Patently-O

Verdict Deflated: Fed Circuit Punctures Coda’s $64M Win Over Goodyear

Dennis Crouch — Mon, 08 Dec 2025 18:39:23 +0000

by Dennis Crouch

A jury awarded $64 million to a Czech inventor who claimed Goodyear stole his self-inflating tire technology. The district court threw out the verdict. The Federal Circuit has now affirmed that decision, holding that no reasonable jury could have found trade secret misappropriation on any of the five asserted trade secrets. Coda Development s.r.o. v. Goodyear Tire & Rubber Co., No. 2023-1880 (Fed. Cir. Dec. 8, 2025). The decision offers a thorough examination of what it means to define a trade secret with "sufficient particularity" under state uniform trade secret acts (UTSAs), distinguishing between those that describe functional outcomes versus those that identify actual protectable knowledge.

The case also continues an observable pattern at the Federal Circuit: juries finding for IP holders, only to have courts conclude that no reasonable jury could have reached that verdict. The following is an incomplete list of some of these anti-jury pro-JMOL cases from 2024 and 2025 that I've been tracking in the patent context:

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Subject Matter Eligibility Declarations (SMEDs) to Overcome Eligibility Rejections

Dennis Crouch — Fri, 05 Dec 2025 13:59:32 +0000

by Dennis Crouch

The USPTO has issued new guidance on using Rule 132 declarations to address subject matter eligibility rejections. The two memoranda, signed by Director John A. Squires on December 4, 2025, provide a new roadmap for how applicants can submit evidentiary declarations to overcome § 101 rejections. One memorandum is directed to the Patent Examining Corps, explaining how examiners should evaluate these submissions. The other is directed to applicants and practitioners, outlining best practices for preparing what the USPTO now calls "Subject Matter Eligibility Declarations" or SMEDs. The guidance does not create new procedures but instead highlights an existing and underutilized path under 37 C.F.R. § 1.132 for submitting evidence that may help establish patent eligibility.

The SMED guidance arrives as part of Director Squires's broader effort to address what he has characterized as "conflicting (and confusing) questions about patent subject matter eligibility." In his view, Examination and Eligibility are two distinct issues that should be separated. On his first day in office, Squires signed two patents in technical fields that have frequently faced eligibility challenges: distributed ledger/crypto technologies and medical diagnostics. Three days later, he issued the In re Desjardins Appeals Review Panel decision, Appeal No. 2024-000567 (PTAB Sept. 26, 2025), vacating a PTAB sua sponte § 101 rejection of claims directed to training machine learning models while preserving prior tasks. That decision, which Squires designated as precedential on November 4, 2025, warned against overbroad eligibility rejections and emphasized that improvements in "computational performance, learning, storage, data sets and structures" can constitute patent-eligible technological advancements under the Alice framework. The SMED memoranda represent the next step in this initiative, providing applicants with tools to build an evidentiary record supporting eligibility.

In the past, many patent attorneys have avoided filing Rule 132 declarations except as a last resort. The reasons are familiar: expense, the difficulty of establishing a sufficient nexus between the evidence and the claims, and concern about seeding the prosecution record with testimonial statements that could later be used against the patent owner in litigation. But I believe the SMED memoranda represent a new opportunity. Here, the Director is affirmatively inviting these submissions and signaling that they will be given meaningful weight in the eligibility analysis. For applications of potential value, practitioners should consider whether a SMED might strengthen their response to a § 101 rejection, ideally after vetting the approach with experienced patent litigation counsel who can help navigate the prosecution history implications.

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The Mythic Source of USPTO Institution Discretion?

Dennis Crouch — Thu, 04 Dec 2025 05:55:43 +0000

by Dennis Crouch

We have another mandamus petition at the Federal Circuit challenging the USPTO's IPR institution denials. In re Tesla, Inc., No. 26-116 (Fed. Cir. filed Dec. 2, 2025). The case involves patents asserted by Granite Vehicle Ventures LLC against Tesla's Self-Driving technology. But the petition's significance extends well beyond this particular dispute. Tesla advances a statutory interpretation argument that, if accepted, would fundamentally constrain the USPTO's claimed authority to deny IPR institution based on factors Congress never authorized.

The core legal question is simple: Does 35 U.S.C. § 314(a) grant the Director unfettered discretion to invent new reasons to deny IPR institution? The USPTO has increasingly claimed discretionary power to justify denials based on a variety of novel explanations including "time-to-trial" concerns, "settled expectations," and other criteria that do not appear in AIA or its legislative history. In its petition, Tesla argues the USPTO's approach transforms a provision limiting the Director's authority into an unlimited grant of power to nullify IPR entirely.

