Restrictions, Election, Traversal, and Disclaimer

Patent

by Dennis Crouch

In Focus Products Group International, LLC v. Kartri Sales Co., Inc., No. 2023-1446 (Fed. Cir. Sept. 30, 2025), the Federal Circuit reversed patent infringement findings against one defendant (Marquis Mills) while affirming most findings against another (Kartri Sales).

The most important part of the decision for patent prosecutors focuses on examiner driven restriction practice and how that can be used to define claim scope.   The case also delves into trademark and trade dress issues that I leave for a separate post.

The patents at issue—U.S. Patent Nos. 6,494,248, 7,296,609, and 8,235,088—cover “hookless” shower curtains that attach directly to a shower rod through reinforced ring openings with slits. This integrated approach eliminates the need for separate hooks or clips. The representative claims recite shower rings with specific design features: a slit extending through the ring to an opening, and in some claims, a “projecting edge” that extends from the ring’s outer circumference. The accused products, manufactured by Marquis and sold by Kartri under the “Ezy-Hang” brand, featured rings with flat upper edges similar to Fig 21 above —a design feature that became the central battleground for determining infringement.

During prosecution of the ‘248 patent application, the examiner issued a restriction requirement identifying multiple patentably distinct species and defined those species through specific figure groups. Critically, the examiner distinguished “Species IV” (Figures 18-20, depicting rings with projecting fingers or extensions) from “Species V” (Figure 21, depicting rings “with a flat upper edge”). The patentee elected to pursue Species IV without objection – i.e., election without traversal.  The patentee then rewrote the claims in a way that no longer focused on the flat upper edge. Except that one such claim slipped in — the patentee had added re-added a dependent claim that expressly “includes a flat upper edge” and the examiner asked it to be withdrawn as a non-elected species.  Finally, in the notice of allowance, the examiner indicated that the non-elected claims had been cancelled as “drawn to a non-elected species without traverse;” and the applicant did no object to that characterization or seek reconsideration.

Eventually the Species IV patents issued without any claims focusing on the flat-upper-edge.  However, the claim language was broad enough to encompass versions with both curved uppers and flat uppers.  The question in the case then is whether the restriction procedure serves as an affirmative disclaimer of the flat upper scope. (more…)

Supreme Court Long Conference: Patent and Trademark Cases from September 29, 2025

Patent

by Dennis Crouch

The Federal Government's fiscal year begins on October 1, as does the Supreme Court's term. The new term always begins with a "long conference" that considers certiorari petitions briefed over the court's summer break. The conference was held on September 29, 2025, and we will soon be hearing which of these cases (if any) will be granted certiorari.

Patent

MSN Pharmaceuticals, Inc. v. Novartis Pharmaceuticals Corp., No. 25-225

This case addresses whether courts may consider after-arising technology when evaluating patent validity under 35 U.S.C. § 112(a)'s written description and enablement requirements. Novartis's patent for Entresto (a blockbuster heart failure drug generating over $3 billion annually) claimed a combination of valsartan and sacubitril, but the actual commercial product uses a form discovered four years after the patent filing that was not particularly described in the original specification. The Federal Circuit held that later-discovered technology cannot invalidate patents, creating some tension with precedents like The Incandescent Lamp Patent, 159 U.S. 465 (1895), and Amgen Inc. v. Sanofi, 598 U.S. 594 (2023), which seem to require patents to enable the full scope of their claims.

Gesture Technology Partners, LLC v. Apple Inc., No. 24-1280 and 24-1281

These cases questions whether the PTAB has constitutional authority under Article III and the public rights doctrine to conduct inter partes review proceedings on patents that expired before the IPR petition was filed. Gesture Technology's camera-based sensing patents expired in 2020, but Apple filed an IPR petition in May 2021, and the PTAB subsequently invalidated the claims, extinguishing Gesture's ability to collect damages for past infringement. The Federal Circuit held that PTAB has jurisdiction over expired patents because patent owners retain limited rights (damages for past infringement), but Gesture argues that once exclusionary rights expire, only Article III courts can adjudicate retrospective damage claims. Gesture  also argues that Apple should be estopped under 35 U.S.C. § 315(e)(1) because Apple is a member of Unified Patents and should be treated as a real party in interest or privy, but the Federal Circuit held Gesture forfeited this argument.

R.J. Reynolds Vapor Company v. Altria Client Services LLC, No. 25-158

This case addresses whether the Federal Circuit's "built-in apportionment" exception violates Garretson v. Clark, 111 U.S. 120 (1884), which requires patentees to "in every case give evidence tending to separate or apportion the defendant's profits and the patentee's damages between the patented feature and the unpatented features." After a 2022 jury trial, Reynolds was found to infringe Altria's e-cigarette patents and ordered to pay $95.2 million based on a 5.25% royalty rate calculated using a lump-sum license.  The Federal Circuit majority affirmed in December 2024, finding sufficient evidence of "built-in apportionment" in the comparable license, but Reynolds argues this undermines the fundamental requirement to separate the patent's contribution from unpatented features. Reynolds alternatively requests a grant-vacate-remand in light of the Federal Circuit's intervening May 2025 en banc decision in EcoFactor, Inc. v. Google LLC, 137 F.4th 1333 (Fed. Cir. 2025), which vacated a $20 million damages award and held district courts must rigorously assess damages expert testimony regarding comparable licenses.

