this last quarter of 2025. I was unable to get statistical data for the latter at this early date, and would appreciate someone providing it.

Comment on The Mythic Source of USPTO Institution Discretion? by paulf

paulf — Sat, 06 Dec 2025 15:27:40 +0000

“The Mythic Source of USPTO Institution Discretion?” is the title here. But an even more important question is why this new Director making such an effort, including the draconian proposed rulemaking inspiring thousands of public comments and numerous prior mandamus petitions, to prevent as many IPR petitions as possible? Using personal rationales that are made before, and have nothing to do with, the statutory initiation test of a “showing of a reasonable likelihood of prevailing with respect to at least one claim” for most IPR denials.
This big IPR killing effort seems to be based on two other easily factually refuted myths: Namely, (1) that plural IPRs are attacking the same patent, and (2) that IPRs are duplicative of the patent infringement suits that triggered them.
1. The PTOs own statistics show that only a small minority of patents have more than one IPRs requested from more than one party. [And, that is almost entirely due to the patent owner suing more than one party, each of which is legally entitled to its own defense.]
2. IPR’s have rarely been duplicative in any way with the patent suit that triggered them. Claim validity is NOT tried or decided in most patent suits, because more than 90% are settled before any trial!! The majority of the few actually tried patent suits will also NOT have final prior art validity determinations, since far more suits are decided on non-infringement, 101 unpatentable subject matter, or other issues!

Comment on The Mythic Source of USPTO Institution Discretion? by John Guynn

John Guynn — Thu, 04 Dec 2025 22:20:08 +0000

In reply to paulf.

35 U.S.C. 314(a) The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.

The issue appears to be whether a court can review the Director’s determination that there is no showing of a reasonable likelihood of prevailing with respect to at least one claim.

The problem is 35 U.S.C. 314(d) which says the determination is final and non-appealable. That seems to give the Director unfettered discretion.

Comment on The Mythic Source of USPTO Institution Discretion? by paulf

paulf — Thu, 04 Dec 2025 19:01:15 +0000

This argument also seems fully consistent with the recent conservative majority Sup. Ct. Loper decision overruling the prior “Chevron Doctrine” to remove any presumption of Agency authority for Agencies making [far less draconian] legal interpretations of their controlling statutes, much less for effectively dismantling such statutes.

Comment on The Mythic Source of USPTO Institution Discretion? by paulf

paulf — Thu, 04 Dec 2025 17:32:28 +0000

Finally, as noted in this 12/3 Patently-O, we have the fundamental statutory-construction issue clearly raised in this mandamus petition challenging the USPTO’s IPR institution denials. In re Tesla, Inc., No. 26-116 (Fed. Cir. filed Dec. 2, 2025).
Specificially, does 35 U.S.C. § 314(a) grant the Director unfettered discretion to invent any new reasons to deny IPR institutions, even those unrelated to the prior art? To transforms a provision limiting the Director’s authority into an unlimited grant of power to nullify IPRs almost entirely.

Comment on Guest Post: The Supreme Court Should Clarify How to Apply Loper Bright in the Patent Law Case of Lynk Labs, Inc. v. Samsung Co. Ltd. by paulf

paulf — Thu, 04 Dec 2025 02:42:08 +0000

How was this key statute distinguished in filing briefs against Lynk Labs, Inc. v. Samsung Co. Ltd.?:
35 U.S.C. 102 (AIA)
“(a)(2) the claimed invention was described in a patent issued under section 151, OR in an Application for patent Published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”

Comment on When Juries Don’t Matter: Written Description Effectively Becomes a Question of Law by paulf

paulf — Wed, 03 Dec 2025 21:29:47 +0000

In reply to paulf. P.S. This is not a jury deciding conflicting witneses fact assertions or crediblity. It should be a purely intrinsic comparision, under legal standards, of what is written in the subject patent claims vis a vis what is written in the patent specification. If the meaning or coverage of some of those words is a disputed technical fact question for a technical POSITA, with conflicting testimony, could that not be set up as a specific jury question?

Comment on When Juries Don’t Matter: Written Description Effectively Becomes a Question of Law by paulf

paulf — Wed, 03 Dec 2025 03:28:52 +0000

My impression is that patent litigation lost at the CAFC on on §112(a) grounds for broad genus claims having insufficient enablement is still relatively uncommon. Especially as compared to the far more common grounds of non-infringement, Alice-type unpatentable subject matter, or prior art, after judicial claim scope determinations.
Also, how many of such lost generic claims have surviving narrower species claims in continuations, divisionals or even the same patent?
That district court decisions with hight damages awards seem to get more CAFC attention [especially, drug patents] is not surprising, and not unreasonable. But, these are also often much harder-fought cases with higher-level defenses, research, and arguments.

Comment on When Juries Don’t Matter: Written Description Effectively Becomes a Question of Law by supadhye

supadhye — Tue, 02 Dec 2025 21:17:04 +0000

Standard Disclaimers here (my personal views, not of any clients…). I was thinking, superficially of course, that a few things are in play. First, the CAFC’s antipathy to large damage awards. Any high damage award seems to be reversed for different reasons. Second, in the bio-pharma sector, it seems that the current standard of peripheral claiming is morphing into the old central claiming system. That is, in bio-pharma you might only get claims to what you invented (that is the species or very small subset of species you actually reduced to practice) as a central claim versus getting a broad genus of zillions of species via peripheral claiming. And the legal basis to corral broad peripheral claims into a central claim is via the WD/enablement doctrine. Third, for broad genus claims, it is a “be careful what you wish for because it may come true” under the current law. You might want include very specific species claims or at least include more WD/enablement in the spec. Fourth, it is a policy decision left to legislators to see if Section 112 needs amendment to account for case law changes and/or any industry specific fixes.