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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.]

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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.

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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.

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   • 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?

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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.

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

1. 

   The worry here, Dennis, is that rulings like this attempt to force service providers to act as auxiliary police forces.

   These are the first steps to totalitarianism. Reminds of little Pavlik Morozov.

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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.]

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

1. The more recent prosecution laches legal disputes have involved numerous Gilbert Hyatt applications pending for many years with many later added claims, and rejections by a special PTO examination group. What is their current status? Have any issued?

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2. IPWatchdog said last year that “Hyatt has not been issued a patent in over a generation” in an attack on the 2021 Federal Circuit ruling in Hyatt v. Hirshfeld “that held that prosecution laches is presumed if it takes more than six years to obtain a patent.” And that then also “the burden shifts to the patentee to prove that the delay was reasonable or excusable or the defendant did not suffer any economic or evidentiary prejudice.”

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3. Reportedly, on remand from the Fed. Cir, the federal district court in Washington, D.C. determined that numerous patent applications filed many years ago by Gilbert Hyatt* are invalid for prosecution laches. The 102-page decision in favor of the USPTO held that Hyatt unreasonably and inexcusably delayed, engaged in prosecution conduct that constituted a clear abuse of the patent examination system. [On top of prior acts by the PTO itself causing a significant part of their long prosescution delays]. (Hyatt v. Vidal , No. 1:05-cv-02310-RCL (D.D.C. May 16, 2024)). Is it on appeal to the Fed. Cir. again?

   *Inventor Gilbert P. Hyatt filed approximately 400 patent applications in 1995 or earlier, that would have had patent terms running 17 more years from grant, filed very large numbers of amendments, and those applications apparently never even made it to any PTAB appeals?

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4. “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.

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   • “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.

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

1. Very surprising. Never heard of JD intervention in a patent infringement suit with no anti-trust issues. Much less to challenge eBay, and even in the face of the additional requirements for a Preliminary injunction. Was amused by the Case List in the JD brief listing “eBay Inc. v. MercExchange, L.L.C.,547 U.S. 388 (2006) .. passim” [Actually, it’s primarily discussed on pages 5-6] They are careful to not directly say the Sup. Ct. is wrong and needs to reverse itself, and of course the District Court judge cannot just ignore the Sup. Ct. and the CAFC, but this appears to be setting up grounds for a later cert petition?
   As for the argument that infringement damages are hard to calculate, one rebuttal argument is that most patent suits are settled by some kind of license, even if an injunction is issued. But if an injunction is automatically granted, calculating the settlement license amount is even more difficult!
   Also, even if an injunction is issued, infringement damages still have to be calcuated! Because rarely does anyone just sue only for an injuntion!
   Also, unless I missed it, the brief ignores the important statutory patent infringement deterrent of up to treble damages for willful infringement.

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   • 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.

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2. 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

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3. 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.

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4. Hmmm, what might have motivated the Justice Department to suddenly take an interest in the rights of NPEs?

   March 2025 … link to ipfray.com

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   • make it stop.

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5. 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.

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6. 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.

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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.

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USPTO Implements Penalty System for False Small/Micro Entity Status Claims

1. The troubling part of this enforcement is the idea that the USPTO’s orders simply claim that an inventor with the same name is listed on many applications (usually from China). The onus is then on the attorney to state that their client is not the same “John Smith” or some other common name. How does a practitioner prove the negative?

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2. Dennis, I believe you left an an llm prompt in the middle of this article. Very distracting

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Label-Plus Infringement: The Tinderbox Theory of Generic Inducement

1. Hikma would have been safer with advertising that promoted the chemical name of the drug –a clean fact. Stating its equivalence to the trademarked drug/use probably is going too far –taking a step to tie the drug to the trademark.

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Article III, the PTAB, and Expired Patents: Constitutional Analysis After Oil States

1. The odds of cert for this challenge to rare IPR petions on patents being sued on for back damages after the patent expiration date would seem even lower than usual, given more than a hundred of legal and constitututional executive order challenges to floodthe Sup. Ct. docket.
   Hower, it should be noted that 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). I.e., not some of the purposes alleged in this cert attempt, and fully applicable to all litigated patents.

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2. P.S. Yes, some trial lawyers will argue that getting narrower claims in an IPR this way will probably lead to partial loss of damage recoveries, but that is academic if the claim as originally written is objectively predictably unlikely to survive. [Providing the sustituted claim may still be infringed.]

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Federal Circuit Offers Some Loosening of the Nexus Standard for Objective Indicia of Nonobviousness

1. Re: “On appeal though the court found that approach incorrect — rather, the proper metric should be to compare license fees to litigation costs. Any award that is greater than expected litigation costs indicates patent strength.”
   The inherent obverse of that is a useful holding for excluding licenses from validity evidence for the licenses for the large majority of patent suits, especially PAE suits, that are settled before trial for less than the expected discovery, trial and appeal litigation costs of the defendant.