United Services Automobile Association v. PNC Bank N.A., No. 25-149

This case presents an administrative law question about whether the PTAB's IPR decision was arbitrary and capricious under the Administrative Procedure Act (APA) when it reached different conclusions than prior PTAB proceedings involving "saliently similar facts" but different parties. USAA owns patents covering mobile check deposit technology, and when Wells Fargo challenged these patents in IPR using functionally identical prior art, the PTAB denied the challenges and found claims not obvious, leading to a $200 million jury award against Wells Fargo in 2019.

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Federal Government Shutdown (But not the USPTO)

Patent

by Dennis Crouch

Although the federal government shutdown appears ready to begin at 12:01 AM on October 1, 2025, the United States Patent and Trademark Office is likely to continue in normal operation by drawing on its Operating Reserve which the agency has been building up over the past several years.  A prolonged shutdown would eventually exhaust the reserves and trigger an end to spending.

The constitutional foundation for shutdown protocols lies in the Appropriations Clause, which provides that "No Money shall be drawn from the Treasury, but in Consequence of Appropriations made by Law." U.S. Const. art. I, § 9, cl. 7. This clause requires congressional approval before executive agencies may spend federal funds. The Antideficiency Act, 31 U.S.C. § 1341 et seq., enforces this constitutional mandate by prohibiting agencies from creating obligations or making expenditures exceeding available appropriations. The Act contains limited exceptions for activities necessary to protect life or property, but routine government operations—including patent examination—do not qualify for these exceptions.

The Antideficiency Act, codified at 31 U.S.C. § 1341–1342, prohibits federal agencies from obligating or expending funds in advance of appropriations, with narrow exceptions for emergencies involving the safety of human life or protection of property. Violations carry criminal penalties. During appropriations lapses, agencies must furlough employees and suspend operations unless funds remain available from prior appropriations or mandatory spending authorities.

Spending of the USPTO's Operating Reserve does not violate this prohibition because these funds were already appropriated in previous fiscal years under prior appropriations legislation. When the USPTO spends from its reserve during a lapse, it is drawing on money that Congress previously authorized for agency use—not creating new obligations without appropriations authority.

The USPTO's Operating Reserve functions as a financial cushion that enables continued operations precisely because these funds were already appropriated in previous fiscal years. The reserve represents unspent balances from prior appropriations that the agency carried forward. When new appropriations lapse, the USPTO does not violate the Antideficiency Act by spending from this reserve because Congress previously authorized the use of these specific funds. This arrangement distinguishes the USPTO from agencies dependent on annual discretionary appropriations with no carryover authority.

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Centralized Expanded Discretionary Denial

Patent

by Dennis Crouch

Soon after taking office, newly confirmed USPTO Director John Squires formally delegated his discretionary authority over inter partes review institution decisions to Deputy Director Coke Morgan Stewart on September 25, 2025. Just one day later, on September 26, the agency exercised that delegated authority to deny institution in fifteen IPR petitions covering eight patent groups. The denial decisions, though brief (each under two pages of text), reveal continued reliance on the expanded “Fintiv” framework that weighs parallel district court proceedings, while also emphasizing “settled expectations” based on patent age and petitioner delay. Notably, one decision denied institution even though the parallel district court case had been stayed, marking another expansion of discretionary denial grounds beyond trial timing concerns.  L’Oréal USA, Inc. v. Brightex Bio-Photonics, LLC, IPR2025-00971.  In general, I’m thinking of identifying this approach as Centralized Expanded Discretionary Denial or more simply, the Stewart Framework.

Why "Centralized Expanded Discretionary Denial"?

I refer to this as the "Centralized Expanded Discretionary Denial Framework" rather than "Fintiv" or its variants because the current practice has evolved far beyond the original trial-timing analysis. The framework now encompasses multiple independent grounds: parallel litigation timing (Fintiv+), parallel avoidance commitments (Sotera+), settled expectations, customer suits, roadmapping, equitable delay, and business relationships. "Centralized" reflects the 2025 shift from PTAB panel decisions to Director-level review, where the Director or Deputy Director personally exercises § 314(a) discretion rather than delegating these determinations to three-judge panels as was standard practice before 2025. "Expanded" or perhaps "Expansive" captures how denial grounds now extend well beyond timing to encompass equitable and strategic factors.

