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The Standard for Conception: Don’t Ask “Will it Work”

  1. This long-awaited CRISPER interference CAFC appeal decision took a long time. And it is not even over yet, given the CAFC remand. Has any expert yet predicted the final result?
    Is this long dragged out invention priority dispute [in perhaps the most important 21st century invention?] still that important or disruptive commercially? More specifically, will all the claims in the eventually-winning patents be limited to the Cas9 version of CRISPR and not cover other subsequently developed versions?

Transformative Changes: Copyright Leadership Dismissed as AI Report Questions Industry Practices

  1. Fired “..for allowing “inappropriate books for children” into the Library of Congress.” Pathetic. Its a research library. One cannot check out books from the Library of Congress like from a public library. Materials are for on-site use only by registered readers.
    Is this who you would like to be in charge of a merger of the copyright office and the patent and trademark office?

Reference Recycling and the Case for Sua Sponte Rehearing in Ingenico

  1. In the May 7 blog on this Ingenico v. IOENGINE decision I commented that:
    “..as a practical matter, the presentation of “on sale” or “public use” prior art to a jury is far more effectively done by showing the jury the actual prior art product and its operation, plus live testimony of the engineers, salesmen and/or customers of that product and product invoices for the critical date, NOT the dates of prior art patents or publications used in an IPR.”
    But, since this new blog of May 10 on this same case raises the concern level, I will more generally ask: how can any patent or publication be valid evidence for any “on sale” or “public use” invalidity ground? A patent or publication is no evidence that what they disclose was ever in the actual product. Patents on new products often disclose features not in the actual product or fail to show features in the actual prodcut. Nor are their dates evidence of when that product was sold or publicly used. Perhaps they could be used in some cases just to refresh the recollection of a product witness as to what was in the subject product? Patents or publications that were used or could have been used for 102 or 103 grounds in a losing IPR still cannot be raised on those grounds by estoppel.What am I missing here?

    • Hi Paul, My concern with this case sidesteps these issues and is particularly concerned with being “known” by others or “available to the public.” Obviously, a patent or printed publication can meet those criteria.

      As to your particular question, a distributed brochure that shows and describes the invention would seem to fully qualify as both a printed publication and also “on sale” prior art.

      • Further puzzled. Start with 102(a):
        “Novelty; Prior Art.—A person shall be entitled to a patent unless—
        (1)the claimed invention was patented, described in a printed publication, OR in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;”
        Clearly the first part is for 102 or 103 IPR grounds. But the next part, “public use, on sale, or otherwise available to the public” is preceded by “OR” and presumably, as I always understood it, as only applying to the invention itself being in public use or one sale, and not providing a duplication of “patented or described in a printed publication” from the part before the “OR.”
        Yes, a distributed sales brochure could be a useful part of the evidence for the Date a described product was on sale, and that it Was on sale, but that brochure itself is not itself “in public use” or “on sale.” And even less useful for that, a patent or normal publication.

  2. Let me try again. This decision allows the same publication or patent from a partially losing IPR to still be introduced in patent litigation on that patent’s IPR-surviving claims – not be bared by full estoppel. But, only for differerent reasons and with differerent evidentiary values. That is, not as direct evidence of invalidity, and only for supporting evidence for “on sale” or “public use” invalidity grounds.

  3. Interestingly, I checked the lengthy S.J. decision in the Prolitec Inc. v. ScentAir Techs. D.C. case that was cited in this case for a split among district courts, and found that it was apparently not the same split!
    “There is a split among district courts, however, as to whether IPR estoppel extends to device art that is entirely cumulative of, i.e., materially identical to, prior art in the form of patents or printed publications that were or could have been raised in an IPR. Compare … [citing cases]”
    I.e., there were some district courts that were applying IPR estoppel to prevent the use of PRODUCTS [“device art”] as prior art in an invalidity trial [not IPR patents or publications] based on an argument that the products were too similar to a patent that was presented in a losing IPR. Even though products can not be cited or used in an IPR.

Estoppel Gutted: A Pelican’s Guide to Patent Litigation

  2. “IPR estoppel does not preclude a petitioner from relying on the same patents and printed publications as evidence in asserting a “ground” that could not be raised during the IPR, such as that the claimed invention was known or used by others, on sale, or in public use.”
    Cert candidate? Perhaps. But as a practical matter, the presentation of “on sale” or “public use” prior art to a jury is far more effectively done by showing the jury the actual prior art product and its operation, plus live testimony of the engineers, salesmen and/or customers of that product and product invoices for the critical date, NOT the dates of prior art patents or publications used in an IPR.