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2. “Judges often have legitimate concern that lay jurors will be overwhelmed by highly technical claim constructions and complex infringement theories across multiple patents, potentially leading to decisions based on confusion rather than careful consideration of the evidence.”
   Glad to see this rare admission, since so often lay jury trials are touted by those not paying for them as better and fairer than IPRs, even though IPRs comprise comparing patent claim language with prior art technology publication contents.

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Federal Circuit Vacates $300 Million Jury Verdict on Multiple Grounds

1. Allowing a jury verdict and damages to be based on any unidentified one, or more, of 5 patents would also effectively prevent any effective appeal consideration of whether or not there was any credible evidence in support of those unknowable jury infringement decisions.
   With this and the other CAFC reversals here of Judge Albright’s EDTX decisions here for the second time, as well as other decisions against patent owners, PAEs and other patent owners might want to reconsider considering EDTX as a patent Valhalla?

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   • My appologies for the part of the second sentence above confusing this indicated Judge Gilstrap EDTX decision below with the other frequently popular] WDTX of Judge Albright.
     BTW, since both have have numerous patent cases, it would be interesting to see a study comparing appellate decision rates?

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2. Link to the opinion?

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3. >>On appeal, the Federal Circuit found the claims “directed to the abstract idea of a mathematical formula.”

   This is like dealing with Medieval thinkers. The Federal Circuit is a disgrace to this country. We need to wipe it clean and get people with scientific background and integrity.

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The Federal Circuit’s Shifting Political Balance

1. The problem with the patent system is much like the problem we had with immigration. It was not the laws or anything else but the policies of Biden. The problem we have with patent law is not the Scotus but the judges on the CAFC. Most of them are judicial activists who will at any chance reduce the patent grant.

   Judges who actually cared about creating a predictable and fair patent system could easily cabin Alice and other Scotus cases.

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USPTO Hiring Examiners (for non-union role without telework)

1. Are they allowed to designate the new examiner positions as nonunion positions?
   If they are, why don’t all companies designate all new positions “nonunion”? Shouldn’t the new examiners’ have a right to organize regardless of the designation of the position as “nonunion”?

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Maintaining a Speedy and Robust IPR Process Should Be a Major Focus of John Squires’ Patent Quality Efforts

1. Thank you very much for this summary of your excellent pending article on the patent qualitity problem and it’s proposed solutions.
   First, thank you for noting the statistic that “when patent validity is tested in district court, claims are invalidated nearly 40 percent of the time.” This is conveniently ignored by attackers of IPRs who missrepresent the invalidity problem as due to the IPR system itself.
   However, as for improving patent quality before issue, the most important issue is political. There is no political support for raising the cost of obtaining patents by the thousands of dollars needed for a serious prior art search and examination, much less as comparable to that for a competent infringement suit defense in an IPR or in D.C. and CAFC lititigation.
   Furthermore, the problem of plural IPR petitions filed against the same patent is greatly exagerated as the actual statistics show. More importantly, it ignores the fact that these are most patents threatening more than one defendant, and every defendant is legally entitled to its own defense, and thus its own, or a joined, IPR petition.

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   • BTW, if your paper is also going to discuss the prior “golden patent” academic proposal for giving special statutory invalidity defenses to patents for which applicants paid a large amount of money, it would be a good idea to re-note some of its impracticality in your paper. First, a surprising high percentage of patent applications are erronously predicted to be important or not as of their filing date or pendency. Tooling, UMC, advertising, etc. costs, or consumer demand, or competition, are not readily calcuable at that early date. Few applications are filed after a really thorough prior art search by the applicants. Note also the high percentage of patents not sued on until late in their patent life, and the relatively few patents challenged in any post-grant proceeding in their first year. Even more importantly, the PTO is simply not staffed or equipted to handle anything like all the possible invalidity challenges in patent litigation. Especially, with no effective discovery tools, any on sale or public use defenses, or any defenses based on prior products of others. [Which is why IPRs were wisely limited to only prior art patents or publications.]

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     • Paulf,

       Thank you for your comments and suggestions.

       I do want to look deeper for evidence that multiple IPR abuse has persisted after discretionary denial practice became common. It seems to me this would be the most important criticism of IPRs to address, but I’m also sure that individual review by the Director or a second PTAB panel is not the solution.

       And thank you for your insight on the “golden patent” proposal, which I haven’t thought much about since we already have IPR. I think you are correct and that despite applicants having much information, there are too many events outside of their control after they apply for there not to be many mistakes.

