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Thinking back on Milburn and Secret/Springing Prior Art

  1. Another good reason for Published application filing date for prior art. If a published patent application was Not fully effective prior art as of its filing date there would be a constant problem of two or more applicants being able to obtain patents on the same or essentially the same invention. That was actually happening before the AIA, when foreign filed application priority date was prior to the filing date of a U.S. applicant but that prior foreign filing date was not the prior art date for the U.S. applicants until the AIA was enacted.

The Narrow Semantic Line on AAPA: Federal Circuit’s Latest Take in Shockwave

  1. I do not understand why an admission of prior art by the patent applicant in the specification of the subject patent against which IPR is sought is not an “admission against interest” usable in the IPR as in any other patent proceeding? Irrespective of a petitioner subsequently calling it “basis” instead of “reference” or “general background knowledge. ”

Timing is Everything: PTAB’s Renewed Reliance on Litigation Timelines and Patent Longevity

  1. Check out Cambridge Indus. USA, Inc. v. Applied Optoelectronics, IPR2025-00433, Paper 12 at 2-3 and IPR2025-00434, Paper 11 at 2-3. From the same petitioner and patent owner, Stewart split the decision between patents that were 7-9 years in force (denied for settled expectations) and patents that were 5-6 years in force (referred to the Board with no settled expectations). The justification for the line between year 6 and year 7 seems to come from the six-year window of recovery in Section 286, as implied in the Dabico decision.

  2. Dennis, what percentage of IPR petitions were even granted in this same week of this long list (25?) of IPR petitions “institution denied” irrrespective of the strength of their invalidity proofs?

  3. Repeating a prior comment, now that it has become a sua sponte Director tool for de facto elimination of most IPRs:
    I have difficulty in understanding how the term “settled expectations” even logically applies to preventing IPRs on patents that patent owners did not sue anyone on for many years? The “settled expectation” is to logically assume that the subject older patent is one of the millions that no one will ever sue to. To require filing IPR petitions against said patents long before they are sued on and prevent IPRs after lawsuits are filed is an illogical burden on the PTO and all manufacturers and sellers and contrary to the very intent of the IPR system. The CAFC in its recent Dolby v. Unified Patents decision emphasized that the America Invents Act’s purpose is “to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs.” [citing] Thryv, Inc. v. Click-To-Call Technologies, LP, 590 U.S. 45 (2020).

    • This new non-statutory and caseless [if not baseless] solely PTO Agency generated “doctrine” of “settled expectations” as a way to kill the ABA IPR Statutes is particulary ironic in view of the recent Sup. Ct. Loper decision overruling the prior “Chevron Doctrine” to thereby remove any presumption of agency correctness for agencies making such sweeping agency scope interpretations.

En Banc Ineligibility Petition in Longitude Licensing v. Google

  1. I have long thought that some version of the PERA was bound to pass eventually, because Sen. Tillis was so patiently persistent in sponsoring and boosting this issue. Now that he is retiring, however, I am less certain. Hopefully Sen. Coons picks up the task of promoting §101 reform so that this issue gets the attention that it has too long deserved but not yet received.

  2. “While Acting Director Stewart has been incredibly active on other fronts since taking the helm in January 2025, she has remained notably silent on Section 101 reform initiatives” is a politically astute observation. We are in a time in which that may be necessary even for patent attorneys. Due to legally-unpredictable federal administrative agency management conduct, even in the PTO, as demonstrated in increasingly novel reasons for denying IPRs, and employee reductions and/or emplyee demands.
    As for this and many other patent lawsuits with claims getting Section 101 unpatentable subject matter rejections, the real problem is too often overbroad result or function claiming and inadequate prior art consideration. [The claim above reads broadly enough to me to remind me of longstanding “red eye image correction” software.] It amazes me that so many clients proceed with loosing litigation thinking that they can read unclaimed specification details into unambiguously very broad claims of issued patents being sued on? [Rather than adding better claims with a reissue application?] In violation of the fundamental long standing patent law claim ambiguity and prior art avoidance “nose of wax” restraint against that.