I expected that Director Squires would continue the discretionary denial approach that Stewart began several months ago. And, the delegation memo confirms ongoing business as usual.  The new set of decisions show continued willingness to exercise discretionary authority across multiple scenarios: parallel district court litigation with unfavorable trial timing, customer suits where the petitioner is not directly accused, repeated challenges to the same claims after prior unsuccessful petitions, and cases involving long notice periods and business relationships between parties. (more…)

EcoFactor: Did the Federal Circuit Unconstitutionally Displace the Jury?

Patent

by Dennis Crouch

Over the past couple of years, I have noticed increased willingness of the Federal Circuit to reject jury verdicts, especially in situations involving potentially inadequate expert testimony. This past summer, the Federal Circuit's en banc EcoFactor decision followed this pattern by overturning a $20 million jury verdict based upon flaws in the patentee's damages expert testimony. EcoFactor, Inc. v. Google LLC, 137 F.4th 1333 (Fed. Cir. 2025) (en banc). In my view, the decision did not alter any law associated with expert testimony, but rather served as a pointed reminder to district to rigorously scrutinize whether the expert's opinions are actually tied to sufficient facts in the record and whether the methodology is reliably applied to the specific circumstances of the case. But, this rigor has some potential of improperly overstepping into the jury's role as fact finder.

The key Constitutional issue is the Seventh Amendment, which guarantees a trial in patent cases where the patentees are seeking legal damages. The Seventh Amendment also prohibits "re-examin[ing]" any fact tried by the jury, other "than according to the rules of the common law."  The "common law" language cues the court to look back to 1791 and consider what was available at the time.

EcoFactor presents three questions in its new petition for writ of certiorari:

  1. Whether the Federal Circuit violated the Seventh Amendment by substituting its own evaluation of evidence for the jury's factual findings;
  2. Whether the Federal Circuit applies a uniquely stringent standard for admitting damages expert testimony under Federal Rule of Evidence 702 that conflicts with other circuits; and
  3. Whether the court violated EcoFactor's Fifth Amendment due process rights by deciding the appeal on contract interpretation grounds never raised or briefed by the parties.

The petitioner's basic argument here is that the appellate court engaged in improper reweighing of facts rather than sticking to the narrow post-verdict options available in 1791.

Federal Rule of Evidence 702 governs the admission of expert testimony in federal court. As amended in 2023, the rule requires that expert testimony be based on "sufficient facts or data," use "reliable principles and methods," and reflect "a reliable application" of those principles to the case facts. The district court acts as gatekeeper, admitting expert testimony only when the proponent demonstrates by a preponderance of evidence that these requirements are met. The rule aims to ensure that expert opinions assist the jury without overwhelming it with unreliable speculation.

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Thanks for Your Input: Federal Circuit Ignores USPTO’s §101 Framework (Again)

Patent

by Dennis Crouch

In Rideshare Displays, Inc. v. Lyft, Inc., No. 2023-2033 (Fed. Cir. Sept. 29, 2025) (nonprecedential), the Federal Circuit affirmed the PTAB determination that claims directed to vehicle identification systems for ridesharing services were unpatentable for obviousness, but reversed the Board’s grant of Rideshare’s motion to amend substitute claims. Judge Hughes, writing for the panel, held that the substitute claims were directed to patent-ineligible subject matter under 35 U.S.C. § 101 because they merely used technology as a tool to improve user experience rather than improving computer functionality itself.

The patents at issue all share a common specification directed to systems and methods for vehicle identification that allow ridesharing app users to verify they are getting in the correct cars and drivers to confirm they are picking up the correct riders. U.S. Patent Nos. 9,892,637; 10,169,987; 10,395,525; 10,559,199; and 10,748,417.  The systems work by having a driver’s device receive a notification signal that triggers an indicator visible from outside the car, such as a code or icon on a display. Lyft filed five petitions for inter partes review in November 2021, and the Board found all challenged claims unpatentable as obvious or anticipated over the prior art.  Rideshare moved to amend claims in two of the proceedings, and the Board allowed several substitute claims, prompting Lyft’s cross-appeal challenging the amendments on patent eligibility, written description, and obviousness grounds.

In its decision, the court compared the claimed system to “hand-printed cards with names to help identify ride pickups at crowded locations, such as an airport,” finding that invoking computers and mobile devices to streamline human interactions does not transform an abstract idea into patent-eligible subject matter.

USPTO's Limited Authority Over Substantive Patent Law

The USPTO lacks interpretive authority to construe substantive patent statutes including 35 U.S.C. §§ 101, 102, 103, and 112. The agency's internal guidance documents directing how patent examiners and even PTAB judges must apply these provisions receive no deference from reviewing courts. The Federal Circuit independently interprets these statutory provisions de novo, applying its own precedent rather than deferring to administrative interpretations. Here, for example, the court explicitly declined to follow the USPTO's 2019 eligibility guidance framework which I have previously noted tends toward being more pro-eligibility than court precedent.

