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Red-Lining Revelations: Edits between Patent Families Continue to be Highly Relevant to Claim Construction

  1. Dennis,

    I suspect that FMC attorney removed the “stability” language in the transition from provisional to utility because FMC wanted to avoid a possible issue of a narrow interpretation of the term “composition” to “stable” composition. Well, the strategy in the DCt worked, but not at the FC for the reasons stated. By expanding the scope to nonstable and stable compositions that also expanded the prior art window.

    FMC was likely stuck with stable compositions either way.

  2. I am assuming that the non-provisional claimed priority to and incorporated the provisional by reference. With that assumption, my view is that the non-provisional had two alternative definitions of composition. In my opinion, even if this alternative definition situation was not specifically addressed in the non-provisional, the use of composition in each claim should be interpreted in view of the context of the entire claim language. In other words, composition should have been interpreted as including or not including “or services” depending on the context, and also whether or not one interpretation would cause the claim to be valid and the other invalid. Then the interpretation which preserved validity should be chosen.

  3. This FMC Corporation v. Sharda USA, LLC, decision indirectly supports spec change differences between provisionals and their formal applications by using those differences for patent claim interpretation. That raises an interesting issue of how much material spec changing from provisional to formal can be made without affecting valid priority date claiming or other 112 issues?

OED: Supreme Court Petition Challenges USPTO’s Moral Character Standards

  1. Although the optics of this case (at least as described above) do not look good for the former Examiner, there are couple of things that I think are worth noting.
    (1) The comment “consistently outstanding performance ratings until close to the end of his employment” suggests that he met or exceeded his quota (without making too many mistakes). So, he gave the PTO the amount of work he was being paid for, and typically, the PTO does not care about much else, beyond meeting the quota.

    (2) I assume he was asked to fill out an electronic form, which gave him no opportunity to explain his answer of “no,” (as is typical of electronic forms now-a-days). If that is the case, and assuming he truly believed that “no” was the correct answer, then that would seem to at least mitigate things toward his favor. He should not be forced to admit guilt by selecting “yes,” if he believes the correct answer is “no,” even if on-its-face “no” (with no further explanation) may seem somewhat misleading (since no opportunity to give an explanation was given).

    Was he given a warning to do a better job with his record keeping?

    Perhaps a warning would have avoided this whole ordeal.

USPTO Closes AAPA Door: New Memo Practically Reverses Shockwave from Below

  1. Is this consistent with the formal PTO rule that Federal Evidentiary Rules apply in contested cases, and does that make any difference re this new PTO Director memo edict that applicant-admitted prior art [admissions against interest] is not usable for any purpose in an IPR?

  2. Shockwave is binding authority on the scope of section 311(b). Can an agency impose a rule (or, here, an interpretation of a rule) that narrows what’s permissible under a statute?

    • USPTO has (largely) unreviewable discretion in deciding whether to grant or deny IPR.

      Shockwave held that it was proper to rely on AAPA, but did not hold that the USPTO was required to institute cases that rely on AAPA.

  3. Fotunately, This particular form of IPR denial [by denying any use of specification-admitted prior art] is hopefully curably in most cases by finding and citing in IPR Petitions a prior art patent or publication teaching the admittedly old claim element?
    The real and overriding issue is the legality of a PTO Director using so many other and more dububious IPR petitions rejections reasons so often as to effectively eliminate the entire APA IPR statutory system? As these statistics grow the grounds should grow for a legal challege to that as arbitrary and unreasonable agency action under the Administrative Proceedures Act.

En Banc Update from the Federal Circuit

  1. From your above “nine patent cases with en banc petitions pending before the Federal Circuit” it looks roughly similar to pending patent case cert petitions to the Sup. Ct. We know the odds of success for cert grants are less than one in 300.
    So, what are the comparable general odds of success for petitions for en banc review of patent cases at the Fed. Cit.? The clients who have to pay those attorneys for them should be interested.

    • Here’s what Google AI tells me: “En banc review, where a case is heard by the full court rather than a three-judge panel, is extremely rare in the Federal Circuit. Statistics highlight the rarity:
      In 2021 and 2022, only 6 out of 129 rehearing petitions in patent cases were granted, a success rate of about 4.7%. [N.B.] All of these were for panel rehearing, not en banc rehearing.
      From October 2016, to September 2021, the Federal Circuit granted only 28 petitions for panel rehearing and rehearing en banc out of 1,107 filed (3%).
      From 2003 through 2018, the Federal Circuit’s average en banc rate for patent cases was 0.31%.