    • Right. I read Ingenico as applying to system art only, that is presented *as* system art. Since you’re limited to “known or used by others, on sale, or in public use”, you would need to show that there was an actual system that was actually known/used/sold, which involves presenting some of the evidence you mentioned. You can’t just point to some patent / publication that was not embodied in a real system.

      • That is a good point for public use and on-sale invalidity grounds. Indeed, a point not mentioned in the panel decision is that Judge Bryson, sitting as the trial judge, made a finding that the use of the system prior art was not merely a “disguised” attempt to reassert the printed publication prior art. Ingenico Corp. v. IOENGINE, LLC, No. 18-826-WCB, 2022 WL 20814960, *25 (D. Del., Dec. 9, 2022) (Bryson, C.J., sitting by designation) (“:.. I permitted Ingenico to rely on the DiskOnKey as device art because IOENGINE had not established that each of the documents on which Ingenico sought to rely was publicly available (i.e., was a printed publication) that would have been a proper ground of invalidity in an IPR proceeding. I further held that ‘Ingenico is not estopped from relying on device art if, as it appears here, that device is not simply a printed publication invalidity theory in disguise,’ and that the device art may be combined with other printed publications as long as the combination is ‘substantively different from the grounds that were raised or reasonably could have been raised by Ingenico in its petitions for IPR.’”)

        The more troubling concern lies with the “known … by others” prong of pre-AIA § 102(a) since invalidity under this prong does NOT require an actual reduction to practice. In re Borst, 345 F.2d 851, 855 (CCPA 1965) (“Where . . . the disclosure constituting evidence of prior knowledge contains, in the words of the Board of Appeals, ‘a description of the invention fully commensurate with the present patent application,’ we hold that the disclosure need NOT be of an invention reduced to practice, either actually or constructively.”) (emphasis added) [but the disclosure must be enabling, id.].

        Consequently, if an actual reduction to practice need not be shown for this invalidity ground, a risk exists that unsuccessful IPR petitioners may attempt to simply recast any printed publication prior art or patents they used in an IPR as being evidence to show “known … by others,” and thereby get a second shot to use same references in a litigation.

        In some circumstances, issue preclusion may have some impact on restricting how the accused infringer can use art it actually raised in the IPR in the litigation. Furthermore, the fact that a petitioner failed to prove invalidity in an IPR under the preponderance of the evidence standard may temper its decision to essentially reassert the same argument in the litigation that it would have to prove under the higher clear and convincing standard.

        To the extent the accused infringer raises in the litigation prior art that it reasonably could have raised in the IPR but did not, under Ingenico, it apparently can use that art so long as it asserts the art is evidence showing the disclosed subject matter was “known … by others.” This may be what effectively guts IPR estoppel.

        It’s possible that creative arguments can be made that will require to show invalidity under the “known … by others” prong something more than just presenting the printed publication will be required (as is the case for on-sale bar and public use). For example, does the plural qualifier in the term “others” require more than one author or one group of authors such that one publication will not suffice or will the fact that the printed publication is publicly accessible be deemed to automatically satisfy any requirement as to how many people must know of the subject matter?

        A similar concern lies under the “otherwise available to the public” prong of AIA § 102(a), unless the term “otherwise” gets construed to only apply to prior art that cannot be characterized as “a printed publication, or in public use, on sale.” Cf. Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc., 586 U.S. __, __, 139 S. Ct. 628, 634 (2019) (noting that the “otherwise available to the public” phrase of § 102(a)(1) “captures material that does not fit neatly into the statute’s enumerated categories but is nevertheless meant to be covered”)

  3. If I understand this correctly, the patent and publication references were determined in the IPR as not anticipating or rendering obvious the claimed invention at issue, which we’ll call invention #1. Thus, the patent and prior art references do not teach or suggest invention #1. If there is an invention shown in the patent and publication references, then it must be a different invention which we’ll call invention #2. So then the alleged infringer goes to court and has the invention #1 claims invalidated because invention #2 was on sale. Something is wrong here.

Throwing Out the Jury: How the Federal Circuit’s ‘Particularized Testimony’ Rule Further Threatens the Doctrine of Equivalents

  1. So does winning a patent case with a DOE elimination of an express claim element allow others to file an IPR or reissue against that patent with that broader claim scope interpretation?