    • This is “nose of wax” all the way.

      Procedurally, there’s a very easy fix if a patent holder really thinks the claims should incorporate part of the specification: propose a claim construction requiring that. At the 12(b)(6) stage, that plus an explanation of how the construction renders the claims non-abstract will dismiss the motion. Of course, the patent holder would then have to live with that construction, likely tanking their infringement case. So instead we get all these wishy-washy references to the specification without any explicit arguments that the claims are so limited.

PTAB’s New “Settled Expectations” Doctrine

  1. I worked on an IPR when the system was fairly new (around 2015). We were defending a patent that was in its last year before expiration. We included an argument that IPR should not be instituted because it was a waste of PTAB time to act on validity of a patent that was so soon to expire. Our team had interesting discussions at the time as to whether this argument would help. We won the IPR (no institution), but never learned if the argument helped.

    • Even for a patent with only a few years of term, it is not uncommon for U.S. companies to be sued for the last 7 years of alleged infringement [back damages] the statute allows, and be facing an expensive trial and appeal even if there are clear 102 or 103 prior art patents or publications.

  2. Hi Prof, you mentioned “While there is at least one pending mandamus petition challenging the settled expectations doctrine”, but I’m only aware of the In Re SAP mandamus for recission of the fintiv memo. that one doesn’t mention the settled expectations doctrine. Can you clarify or cite the mandamus petition for settled expectations?

  3. The settled expectations doctrine seems to serve as a good counterweight to hindsight bias, which, try as they might, is hard to avoid in obviousness challenges — especially in older patents which themselves have advanced the field.

    I disagree somewhat with your analogy to a trademark’s public consumer protection function because I think that’s the other side of the coin. I do agree that trademarks protect consumers (tenants), but in this analogy shouldn’t the patents be meant to protect the landlords? A balance of both factors is necessary.

  4. The below hotlink to a leading IPR firm blog shows that the new PTO managment itself appears [after seeing some legal responses?] to be somewhat backing off on the breadth of their dubiously legal novel sweeping “settled expectations” attack on IPRs. [Which could impact large numbers of IPR petitions since most patent suits are on older patents and about 80% of all IPRs are in response to being sued on such patents.] That is, at least giving some guidance on what could be argued against personal Director “settled expectations” rejections of IPR petitions.

    link to finnegan.com

  5. I have difficulty in understanding how the term “settled expectations” even logically applies to preventing IPRs on patents that patent owners did not sue anyone on for many years? The “settled expectation” is to logically assume that the subject patent is one of the millions that no one will ever sue to. To require filing IPR petitions against said patents long before they are sued on and prevent IPRs after lawsuits are filed is an illogical burden on the PTO and all manufacturors and sellers and contrary to the very intent of the IPR system. the CAFC in its recent Dolby v. Unified Patents decision emphasized that the America Invents Act’s purpose is “to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs.” [citing] Thryv, Inc. v. Click-To-Call Technologies, LP, 590 U.S. 45 (2020).

    • Suppose a patented product and process is licensed. The years go by and $millions in licensing fees are paid. Fifteen years into the patent term, licensees get tired or writing big checks. They stop paying. Then they get sued for breach of contract. Then when that lawsuit is not going well, they decide to attack the patent in an IPR. There is now one year left on the patent. The patent is unlikely to be asserted against any third parties at this point. The USPTO is burdened with stepping in on a case for the benefit of one party who was already absorbing the licensing cost, so they can get out of a few years of payments at the end of the patent. I could see the USPTO looking at such a case and looking at their resources and saying “settled expectations.” Let’s take some more meaningful cases.

  6. There have long been disagreements about patent policy (e.g., pharma vs. finance), but they have never been patisan differences. Hatch(R)-Waxman(D), Leahy(D)-Smith(R), unanimous decisions in Bilski, Mayo, Myriad, and Alice. This was not a point of R vs D disagreement.