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Director Squires Takes Aim § 101 Rejections

Patent

by Dennis Crouch

In a striking early display of directorial authority, newly sworn-in Under Secretary of Commerce and USPTO Director John Squires has vacated a Patent Trial and Appeal Board (PTAB) decision that had entered a new ground of rejection under 35 U.S.C. § 101 against DeepMind Technologies' machine learning patent application. The September 26, 2025 decision in Ex parte Desjardins, Appeal 2024-000567, Application 16/319,040, represents one of Director Squires' first substantive actions since taking office one week ago and offers yet another clear signal that Section 101 reform is building steam. SquiresPTABDecision.

Squires writes:

Categorically excluding AI innovations from patent protection in the United States jeopardizes America's leadership in this critical emerging technology. . . the panel essentially equated any machine learning with an unpatentable 'algorithm' and the remaining additional elements as 'generic computer components,' without adequate explanation. . . . most troubling [the Panel] eschewed the clear teachings of Enfish, and instead substituted only a cursory analysis that ignored this well-settled precedent. Panels should treat such precedent with more care, especially when acting sua sponte.

Finally, and most clearly a signal to all USPTO employees to back-off with regard to patent eligibility, he writes:

This case demonstrates that §§ 102, 103 and 112 are the traditional and appropriate tools to limit patent protection to its proper scope. These statutory provisions should be the focus of examination.

The application, filed by DeepMind (owned by Google) and prosecuted by Fish & Richardson, claims methods for training machine learning models on multiple sequential tasks while avoiding "catastrophic forgetting," which is defined as the phenomenon where neural networks lose knowledge of previous tasks when trained on new ones.  As someone with some ADHD tendencies, I recognizing this issue.

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USPTO Director Squires’s First Patents: Crypto Software and Diagnostic Methods

Patent

by Dennis Crouch

On September 23, 2025, John A. Squires—just sworn in as the 60th Director of the USPTO—issued his first public act. In his first official act as USPTO Director, John Squires held a ceremonial signing of two newly issued patents—one covering diagnostic methods using a discovered antibody and the the other a blockchain-based resource allocation FinTech software. U.S. Patent Nos. 12,419,201 and 12,419,202. These choices appear to me a deliberate signal. Squires highlighted technologies that sit squarely within the domains that the Supreme Court and Federal Circuit have restricted most heavily over the past decade via the expanded patent eligibility doctrine of Alice and Mayo. In his remarks, Squires emphasized his intended signal: “the U.S. Patent Office is open for business, especially for the technologies of tomorrow.”

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The Rising Bar for Patent Experts: Finesse Wireless and the Need for Particularized Precision

Patent

by Dennis Crouch

The Federal Circuit reversed a Texas jury’s $166 million infringement verdict in Finesse Wireless LLC v. AT&T Mobility LLC, 24-1039 (Fed. Cir. Sept. 24, 2025), holding that the patentee’s contradictory and unclear expert testimony could not support the Jury’s finding of patent infringement.  The case is centered on  Finesse’s U.S. Patent Nos. 7,346,134 and 9,548,775, which relate to methods of reducing “intermodulation interference” in wireless communications.

Chief Judge Moore, writing for a unanimous panel, emphasized that when a patentee’s infringement case rests on “self-contradictory testimony” from its expert, courts “may conclude the evidence is insufficient” to satisfy the burden of proof.  But in this case, the panel didn’t just note the possibility of insufficient evidence – it actually applied the rule against the patentee. After analyzing Dr. Wells’s contradictions, the opinion held: “This sort of confusing change of course is not sufficient to support the jury verdict.”

This decision underscores the Federal Circuit’s escalating demands on expert testimony in patent cases. It shows up at two levels: (1) parties must marshal “their” experts to walk the jury through virtually every technical or patent‐law issue; and (2) the expert’s testimony must be internally consistent, tightly tied to the record, and conveyed with particularized precision.  I’ve written on this new hurdle that is typically focused on patentee-presentations.  See Federal Circuit Tightens Expert Testimony Standards in Trudell, Patently-O (Feb. 2025); Throwing Out the Jury: How the Federal Circuit’s ‘Particularized Testimony’ Rule Further Threatens the Doctrine of Equivalents, Patently-O, (May 2025); Wilco v. Weeks Marine: When Expert Disagreements Don’t Create Genuine Disputes of Material Fact, Patently-O (Aug. 2025); and The Remedies Remedy is Almost Complete: EcoFactor v. Google, Patently-O (May 2025). (more…)

Headnote Wars in the AI Space: Thomson Reuters (Westlaw) v. ROSS AI

Patent

by Dennis Crouch

ROSS Intelligence has filed its opening brief in the Third Circuit, challenging Judge Stephanos Bibas's decision that the AI company's use of Westlaw headnotes to train its legal search engine constituted copyright infringement. The case presents fundamental questions about the intersection of copyright law and artificial intelligence training that could significantly impact the development of AI systems across industries. Thomson Reuters Enter. Ctr. GmbH v. Ross Intel. Inc., No. 25-2153 (3d Cir. appeal filed Sept. 2025).