The Federal Circuit’s Rigid Approach to Secondary Considerations

  1. Right, just what the Sup. Ct. will Not want to take this term, another “hot potato” case like this, likely to draw more bad press on top of all the Trump fiat injunction cases.
    Also, although the Purdue Pharma brief argues that “The Decision Below Exemplifies The Federal Circuit’s Unduly Rigid [nexus] Approach” to “objective indicia of non-obviousness” [Graham factors], there must be Some definition of such relationship to avoid things like advertizing, packaging, pricing, market power, etc. Does this brief suggest a clear alternative?

    • The brief does not explicitly advocate for completely divorcing the nexus requirement from the claims — instead arguing for a return to a more flexible, holistic approach. The brief talks about how initially, the nexus test required only a reasonable inference connecting commercial success and other secondary considerations to the invention, rather the more rigid direct connection to specific claim elements.

      • Dennis, thanks for your clairifications at both O’s above and 2 above. As I recall, the CAFC itself has objected to treating such evidence as mere “secondary factors”?
        But, if it is not tied to what is claimed as the invention in some respect, then what? The product itself, which may have other equally or more important market-relevant advantages?
        However, I do think there is a good argument for broader acceptance and consideration of evidence of “objective indicia of non-obviousness” [Graham factors] in contested litigation as here, as opposed to ex parte prosecution of patent applications before non-attorney examiners with no real ability to investigate or challenge it. Many of the CAFC decisions on this subject are such ex parte PTO cases.

  2. I don’t understand this statement, “To be on point, that skepticism would have needed to be inventive itself,” and I don’t understand the above comment.

    • Thanks P – My point is that the Federal Circuit’s approach essentially requires that skepticism directly target the specific claimed elements to be considered relevant. In this case, FDA skepticism about whether abuse-deterrent properties could be achieved was dismissed because it wasn’t specifically about the air curing method, even though that method is what enabled the abuse-deterrent properties. This creates an artificially high bar – skepticism about solving the problem isn’t enough; the skepticism must be about the specific technical solution. But this requirement swallows the rule because any prior art expressly criticizing the claimed technical solution would also bar later patenting that solution on anticipation grounds.

  3. How close is the “fairly close prior art”? Secondary considerations are a thumb on the scale of the obviousness analysis. They’ll make a difference when the result is a toss-up, but not when obviousness is (ahem) obvious.

    • Do answer your question, I have not analyzed the prior art in detail so I don’t know the direct answer to “how close.”

      I do want to push back on the notion that these are just a “thumb on the scale.” The metaphor itself is problematic, it suggests unfair influence rather than legitimate evidence. This is similar to the phrase “secondary considerations” itself.

      Objective Indicia (what I like to call Indirect Indicia) aren’t mere tiebreakers; they’re fundamental components of the Graham obviousness framework. In cases like Minerals Separation (1916), these practical, real-world indications were central to the Court’s analysis, not peripheral. The Court found the immediate and widespread adoption of the patented process to be “persuasive evidence” of inventiveness – giving substantial weight to what we now call secondary considerations. The Supreme Court’s approach in KSR specifically rejected rigid formulas in favor of “recourse to common sense” – which is precisely what secondary considerations provide: real-world evidence of non-obviousness that helps overcome the distortion of hindsight bias.

      IMO, the Federal Circuit’s current approach creates an imbalance: it applies flexible standards when finding obviousness (allowing market forces to supply motivation to combine), but then imposes a more rigid “nexus” requirements that effectively nullify evidence of non-obviousness. This contradicts the holistic analysis the obviousness doctrine demands. Rather than a “thumb on the scale,” secondary considerations are better understood as a necessary counterweight to hindsight bias – they bring balance to the obviousness analysis by introducing objective, marketplace evidence.

Legacy of In re Rijckaert: Inherency’s Limited Role in Obviousness Analysis

  1. [Just a lay reminder that this In re Rijckaert, 9 F.3d 1531 (Fed. Cir. 1993) decision only applies to the limited role of “inherency” in 103 analysis, not in 102 rejections.]

  2. As a follow-up to, and expansion of, In re Rijckaert, you might want to focus on, another decision authored by Judge Lourie: Honeywell v. Mexichem, 865 F.3d 1348 (Fed. Cir. 2017). In Honeywell, the court harkens all the way back to the CCPA’s 1963 decision in In re Papesch, and explains:

    What is important regarding properties that may be inherent, but unknown, is whether they are unexpected. All properties of a composition are inherent in that composition, but unexpected properties may cause what may appear to be an obvious composition to be nonobvious. See, e.g., In re Papesch, 315 F.2d 381, 391 (C.C.P.A. 1963) (emphasizing that “[f]rom the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing,” and yet in comparing the similarity of the one compound to another, “[t]here is no basis in law for ignoring any property in making such a comparison”). Thus, the Board here, in dismissing properties of the claimed invention as merely inherent, without further consideration as to unpredictability and unexpectedness, erred as a matter of law.

