The United States Court of Appeals for the Federal Circuit stands today with a dramatically different judicial composition than at any point in its 43-year history. As of June 2025, the court comprises eleven active judges—only three appointed by Republican presidents and eight by Democratic presidents, representing a 73% Democratic majority. This represents a complete reversal from the court’s peak Republican era in the early 1990s, when Republican appointees held ten of eleven active seats. The court’s current composition has taken on heightened significance as it confronts one of the most politically charged cases in its history: V.O.S. Selections v. Trump, challenging President Trump’s global tariff program under the International Emergency Economic Powers Act (IEEPA). The Federal Circuit’s response so far has been as a collective institution—proceeding en banc from the outset and issuing unanimous per curiam orders—reflects institutional awareness of political vulnerabilities that historically patent-focused courts rarely confront.
The chart above illustrates the evolution of the Federal Circuit’s composition since its inception. The court began in October 1982 with a modest Democratic edge of six to five active judges. However, the subsequent span of Reagan and Bush administrations rapidly transformed the court’s ideological balance. This culminated in an extraordinary 10-1 Republican majority by 1990—the most lopsided partisan composition in the court’s history. Republican dominance persisted throughout the 1990s, with the court maintaining between seven and ten Republican appointees against only one to four Democratic appointees. The turning point came in the early 2000s as senior status and retirements began reshuffling the court’s composition. Democratic appointees steadily increased from 2000 onward, reaching parity around 2010 and achieving majority status by 2015. The trend has continued unabated, with the current 8-3 Democratic majority representing the inverse of the court’s 1990s Republican dominance. Notably, none of the three remaining Republican appointees were named by President Trump, leaving the court without any judges appointed by the current president whose policies it must now review. The court’s partisan balance has been further complicated by the ongoing suspension of Judge Pauline Newman, the longest-serving non-senior federal appellate judge, who was suspended by her colleagues in September 2023.
After a six-month hiring freeze and DOGE strong push for voluntary retirements, the USPTO has announced that it is again hiring patent examiners. There are some key changes: (1) the new examiners will work in the Alexandria HQ – these are explicitly designated as non-remote, non-telework eligible positions; (2) according to the announcement, these jobs fall outside the bargaining unit covered by the Patent Office Professional Association (POPA). Although these limitations narrow the potential candidate pool, the USPTO is one of the first agencies beginning to hire STEM candidates in the DC area and so will hopefully be able to attract competitive candidates.
The USPTO obtained an exemption from the federal hiring freeze specifically to post these positions, citing the agency’s priority of addressing its patent application backlog of over 820,000 pending applications—the highest backlog in a decade according to USPTO statistics. The agency did not indicate how many examiners will be hired, but it will likely be in the hundreds if they can find qualified “gold” level candidates. I expect more information will flow once John Squires is confirmed as USPTO director (likely within the next 2 weeks). (more…)
In this infringement case, Judge Bataillon (D.Del) sided with the accused infringer on summary judgment -- finding that Fraunhofer's infringement claim was barred by equitable estoppel. The Federal Circuit reversed on appeal - finding genuine disputes of material fact on the key estoppel issue of detrimental reliance. Although equitable estoppel remains an important defense, the case makes clear that it requires more than post-hoc rationalization of business decisions. Instead, defendants must show they actually considered and relied upon the patentee's conduct when making key infringement decisions.
The case involves a fairly complex licensing dispute regarding multicarrier modulation technology used in satellite radio systems. Fraunhofer is a German research organization and patent holder that licensed its MCM patents to WorldSpace back in 1998. WorldSpace then sublicensed the technology to XM Satellite Radio (now SXM) for use in developing the XM DARS satellite radio system. WorldSpace filed for bankruptcy in 2008 and its trustee used the bankruptcy powers to reject reject the Fraunhofer agreement. Fraunhofer claims that rejection eliminated the sublicense to SXM. (The legal status is disputed.) Fraunhofer waited until 2015 to notify SXM of potential infringement, and ultimately sued in 2017 over the now-expired patents.