Mandamus Denied: Fintiv’s Trial Moves Forward

  1. This high odds of denial of mandamus for a discovery issue as here was correctly predicted by Dennis. However, as the CAFC noted here, the trial and a Regular CAFC appeal might raise the same issues if the defendant is still precluded from obtaining and presenting trial testimony from truely material witnesses, as in the below-blog on the recent Fed. Cir. reversal of another Judge Albright W.D. TX decision in Jiaxing Super Lighting Electric Appliance v. CH Lighting Technology?

The New Trump-Lutnick Patent Tax: Trading Innovation Policy for Deficit Reduction

  1. A U.S. tax on successful technological innovation, adding complex paperwork and legal ambiguity, being proposed by Which party?

  2. So, if I have a small business, and I don’t come up with any new ideas, I won’t have to pay the “idea” tax…

    — However, if I do put in the work to truly come up with a novel and non-obvious idea, my small business now needs to pay an additional 5%?

      • If a small business has a new idea that leads to growth, there are plenty of existing tax mechanisms that capitalize on that growth (income tax, sales tax, etc).

        As a comparable, real estate property taxes are often split between taxing the value of the land vs. taxing the value of the structures built on that land. (Sure, having a successful structure can over time increase the value of the land value–but there isn’t statutory law that taxes the land _based_ on the value of the structure.

        The proposed “idea” tax feels like a double taxing the value of an idea.

  4. How do you assess value? Even if you could assign products to patents– which is dubious in itself– what percentage of the value of the product is attributable to the patent? Does the patent holder pay again for continuation patents? What about CIPs? When others infringe your patent, do you only pay when you win or settle a litigation? If so, will those damages be suppressed after the infringer points to the PTO-assessed value of the patent, or to the inventor’s arguments to the PTO in trying to get a lower tax bill?

    Bluntly, it seems like this proposal is ignorant about our patent system. So much so that it’s operating under the fundamental misconception that patents cover products rather than ideas.

    • “Calculation” of value seems totally illusory. This is a very illiquid market. Most of the most valuable patents in existence never change ownership from filing to expiration, so the “comps” are practically non-existent for the genuinely valuable patent. That means that the incentive here for an administration is to invent a “value” number for political ends. For example, an administration that has promised to lower drug prices can “calculate” the value of patents covering an expensive prescription drug at insane numbers, to incentivize the patentee to let the patents expire and hasten the entry of generics.

      Such a program should really be called the “Full Employment for Litigators” rule, because every last one of those “valuations” will be challenged with every legal mechanism available.

  5. “Ultimately, a value-based maintenance fee system would likely create perverse incentives to reduce patent filings.”

    I would hope that the value added is the value added over keeping the details of the innovation a trade secret (which would be yet another complication in determining the fee).

    The idea likely needs a lot of tweaking, and maybe it is not practical.

    Nonetheless, I like the idea that those making money from the system should pay for most of it through maintenance fees. Perhaps, for everyone else, the fees should be nominal to increase the sharing of ideas/technology.

    If a patent/invention is not making money, it seems to me we should let the patent holder keep the patent in case they can figure out a way to make money from it – that is the allure of patents for the little guy.

    If an NPE buys up the patent, then I guess the invention/patent had value after all. In that case, it seems to me that the real issue should be ensuring the inventor is properly compensated for the value of their patent, rather than forcing the patent into expiration with a high maintenance fee, so that the inventor cannot profit from their invention.

  6. What is the constitutional basis here? Don’t taxes have to be set by congress? This would kill the patent system, and my job as a patent attorney, so I am obviously very concerned.

  7. Valuable patents will increase the profits of a company and be taxed as corporate profits. That is the current market-based system.

    The Lutnick scheme is unworkable (requiring a high degree of inconsistent subjective analysis) and would be very expensive to implement.