  3. Be careful relying on Rijckaert without thought to later decisions. The Federal Circuit has tried to narrow it.

    One of the worst decisions in this respect is the almost viciously anti-patent In re Couvaras, 70 F.4th 1374 (Fed. Cir. 2023). The opinion of the Court in Couvaras does not cite Rijckaert directly, but sets about cabining the Rijckaert principle as reiterated in Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A. de C.V., 865 F.3d 1348 (Fed. Cir. 2017), one of Rijckaert’s faithful progeny. According to the Couvaras opinion, notwithstanding the Rijckaert/Honeywell principle, “[r]eciting the mechanism for known compounds to yield a known result cannot overcome a prima facie case of obviousness, even if the nature of that mechanism is unexpected.” The key move of the Couvaras court in my mind was to mess with what constituted “a prima facie case of obviousness” in such fact patterns. To oversimplify, in Couvaras, an appeal from a Board affirmance of rejection in original prosecution, the proposed claim involved applying together two known compounds to a patient in a way that yielded a certain desirable result that it was already known could be obtained by applying each of the two compounds separately. The particular mechanism that would yield good results when the two compounds were applied together as claimed was not known at the time. But in the view of the court, “the two known compounds were known to effect” “the same ultimate result” when applied separately, providing a motivation to combine them. So it is as if the Couvaras court reads this Rijckaert/Honeywell principle as almost limited to cases where the obviousness argument failed to offer any reasoning for why the ordinary artisan would have been motivated to seek the result obtained by the claimed invention, even if the mechanism that yielded that result in the claimed invention was unexpected and unknown to artisans at the time.

AI and Cognitive Laziness for Lawyers

  1. I believe that GPS makes me a better driver and helps me understand the geographic area much quicker and deeper than using a paper map or merely wandering aimlessly. I often have to correct the GPS and make impromptu detours. This is all to say that I don’t think bifurcating lawyers as AI-reliant and AI-oblivious is a sensible approach.

    I’m certainly contemplating potential issues with cognitive offloading. I still hear my math teacher’s cautions of becoming too dependent whenever I use a calculator (or Siri). But we can’t reject tools just because it makes things (too) easy. Can we?

    Maybe it will be like the gym where we have to exercise our brains separately because the work we do no longer requires strength? I personally would like more time to take walks, watch jeopardy, or improvise—the best ways I see how to “use it or lose it.” And reading crime thrillers.

  2. Among the problems of reliance on AI in patent law [besides well known one’s like AI generated fake legal authority] is the absence in AI databases of relevant information. E.g., information behind unpaid paywalls, and the many out of print but still under copyright scientific and engineering books and articles since 1928 that are not on generally accesable digital databases, or, never digitized?

By all Means: When Software Functions Lack Correspnding Structure

  1. “In this case, the court found that the specifications “disclose no structure at all, much less an algorithm for performing the [claim] recited functions.” ”
    Why is the PTO allowing such applications?

  2. It is understandable why a court would consider software to not be structure. It is a set of functions that a computer is being instructed to perform. But all PHOSITAs implicitly recognize that describing those functions necessarily means that those instructions must be stored in a computer memory or they are useless. Applicants don’t say that because everybody already knows that is necessary. So computer instructions should always be considered structure because they necessarily always require memory structure for purposes of § 112(f). Doing so would follow the purpose of § 112(f). The fact that the authors of § 112(f) were probably unaware of computer technology should not prevent this interpretation.
    Frank

The USPTO’s AI Inventorship Guidance: A Legally Problematic Half-Measure

  1. Dennis, I think you have raised a really interesting legal point here re the PTO’s “AI inventorship guidance that established a [presumablly reduced] “significant contribution” standard for human inventorship for AI-assisted innovation situations.” Especially in view of the Sup. Ct. overruling of the Chevron Doctrine removing any presumotion of PTO agency [versus judicial] correctness of patent law interpretations.
    It is also untypical, in that the PTO has usually relied on judicial interpretations of patent statutes.
    The interesting question may be how and when this PTO guidance can be legally challenged?

  2. Perhaps the issue is what constitutes discoverorship? Section 101 states: “Whoever invents or discovers…” A generative AI output does not naturally exist in nature and is not prior art to the prompter as it has not been published. Does conception have a role when discovering something? Either way, it is a problem for inventors. Generative AI may become ubiquitous in the inventive process. Trade secret protection, if appropriate, may be the path to take, or perhaps not using reverse engineerable inventions and rolling the dice that someone or something else might come up with the same invention and take market share. How does that promote the useful arts?