In the past, defendants raised the equitable defense of laches in cases (like this one) involving significant delays by patentees in asserting their rights. However, the Supreme Court's decision in SCA Hygiene v. First Quality, 580 U.S. 328 (2017), eliminated laches as a defense to damages claims for patent infringement. The Court held that Congress's enactment of a specific six-year limitations period precluded application of the judge-made laches doctrine within that statutory window. By eliminating that previously common defense, SCA Hygeine heightened the importance of the somewhat parallel defense of equitable estoppel.
The Federal Circuit today issued a detailed scheduling order expedited resolution of the constitutional challenge to President Trump's global tariff program. V.O.S. Selections, Inc. v. Trump, Nos. 2025-1812, 2025-1813 (Fed. Cir. June 13, 2025). The per curiam order, issued by all participating active judges sitting en banc (excluding Judge Newman), establishes a six-week briefing schedule culminating in oral arguments on July 31, 2025—less than two months after the Court of International Trade's permanent injunction against the tariffs. The court allocated 45 minutes per side for oral argument, double the typical time, signaling recognition of the case's exceptional constitutional significance.
The case consolidates two separate CIT cases - one filed by commercial actors led by V.O.S. and the other led by the State of Oregon. The scheduling order explicitly authorized separate response briefs for the two plaintiff groups, rather than requiring coordination. The order also permits amicus participation by waiving the usual consent and leave requirements -- there will likely be extensive third-party briefing.
Although the CIT issued a permanent injunction against President Trump's tariffs, earlier this week the Federal Circuit issued an emergency stay pending resolution of the appeal. This means that the White House can move forward with its tariffs.
Timeline for the appeal:
Opening brief by US and any supporting amici: June 24.*
Responsive briefs by V.O.S. and Oregon and any supporting Amici: July 8.
In a significant development that places the Federal Circuit at the center of a major political debate and constitutional question, the court recently issued a rare en banc order granting the United States' motions for stays of permanent injunctions that had halted President Trump's sweeping tariff program. The unanimous per curiam order in V.O.S. Selections, Inc. v. Trump allows the contested tariffs to remain in effect while the court considers what it characterized as "issues of exceptional importance warranting expedited en banc consideration of the merits in the first instance." [ORDER].
The Federal Circuit's decision comes against a backdrop of contradictions between the Trump administration's public posture and its private legal arguments as detailed in recent NYTimes reporting. While Commerce Secretary Howard Lutnick publicly dismissed the lower court's adverse ruling as costing them only "a week, maybe" and insisted that other countries "came right back to the table," the government's emergency filings argued that the injunction could "catastrophically harm our economy" and create a "foreign policy disaster scenario." Similarly US Trade Representative Jamieson Greer publicly characterized the court challenge as "just kind of a bump in the road," while simultaneously filing sworn declarations arguing that halting the tariffs would deal a devastating blow to sensitive trade negotiations."
The Federal Circuit delivered an important clarification on the enablement standard for prior art Agilent Technologies, Inc. v. Synthego Corp., No. 2023-2186 (Fed. Cir. June 11, 2025), affirming PTAB decisions that invalidated all claims of two CRISPR gene-editing patents. The case featured arguments by IP luminaries Mark Lemley and Edward Reines, with the patent challenger, Reines, coming up on top this time. The case distinguishes Amgen Inc. v. Sanofi, 598 U.S. 594 (2023): establishing clear boundaries between the enablement requirements for patent validity under 35 U.S.C. § 112 and the enablement standards for anticipatory prior art under § 102.
The unanimous Judge Prost decision also establishes that abandoned patent applications and research projects retain their full potency as prior art, rejecting arguments that abandonment should diminish their anticipatory effect. The patentee's appellant brief had pointedly asked:
Did the Board err in finding that the claims were anticipated by and obvious over a prior art reference that never worked, was ultimately withdrawn, and which offered quadrillions of possible art combinations with no guidance to choose one that might work?
In rejecting the appeal, the court reinforced that prophetic examples in prior art can serve as anticipating references even in unpredictable fields, provided they contain sufficient enabling disclosure, and also concluded that the PTAB's decision was based upon substantial evidence.
