by Dennis Crouch

I have been following the Steuben Foods appeal for the past year - thinking that it may be the case where the Federal Circuit nails in the coffin on the reverse doctrine of equivalents. The new decision ultimately left this question open, but it provides a fascinating exploration of three distinct doctrines of equivalence in patent law:

• The Reverse Doctrine of Equivalents (RDOE): This centuries-old defense, originating from the Supreme Court's 1898 Boyden Power-Brake decision, allows an accused infringer to escape liability even when their device falls within the literal scope of the claims. A key question here was whether this doctrine even survived the 1952 Patent Act.
• The Doctrine of Equivalents (DOE): This traditional doctrine allows patent holders to prove infringement even when the accused device falls outside the literal scope of the claims. In this case, the court examined whether continuous sterilant addition could be equivalent to intermittent addition.
• Means-Plus-Function Equivalents: Under 35 U.S.C. § 112(f), means-plus-function claims cover not only the corresponding disclosed structure but also its equivalents. The court here analyzed whether rotary wheels could be equivalent to the disclosed conveyor structures.

by Dennis Crouch

Relationship expert John Gottman famously identified "stonewalling" as one of his "Four Horsemen of the Apocalypse" that predict relationship failure. Stonewalling occurs when one partner withdraws from interaction, refusing to engage or respond meaningfully to the other's concerns. The behavior is particularly toxic because it leaves the other party feeling ignored and invalidated, while also preventing any real progress toward resolution. In many ways, the Federal Circuit's prevalent use of Rule 36 summary affirmances operates as a form of institutional stonewalling - responding to carefully crafted legal arguments with a single word "AFFIRMED" while refusing to explain its reasoning. That practice is now under intense scrutiny, with Island IP pressing a two-front challenge through Supreme Court filings this week.  In addition to filing its reply brief in Island Intellectual Property LLC v. TD Ameritrade, Inc., No. 24-461, Island IP has also submitted an amicus brief supporting the parallel petition in ParkerVision, Inc. v. TCL Industries Holdings Co., No. 24-518.

by Dennis Crouch

Patent attorneys know that amending the specification can directly impact claim interpretation. The Federal Circuit in Phillips v. AWH Corp. placed the specification alongside claim language as foundational intrinsic evidence for claim construction, recognizing that the specification provides focused context for understanding claim terms as they would be understood by skilled artisans. 415 F.3d 1303 (Fed. Cir. 2005).  Amendments made during prosecution carry particular weight because they represent deliberate choices by the applicant to alter a known baseline. Although practitioners don't always think of it this way, one of the most significant opportunities for "amending" patent disclosure comes when moving from a parent to a child application. This transition - particularly when moving from a provisional to a non-provisional application - often serves as a natural inflection point where attorneys engage in cleanup, clarification, and refinement. But as recent Federal Circuit decisions make clear, these often routine editorial choices between applications can have profound implications for claim scope, even without rising to the level of formal prosecution disclaimer.

The case prompting this post is the DDR Holdings, LLC v. Priceline.com LLC, No. 2023-1176 (Fed. Cir. Dec. 9, 2024), claiming methods and systems for generating a composite web page that combines content along with ads from third-party “merchants.”  U.S. Patent No. 7,818,399.  I think the idea here is similar to create a  white-label or embedded shopping experience. When a user clicked on a product link, instead of being redirected to the merchant's site, they would see a new composite web page that maintained the host website's look and feel while displaying the merchant's product information.  Although the ability to embed shopping experiences is integral to web technology today, it wasn't so clear back when DDR filed its original provisional application back in 1998.

The dispute centered on whether the claim term "merchants" was limited to sellers of goods or could also include service providers.  Travel companies like Booking.com and Priceline.com are quintessential service providers - they don't sell physical goods but rather facilitate services like hotel bookings, airline tickets, and car rentals.

by Dennis Crouch

As I previously suggested, the USPTO has now announced that it is withdrawing its proposed rule that would have made terminal disclaimers far more noxious by tying patent enforceability to the validity of claims in related patents. While this is undoubtedly the right move given the questionable legal authority and overwhelmingly negative public response (over 300 comments, with 256 unique submissions), the underlying concerns that drove the proposal deserve attention because they will likely arise in other forms. [Read the Fed. Reg. Notice Cancelling the Proposal: 2024-28263]

The USPTO's core justification focused on competition and market entry barriers. When a patent owner obtains multiple patents on obvious variants, the collective cost of challenging each patent individually in litigation or administrative proceedings can arguably deter market entry. The USPTO particularly emphasized this concern in light of Biden's Executive Order 14036 on "Promoting Competition in the American Economy."  As discussed below, this same concern arises when a single patent has a large number of claims. 