  3. I agree with all of your conclusions, Dennis.

    However, you seem to imply agreement with the USPTO’s assumption that an “invention” that is created by an AI cannot have a human inventor unless the human makes an additional inventive contribution beyond what the AI created (whether a “significant contribution” for the USPTO or “complete conception in the mind of the human inventor” for you).

    Leaving aside the philosophical questions at the center of Thaler’s reason for bringing the DABUS litigation (i.e., that “conception” by an AI of an “invention” should be considered equivalent to human conception of an invention), and agreeing with the conclusion of the court in the DABUS litigation that an AI cannot conceive of an invention as required by the statute, my view is that the human that perceives an invention that is created by an AI such that the human forms “a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice” is a complete and valid inventor.

    The AI provides some output that, in hindsight, can be argued to have been the equivalent of “a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice” in a human mind, it is not. Only the human can have such a conception as required by and contemplated in the statute and court decisions.

    A close analogy is the inventor who happens upon a product produced by a process that was not anticipated or expected. The work of invention was done by natural laws during the method. But only the human can appreciate the invention as invention by forming a complete conception in their mind. That the human set up and performed the method could be considered analogous to the human who sets up and trains an AI. In both cases the results were not completely conceived ahead of time.

    I believe we can leave the question of whether “conscious” AI in the future could conceive of inventions by just letting “the first human conceiver” of the invention be the inventor as it has always been.

  4. Dennis:

    I have been presenting on precisely this topic recently in various locations. I believe it is also a violation of the oath requirement, as a human “significant contributor” cannot be a “joint inventor” with an AI (which itself cannot be a joint or sole inventor), and because the human is also not the “sole inventor” of the claimed invention. So it’s not just 100(f), and also doesn’t account for human “derivation” of the AI’s creative contribution – although old 102(f) is no more it may still apply to inventorship. The critical language from the guidance (with which I don’t agree, and the PTO’s case citation does not stand for the proposition cite) is as follows (at 89 FR 10047/3: (“While recognition and
    appreciation are generally required for
    complete conception, there is no
    requirement that each inventor
    recognize and appreciate the invention.
    Therefore, each inventor must make a
    significant contribution to the
    conception of the invention, and at least
    one inventor must have recognition and
    appreciation.40 40 Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d
    1200, 1206 (Fed. Cir. 1991) (‘‘Conception requires
    both the idea of the invention’s structure and
    possession of an operative method of making it.’’)
    (citing Oka v. Youssefyeh, 849 F.2d 581, 583 (Fed.
    Cir. 1988)).

    Josh

Privies, Prior Art, and Procedure: Stewart’s Triple Rebuke of PTAB in favor of Patentees

The Priority Paradox: In re Floyd Highlights the Dual Standards of Written Description and Anticipation

  1. This result makes no sense. How can a claimed design be denied priority because it is not shown exactly in the priority document, and the same priority document nevertheless anticipates the claimed design that is not shown exactly in the priority document? The answer lies in the court’s 2009 case of International Seaway that changed the long-standing test for anticipation (“identical”) by stating that the test for anticipation is the same as the test for infringement, i.e., whether the prior art is “substantially the same” as the claimed design. I have written in detail about the court’s erroneous interpretation in Seaway of the 1889 Supreme Court case of Peters v. Active in my 2020 paper “Design Patents Sunk in International Seaway” (available on ssrn), which points out, inter alia, that the standard of “identical” for anticipation is in the statute itself: 35 USC 103 begins: “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102…”. It’s time for the court to return the test for anticipation back to its traditional meaning, i.e., the claimed invention (design) must be shown identically in the prior art in order to anticipate it.

Masters of Their Own Petition: The Federal Circuit’s Latest Stance on AAPA

  1. If patent specification Admitted Prior Art (AAPA) cannot be used directly in inter pates review proceedings, and that prior art is essential, this may be one situation in which filing a reexamination might be preferable to filing an IPR, since it can clearly be used in ex parte PTO proceedings not having the § 311(b) restriction.
    However, in how may situations do applicants admit to the existence of prior art that cannot be found in any prior publication or patent? And thus used in in the IPR petition instead of AAPA? Concealed features or materials of on-sale or public use products not disclosed in any service manuals or advertizing, perhaps?

    • The premise of the above comment that ex parte reexamination does not have “the § 311(b) restriction” is not correct.

      Section 311(b)’s “prior art consisting of patents or printed publications” language as to IPRs is also found in Section 301(A)(1) as to reexaminations. And Section 311(b)’s “on the basis of [that prior art]” language is also found in Section 302 as to reexaminations.