The Supreme Court has rescheduled its consideration of the copyright statute of limitations petition in RADesign v. Michael Grecco (No. 24-768), moving the conference from May 29, 2025, to June 5, 2025. This delay appears strategic, as the Court has simultaneously distributed for the same June 5 conference another intellectual property limitations case: Jem Accessories, Inc. v. Harman International Industries, Inc. (No. 24-1011), which presents questions about laches in trademark law. Both of these cases are sparked by prior statute of limitations cases - particularly the two laches cases of Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014) (copyright) and SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 580 U.S. 328 (2017) (patent) alongside the 2024 SOL case of Warner Chappell Music, Inc. v. Nealy, 601 U.S. ___ (2024).
The pairing of these cases suggests the Court may be considering extending its trans-doctrinal approach to limitations and laches doctrines across intellectual property law. Both petitions raise basic questions about when rights holders must act to preserve their claims, though they approach the issue from different statutory frameworks.
Micron Technology has petitioned the Supreme Court for a writ of mandamus to reverse a discovery order requiring the company to produce 73 pages of its most sensitive source code in paper form to Chinese state-owned semiconductor manufacturer Yangtze Memory Technologies Company (YMTC). The case, In re Micron Technology Inc., presents significant questions about the enforcement of protective order terms and the consideration of national security concerns in patent litigation discovery. The dispute centers on YMTC's request for printed copies of source code from Micron's "150 Series Traveler Presentation," which apparently describes the company's most technologically advanced 3D NAND semiconductor products and contains code that fewer than a dozen of Micron's 50,000+ employees have access to. Micron is seeking to turn this into a national security and competitiveness issue based upon the fact that YMTC was only founded in 2016 but has already become the global leader in 3D NAND flash based upon strong support from the Chinese government. The company is also listed in the "Entity List."
Just a week ago, I began dusting off the half-written paper drafts of two empirical research projects that have mostly sat on my shelf the past year while teaching an overload to aid my colleagues on sabbatical. Brushing up on current events at the USPTO, it is clear that neither patent policy stakeholders nor the second Trump administration waited around for this law professor’s summer break. We have seen several months of the very active Acting USPTO Director Coke Morgan Stewart’s reshaping of the Patent Trial and Appeal Board’s (“PTAB’s”) process of reviewing Inter Partes Review (“IPR”) petitions, particularly in ways that tend to favor patent owners. Additionally, within the past two weeks we have had the Judiciary Committee Hearing of John Squires, the President’s nominee to serve as his permanent USPTO Director.
It seems likely that Squires will be confirmed soon and begin to act on the priorities he outlined at his hearing, two of which just so happen to overlap the topics of the two projects I am scrambling to complete this summer: patent quality and IPR reform. With my slow writing pace and the clear indications that the “reform” the administration has in mind would actually tend to harm patent quality when and where it matters, I asked—and Professor Crouch graciously agreed—to publish this guest post.
To start, what is patent quality? Put simply, it is the likelihood that a granted patent meets all of the statutory requirements for protection. In other words, low quality patents are likely invalid. Different stakeholders naturally emphasize different aspects of patent quality; for instance patent owners might prioritize breadth sufficient to cover potential infringing products or claim sets robust enough to survive validity challenges. In my own research, I have focused on novelty and non-obviousness because granted patents lacking these traits are usually devoid of innovation, and promoting new technology is the primary objective for granting inventors exclusive rights in the first place. I qualify patent quality with “likelihood” because it makes sense to think of inventors’ rights as probabilistic and contingent on unknown or misunderstood information (e.g., prior art) that supports or casts doubt on the validity of the claimed matter down the road when a granted patent is tested during enforcement. (more…)
In Dolby v. Unified Patents, the Federal Circuit confronted an unusual procedural question: can a patent owner who prevails in an inter partes review (IPR) challenge the PTAB's reasoning underlying that favorable outcome? The court's answer was a resounding no - at least in this instance - dismissing Dolby's appeal for lack of standing.
Dolby successfully defended its patent claims before the PTAB, with the Board concluding that Unified Patents failed to prove any challenged claims unpatentable. Yet Dolby appealed, seeking not to overturn this favorable result but to challenge the Board's refusal to determine whether Unified had properly identified all real parties in interest under 35 U.S.C. § 312(a)(2). This statute requires that a petition "may be considered only if the petition identifies all real parties in interest."
Dolby argued that nine additional entities should have been named as additional real parties in interest, but the Board declined to adjudicate this dispute. Following its precedential decision in SharkNinja, the Board explained that it would not resolve real party in interest disputes unless they were material to time bar or estoppel issues in the current proceeding. Since no such issues were implicated, the Board saw no need to determine the identities of the actual parties behind Unified's challenge.