ROSS Intelligence built an AI legal search engine designed to let users ask legal questions in plain English and receive ranked, cited passages from judicial opinions as answers. To train the system, ROSS commissioned 25,000 legal memoranda from LegalEase Solutions, each posing a question and providing multiple ranked answers. Many of the questions were adapted directly from Westlaw headnotes summarize points of law from judicial opinions. These headnote-derived questions served as labeled examples that helped the AI learn how to identify, rank, and distinguish between relevant and irrelevant case passages. Although the headnotes themselves were not displayed to ROSS users, they were incorporated into the training process as inputs, making them central to the copyright infringement dispute between Thomson Reuters (owner of Westlaw) and ROSS.

Judge Bibas' February 2025 decision granted summary judgment in favor of the copyright holder -- finding that Westlaw's headnotes were sufficiently original for copyright protection and that ROSS's use for training did not qualify qualified as fair  use.  The district court certified the copyright questions for immediate interlocutory appeal under 28 U.S.C. § 1292(b), recognizing the novel and difficult nature of the issues presented.

In its newly filed appeal, ROSS presents two issues:

  1. Is a short quote or paraphrase of a judicial holding copyrightable?
  2. Does the fair use doctrine protect ROSS’s internal use of Westlaw’s headnotes in memos that served as training data for an AI legal search engine that produced only non-infringing outputs?

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Redefining Patent Utility: The Functional Relationship Test’s Answer to Super-Utility Claims

Patent

by Dennis Crouch

The Federal Circuit recently handed down its decision in Bayer Pharma Aktiengesellschaft v. Mylan Pharmaceuticals Inc., No. 2023-2434 (Fed. Cir. Sept. 23, 2025), focusing on the the claim limitation “clinically proven effective.”  Bayer’s U.S. Patent No. 10,828,310, which claims methods for reducing cardiovascular events in certain patients by administering specific doses of rivaroxaban (2.5 mg twice daily) and aspirin (75-100 mg daily) “in amounts that are clinically proven effective.” Generic manufacturers Mylan, Teva, and Invagen successfully challenged the patent in IPR proceedings — finding the claim term non-limiting.  The Federal Circuit agreed that the term did not provide patentable weight – but through a different analytical path.

Clinically Proven Effective: Contrasting Analytical Approaches

The PTAB concluded “clinically proven effective” was non-limiting, reasoning that because the claims already recited specific dosage amounts (2.5 mg rivaroxaban twice daily and 75-100 mg aspirin daily), the additional characterization of these amounts as “clinically proven effective” was merely redundant. Drawing on Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001), the PTAB found the phrase constituted an “expression of intended result [that] essentially duplicates the dosage amounts recited in the claims.”

On appeal though, the Federal Circuit took a markedly different approach, declining to decide whether “clinically proven effective” was limiting at all. Instead, the court applied the functional relationship test from King Pharms, concluding that even if the phrase were limiting, it constituted a “functionally unrelated limitation” that could not rescue an otherwise anticipated method from unpatentability. The court reasoned that clinical proof of efficacy “in no way transforms the process of taking the drug[s]” at the specified amounts and frequencies, emphasizing that the “the actual method . . . is the same” regardless of subsequent clinical validation.

The Functional Relationship Test from King Pharmaceuticals

In King Pharmaceuticals v. Eon Labs, 616 F.3d 1267 (Fed. Cir. 2010), the Federal Circuit established an important test for determining when additional claim limitations can make an otherwise anticipated method patentable. The case involved patents claiming methods of taking the muscle relaxant metaxalone with food to increase the drug's bioavailability - a practice that was already disclosed in prior art for reducing stomach upset. The patentee argued that adding a step of "informing" patients about the increased bioavailability made the claims novel. The Federal Circuit rejected this argument, holding that the relevant inquiry is whether the additional limitation has a "new and unobvious functional relationship" with the known method. Since informing patients about the drug's benefits "in no way transforms the process of taking the drug with food" and "the actual method . . . is the same" regardless of whether patients are informed, the informing step lacked the required functional relationship. This test prevents patentees from indefinitely extending patent protection over known methods by simply adding instructional, informational, or other functionally unrelated steps that don't change how the method actually works.