    It is surprising and just a little disturbing over the last decade to see IPR/PGRs turning into a partisan ping-pong, where Republican administrations craft regulations to disfavor IPRs and Democratic administrations craft regulations to favor them. I, personally, kind of like what Coke Morgan Stewart is doing here, but it would be better if Congress wou step in and formalize either the Vidal or the Stewart model in legislation, so that this does not keep bouncing back and forth with every new administration (speaking of “settled expectations”).

Motorola Follows SAP with Mandamus Challenge to Acting Director Stewart’s IPR Policy Reversal

  1. Dennis, thank you very much for providing these hotlinks to all these papers in this second [Motorola] mandamus petition (with supporting amici) against PTO Trump Management’s retroactive denials of prior [even prior-granted] IPR petitions. And even though Solera stipulations were filed surrendering important corresponding judicial defenses in their patent suits.
    Even more significant for future (and even more widespread) PTO IPR denials is their new sua sponte “Settled Expectations Doctrine” discussed in the prior blog on that, plus comments.
    If these or other Fed. Cir. mandamus petitions are denied consideration, denied IPR petitioners should have other legal relief routes, including APA suits.

SAP’s Mandamus Petition Challenging Trump Admin’s Discretionary Denial Policy Shift

  1. This mandamus is for improperly Retroactively reversing prior PTO practice “rules” for IPR pending petititions, and thus adversely impacting, without due process, the Petioner’s already pending patent litigation defenses.
    However, there is also a far more impactful and statutory-challenging subsequent IPR petition denial scheme by the new PTO management that asserts a bizzare new ground for denial that could be used to deny vastly more IPRs, and from now on, if not overruled by the Fed. Cir.

    • The latter is noted by Dennis above as: “Director Stewart has more recently expanded the justifications for discretionary denials, including “settled expectations” where the patent issued 7+ years ago and was not challenged during that interim.” I.e., the Trumpian PTO seems to be actually suggesting that U.S. companies must file IPRs against any patent they have ever seen even though the patent owner did not even even threaten them with patent litigation or demand a license until many years later? Is this some kind of PTO reward for litigation laches? Will it lead to premature filings of IPRs that may well not be necessary or desirable?

  2. This involves PTO rejection of the prior accepted Sotera safe harbor from Sotera Wireless, Inc. v. Masimo Corp. in order to greatly expand Fintiv denials of many IPRs. [The common filing a Sotera stipulation that no invalidity attack that could be raised in a IPR will be raised in the patent suit for which that IPR petition was filed.] This PTO decision is apparently based on an allegation that a Sotera stipulation does NOT prevent essentially duplicative invalidity attacks being raised and argued in the litigation. That is essentially an allegation that patents or publications [only] that could have been raised in the IPR can be used to prove up a prior on sale or public use invalidity attack [since 102 or 103 cannot be raised with such patents or publications]. But, as noted earlier, a patent or publication does not prove what was actually in a product or process, and also clearly cannot prove the on sale date or public use date of the product or process.

  3. Not even in the ballpark. There are a couple super simple arguments that are easy winners.

    1. “Retroactivity” and “reliance interest” issues arise under due process. The due process clause only operates where there’s a life, liberty, or property interest. This is clearly not a life or liberty interest. An IPR petition is not “property” either. An IPR petition conveys no “settled expectation” of anything. A patent is due process property, but not an IPR.

    2. Mandamus can only be granted where there’s a clear and indisputable, nondiscretionary duty of the official. If there’s no property, there’s no due process, and if no due process, no mandamus. The petition doesn’t challenge the principle that the Director has near unlimited discretion to deny IPR/PGR pettiions. Without some pleading to that, this petition is dead on arrival.

    3. The Vidal memo is just guidance. An agency can modify any rule using the same level of procedural formality that were used in the antecedent rule. Perez v Mortgage Bankers. If the Vidal memo was just guidance, Stewart can modify or rescind it by memo, and doesn’t have to use notice-and-comment.