In a decision that reinforces the controlling force of explicit patent definitions, the Federal Circuit affirmed a district court's claim construction that effectively ended Alnylam Pharmaceuticals' patent infringement suit against Moderna over lipid nanoparticle technology used in COVID-19 vaccines. Alnylam Pharmaceuticals, Inc. v. Moderna, Inc., No. 2023-2357 (Fed. Cir. June 4, 2025). Writing for a unanimous panel, Judge Taranto explained that when a patent specification clearly defines a claim term, the patentee faces a demanding standard to establish exceptions to that definition, even where the definition might exclude disclosed embodiments or seemingly conflict with other parts of the specification.
The case centered on whether Alnylam's patents covering cationic lipids for nucleic acid delivery were infringed by Moderna's use of the SM-102 lipid in its SPIKEVAX COVID-19 vaccine. The dispute turned entirely on claim construction of the term "branched alkyl," which the specification explicitly defined as requiring "one carbon atom in the group (1) is bound to at least three other carbon atoms and (2) is not a ring atom of a cyclic group" "[u]nless otherwise specified."
Alnylam argued this definition did not apply to claims covering "branching" at the "alpha position" adjacent to biodegradable groups, where the chemical structure would permit only two carbon-carbon bonds rather than three. The Federal Circuit rejected this argument, finding no clear indication in the intrinsic record that the claims "otherwise specified" a departure from the explicit definition.
The Supreme Court is being asked to resolve a high-stakes battle over when Internet Service Providers (ISPs) can be held liable for their users’ copyright infringement. Two petitions — Cox Communications, Inc. v. Sony Music Entertainment (No. 24-171) and Sony Music Entertainment v. Cox Communications, Inc. (No. 24-181) — stem from a Fourth Circuit decision involving a $1 billion jury verdict against Cox for music piracy on its network. In November 2024, the Court invited the Solicitor General (SG) to weigh in. In late May 2025, SG John Sauer filed the government's brief, recommending that the Supreme Court grant Cox’s petition to clarify—and ultimately narrow—the standard for contributory infringement.
For this post, I take a step back and talk through some of the legal doctrines at issue — contributory & vicarious liability — in the context of ISP copyright infringement and then delve into how they might apply in Cox.
Background: The litigation began when a consortium of record companies and music publishers (including Sony Music) sued Cox Communications for copyright infringement based upon actions by Cox’s internet subscribers. The alleged infringements occurred in 2013–2014, when Cox users engaged in massive peer-to-peer file sharing of music over networks like BitTorrent. At the time, anti-piracy agent, MarkMonitor, sent Cox hundreds of thousands of infringement notices identifying Cox subscribers by IP address. But, Cox’s internal policy was to follow an admittedly lax “thirteen-strike” system: repeat infringers would receive warnings and temporary suspensions, but Cox often declined to permanently terminate paying customers’ accounts. Evidence presented in the case showed Cox implemented its policy haphazardly—terminating only 33 subscribers for copyright abuse while tolerating many more—because it “wanted to avoid losing revenue” from monthly subscriber fees.
It’s time for the annual Federal Circuit statistics update! As I’ve done for the past few years, below I provide some statistics on what the Federal Circuit has been doing over the past year. These charts draw on the Federal Circuit Dataset Project, an open-access dataset that I maintain containing information on all Federal Circuit decisions and docketed appeals. The court’s decisions are collected automatically from its RSS feed, and my research team uses a combination of Python-based algorithmic processing and manual review to code information about each document.
One of my goals with this dataset is to make it publicly accessible so that anyone can use it in their own research. A complete copy of this year’s release is archived at https://dataverse.harvard.edu/dataverse/CAFC_Dataset_Project, and the codebook is also available there. If you’re a researcher interested in using the dataset, feel free to reach out—I’m happy to help you work with the data or answer questions about it.
On to the data!
Figure 1
Figure 1 shows the number of Federal Circuit opinions and Rule 36 summary affirmances by origin since 2010. These represent individual documents (i.e., a single opinion or Rule 36) rather than docket numbers (which is how the Federal Circuit reports its own metrics). Overall, about 20% of the Federal Circuit’s merits terminations were issued as Rule 36 summary affirmances.