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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.

Dennis Crouch — Wed, 03 Dec 2025 21:26:24 +0000

By Professor Timothy T. Hsieh, Associate Law Professor, Oklahoma City University School of Law

For the past five years, I have taught Legislation & Regulation at Oklahoma City University School of Law, a course situated at the intersection of administrative law, statutory interpretation, and legislative design. Each semester, my students and I return to a foundational question: when, if at all, should courts defer to agency views, and when must the judiciary exercise independent interpretive judgment?

Loper Bright and Administrative Law

When the Supreme Court issued Loper Bright Enterprises v. Raimondo last year—squarely rejecting Chevron and instructing courts to independently interpret statutes—it marked a watershed moment in administrative law. Yet nearly a year later, the Court has provided virtually no guidance on how Loper Bright should be applied. That silence leaves courts, practitioners, and those of us training future lawyers without real-world examples to illuminate this new interpretive landscape.

That is why I submitted an amicus brief in Lynk Labs, Inc. v. Samsung Co. Ltd., urging the Court to grant review. Although the case arises in the patent arena, it presents a far more universal question: whether lower courts may quietly sidestep Loper Bright by elevating agency policy preferences over statutory text.

In Lynk Labs, the Federal Circuit embraced a USPTO interpretation that expanded the scope of the statute, claiming to apply congressional language while in reality tracking agency policy rationales. In doing so, the court effectively resurrected Chevron-style deference under a different label. By allowing USPTO policy—not longstanding judicial meaning—to determine what counts as a “printed publication,” the court blurred the line between neutral interpretation and executive policymaking.

This interpretive sleight of hand does more than distort a technical patent term. It strikes at the core of Loper Bright’s constitutional promise. Loper Bright reaffirmed that courts—not agencies—must say what the law is. Yet the Federal Circuit’s reasoning demonstrates how deeply Chevron’s instincts remain embedded. Instead of grounding its analysis in text or settled precedent, the court echoed the USPTO’s argument that treating confidential, abandoned applications as “printed publications” promotes administrative efficiency, even though such applications have long been criticized as low-quality and unreliable prior art.

But efficiency is not a constitutional value. The Administrative Procedure Act and the separation of powers exist precisely to ensure that administrative expedience does not eclipse statutory limits. When courts adopt agency policy preferences as the lens through which statutes are read, administrative convenience becomes a substitute for judicial reasoning. This “deference by imitation,” as my brief explains, smuggles Chevron back in through subterfuge—deferring to what agencies say the law should be rather than independently determining what the law is. The danger here is structural, not semantic: once courts begin mirroring agency policy instead of statutory text, they abandon independent judgment.

If this pattern takes hold, judicial interpretation will increasingly become a by-product of agency policymaking rather than a constitutionally grounded exercise in statutory fidelity. Lynk Labs offers a vivid example. The Federal Circuit transformed a term with more than a century of settled meaning—“printed publication” as publicly accessible information—and stretched it to include materials that were secret at the relevant time. That move not only rewrites the statute but erodes the fair notice essential to the patent system.

The Court should take this opportunity to clarify Loper Bright’s reach. Loper Bright may have overruled Chevron, but Chevron will not disappear on its own. Without concrete judicial decisions showing how the new standard must operate, lower courts may revive the old regime in all but name. The Supreme Court can prevent that erosion by reaffirming that agency policy goals and administrative convenience cannot override statutory text.

This is an especially timely moment. Loper Bright has already sent tremors through regulatory regimes—from tax to environmental law to intellectual property—with observers anticipating a wave of challenges to agency actions. And in this accelerating era of AI, where regulators grapple with platforms, data, and automated systems, clearer statutes are urgently needed—and the judiciary must serve as a reliable interpretive compass.

In the midst of a broader recalibration of the administrative state, Lynk Labs gives the Court a vital chance to chart the contours of the post-Chevron world. Ultimately, moving beyond Chevron will require more than a single decision. It will require vigilance—case by case, opinion by opinion—to restore the judiciary’s duty to interpret statutes independently. The Constitution entrusts courts, not agencies, with that responsibility. The time has come for the Supreme Court to demonstrate what that commitment looks like in practice.