    4. Finality and exhaustion. SAP had a perfect right to request “issuance, amendment, or repeal” under 5 U.S.C. § 553(e). They didn’t. Under principles of finality and exhaustion, this mandamus petition is premature.

  4. I disagree a bit with Dennis on applicability of Thryv and Cuozzo.

    SAP is not challenging a specific institution/non-institution. They’re challenging the rule. Often challenges to rules have a different jurisdictional basis and different path of review than a challenge to a specific adjudication under the rule. I think that that difference applies here — a rule about institution/non-institution could be challenged, even if no individual adjudication could be.

    Further, Cuozzo says that while a specific institution/non-institution wouldn’t be challengable on the mertis arising under the Patent Act, the “shenanigans” of 5 U.S.C. § 706(2) would be, including “arbitrary and capricious.” A specific IPR/PGR institution/non-institution based on an invalidly-promulgated rule (which I don’t think this is one, but hypothetically) could be challenged as “arbitrary and capricious,” “without observance of procedure required by law” or “abuse of discretion.” I think those are all bases to challenge. I explained a closely-related issue at link to ssrn.com

    • Thanks David – If you are challenging the rule (as opposed to a particular ruling), is mandamus the right action, or should it be an APA challenge in district court?

      • If they want to challenge the rule, they have to do two steps:
        — first a petition for rulemaking 5 U.S.C. § 553(e). They have to get final agency action and exhaustion, and establish standing and “suffering legal wrong” (as required by § 702 — guidance documents are almost always too loosy-goosy to create legal wrong based on an individual adjudication. So you have to file the petition to get a “hard edge” decision on a specific issue.)
        — then when the petition is denied, then (if the decision is arbitrary and capricious or otherwise goofy under § 706(2)), then go to EDVa. But denial of a petition for rulemaking is an issue that is reviewed with high deference.

Prior Art Document vs. Prior Art Process: How Lynk Labs Exposes a Fundamental Ambiguity in Patent Law

  1. I may well missing something here, but I do not understand the indicated problem? In the six years of AIPLA debate over the content of what became the AIA patent statute it was widely agreed that the AIA would continue to give full 103 prior art effect to the contents of a patented or published patent application running from its original pre-publication filing date.* [Even expanded to proper foreign priority application filing dates.] No distinction was drawn between the prior art effect of a process [versus hardware or chemicals] disclosed therein. A truely unpublished article does not become 102 or 103 prior art unless and until it is shown to enough people skilled in the art that CAFC case law considers it to then be a publication. [If there is a sufficient public admission by the author that the subject process was actually being used, that could also be an admission against interest of “public use” as of the admitted date thereof.]
    *Presuming the spec contents were not substantively changed between filing and publication.
    *The EPO “novelty only” system of only Partial prior art effect during the time period between application filing and application publication was not adoped in the AIA.

    • If a published patent application was Not fully effective prior art as of its filing date there would be a constant problem of two or more applicants being able to obtain patents on the same or essentially the same invention.
      That was actually happening before the AIA, when foreign filed application priority date was prior to the filing date of a U.S. applicant but that prior foreign filing date was not the prior art date for the U.S. applicants.

Corcept v. Teva Oral Argument: Infringement by Drug Label, Again

  2. “Infringement by Drug Label” [as here] is more accurate than “infringement by skinny label” [induced] infringement, as some others call it. As the Teva decision says: “..generics could not be held liable for merely marketing and selling under a ‘skinny’ label omitting all patented indications, or for merely noting (without mentioning any infringing uses) that FDA had rated a product as therapeutically equivalent to a brand-name drug.’ Novartis Br. at 1–2. We agree that Novartis accurately stated the law.”