Opinions vs. Summary Affirmances
For 2024, the overall number of merits decisions increased by about 70 compared to 2023. As in recent years, the highest number of merits decisions arose from the PTO. However, decisions arising from the district courts increased by about 20% in 2024. The court issued 115 merits decisions from the district courts in 2024, up from 95 in 2023 and close to 117 in 2022. In contrast, there was a decline in decisions arising from the PTO—from 190 in 2023 to 165 in 2024.
Figure 2a
Figure 2b
Figures 2a and 2b show the number of opinions versus Rule 36 summary affirmances arising from the district courts and PTO. In 2024, the Federal Circuit continued to issue Rule 36 affirmances fairly often in appeals from the PTO but only rarely in appeals from the district courts. Figure 3 displays the overall frequency of Rule 36 affirmances relative to opinions across all origins.
Figure 3
What about the opinions the court is issuing? As shown in Figures 4a and 4b, the court continues to issue nonprecedential opinions regularly in appeals from the district courts, and somewhat less frequently in appeals from the PTO. In other words, the court typically issues an opinion (rather than a Rule 36) in appeals from the district courts, but when it does, it’s just as likely to be nonprecedential as precedential. Conversely, while opinions in PTO appeals are less common, they are more likely to be precedential.
Figure 4a
Figure 4b
Dispositions
Figure 5 shows the general disposition of Federal Circuit appeals – in other words, whether the panel affirmed, affirmed-in-part, reversed-in-full, etc. Overall, affirmances in appeals from the district courts were a little less frequent last year (65% affirmance in full; 76% affirmance in full or part), while affirmances in appeals from the USPTO continued to be common (84% affirmance in full; 92% affirmance in full or part).
Figure 5a
Figure 5b
Figure 6 shows the distribution of terminating documents of any type for 2024 regular appeals. About 57% of terminating documents were Opinions or Rule 36 summary affirmances (i.e., merits decisions). Most of the remainder were dismissals (including voluntary dismissals), with a small number of transfers and remands (typically issued through orders). Note that these terminations are counted per document, and appeals dismissed for procedural reasons (such as failure to prosecute) are sometimes later reinstated—so the percentage of appeals ultimately terminated via dismissal is somewhat lower than shown in this figure.
As with the previous figures, the unit of record for Figure 6 is a document—i.e., an opinion or order. A single document, such as an opinion, may decide multiple appeals.
Miscellaneous Dockets
What about petitions for writs of mandamus? These, along with petitions for permission to appeal, are shown below. Figure 7 indicates a slight decrease in the number of decisions on petitions last year. Nearly all (42) of the 2024 decisions on miscellaneous docket matters involved petitions for writs of mandamus.
Figure 7
What were the outcomes of these petitions? Of the 20 decisions on writs of mandamus arising from the district courts in 2024, just one was granted—a substantial shift from recent years.
If you’d like to explore the data yourself, it’s archived on the Harvard Dataverse. I’ve also updated the docket dataset to include appeals filed in 2024. A printout of the Jupyter Notebook used to generate this report is available there, along with an Excel file containing the underlying data tables. If you use the datasets, please cite them as follows:
Replication materials for blog post: Rantanen, Jason, 2023, “Replication Data for ‘Federal Circuit Decisions Stats and Datapack'”, https://doi.org/10.7910/DVN/HPARYR, Harvard Dataverse, V6
I recently wrote a paper on this topic and gave a CLE and thought it would be useful to pass it along. It is here.
It goes through in a step-by-step way the way to approach fessing up to a mistake, as well as analyzing the different approaches that jurisdictions take to the issue. For example, some view the duty as arising from the need to keep a client reasonably informed, while others view it as part of a conflict-of-interest analysis. That matters because breach of the duty depends on which source applies: if it’s to keep the client reasonably informed, it’s basically triggered by knowing the client has a malpractice claim, but if it’s a fiduciary duty that is the source, then it’s triggered by the lawyer’s interest conflicting with the client’s.
Anyhow, it also addressed the critical issue of talking to your carrier and addresses a couple of related cases where lawyers’ duties were triggered by other sources.