by Dennis Crouch

In a tight 11-10 vote, the Senate Judiciary Committee approved the PREVAIL Act (Promoting and Respecting Economically Vital American Innovation Leadership Act) that would make substantial changes to Patent Trial and Appeal Board (PTAB) proceedings. The bill addresses perceived anti-patentee imbalances in the current inter partes review (IPR) system. However, a number of Senators raised concerns and were seeking assurances about a negative impact on generic drug prices. The Bill as adopted by the Judiciary Committee included a friendly amendment by the Bill's co-sponsor Sen. Coons that attempted to address some of the drug-pricing concerns by expanding the scope of who can file IPR/PGR petitions. In particular, the original bill allowed only those sued or accused of infringement to challenge patents. As discussed below, the new approach is designed to enable petitions by generic-drug makers and non-profit patient groups. The major changes in the bill include raising the burden of proof to "clear and convincing evidence," implementing strict timing requirements for PTAB decisions, requiring greater independence of PTAB judges, establishing a "single forum" rule preventing parallel validity challenges, and strengthening estoppel provisions against repeat challenges.

by Dennis Crouch

The USPTO has issued the final rules that include significant fee increases for patent applicants (and patent challengers), all set to take effect January 19, 2025 -- the final day of the Biden Administration. While some changes appear purely driven by inflation and cost recovery, others seem designed also to modify applicant behavior in controversial ways.

Because of the timing, I believe there is some chance that parties will challenge aspects of the fee increase in court -- particularly the increased fees for late-filed continuation applications.  In my opinion, the key purpose of such an action would be to postpone implementation of the fees in order to allow a Trump appointed director to reconsider their application.

A key aspect of the America Invents Act of 2011 (AIA) provided the USPTO with fee setting authority.  Section 10 of the AIA. Every USPTO patent fee change since then has stated that the AIA fee setting authority "includes flexibility to set individual fees in a way that furthers key policy considerations."  (Citing Section 10).  If it exists, that flexibility is purely implicit.  The law itself states: "Fees may be set or adjusted . . . only to recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents."

Barring delayed implementation, applicants (and patent challengers) will save some dollars by ensuring that their filings beat the January 19, 2025 deadline.

by Dennis Crouch

The Supreme Court has before it another important petition highlighting the Federal Circuit's approach to statutory interpretation and administrative authority. Soto v. US stems from a Federal Circuit appellate decision focusing on the statute of limitations for awarding back pay associated with Combat-Related Special Compensation. The Supreme Court also recently heard oral arguments in Bufkin v. McDonough, which presents another important question about veterans' benefits - specifically whether the Court of Appeals for Veterans Claims must independently review the VA's application of the "benefit-of-the-doubt" rule in veterans' cases. The University of Missouri Veterans Clinic has played an active role in both of these pending cases as amicus counsel.

• Soto Petition
• Soto Mizzou Amicus
• Soto Appx

The pending Soto v. US petition highlights a recurring philosophical divide between Federal Circuit Judges Hughes and Reyna, with Hughes taking a formalist approach requiring specific statutory language while Reyna advocates for a more functional analysis that favors the underdog (disabled veterans). This post first walks through the Soto case and pending petition and then delves a bit deeper into the contrast between these two leading jurists at the Federal Circuit.

by Dennis Crouch

In a stunning development, the USPTO recently terminated proceedings in approximately 3,100 patent applications due to the fraudulent use of a practitioner's signature. This mass termination, announced on October 2, 2024, stems from an investigation that uncovered misconduct involving the unauthorized use of a registered patent agent's electronic signature.

The outcome here appears potentially over the top in the way that it punishes the patent applicants -- almost all Chinese companies -- for unknowingly participating in the fraud.  As one attorney who is now representing one of the impacted applicants explained to me: "punishing the applicants for the actions of the practitioner goes a bit far, especially where the punishment is termination with no remedy."  A number of the applicants used Chinese counsel who identified and hired the offending firm (W&K) years ago and worked with them for some time without issue.  I would not be surprised if some of these applicants push for judicial review, perhaps by filing an APA action.

by Dennis Crouch

I saw this morning that Womble Bond Dickinson and Lewis Roca are merging to create firm with 1,300+ lawyers. By my quick count, the new combo will have 150+ US patent attorneys under the WBD brand that the wider-known of the two (especially internationally).  Two other big mergers announced this week - Troutman Pepper and Locke Lord; Ballard Spahr and Lane Powell.   The "Troutman Pepper Locke" merger will result in 1,600+ lawyers, with about 200 lawyers in their IP group (of which about 100 will be "patent attorneys").   The Ballard Spahr merger is also large (750+ lawyers), but Lane Powell's IP practice is fairly small -- likely meaning that Ballard Spahr's patent group (largely based in Atlanta) may end up quite successful if they are able to cross-sell to Lane Powell's clients.

by Dennis Crouch

This is my third post about SnapPower (SnapRays) v. Lighting Defense, and the Federal Circuit's holding that patentee's who use Amazon's patent enforcement process (APEX) to block infringing product sales open themselves to personal jurisdiction in the home state of the accused infringer. SnapPower v. Lighting Def. Group, 100 F.4th 1371 (Fed. Cir. 2024). In my view, the Federal Circuit has gone too far with aggressive personal jurisdiction in this case, and the patentee Lighting Defense has petitioned for en banc rehearing on the issue.

• Discussion of the Original Decision.
• Discussion of the En Banc Petition.

Most recently, toy-maker Lovevery has filed an amicus brief supporting en banc review.