Back to 1789: How Founding-Era Equity Could Resurrect NPE Injunctions

  1. It is always surprising when parties pick a case with bad facts [rather than appealing facts] to mount a legal challege needing a Supreme Court reversal. As Dennis notes: “this case is at the preliminary injunction stage, and Samsung has argued that the case need not even get to the presumption of irreparable harm because the facts undermine Radian’s plea, including a long delay in suing and no current sales of the accused product.” To be successful here not only would all eBay inunction test factors need to be reversed, but, at this stage also the longstanding additional case law requirements for a preliminary injunction, especially with disputed validity. Plus, good reasons for an adequate bond here.

  2. As noted on the prior blog on this case, the “difficulty in determining patent infringement financial damages” argument is ignoring the fact that those damages [and their possibile trebling] still have to be calculated in almost every winning patent suit for all of the accused infrngement period before an injunction is granted. [A long time here.]
    Also, an injunction for the NPE is not just affecting the infringer, it is depriving the entiree public of the product if there is no comparable non-infringed alternative and the NPE has not previously licensed another manufacturor of the product.
    [BTW, I recall previously reading about a PAE [a university] that DID get an injunction because it HAD previously licensed another manufacturor of the product, even under the present eBay requirements.]

Quick Post on Egenera

  1. This affirmed summary judgment illustrates the valuable function of a Markman hearing held by a good judge and done pre-discovery and pre S.J. consideration. Potentially ending”nose of wax” ambiguous claim scope arguments that can otherwise waste judicial time, delay settlements, and greatly increase overall patent litigation costs.

Hedging on Claim Construction: USPTO Says Keep It to One IPR Petition

  1. There could be a good idea here. Forcing patent owners in IPRs to end the all-to-common patent litigation “nose of wax” shell game* up front – before even starting the IPR trial.
    *[Avoiding admission or determination of broad v. narrow interpretations of ambiguous claim elements as long as possible, to retain options for different infringement v. prior art distinction positions in lawsuits, discovery, setlements, or litigation.]

  2. It doesn’t look mandatory to me for the patent owner to file a claim construction brief. One strategy is to not, and see how the Board construes the term. I don’t think claim construction in an institution decision is binding. So after institution, the patent owner could then argue for the opposite construction (to the extent still consistent with infringement reads). If the Board later changes its mind, or if the Federal Circuit does on appeal, the petitioner would be out of luck.

    It makes much more sense to institute both and join them. Or the PTAB should just allow petitioners to pay more money to get more words. Then everything could be filed in one petition.

Supreme Court Grants Cert in First (and only) IP Case of 2024: Billion-Dollar ISP Copyright Contributory Liability Case

Preview: Federal Circuit Oral Argument in Google v. Sonos (July 10, 2025)

  1. The 112 issue here might be even more significant, since filing continuations with altered specifications [or formal application specs significantly different from their provisional application for which they are claiming priority], is not that unusual, and infrequently gets judical attention. Here, the later specification alterations were argued to be just to introduce text from a parent application, and the D.C. judge said not post-trial. Assume there is not also a due process issue of not sufficiently allowing a battle of paid experts on that issue in trial? That leads to an interesting question. Will the Fed. Cir. itself look at the two specifications tto see if the changes were really 112 supported or not, to therefore determine the proper priority date?
    [in hindsight, the defendant would have been better off arguing that in an IPR, as the Board has done several times.]

Prosecution Laches from Woodbridge to Sonos: A 170-Year Continuation?

  1. “And, what we have now is a patent continuation process that stalks the market: observing competitors’ innovations, and then tailoring claims to cover them after the fact.”

    I think that language is unfortunate. No one says that someone that a copyright owner who sues for infringement, someone who copied a page of their book, is stalking their infringers. I don’t see why it should be any different for a patent owner. While our legal system may have evolved to treat the two situations differently (for better or worse), calling the patent owner a stalker for wanting to sue someone for infringement that copied a part of their inventive system would seem to be unwarranted.