On May 28, 2025, the Court of International Trade issued a sweeping permanent injunction against President Trump's unilateral global tariffs, only to have the Federal Circuit grant an immediate administrative stay in a rare en banc order. The stay is likely to remain in place only for about two weeks as the Court considers (likely en banc) whether to allow the tariffs to remain in place while it considers the merits of the U.S. government's appeal. The dispute centers on fundamental questions about the scope of presidential emergency powers under the International Emergency Economic Powers Act (IEEPA) and represents one of the most significant judicial challenges to executive trade authority in decades.
The Court of International Trade's decision in V.O.S. Selections, Inc. v. United States, Slip Op. 25-66 (Ct. Int'l Trade May 28, 2025) [CIT Decision], struck down both President Trump's "Worldwide and Retaliatory Tariffs" and his "Trafficking Tariffs" as exceeding congressional delegation of authority. The underlying legal framework is that the U.S. Constitution grants Congress, not the President, authority to set tariffs. However, Congress has expressly delegated aspects of that authority to the President - most particularly under IEEPA, which authorizes the President to "regulate . . . importation" of foreign goods during declared national emergencies to address "unusual and extraordinary threat[s]" to national security, foreign policy, or the economy. 50 U.S.C. § 1702(a)(1)(B), § 1701(a). Congress enacted IEEPA in the 1970s after determining that President Nixon had abused a prior, more expansive delegation under the Trading with the Enemy Act (TWEA). See United States v. Yoshida Int'l, Inc., 526 F.2d 560 (C.C.P.A. 1975).
Although new, this case offers a classic claim construction debate with three-way divide between the majority, dissent, and district court over what counts as the "edge" of a tile. The patents here cover a tile leveling device used during install to avoid "lippage"—where one tile's edge is higher than an adjoining tile's edge. The key dispute centered on what constitutes the "edge" of a tile when the claims require "edge-to-mortar-to-subfloor contact." U.S. Patent Nos. 10,704,274 and 10,513,857.
The accused devices operate near the edge of the tile, but do not allow direct tile-to-mortar-to-subfloor contact at the very edge of the tile. By arguing for a narrow construction of "edge"—limited specifically to the precise boundary line of the tile's surface—the defendants position themselves outside the patent claims. The district court agreed and narrowly construed edge to "the line at which a surface of a tile terminates." On appeal, both the the majority (Judge Bryson, joined by Judge Lourie) and the dissent (Judge Stark) agreed that the district court's construction was too narrow—concluding that "edge" of a tile in this patent is wider than the Euclidian edge definition. However, the majority and dissent disagreed on whether the claimed "edge" contact necessarily include the very edge of the tile.
The majority construes "edge" to include the very boundary line of the tile, but also extends slightly inward to include some portion of the tile's surface adjacent to that line. In contrast, the dissent argues for a broader construction where the claimed "edge" is defined more expansively as a region or area around the tile’s boundary, and thus does not require mortar to reach precisely to the boundary line.
In a number of recent opinions, the Federal Circuit decided the case on grounds that were not raised on appeal by either party. This unusual approach is something bound to happen with expert tribunals such as the Federal Circuit. The problems with this approach: it undermines the adversarial process, creates a fairness problem, and depriving the parties of a meaningful opportunity to address—and potentially correct—issues pivotal to the court’s ultimate determination. A recently filed petition for certiorari asks the Supreme Court to step-in and provide the CAFC with guidance in the impropriety of the Federal Circuit's sua sponte revival of arguments that the government has impliedly waived in the appeal. In McLeay v. Stewart, petitioner Dr. Matthew McLeay particularly challenges the Federal Circuit's decision to affirm the rejection of his patent application based on enablement sub-grounds that the USPTO had effectively abandoned in its briefing. [Read the Petition].
The Supreme Court will hold its conference on May 29, 2025, to decide whether to grant certiorari in RADesign, Inc. v. Michael Grecco Productions, Inc. (No. 24-768), a case that could fundamentally reshape how copyright’s three-year statute of limitations operates. The petition, which has attracted significant attention from copyright scholars and practitioners, presents a deceptively simple question with profound implications: whether a copyright infringement claim “accrues” when the infringement occurs (the “injury rule”) or when the copyright holder discovers or reasonably should have discovered the infringement (the “discovery rule”). Although the circuit courts all appear to agree that some form of a discovery rule should persist, we believe the deeper question is the rule’s form. We believe in this case that the district court offered the better approach by permitting the discovery rule, but only after taking a contextual approach requiring reasonable diligence that considers the copyright holder’s circumstances while maintaining meaningful protections against fraudulent concealment.