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Ultra Vires or Policy Discretion? Federal Circuit Now Weighing 5x Discretionary Denial Mandamus

Patent

by Dennis Crouch

Two additional mandamus petitions have joined the Federal Circuit's growing docket challenging the USPTO's 2025 shift toward more restrictive inter partes review (IPR) institution practices under President Trump, bringing the total to five pending cases that collectively test the boundaries of appellate review under 35 U.S.C. § 314(d). The newest petitions are In re HighLevel, Inc. (No. 25-148) and In re SanDisk Technologies, Inc. (No. 25-152).  Both challenge Director Stewart expanded discretionary denial approach that rescinded the Vidal memo that petitioners had previously relied upon. HighLevel challenges the USPTO's categorical use of § 101 district court rulings to deny IPR institution for §§ 102/103 challenges, while SanDisk attacks the agency's invocation of "settled expectations" and resource management concerns to deny institution despite litigation stays and Sotera stipulations limiting claim scope overlap.  Prior Patently-O Posts:

The Federal Circuit has requested responses from both the USPTO and IPR petitioners in all five cases (including the earlier In re SAP America, Inc., In re Motorola Solutions, Inc., and In re Google LLC petitions).  This is an unusual step that the court often skips in mandamus practice and signals at least some judicial interest in the underlying legal issues.

Each petition attempts to characterize the USPTO's February 28, 2025 rescission of the Vidal Memo and subsequent policy implementations as constitutional violations or ultra vires agency action.

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Welcome New USPTO Director John Squires

Patent

by Dennis Crouch

John A. Squires was confirmed as USPTO Director on September 17, 2025. The Senate voted to confirm Squires using the “nuclear option” – although he received strong bipartisan support in the Judiciary Committee (20-2).  Squires is a longtime patent attorney with experience in many aspects of the IP system: prosecution, litigation, licensing and deals, management, etc.  He has a chemistry background prior to law school, and also worked for many years in fintech – the same field as Commerce Secretary Howard Lutnick.

Squires’ confirmation testimony was largely down-the-middle with his core priorities:

  1. Addressing the application backlog;
  2. Improving quality with “Born Strong” patents;
  3. Reducing uncertainty under Section 101.

He committed to using AI tools where it makes sense to improving examination (both quality and efficiency).

In his written responses to the Senate Judiciary Committee, Squires laid out a broad vision of restoring the USPTO “to its rightful place atop the world as executor of our Nation’s constitutional mandate and to boost America’s ingenuity engine with the intellectual property that drives economic growth, technological progress, and global competitiveness.”   He expressed opposition to abusive “patent troll” tactics, describing them as “predatory arbitrage plays.” He committed to transparency in foreign litigation funding while reiterating his belief in strong IP protections as an important aspect of US foreign trade policy.

As Squires takes the helm, Acting Director Coke Morgan Stewart will move to her permanent role as Deputy Director. Stewart deserves congratulations for navigating the USPTO through a turbulent period – implementing President Trump’s policy shifts while keeping the agency running at full steam.

The USPTO Director serves as both Under Secretary of Commerce for Intellectual Property and Director of the USPTO, requiring Senate confirmation. This dual role means the Director must balance:

• Operational management of ~13,000 USPTO employees
• Policy development for U.S. intellectual property law
• International IP cooperation and treaty negotiations  
• Stakeholder engagement across diverse patent community
• Congressional oversight and budget management

35 U.S.C. § 3(a).

Supreme Court Asked to Resolve ‘Secret Springing Prior Art’ Controversy in IPR Proceedings

Patent

by Dennis Crouch

Inter partes review have been shown to be a powerful mechanism for challenging and ultimately cancelling questionable patents.  The process was designed by Congress to be somewhat streamlined and thus has a strict limitation that IPR trials only focus on novelty/obviousness and, those challenges must be based only on "prior art consisting of patents or printed publications."  35 U.S.C. § 311(b).

In ordinary patent law, a prior art printed publication consists of some document that was published before the "critical date" of the patent application.  Although Section 102 was reorganized somewhat by the America Invents Act, this principle still rings true today as it has for the past 150+ years.

But, here is where it gets weird: in Lynk Labs, the Federal Circuit concluded that for the purposes of 311(b), a "prior art ... printed publication" includes documents that were published well after the challenged-patent's filings date. Treating these as two separate requirements, the court found that a reference could be used so long as it (1) qualified as prior art; and (2) was  ultimately published at some point.

Now, Lynk Labs has petitioned the Supreme Court for a writ of certiorari asking:

Whether patent applications that became publicly accessible only after the challenged patent’s critical date are “prior art * * * printed publications” within the meaning of 35 U.S.C. § 311(b).

Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., No. 25-308 (petition filed Sept. 2025).

Prior posts:

  1. Dennis Crouch, Secret Springing Prior Art and Inter Partes Review, Patently-O (Oct. 15, 2024), https://patentlyo.com/patent/2024/10/secret-springing-partes.html.
  2. Dennis Crouch, Publications Before Publishing and the Federal Circuit’s Temporal Gymnastics, Patently-O (Jan. 15, 2025), https://patentlyo.com/patent/2025/01/publications-publishing-gymnastics.html.
  3. Dennis Crouch, Prior Art Document vs. Prior Art Process: How Lynk Labs Exposes a Fundamental Ambiguity in Patent Law, Patently-O (July 9, 2025), https://patentlyo.com/patent/2025/07/document-fundamental-ambiguity.html.