    Note that for an individual patent owner without much money, who did not file a claim for part of their invention, it is not as if they willingly decided to dedicate the rest of their invention to the public. The situation is more likely, they did not have the funds to prosecute more claims/continuations. It is unfortunate that our system equates poverty and lack of means to protect an invention with dedicating an invention to the public. That almost made sense when PTO fees were nominal (that just ignored attorneys’ fees needed for good patent protection). Now, however, there are many individuals who cannot even afford the PTO fees. Equating a lack of funds with intent to abandon a patent is unfair.

    • “an individual patent owner without much money” is not the kind of applicant that can afford to keep applications pending as long as possible and files continuations as late as possible with different claims to cover later products of others after viewing them from the “catbird seat” of a long pendency applicant, as one judge put it. [Still usually perfectly legal, BTW, with prosecution laches very rarely asserted or applied.] [Plus, two more years after issuance for a broadening reissue.]
      Nor, [unlike U.S. Patent applicants] can Copyright owners change the infringment scope of their copyright registration later on.

U.S. Government: NPEs Deserve Injunctive Relief when their Patents Are Infringed

  1. This is no surprise at all and simply continues the patent advocacy program begun by AAG Delrahim of the USDOJ Antitrust Division during the first Trump Administration. These are pretty much the same arguments about injunctive relief in patent cases that were made previously. I wrote about the DOJ’s ultra vires advocacy well beyond the antitrust laws here: link to papers.ssrn.com

  2. The unstated assumption here is that only a defendant is hurt by an NPE injuction. Ignoring depriving the public of the invention, or even an entire product even if only one desired feature is infringed, when the only maker and seller is enjoined.

  4. It is unfortunate how our legal system has been corrupted. Most small inventors are NPEs, by definition, even if we don’t think of them that way. They are the small businesses that the government speaks of. However, preventing NPEs from obtaining injunctive relief severely undermines the purpose of our patent system by undermining small businesses and micro businesses far more than it helps them.

  5. I was pleased to see the latest AIPLA Quarterly article “Where are all the Prior Art Users in Patent Cases” by Mark A. Lemley, confirming my own prior comments on this blog that even as expanded in AIA §273 it is extremely rarely even asserted as a defense in the U.S. [no case ever making it to the Fed. Cir.], and helpfully noting several reasons why. Especially,this statutes several limitations and requirements. However, this article proposes greatly expanding that statute’s non-prior-art protection of secret prior users from later-filed patents of others without such limitations and requirements.
    That seems clearly contrary to one of the most important basic reasons and rationales for having patent systems, namely, to advance the knowledge and progress of the useful arts [primarily new technology] by rewarding the earliest public disclosure thereof, not rewarding [by protecting] its private supression.

  6. P.S. on a non-legal note, I doubt if is coincidental that this JD brief was filed in a patent suit in which the defendant is a leading Korean company Samsung Electronics making and selling a lot of U.S. smartphones.

Seeds of Doubt: Sexual Reproduction and Territorial Limits in Plant Patent Law

  1. quite possibly the most devoid of taste strawberry I have ever had the displeasure of attempting (very hard and not ripe) to eat.

Thinking back on Milburn and Secret/Springing Prior Art

July 15, 2025

by Dennis Crouch In Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926) [46_S.Ct._324], the Supreme Court established what has expanded into foundational patent law principle: all disclosures in an issued patent (whether claimed or unclaimed)  serve as prior art against later filed patents, effective as of the earlier patent's filing date rather than […]

The Narrow Semantic Line on AAPA: Federal Circuit’s Latest Take in Shockwave

July 14, 2025

by Dennis Crouch The Federal Circuit's decision in Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., No. 2023-1864 (Fed. Cir. July 14, 2025) makes good on the court's overly-semantic approach to defining the "basis" of inter partes review proceedings -- especially with reference to applicant-admitted-prior-art (AAPA).  Recall that under 35 U.S.C. § 311(b) IPRs can be […]