Ideology, Expertise, and the Evolving Federal Circuit

  1. Re: “..the pending V.O.S. Selections v. Trump case. I note that the Federal Circuit’s response—en banc proceedings and unanimous per curiam orders—may reflect an institutional effort to shield itself from claims of partisanship.”
    I suspect it has more to do with the CAFC knowing that this Trump tariffs legality case appeal from the tariffs court itself is a uniquely sure bet to go from them right to to the Sup. Ct., unlike normal cert petitions. Even Trump himself is aware of, and has recently commented on, this case. This is no mere single D.C. judge injunction case appeal seeking a stay for a later merit decision.

  2. It would seem difficult (impossible?) to separate the partisanship metric from the “time on the CAFC” metric, since the Republican appointed judges are now all the longer serving judges. It could be that Republican dissents are really reflecting somewhat the confidence that comes with years on the CAFC. It also could reflect the shift at the CAFC from the Giles Rich more pro patentee early era of the CAFC to the current era. I wonder, for instance, how often Judge Newman dissented in a case where Judge Rich was in the majority?

  3. It would seem difficult (impossible?) to separate the partisanship metric from the “time on the CAFC” metric, since the Republican appointed judges are now all the longer serving judges. It could be that Republican dissents are really reflecting somewhat the confidence that comes with years on the CAFC. It also could reflect the shift at the CAFC from the Giles Rich more pro patentee early era of the CAFC to the current era. I wonder, for instance, how often Judge Newman dissented in a case where Judge Rich was in the majority?

Federal Circuit Steps Into Apple-Fintiv Discovery Fight Days Before August 4 Trial

  1. This mandamus attempt re discovery denial does seems like an extreme case, with the assertion that material evidence [knowlege of alleged key witnesses] had been witheld by Apple and only uncovered by Fintiv on the eve of a 2022 original trial date, when J. Albright ordered its production. Yet those witnesses were allegedly still never produced by Apple even by the 2025 trial date that J. Albright apparently now wants to proceed with anyway.
    Did Finiv move for discovery stanctions during that long delay, and if so were they ignored?

  2. Add to this another recent Fed. Cir. reversal of a Judge Albright W.D. TX decision depriving a defendant of material witness evidence – in in Jiaxing Super Lighting Electric Appliance v. CH Lighting Technology – in that case, evidence of an on-sale bar.

When 100 Years of Use is Not Enough

  1. Is it possible that a registration with the stylized word WITH the lips would be accepted the the USPTO? If KIST was arguing that the lips helped distinguish their mark, then actually including the lips should be an improvement.

  2. It seems to me that “Kist” , particularly in its deliberating crude typeface, might be example of an increasingly-common theme of a “retro” brand purporting to prove its own provenance and authenticity, while overtly differentiating itself from a more modern brand. “Kist” may thus be trying to show that it is close to “Sunkist” in its product, but affirmatively different from that brand. Should that be there is no attempt or possibility of confusing consumers regarding the actual product, albeit there is a sly attempt to differentiate from “Sunkist”‘s well-known trademark to highlight “Kisk”‘s own product. The moral – pay the fees!

Copyright Thicket and President Trump’s AI Training Data Solution

  1. As previously noted, the flip side of weak or non-existent copyright law recovery for AI system data and text collections and distributions is likely to be the incouraging of increased placements of data and text originating sources behind paywalls to prevent their digital scraping. Which can result in inaccurate or incomplete AI system responses.

Fuel of Interest, Fire of Genius: Lincoln’s Patent Philosophy

  1. Thanks for this “big picture” post, contrasting your usual posts that delve into a small sliver of modern patent (and other IP) law. Lincoln’s formulation always seems unclear to me, and I think it is the term “interest” that I stumble upon. In our era, perhaps he would have said “added the fuel of ownership to the fire of genius.”

    • Thanks B — and I totally get that stumble. I think Lincoln’s use of “interest” can throw us off today because we usually associate the word with curiosity. But I believe that for Lincoln the lawyer in the 1850s, “interest” was understood in the legal and economic sense. Much like we still use it when we talk about a “financial interest” or “conflict of interest.” So Lincoln’s metaphor really boils down to the idea that patents supply the material incentive — the personal stake — that fuels creative effort. Your idea of “ownership” works nicely.

The Power of Unreviewability

  1. This is a Fed. Cir. sustaining of an IPR invalidity decision, in an IPR that was already declared and decided. The dispute was over interference estoppel. This is not a due process issue over retroactive rejection of an IPR declaration in which the defendant had alrady Solera-surrended defenses in the subject lawsuit. Nor is it part of an increasingly apparent scheme to prevent most IPRs in general, with various strange rationales.