      In fact, the America Invents Act copied this language from §§ 301(A)(1) & 302 into § 311(b).

      Therefore, it does not seem there to be any way, even “bending over backward,” for Qualcomm II’s holding to not also and equally apply to EPR as well as IPR.

Seymour’s Shadow: Reviving the Supreme Court’s Standard for Prior Art Enablement

  1. Highly unlikely to get a cert grant in this case. But, as an academic note, note that in citing really old Sup. Ct. decisions on enablement, especially for 102 prior art rejections based on prior patents, that those were the olden days in which physical patent models were required to be provided by applicants – a lot more stringent enablement showing for those prior art patents?

    • Thanks! You are correct that the Federal Circuit’s presumption regarding prior art enablement was significantly articulated there. It’s worth noting, however, that the court in Amgen focused specifically on prior art U.S. patents. As I pointed out above, such patents have a stronger rationale for presumption of enablement because they have undergone USPTO examination for enablement of the claims at issue. In contrast, this rationale weakens significantly when applied to non-patent printed publications or even published applications that have not received similar scrutiny.

“Do it on AI” claims are Abstract Ideas

  1. The claims in this case are really not that bad. It’s a little hard to understand why a specific method of training a machine learning model is an abstract idea. Is this the case that shows we need action from congress now more than ever? Where is PERA?

I Know I’m Going to Love a Brief That Repeatedly Cites Marbury v. Madison

  1. While this Xerox legal argument was ignored in this Xerox v. Facebook CAFC appeal of an IPR decision, it may well not be ignored by Trump’s new PTO Director. [Note that he has already acted to reduce IPRs even being inititated if the parallel D.C. suit has proceeded.] However, I doubt if he will find many, if any, IPR PTAB decisions that actually do ignore an actual prior claim scope Markman decision of a District Court on the same claim. That has certainly not been any PTO policy.

  2. Dennis, I’m not quite sure I understand: “If you recall, the USPTO and PTAB have historically interpreted claims using broadest reasonable interpretation (BRI) rather than the standard approach outlined in Phillips v. AWH. But, the USPTO changed its approach a few years ago and linked the standards — with the result that the issue should not simply be ducked.”
    Did not the PTO’s prior adoption of that en banc CAFC standard for claim interpretation instead of BRI for IPRs end that issue for IPRs?
    BRI has, of course, been used with judicial approval for eons for PTO pending applications (based on their claim amendment opportunities), and still is. Are you suggesting that applicants should start to argue a narrower judicial interpretation of their application claims in ex parte PTO PTAB appeals and in appeals from there to the CAFC if they think that would avoid prior art rejections? Or, were you thinking of patent reexaminations or reissues?

  3. Seems that in resolving this issue, one must account for the principle that district court decisions are never binding on any other court, and thus not entitled to stare decisis treatment. Camreta v. Greene, 131 S. Ct. 2020, 2033 n.7 (2011) (“‘A decision of a federal district court judge is not binding precedent in either a different judicial district, the same judicial district, or even upon the same judge in a different case.’ Many Courts of Appeals therefore decline to consider district court precedent when determining if constitutional rights are clearly established for purposes of qualified immunity.” – citation omitted); Threadgill v. Armstrong World Industries, Inc., 928 F.2d 1366, 1371 (3d Cir. 1991) (“[I]t is clear that there is no such thing as ‘the law of the district.’ Even where the facts of a prior district court case are, for all practical purposes, the same as those presented to a different district court in the same district, the prior ‘resolution of those claims does not bar reconsideration by this Court of similar contentions. The doctrine of stare decisis does not compel one district court judge to follow the decision of another.’”)

    In view of that precedent, should one district court decision bind an administrative agency? The Marbury point makes sense if it’s a Federal Circuit ruling on a claim-construction issue as a Federal Circuit claim-construction decision is entitled to stare decisis effect. Ottah v. Fiat Chrysler, 884 F.3d 1135, 1139-40 (Fed. Cir. 2018). It does not seem as strong for district court claim constructions that are not entitled to stare decisis.

    Furthermore, claim construction decisions are interlocutory and subject to revision by the district court at anytime before the court enters final judgment, and there is the concept of the district court having the right to engage in a “rolling claim construction” as its understanding of the technology and the issues in the case evolves. Thus, if the proffered district court claim construction decision is from a case that has not yet reached a final judgment (which may happen if the PTAB proceeding arose from a parallel district court proceeding that has been stayed), the underlying ruling could be changed by the district court later during the litigation. Would it be proper to bind an agency to a decision that may undergo revision at the district court’s discretion after the PTAB proceeding concludes?