Timing is Everything: PTAB’s Renewed Reliance on Litigation Timelines and Patent Longevity

July 13, 2025

by Dennis Crouch In 2025, the USPTO’s Acting Director Coke Morgan Stewart began implementing a new bifurcated and expanded process for PTAB trial institution decisions -- with a particularly enhanced focus on discretionary denials before a PTAB panel even considers the merits.  This past week, several dozen new discretionary denials were released. These new decisions […]

En Banc Ineligibility Petition in Longitude Licensing v. Google

July 12, 2025

by Dennis Crouch Before digging into this en banc petition, I just wanted to note that patent eligibility issues have been almost shockingly quiet over the past six months.  But, to me it feels something like a powder keg waiting to explode. While Acting Director Stewart has been incredibly active on other fronts since taking […]

Federal Circuit Wrestles with Prosecution Laches in Sonos v. Google

July 11, 2025

In 2020, Sonos sued Google in the N.D. of California, asserting two “zone scenes”  wireless speaker patents (US 10,848,885 and 10,469,966) that allow for overlapping groups of speakers. A jury found Google liable and awarded $30 million in damages. In an unusual move, District Judge William Alsup threw out the verdict in a 55-page post-trial […]

Motorola Follows SAP with Mandamus Challenge to Acting Director Stewart’s IPR Policy Reversal

July 10, 2025

by Dennis Crouch The Federal Circuit is now confronting a second major mandamus petition challenging the USPTO's major changes with regard to its approach to discretionary denials in inter partes review proceedings. In re Motorola Solutions, Inc., No. 25-134 (Fed. Cir. 2025).  Motorola presents an even more procedurally compelling challenge to Acting Director Stewart's retroactive […]

Google v. Sonos: Oral Arguments

July 10, 2025

Today the Federal Circuit is hearing oral arguments in Google v. Sonos on the doctrine of prosecution laches. The panel is interesting and has the potential of resulting in a pro-Google decision.  Federal Circuit Judges Prost and Lourie, along with  D.N.J. District Court Judge Renée Marie Bumb, sitting by designation. Judge Lourie authored the Symbol […]

Overlapping Ranges and the Presumption of Obviousness

July 10, 2025

by Dennis Crouch The Federal Circuit's decision in Janssen v. Teva narrows the scope of the overlapping-range presumption of obviousness, holding that when a patent claim involves an integrated, time-dependent sequence of steps rather than a simple selection of numeric values, courts must conduct a full obviousness analysis instead of applying the presumption that overlapping […]

Prior Art Document vs. Prior Art Process: How Lynk Labs Exposes a Fundamental Ambiguity in Patent Law

July 9, 2025

by Dennis Crouch The upcoming Supreme Court petition in Lynk Labs, Inc. v. Samsung Electronics Co., 125 F.4th 1120 (Fed. Cir. 2025), presents more than just another dispute about inter partes review scope. In my mind, it highlights a fundamental conceptual tension that has largely gone unnoticed in patent law discourse: the ambiguity in what we […]

Corcept v. Teva Oral Argument: Infringement by Drug Label, Again

July 8, 2025

Guest post by Paul R. Gugliuzza & Jacob S. Sherkow An important recent development in pharmaceutical patent law is the Federal Circuit’s embrace of a theory we call, in a forthcoming article, infringement by drug label. In several decisions since 2021, the court has approved claims of induced infringement against generic drug companies simply because […]

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2 thoughts on “Corcept v. Teva Oral Argument: Infringement by Drug Label, Again”

  1. 2

    “Infringement by Drug Label” [as here] is more accurate than “infringement by skinny label” [induced] infringement, as some others call it. As the Teva decision says: “..generics could not be held liable for merely marketing and selling under a ‘skinny’ label omitting all patented indications, or for merely noting (without mentioning any infringing uses) that FDA had rated a product as therapeutically equivalent to a brand-name drug.’ Novartis Br. at 1–2. We agree that Novartis accurately stated the law.”

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