    • If your point is that it is possible to distinguish this case from SAP or Motorola, sure, it is possible. That does not mean that it is likely that the CAFC actually will make these distinctions. I think that Prof. Crouch is correct that the CAFC is likely to regard these matters as outside their jurisdiction to review, even on mandamus.

The Services Problem That Undermines Crocs’ Textualist False Advertising Defense

  1. Double Diamond is alleging false marketing under § 43(a) of the Lanham Act (15 U.S.C. § 1125(a)) by Crocs that its foam material as “patented,” “proprietary,” and “exclusive.” Even though The Patent Act itself has a specific remedy for that in 35 U.S.C. § 292. Does that not run into the general statutory interpretation principle that a specific-application statute is not overruled by a broader far more general such statute unless that was expressly indicated by Congress? [As the Sup. Ct. noted a few years ago in finally overruling the CAFC’s erroneously doing the opposite re the patent venue statute versus the general venue statute.]

Federal Circuit Expands Prosecution History Estoppel to Simple Claim Cancellations in Colibri Heart Valve

  1. This seems like more of the CAFC eating away at the patent right at every chance.

    It is common practice (and indeed I think there was an article on patentlyo about it) to cancel a broader claim to get narrower claims allowed cleanly and then file a continuation directed to the broader claims.

    • In my opinion, almost the entire problem with patents and patent law is the intent of the CAFC judges. It is like immigration. Lots of people saying this or that needs to be done when, in reality, all that needs to be done is for our current laws to be enforced.

      With patents, we need judges that want to create a coherent body of law that provides predictability and fairness. What we have is a group of thugs who invalidate and limit the patent right at every chance. I think too that even outrageous opinions like Alice could be cabined and controlled if we had decent judges at the CAFC. Obama politicized the CAFC with Google coming to the White House and approving (or disapproving) judges.

      The plan is if the Rs can get 60 senators to wipe the entire judiciary to get rid of these judges and start again. Let’s cross our fingers.

  2. I’ve only seen PHE apply to 102/103 rejections, under the logic that the patentee cannot recapture claim scope practiced by the prior art. Applying it to a written description rejection seems counter-intuitive. Part of the idea of DOE is to prevent infringers from avoiding liability by using trivially different after-arising technologies. This scope would ordinarily NOT be in the specification, since it’s after-arising. Why does an explicit 112 rejection alter that calculus?

Fungi, Bacteria and the U.S. Plant Patent Act

  1. Thank you for your interesting deep and fertile digging into 35 U.S.C. § 161, the Plant Patent Act, re statuory history and case law re mushrooms and micro-fungi versus bacteria, the PVPA, etc. I’m sure I am not the only present or former patent attorney ignorant on this subject. So, do I wonder if the present commercial medical interest in the effects of eating certain mushrooms or their chemical ingredients has made this of more interest?

Does US Innovation Drive the Dollar’s Global Dominance?

  1. Re: “..hypothesis connecting patent-driven innovation with the global dominance of reserve currencies, particularly the US dollar.”
    I suspect this is another case of coincidences being far more common than causations in multifactor comparisons in general?
    Also, the cost of PCT applications is a trivial curency amount as a percentage of R&D costs.

  2. I agree with Paul. Some cite “robust rule of law and justice system” as a reason for reserve currency choices, which seems more plausible to me. Yet, the US patent “justice system” is a part of this, and is also, I think, one of the reasons for high US national phase PCT filings. So maybe there is a small bit of “cause” in the author’s noted “correlation.” Thanks for sharing, Dennis. This paper will be interesting to review.

    • Yes, including the U.S. legal systems protection and enablements of R&D investors. Including contractual, trade secrecy and copyright legal protections, not just patents. Those U.S. investors now additionally include several of the billionares who had already made billions from their prior software, computer, and internet-marketing develpments. Sophisticated R&D investors understand the importance of PCT filings to potentially protect the increasing market potentials outside of the U.S.