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       • Thanks, and for the official statistics proving my point that mutiple IPRs against the same patent were [and are now more so] actually quite rare, see:
         link to uspto.gov
         [I suspect that even a few more could probably be avoided if the PTO did not allow huge numbers of claims in some patents yet refuse to significantly expand IPR Petition page limits accordingly. However, most multiple IPR requests against the same patent are due to that patent owner having sued or threatened multiple defendants, who all have a right to defend themselves.]

         Paul F. Morgan

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2. As for this blog’s title of “Maintaining a Speedy and Robust IPR Process Should Be a Major Focus of John Squires’ Patent Quality Efforts:
   Note the lawsuits and the published attacks of what is actually being done by the acting director, [following the reductions in APJ damaging both]: Personally taking over and assertedly greatly expanding denials of IPRs far beyond the original rational Fitiv reasons and now also contrary the intent and language of the APA. Reportedly even denying an IPR from even starting just because the prior art patent was cited in a petioner patent application many years before the Petitioner was ever even threatened by any lawsuit.

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Federal Circuit Clarifies Enablement Standards: Amgen Doesn’t Apply to Anticipatory Prior Art

1. Re: Agilent Technologies, Inc. v. Synthego Corp., (Fed. Cir. June 11, 2025), as “..establishing clear boundaries between the enablement requirements for patent validity under 35 U.S.C. § 112 and the enablement standards for [single published prophetic example] anticipatory prior art under § 102.”
   Important, because I have seen several comments on this blog over the years evidencing confusion between what 112 spec teachings are required to get and keep a valid generic claim, versus what renders a generic claims 102 invalid re published prior art.

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Federal Circuit Dismisses Patent Owner’s Appeal of Favorable IPR Decision for Lack of Standing

1. Presumably the patent owner was hoping to obtain estoppel benefits from the IPR in subsequent patent suits against those 9 companies not named in the IPR? Could a patent owner be allowed to prove in such later district court litigation that some of those 9 Were “real parties in interest” to assert estoppel to block a patent or publication invalidity defense or IPR against those claims that survived the IPR? [Seems unlikely.]

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The Boundaries of Equivalence: Vitiation in the Complex Arts

1. Vitiation is a bad doctrine. Just figure out whether it’s equivalent or not.

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2. But if they were able to do it with 19 instead of 34, then why should they be held liable? Why didn’t the patentee anticipate this possibility/have other claims with fewer nucleotides if it really thought it would be equivalent?

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3. Re 2 below, logically, should the doctrine of equivalents (DOE) even be applicable where the patent could have previously obtained a valid and fully 112 specification supported Literally infringed generic or other claim in the application or in a broadening reissue?

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The USPTO’s Statement on Required Practitioner Review of Information on an IDS

1. It seems to me that it could be argued that references found by AI are different than those found by a human searcher or those found in a search report in a related application in another country, because of AI’s tendency (at least on occasion) to produce, clearly, erroneous results more so that a human. Thus, it could be argued that this creates a higher obligation to review the references found by AI somewhat more closely than when found by other means. Despite the comments about the applicable rules being general and not being AI-specific, the higher propensity of AI to produce erroneous results is the overriding concern of ” Guidance on Use of Artificial Intelligence-Based Tools.”

   There was a time when IDSs needed to be accompanied by a statement of the relevance of the references. However, the PTO decided to institute a more lenient standard to ensure that the Examiner receives all the art. It seems to me that lenient requirements for IDSs are better. While in general, not including cumulative references and “marginally” relevant references seem reasonable, sometimes a parent and continuation disclose different relevant-things (e.g., even if that is not supposed to be the case) and it can be difficult to foresee what reference an Examiner might find relevant as a secondary reference, for example. It could be argued that it is better to leave the decision of whether a reference is relevant to the Examiner, as long as there is at least a small possibility that the reference may be used in a rejection.

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Federal Circuit Takes Center Stage in Trump’s Tariff Campaign

1. As a retired old timer, it would be fascinating to see how Judges Rich, Markey, Nies and Friedman would have ruled in this case. Judge Lourie dates back to that era.

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2. Thank you for a concise review of the tariff debate. A key seems to be the term “Declared Emergency.” Who in the US government has the authority to declare an emergency?

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   • On this point, the statute expressly provides authority to the President to declare the emergency. Congress could step-in to deny the emergency, and also must review it after 2 years.

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     • Possible arguments about that: Is the right to “Declare the emergency” the same as Maintaining an asserted state of emergency if contrary to statutory definitions? How and when does the president get such an unchallengable right to define statutes any way he wants to in perpetuity [rather than the Supreme Court], especially if Congress has not expressly made that alledged presidential right legally unchallengable in the statute?

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     • Thank you for this. If President Trump declares that the situation facing the U.S. from other countries inhibits the growth of US businesses due to the predatory supply of goods, the tariffs would be legitimate for a period of time. I don’t know if he declared it an emergency in a formal way, I’m sure his people are on top of the situation as you clearly illustrated here.

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