Michael Grecco, a professional photographer, took photographs of model Amber Rose in 2017, wearing shoes designed by Ruthie Davis. Grecco alleges that Davis’s company, RADesign, reposted some of these photos on its website and social media platforms without authorization. Although the photos were posted in 2017. Grecco claims he did not discover this infringement until February 2021 and filed suit in October 2021, four years after the alleged infringement began but less than one year after his claimed discovery.
The copyright statute of limitations, § 507(b), requires any lawsuit be filed “within three years after the claim accrued,” and RADesign moved to dismiss the case as time-barred since it was filed four years after the infringing acts. The district court agreed, although it did consider whether to extend the statute of limitations based upon the copyright holder’s delay in discovering the infringement. Applying a “reasonable diligence” standard, the court concluded that someone in Grecco’s position—specifically, a sophisticated copyright holder with extensive enforcement experience—should have discovered the infringement within the three-year limitations period. This sophistication includes the filing of 100+ copyright infringement actions. Grecco’s own complaint touted his extensive history of actively policing infringements and litigation, making late discovery implausible under those specific circumstances.
On appeal, however, the Second Circuit reversed. The appellate court held that the discovery rule uniformly determines when copyright claims accrue, irrespective of a plaintiff’s sophistication or enforcement history. According to the panel, there is no special diligence standard for sophisticated plaintiffs; instead, the discovery rule must be applied objectively, uniformly, and without presumptions. Since the complaint itself did not conclusively show that Grecco should have discovered the infringement earlier, the Second Circuit reinstated the suit. One takeaway from the Second Circuit decision is that it creates the anomalous result where undercapitalized first-time participants with no legal experience or monitoring capabilities are asked to conduct the same level of monitoring as the largest, most sophisticated copyright holder with vast monitoring resources. We think this is wrong. To be clear, we are not necessarily arguing for two different standards, but rather an approach that places the reasonableness within the factual context – what would have been reasonable for the copyright holder to do in the given situation.
Further, the objective standard adopted by the Second Circuit is not in the spirit of the discovery rule. The core of the discovery rule is based on a known or should have known standard. While there may be a debate on the requisite level of monitoring diligence by the copyright holder, the Second Circuit essentially eliminates this standard. Rather, the appellate court’s opinion more effectively reduces the discovery rule to merely a knowledge standard.
RADesign’s pending Supreme Court petition challenges the Second Circuit’s interpretation and presents the following question: Does a copyright infringement claim accrue when the infringement occurs (injury rule) or when the infringement is discovered or reasonably should have been discovered (discovery rule)? The petition is set for conference on May 29, 2025, with extensive briefing and amici participation already completed. This includes an excellent amicus brief from Prof. Tyler Ochoa. Although the circuit courts appear to be continuing to maintain a discovery rule in copyright cases, Justice Gorsuch’s 2024 dissent in Warner Chappell Music v. Nealy argued strongly against the discovery rule as inconsistent with the statutory text and traditional limitations principles. (more…)
The Federal Circuit established an important precedent regarding inherent disclosure and implicit claim construction in this IPR appeal, holding that the Board's purported interpretation of the prior art was rather an implicit claim construction that neither party requested. The decision, went rely heavily on the Federal Circuit inherency decision in SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331 (Fed. Cir. 2005), allowing for inherency finding even for miniscule or undetectable features found in the prior art. As I dug into the case though, I was surprised to find that the PTAB did not cite or reference SmithKline, nor did any of the briefs filed in the appeal. As Judge Dyk wryly stated at oral arguments: "but of course, nobody showed them the SmithKline case."
This case involved x-ray optics, with claims requiring "magnification of the projection x-ray stage is between 1 and 10 times." Although neither party ever asked for claim construction, the appellate panel went ahead to determine that this claim scope - based upon its "plain meaning" - "includes tiny, even undetectable, magnification" rejecting the PTAB's implicit construction that seemed to require a meaningful divergence from parallel.