    The level of depth of the district court’s claim construction raises another issue that could impact the soundness of binding the PTAB to a district court’s claim-construction ruling. A district court only needs to construe a claim term to a sufficient degree of precision to resolve whatever particular infringement or invalidity dispute the parties have presented. It need not go any further. GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1372- (Fed. Cir. 2016) (“Where a district court has resolved the questions about claim scope that were raised by the parties, it is under no obligation to address other potential ambiguities that have no bearing on the operative scope of the claim.”). What should be done in contexts where the district court makes a claim construction ruling that was sufficient to resolve an infringement issue, but the validity issue for that same term before the PTAB requires a further depth of construction for the same term. Cf. Telcordia Tech., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1373-74(Fed. Cir. 2010) (claim construction made in a prior appeal construing the same term, “empty payload field,” from the same patent, did not prevent the parties from seeking a more precise construction of the term where in the prior case the only issue was whether the payload field had anything in it and in the present case the issue was whether the empty field had to be limited to bits that served no purpose other than being a place holder). Logically, that scenario would not require blind adherence to the district court’s construction by the PTAB. (This point of a material difference in the depth of the claim construction analysis can also impact whether star decisis should apply if the claim construction ruling came from the Federal Circuit.)

    A claim construction ruling by a first district court is usually treated by a second court as being persuasive, but not binding, authority for the second court to consider; IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 n.1 (Fed. Cir. 2011), sometime referred to as giving “reasoned deference” to the first district court’s claim construction ruling. Finjan, Inc. v. Symantec Corp., No.14-cv-02998-HSG, 2017 WL 550453, *3 (N.D. Cal. Feb. 10, 2017) (noting that prior claim construction by district courts are entitled to “reasoned deference” and prior claim constructions from within the same district are entitled to even greater deference). Perhaps this principle should apply where the PTAB is presented with a district court’s claim construction. Accordingly, it seems that the PTAB erred if it wholly refused to consider the district court’s claim construction presented to it. In a perfect world, it should have considered the district court’s ruling, considered whether the related issues and relevant facts for the claim-construction dispute were the same, and how the district court’s claim-construction analysis applies or does not apply to the claim-construction issues before the Board.

PHOSITA is no Ordinary Person

  1. A PHOSITA is a person having ordinary skill _in the art_, not a person having ordinary skill full stop. Some arts– like pharmaceutical sciences, pharmacy, biochemistry, and microbiology– require extraordinary intelligence and dedication just to reach a level of “ordinary skill.” So I have no trouble believing that someone smart and disciplined enough to get a degree in one of those fields and work in the field _of sterilization_ for four years would know about sterilization standards from a large economy like the UK. After all, patent law is also an arcane discipline, and my “ordinary” colleagues and I know all sorts of esoteric things about patents.

    In other words: if you work in a field filled with smart people, then you need to be extremely exceptional to meet the patentability standards for that field. This sort of “grading on curve” does feel unfair, but the alternative is having everything that (say) biochemists do being patentable because it’s way beyond the skill of the rest of us. That many patents from that many biochemists would probably clog the field of biochemisty, and thus not promote the progress of science and the useful arts.

  2. Yes, and the difference is not slight, either. The statutory test for the 112 “any person skilled in the art to which it pertains” is if it enables them all “to make and use” the [claimed] invention from just what the patent specification content itself adequately describes in “full, clear, concise, and exact terms.” I.e., Without needing to do any inventing or creativity.

Patent Issuance Timeline Accelerated

  1. “eGrant”

    Why am I STILL getting paper patents every week then? Please make them stop.

The Standard for Conception: Don’t Ask “Will it Work”

May 12, 2025

by Dennis Crouch In an interesting decision affecting one of the most high-profile patent disputes in biotechnology, the Federal Circuit has partially vacated and remanded a PTAB decision that awarded priority of invention for CRISPR-Cas9 technology in eukaryotic cells to scientists at the Broad Institute. Regents of the University of California v. Broad Institute, Inc., […]

Transformative Changes: Copyright Leadership Dismissed as AI Report Questions Industry Practices

May 12, 2025

by Dennis Crouch The copyright world experienced a major shift in May 2025 with the abrupt dismissal of Dr. Carla Hayden (Librarian of Congress), followed by the release of a landmark U.S. Copyright Office report on AI training that concluded many current industry practices likely do not qualify as fair use, and culminating in the […]