“Printed Publication”

The stakes of the “printed publication” question extend far beyond technical patent doctrine. For more than a century, courts have interpreted “printed publication” to require public accessibility before the critical date. That principle is foundational: it ensures that inventors can determine what prior art exists and evaluate whether their innovations are novel. By sweeping confidential, abandoned applications—documents that were never available to the public at the time of invention—into the category of “printed publications,” the Federal Circuit destabilized this long-settled framework. Such a reinterpretation transforms an objective, notice-based rule into one that depends entirely on what the USPTO later chooses to disclose.

This shift has profound effects on inventors and innovators. The patent system relies on predictability: inventors must be able to assess the universe of prior art before investing time, money, and resources. Treating nonpublic filings as “printed publications” turns the system into a minefield of invisible prior art—materials that inventors could not have found, accessed, or anticipated. Fair notice evaporates when secret agency files can retroactively invalidate patents. That result is not only illogical; it undercuts the basic purpose of the patent system, which depends on clarity to promote innovation.

Moreover, the Federal Circuit’s approach runs directly counter to the Supreme Court’s consistent preference for textual and precedential fidelity in patent law. In Helsinn v. Teva, Return Mail, SAS Institute, and Microsoft v. i4i, the Court repeatedly rejected attempts to smuggle policy preferences into statutory interpretation. Each case reaffirmed that Congress legislates against a backdrop of well-established judicial meanings. Here, Congress used the term “printed publication” with full awareness of its longstanding definition. Had Congress wanted to include confidential or abandoned filings—materials never exposed to the public—it could have amended the statute. It did not.

The Federal Circuit’s interpretation creates yet another problem: it gives the USPTO the ability to alter the prior-art landscape through internal practices rather than congressional action. Whether abandoned applications remain confidential, become public, or emerge years later now directly affects inventors’ rights—even though the agency’s decisions about publication timelines are administrative, not legislative. This is exactly the kind of executive aggrandizement that Loper Bright and the Administrative Procedure Act were designed to prevent. The meaning of a statute cannot fluctuate based on the internal workflow of the agency tasked with applying it.

Finally, the Federal Circuit’s reasoning threatens to expand agency authority beyond its proper bounds. The USPTO already plays multiple roles—examiner of applications, adjudicator of post-grant challenges, and policy generator through documents like the MPEP. Allowing the agency to influence the definition of “printed publication” based on its own procedural preferences collapses these roles further, concentrating interpretive power where it does not belong. Without judicial intervention, the term “printed publication” risks becoming a moving target shaped by agency convenience rather than statutory command.

As a scholar, teacher, and former practitioner, I filed this brief hoping the Court will offer the clear guidance the legal community needs in the wake of Loper Bright. Law develops through real-world application, not abstract pronouncements—and our students, our courts, and our constitutional framework deserve nothing less.

_________________________

Timothy T. Hsieh, Esq.
Associate Professor of Law
Oklahoma City University School of Law

When Juries Don’t Matter: Written Description Effectively Becomes a Question of Law

Dennis Crouch — Tue, 02 Dec 2025 19:53:04 +0000

by Dennis Crouch

In consecutive weeks, the Federal Circuit has reversed two jury verdicts totaling over $80 million in pharmaceutical patent disputes, holding in both cases that the specifications failed (as a matter of law) to satisfy §112(a)'s disclosure requirements. Seagen Inc. v. Daiichi Sankyo Company, Ltd., Nos. 2023-2424 (Fed. Cir. Dec. 2, 2025); Duke University v. Sandoz Inc., No. 2024-1078 (Fed. Cir. Nov. 18, 2025).

In my view, these cases represent a significant doctrinal development. I see these as revealing three interconnected trends:

The Federal Circuit's increasing willingness to treat patent specifications as legal texts subject to judicial interpretation of the text rather than factual determinations of its meaning;
The practical (re)convergence of written description and enablement into a unified adequacy inquiry; and
The court's growing confidence in overturning jury verdicts on §112(a) grounds as a matter of law.

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So You’re Telling Me There’s a Chance: IPR Institution Rate Rises to 4%

Dennis Crouch — Tue, 02 Dec 2025 04:34:38 +0000

by Dennis Crouch

The big USPTO news is that IPR grant rate has shifted from 0% up to 4%. Although this is still incredibly low, breaking that zero-energy threshold is a major event. It calls to mind the immortal words of Lloyd Christmas (played by Jim Carey) "So you're telling me there's a chance."

Since late October 2025, USPTO Director John Squires has issued a series of notices deciding institution of IPR petitions under his centralized review policy. The results through December 1, 2025 tell a stark story: of 105 IPR petitions fully processed, 99 were denied on discretionary grounds, 2 were denied on the merits, and just 4 have been granted institution. For finalized decisions, the institution rate now stands at approximately 4%. I expect this to rise somewhat as the remaining 65 receive their judgment, but the numbers will not quickly return to the historic average institution rate of roughly 67%.