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Promoting the Progress: Patents, Knowledge, and the Pursuit of Happiness

Patent

by Dennis Crouch

It is Constitution Day 2025, and I am freshly inspired by a lecture from my Colleague Dr. Carli Conklin on the "pursuit of happiness" as used in the Declaration of Independence. Her scholarship reveals the phrase is not a hedonistic right that might be implied when used today, but rather part a collective project of human flourishing rooted in virtue, knowledge, and useful improvements.  Although the Declaration is not directly part of the Constitution document, Professor Akhil Reed Amar's new book, BORN EQUAL: Remaking America's Constitution, 1840-1920, argues that the Declaration's ideals and commitments continued to reshape American constitutional development long after the founding era.  In this book, he particularly focuses on how it worked through President Abraham Lincoln during and immediately after the Civil War.

Although "pursuit of happiness" is typically seen as a liberty interest -- a freedom from governmental interference -- historical record also reveals many examples of a more action-oriented approach, where that promise for the people calls for government action to eliminate barriers and "promote the progress."  In his first annual message to Congress in 1790, President George Washington declared that "knowledge" is "the surest basis of public happiness."  That same speech also urged Congress to act quickly to give "effectual encouragement" to this pursuit, particularly for the "introduction of new and useful inventions" into the United States. Within a few months of President Washington's speech, Congress responded with the Patent Act of 1790.

This post is intended to highlight this underappreciated connection that might already be apparent: the patent system represents one of the federal government's earliest (and most successful) efforts to transform a somewhat abstract right to pursue happiness into a concrete program that enables individual citizens to flourish through innovation and discovery. At the same time, it was never only about private gain. Promoting the progress of the useful arts means channeling individual ingenuity toward improvement of the common good -- ensuring that the fruits of invention would ultimately expand the shared store of knowledge that improves the nation as a whole.  In that same 1790 speech, I see Washington referring to this when he spoke of fostering "a wise and happy Government."

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The PowerBlock Problem: A Roadmap for Dodging Patent Eligibility Hurdles

Patent

by Dennis Crouch

Accused infringer iFit Inc. has filed a combined petition for panel rehearing and rehearing en banc in PowerBlock Holdings, Inc. v. iFit, Inc., No. 24-1177 (Fed. Cir. filed Sept. 10, 2025), challenging the Federal Circuit's recent decision finding the  automated exercise equipment claims eligible. The petition argues that the panel's holding directly conflicts with the court's precedent in Yu v. Apple Inc., 1 F.4th 1040 (Fed. Cir. 2021) as well as Supreme Court precedent by allowing systems to avoid ineligibility simply by reciting conventional components that perform basic functions at a high degree of generality.  The patent in this case seems to me similar to so many others -- it claims a known physical system at a fairly high level of generality and couples that with previously unknown information processing.  This combination was enough to overcome an abstract idea challenge - and suggests a roadmap for artful dodging of the eligibility hurdles.  In my view, the PowerBlock panel also seems to have have applied a mechanical versus software distinction that is not supported by Supreme Court precedent.

I hope that the original panel will take a hard look at their reasoning. As noted below, I believe there are a couple of specific errors that could be fixed while still reaching the same outcome. That result would help insure that this decision avoids working potential mischief.

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Still Pending: Three Mandamus Petitions Test USPTO’s Expanded Denial Powers

Patent

The Federal Circuit is still sitting on a trio of related mandamus petitions asking the  Court to step-in against the USPTO's 2025 up-ramp of discretionary denial practice.

  • In re SAP America, Inc., No. 25‑132 and 25-133 (petition filed Jun 16, 2025; briefing complete);
  • In re Motorola Solutions, Inc., No. 25‑134 (petition filed June 23, 2025; briefing complete); and
  • In re Google LLC, No. 25‑144 (petition filed August 18, 2025; briefing is ongoing).

In the early days, the USPTO granted very few discretionary denials. Those expanded  somewhat under Director Iancu (Trump-I); then retracted somewhat under Director Vidal (Biden).  Acting Director Stewart (Trump-II) has blown past Dir. Iancu in her approach, greatly expanding the use of discretionary denials.

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Genetic Patents Catch-22: Can Challenging a Patent Requires Risking Infringement?