CAFC: Even Anticipation Requires Explanation

August 7, 2025

by Dennis Crouch American Science and Engineering v. Stewart, No. 23-2127 (Fed. Cir. 2025) In this short non-precedential opinion, the Federal Circuit vacated and remanded the PTAB’s anticipation conclusion — finding too many gaps in the Board’s analysis.  The invention here is an X-Ray inspection system used for moving objects.  The claims require two “pencil-beams” […]

Red-Lining Revelations: Edits between Patent Families Continue to be Highly Relevant to Claim Construction

August 5, 2025

by Dennis Crouch The Federal Circuit recently expanded its doctrine associated with specification changes in family member patent applications — using minor changes in the specification justify differing claim construction across a patent family.  FMC Corporation v. Sharda USA, LLC, No. 24-2335 (Fed. Cir. Aug. 1, 2025).  This is helpful for careful patent attorneys, but […]

Exception Meets Exception: The Federal Circuit’s Collateral Estoppel Morass

August 4, 2025

by Dennis Crouch The Federal Circuit has denied en banc rehearing in Kroy IP Holdings, LLC v. Groupon, Inc., leaving in place a February 2025 panel decision that significantly limits the collateral estoppel effect of Patent Trial and Appeal Board (PTAB) unpatentability determinations. The denial includes contrasting from Chief Judge Moore and Judge Dyk. [23-1359.ORDER.8-1-2025_2553055]

OED: Supreme Court Petition Challenges USPTO’s Moral Character Standards

August 3, 2025

by Dennis Crouch A former USPTO patent examiner has petitioned the Supreme Court to review his exclusion from practicing before the USPTO.  Shah Behnamian argues that the USPTO wrongfully denied his application to register as a patent attorney based on a disciplinary suspension that he claims was discriminatory retaliation. The case raises some questions about […]

Mandamus Denied: Fintiv’s Trial Moves Forward

August 1, 2025

by Dennis Crouch In a brief order, the Federal Circuit has denied Fintiv’s mandamus petition seeking relief from Judge Alan Albright’s decision to move forward with an expedited trial in Fintiv v. Apple.  Jury selection started this week and the trial is set to begin on Monday, August 4, 2025. 25-142.ORDER.8-1-2025_2552950 Dennis Crouch, Federal Circuit […]

Federal Circuit Extends EcoFactor Framework to Patent Damages Apportionment in Jiaxing Decision

August 1, 2025

by Dennis Crouch The Federal Circuit’s decision in Jiaxing Super Lighting Electric Appliance Co. v. CH Lighting Technology Co., decided July 28, 2025, represents the first significant application of the court’s recent en banc EcoFactor decision to patent damages expert testimony.  The appellate panel vacated the $14 million damages award and remanded for a new […]

USPTO Closes AAPA Door: New Memo Practically Reverses Shockwave from Below

July 31, 2025

by Dennis Crouch The USPTO moved swiftly to shut down any hope that the Federal Circuit’s recent decision in Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., No. 2023-1864 (Fed. Cir. July 14, 2025) had opened a broader pathway for using applicant-admitted prior art (AAPA) to supply missing claim limitations in inter partes review (IPR) proceedings. […]

Ideology, Expertise, and the Evolving Federal Circuit

July 31, 2025

by Dennis Crouch In my recent post, I traced how the Federal Circuit’s composition has shifted from a 10-1 Republican majority in the early 1990s to its present 8-3 Democratic-appointed tilt. Dennis Crouch, The Federal Circuit’s Shifting Political Balance, Patently-O (June 15, 2025).  That transformation has not only symbolic weight, but also real jurisprudential and institutional […]

Federal Circuit Steps Into Apple-Fintiv Discovery Fight Days Before August 4 Trial

July 30, 2025

by Dennis Crouch In an unusual move, the Federal Circuit on July 29, 2025, ordered Apple to respond to Fintiv’s petition for writ of mandamus seeking to halt the upcoming August 4 trial date over unresolved discovery disputes. In re Fintiv, Inc., Docket No. 25-00142 (Fed. Cir. July 29, 2025).  Fintiv Petition. Fintiv is primarily […]

The New Trump-Lutnick Patent Tax: Trading Innovation Policy for Deficit Reduction

July 28, 2025

by Dennis Crouch The Trump administration is reportedly considering a radical transformation of the US patent system that would replace the current flat-fee maintenance structure with a percentage-based “property tax” on patent value, according to a recent Wall Street Journal report. Howard Lutnick and his Commerce Department team are discussing a tax of between 1% […]