Reference Recycling and the Case for Sua Sponte Rehearing in Ingenico

May 10, 2025

by Dennis Crouch This is a follow-up on my recent discussion of Ingenico v. IOENGINE, a potentially groundbreaking decision that appears to have unintentionally upended fundamental principles of IPR estoppel. The Federal Circuit’s ruling threatens to undermine Congressional intent and, as a consequence, dramatically shift the AIA balance in favor of IPR challengers and against […]

Federal Circuit Affirms Trademark Refusal for “US SPACE FORCE” Mark

May 9, 2025

by Dennis Crouch The Federal Circuit recently affirmed a decision from the Trademark Trial and Appeal Board (TTAB) that refused registration of the mark "US SPACE FORCE" based on false suggestion of a connection with the United States. In re Thomas D. Foster, APC, No. 2023-1527, slip op. at 1 (Fed. Cir. May 7, 2025).  […]

Throwing Out the Jury: How the Federal Circuit’s ‘Particularized Testimony’ Rule Further Threatens the Doctrine of Equivalents

May 8, 2025

by Dennis Crouch The Supreme Court recently received a petition for certiorari from NexStep, Inc., challenging a Federal Circuit decision that epitomizes a four-decades-long trend of restricting the doctrine of equivalents (DOE). The petition in NexStep, Inc. v. Comcast Cable Communications, LLC (No. 24-1137), presents a fundamental question: Has the Federal Circuit improperly shackled the […]

Estoppel Gutted: A Pelican’s Guide to Patent Litigation

May 7, 2025

by Dennis Crouch In a significant decision narrowing the scope of Inter Partes Review (IPR) estoppel, the Federal Circuit has held that a patent challenger who previously pursued an IPR can still rely on system prior art in district court litigation, even when that system was fully documented in publications that could have been raised […]

Clinical Trials Get a Legal Shield: Federal Circuit Reverses Pharma Patent Injunction

May 6, 2025

by Dennis Crouch The Federal Circuit's May 6, 2025 decision in Jazz Pharmaceuticals v. Avadel focuses on the scope of injunctive relief for infringement under 271(e).  The appellate court held that a district court may not enjoin a pharmaceutical company from initiating new clinical trials or offering open-label extensions where such activities are protected by the […]

The Federal Circuit’s Rigid Approach to Secondary Considerations

May 5, 2025

by Dennis Crouch Purdue Pharma has filed a petition for certiorari asking the Supreme Court to review what it characterizes as the Federal Circuit's overly rigid application of the "nexus" requirement for objective indicia of non-obviousness. I agree with the petition that the Federal Circuit's approach contradicts the Supreme Court's longstanding precedent requiring a flexible […]

Legacy of In re Rijckaert: Inherency’s Limited Role in Obviousness Analysis

May 5, 2025

by Dennis Crouch The Federal Circuit's 1993 decision in In re Rijckaert, 9 F.3d 1531 (Fed. Cir. 1993), set an important boundary on the use of inherency in obviousness determinations. I recently reread the case and wanted to reintroduce the case that continues to be regularly cited in both patent prosecution and litigation. Rijckaert involved […]

AI and Cognitive Laziness for Lawyers

May 2, 2025

by Dennis Crouch I enjoyed reading Professor S.I. Strong’s new article on AI-lawyering and her proposed solution that inspired by the English legal profession’s structure. Although I think this is all still early stage, emerging empirical research is showing how generative AI usage often triggers “metacognitive laziness” and “cognitive offloading” in users. Studies particularly with […]

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2 thoughts on “AI and Cognitive Laziness for Lawyers”

  1. 2

    Among the problems of reliance on AI in patent law [besides well known one’s like AI generated fake legal authority] is the absence in AI databases of relevant information. E.g., information behind unpaid paywalls, and the many out of print but still under copyright scientific and engineering books and articles since 1928 that are not on generally accesable digital databases, or, never digitized?

  2. 1

    I believe that GPS makes me a better driver and helps me understand the geographic area much quicker and deeper than using a paper map or merely wandering aimlessly. I often have to correct the GPS and make impromptu detours. This is all to say that I don’t think bifurcating lawyers as AI-reliant and AI-oblivious is a sensible approach.

    I’m certainly contemplating potential issues with cognitive offloading. I still hear my math teacher’s cautions of becoming too dependent whenever I use a calculator (or Siri). But we can’t reject tools just because it makes things (too) easy. Can we?

    Maybe it will be like the gym where we have to exercise our brains separately because the work we do no longer requires strength? I personally would like more time to take walks, watch jeopardy, or improvise—the best ways I see how to “use it or lose it.” And reading crime thrillers.

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