Patent

by Dennis Crouch

An interesting mandamus petition is pending from Inari Agriculture -- asking the Federal Circuit to overturn the PTAB institution denial in a PGR challenging Pioneer Hi-Bred's inbred corn patent. U.S. Patent No. 11,659,803.  In its decision, the PTAB denied Inari's obviousness challenge because it failed to sequence and analyze the genome of the deposited seed that defines the claimed plant variety. Inari argues this creates an unconstitutional "Catch-22" where challengers must risk patent infringement liability to file adequate PGR petitions, violating due process and separation of powers principles. [In re_-_ Inari Agriculture, Inc. Petition].

The '803 patent claims "seed, plant, plant part, or plant cell of inbred maize variety 1PFLQ21, representative seed of the variety having been deposited under NCMA accession number 202212046." The specification describes the variety solely through phenotypic characteristics (plant height, silk color, ear length) listed in Table 1, without providing genetic sequence data. Inari's PGR petition argued the claims were obvious based on prior art disclosing the variety's parent line PH1V5T and related varieties with similar phenotypic properties, following the approach endorsed by the Board in Ex parte C, 27 U.S.P.Q.2d 1492 (BPAI 1992), where plant utility claims were found obvious based purely on phenotypic comparison without deposit analysis.

As I noted in my 2024 post, this case is part of a larger ongoing patent dispute between these two companies and there is also a good amount of interesting strategy where Pioneer has obtained patents while keeping the parent lines secret. See, Dennis Crouch, Trade Secrets vs. Patents: Pioneer's Plant Patent Strategy Raises Thorny Issues, Patently-O (Oct. 24, 2024).

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Forgetting the Evidence: How Sherman Lost on Obviousness Before and After LKQ

Patent

by Dennis Crouch

Dynamite Marketing, Inc. v. The WowLine, Inc., 2024-1523, 2024-1525 (Fed. Cir. Sept. 12, 2025) (non-precedential)

This case involves design patent infringement claims over the "Wallet Ninja," a credit-card-sized multi-tool covered by U.S. Patent No. D751,877.   Patentee Dynamite Marketing sued Sherman Specialty (d/b/a The WowLine, Inc.).  The case was complicated by inventorship disputes involving LaErik Cooper, a mechanical engineer who assisted in developing the design but was not named as an inventor on the patent. A jury ultimately found that Cooper was not entitled to co-inventor status, that Sherman willfully infringed the valid patent through its competing "TOL4" product line, and awarded Dynamite $1,850,000 in lost profits damages. The district court then awarded $1.54 million in attorney fees, bringing the total judgment to over $3.5 million.

On appeal, the Federal Circuit dismissed Sherman's challenge to the inventorship determination because Sherman lacked standing to appeal that issue, since it was not a party to Cooper's inventorship counterclaim and Cooper himself did not appeal his loss. The court affirmed all other aspects of the district court's decision -- including a non-obviousness finding that survived even after the Federal Circuit's intervening LKQ decision changed the legal standard for design patent obviousness.

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Application of Fifth Circuit’s Heightened § 1404(a) Standard in Patent Cases

Patent

by Dennis Crouch

In re VirtaMove, Corp., No. 2025-130 (Fed. Cir. Sept. 11, 2025) (Google case); In re VirtaMove, Corp., No. 2025-138 (Fed. Cir. Sept. 11, 2025) (Amazon case).

Federal Circuit has denied this pair of related mandamus actions.  In both cases, the patentee VirtaMove challenged venue transfer orders moving its patent infringement suits from the Western District of Texas to the Northern District of California. As I discuss below, the non-precedential decisions have some interesting jurisdictional tension with recent Fifth Circuit law.

VirtaMove is a small Canadian software company holding patents on secure application containerization technology. VirtaMove sued Google LLC and Amazon Web Services in the Midland/Odessa Division of WDTX, alleging infringement of patents covering methods for migrating applications into portable, secure containers. Both defendants successfully moved to transfer under § 1404(a), with the district courts (Judge Counts in the Google case, Judge Albright in the Amazon case) finding that the Northern District of California was more convenient primarily due to the concentration of defendants' engineers involved in developing the accused products in the San Francisco Bay Area. VirtaMove's central argument on mandamus was that the district courts misapplied governing law by following Federal Circuit precedent rather than more recent Fifth Circuit authority that VirtaMove claimed established heightened standards for transfer.

28 U.S.C. § 1404(a) provides that "[f]or the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought." I think of this as the "convenient forum rule" which is separate and distinct from the "proper" venue requirements of §§ 1391 and 1400(b).  

§ 1404(a) allows courts to determine where the case should be tried for optimal convenience and judicial efficiency. Someone seeking to move a case from one location to another (or as here move-it-back) bears the burden of demonstrating that the proposed transferee forum is "clearly more convenient" than the current venue by analyzing private interest factors (convenience of parties and witnesses, location of evidence, costs of litigation) and public interest factors (administrative difficulties, court congestion, local interest in deciding local controversies, and familiarity with governing law). These factors are not found in the statute, but rather are derived from a variety of precedent.

The Clash Between Circuit Approaches

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