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Objective Boundaries or Bust: CAFC Reaffirms Indefiniteness for the Best Metrics

Dennis Crouch — Mon, 01 Dec 2025 02:31:55 +0000

by Dennis Crouch

The Federal Circuit has affirmed a judgment invalidating patent claims for indefiniteness where the claims used "optimal" and "best" language without providing objective boundaries for those terms of degree. Akamai Technologies, Inc. v. MediaPointe, Inc., No. 2024-1571 (Fed. Cir. Nov. 25, 2025).

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USPTO’s “Don’t Ask, Don’t Tell” Policy: The Quiet Death of Thaler and the Legal Fiction of Human Inventorship

Dennis Crouch — Mon, 01 Dec 2025 02:04:29 +0000

by Dennis Crouch

The Federal Circuit's 2022 decision in Thaler v. Vidal seemed to settle a fundamental question: only natural persons can be inventors under U.S. patent law. But, the bigger near-term question has always been about human-AI collaboration - and what level of human contribution is sufficient to qualify as inventive. Director Kathi Vidal implemented a team-based framework that allowed patenting if the human made a "more than insignificant contribution" to the invention. This approach basically asked whether the human had done enough to be considered a joint joint inventor (alongside the AI). While that approach had some conceptual problems (permitting patenting without complete human inventorship), it - at least - set a standard for the agency to consider.

In a November 2025 guidance, new USPTO Director John Squires has rejected the Vidal approach and instead established a "don't ask, don't tell" policy for AI-assisted inventions creates a presumption of human inventorship so long as any natural person is willing to sign the oath. For all practical purposes, this approach is also a repudiation of Thaler, so long as the patent applicant is able to find a human close to the invention willing to self-identify as the inventor. The system now effectively rewards an old habit in invention culture: when attribution becomes optional and unverifiable, someone will always be willing to step forward and claim the mantle of inventor. In a chapter I wrote a few years ago examining corporate invention, I observed: "It is easy to identify a human with some relation to the product or innovation and prop-up that human as the inventor." Dennis Crouch, Legal Fictions and the Corporation as an Inventive Artificial Intelligence in R. Abbott ed., Research Handbook on Intellectual Property and Artificial Intelligence (Edward Elgar Publ’g 2022).

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Happy Thanksgiving: CLE and a Tax Question

Dennis Crouch — Thu, 27 Nov 2025 15:05:04 +0000

It is wonderful to spend a few days with friends and family. This morning I’m booking travel for some upcoming events.

Hope to see you there.

CLE can be expensive: My understanding is that US lawyers can now use a 529 Education plan to pay for CLE (tuition but not travel). Is this something that lawyers are doing, or is it not available if being reimbursed by the firm? And, does it matter if characterized as client development?

Can Money Talk? Latest IPR Mandamus Petitions Seek Workarounds to § 314(d) Bar

Dennis Crouch — Tue, 25 Nov 2025 17:55:01 +0000

by Dennis Crouch

Three new mandamus petitions recently arrived at the Federal Circuit, each attempting to navigate around the court's November 6 decisions that rejected challenges to the USPTO's expanded use of discretionary denials.

The new petitions raise arguments their counsel contend are distinct from those already rejected in In re Motorola Solutions, Inc., No. 2025-134 (Fed. Cir. Nov. 6, 2025) (precedential). The petitions challenge both the "settled expectations" rule and parallel proceeding denials, while advancing novel theories designed to overcome the § 314(d) bar that has proved insurmountable for prior petitioners. Whether these distinctions carry legal weight remains to be seen, but the filings reflect a coordinated effort to keep pressure on the Federal Circuit as Director John Squires continues to deny IPR institution at a 0% rate.

Since assuming personal control of all IPR institution decisions in October 2025, Director Squires has denied every petition reaching his desk, now totaling 91 consecutive denials. These summary notices contain no reasoning or analysis, listing only IPR numbers alongside the statement institution "is denied." The practice stands in stark contrast to the PTAB's historic institution rate of approximately 67%. Meanwhile, the USPTO's proposed rulemaking (comments due December 2, 2025) would codify categorical bars to IPR institution without addressing the "settled expectations" doctrine or the practice of no-explanation denials. (Note that these new petitions are all based upon actions by Acting Dir. Stewart, the Squires-prompted petitioners are coming next month).

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