by Dennis Crouch

One ongoing debate at the PTAB has been the role of Applicant Admitted Prior Art (AAPA) in inter pates review proceedings. AAPA refers to statements made by the patentee that admit that certain subject matter is part of the prior art. These statements are typically found in the background section and might include language like:

• “It is well known that …”
• “Conventional systems use …”
• “Prior work includes …”
• “As described in [reference], it is known that …”

Examiners rely heavily on AAPA, but IPR proceedings are limited to anticipation and obviousness grounds "and only on the basis of prior art consisting of patents or printed publications."   In Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed. Cir. 2022) ("Qualcomm I"), the Federal Circuit sided with the patentee (Qualcomm), holding that AAPA contained within the challenged patent does itself constitute such prior art.  Still,  the obviousness determination looks at evidence beyond the prior art, such as the level of skill in the art, and motivation to combine references.  And, the court held that AAPA could be used to prove those facts. The court noted particularly that a petitioner may properly rely on AAPA "as evidence of the background knowledge possessed by a person of ordinary skill in the art" for purposes such as "furnishing a motivation to combine" or "supplying a missing claim limitation" as part of the obviousness analysis.  But see Arendi v. Apple (Fed. Cir. 2016).

Following Qualcomm I, the USPTO issued updated guidance in on the treatment of AAPA in IPRs. Director Katherine Vidal's new guidance explicitly acknowledged the Federal Circuit's ruling that "under § 311, 'patents or printed publications' that form the 'basis' of a ground for inter partes review must themselves be prior art to the challenged patent" and not the challenged patent itself or any admissions therein. The guidance clarified that it is "impermissible for a petition to challenge a patent relying on solely AAPA without also relying on a prior art patent or printed publication."

But, the updated USPTO guidance established what would later be termed an "in combination" rule, providing that "[i]f an IPR petition relies on admissions in combination with reliance on one or more prior art patents or printed publications, those admissions do not form 'the basis' of the ground and must be considered by the Board in its patentability analysis." The guidance identified several permissible uses of AAPA in IPR proceedings, including: "(1) supply[ing] missing claim limitations that were generally known in the art prior to the invention...or the effective filing date of the claimed invention; (2) support[ing] a motivation to combine particular disclosures; or (3) demonstrat[ing] the knowledge of the ordinarily-skilled artisan at the time of the invention...for any other purpose related to patentability."

Back to Qualcomm: On remand, the PTAB applied the USPTO's "in combination" rule to conclude that Ground 2 of Apple's IPR petition complied with § 311(b). The Board determined that since Apple's challenge relied on AAPA "in combination with" prior art patents (Majcherczak and Matthews), the AAPA did not form "the basis" of the ground in violation of § 311(b). The Board rejected Qualcomm's argument that Apple had expressly included AAPA as part of the "Basis" of Ground 2 in its petition tables, concluding that these statements merely described how the grounds included both AAPA and prior art patents used "in combination."

On appeal, the Federal Circuit has once again reversed. Qualcomm Incorporated v. Apple Inc., Nos. 2023-1208, 2023-1209 (Fed. Cir. Apr. 23, 2025) (Qualcomm II). The new panel concluded that Board's interpretation contravened the plain meaning of § 311(b). Rather, the Federal Circuit held that Apple's express designation of AAPA in the "Basis" of Ground 2 was determinative, ruling that the Board erred in concluding the challenged claims were unpatentable under Ground 2 when that ground improperly included AAPA as part of its basis in violation of § 311(b).

by Dennis Crouch

Pending Supreme Court petition in Converter Manufacturing v. Tekni-Plex (No. 24-866), focuses on the question of who bears the burden of proving whether prior art references enable the claimed invention, and what standard should apply. As far as I can discern, the Federal Circuit's basic approach stems from ex parte patent appeals and has three key elements:

1. In order to be anticipating, the prior art must enable the claimed invention; and
2. The party challenging the patent claim has the ultimate burden of proving enablement; BUT
3. The "proof" is made so much easier by a quite strong presumption that prior art patents and printed publications are enabling.

The court's approach effectively shifts the burden to the patentee to prove non-enablement.  But, it is clear from all the old patent cases that the patent challenger has the burden, not the patentee (particularly once the patent issues). The key case on point here is Seymour v. Osborne, 78 U.S. 516 (1870) along with subsequent Supreme Court precedent in the late 1800s.

by Dennis Crouch

The USPTO is shrinking the typical timeline from issuance to he USPTO has announced a significant improvement to their patent issuance process that will benefit inventors and patent holders across the nation. Beginning May 13, 2025, the time between Issue Notification and Issue Date will be reduced from approximately three weeks to just two weeks.   When everything is in order, the issue notification typically comes 1-2 weeks after paying the Issue Fee.

The USPTO formerly needed time for formatting the printing, but now that we have moved to electronic grants (eGrants), the issuance will come that much sooner.  Good work USPTO.

In addition to quicker patent issuance, the timeline also reduces the lame duck period where the inventors and attorneys still have a duty to submit known prior art relevant to patentability, but where such submission could significantly delay issuance.

But . . .

by Dennis Crouch

In this post, I use the Federal Circuit's recent decision in Sage Products, LLC v. Stewart, Appeal No. 23-1603 (Fed. Cir. April 15, 2025) to delve into the increasingly fictional construct at the center of patent law: the Person Having Ordinary Skill in the Art (PHOSITA).  In our stories, PHOSITA is typically the antagonist, attempting to undermine our hero, the inventor. PHOSITA didn't invent, but now says that he would have done so if only he were a real boy.  And, the ever-expanding knowledge base imputed to PHOSITA helps justify that claim--while naturally raising concerns about the system's fairness, predictability, and effectiveness.

In this case involving sterilized chlorhexidine products, the court imputed detailed knowledge of British regulatory standards to a U.S.-based innovator—another example of how "ordinary skill" has become anything but ordinary. This decision continues a troubling evolution in which courts attribute unrealistic knowledge and capabilities to the hypothetical PHOSITA, creating an ever-widening gap between this legal fiction and the actual capabilities of real-world mechanics and artisans.

by Dennis Crouch

Federal Circuit has affirmed the Trademark Trial and Appeal Board's (TTAB) finding that "iVoterGuide" and "iVoterGuide.com" are highly descriptive terms that failed to acquire distinctiveness. Heritage Alliance, AFA Action, Inc. v. The American Policy Roundtable, No. 2024-1155 (Fed. Cir. Apr. 9, 2025). The ruling maintains the dismissal of Heritage's opposition to American Policy Roundtable's (APR) applications to register "iVoters" and "iVoters.com" as trademarks.

This case presents a classic trademark problem: When is a mark distinctive enough to receive protection, especially when it describes the service being offered?

by Dennis Crouch

The Federal Circuit issued a significant trade secret remedies decision AMS-OSRAM USA Inc. v. Renesas Electronics America, Inc., Nos. 2022-2185, 2022-2186 (Fed. Cir. Apr. 4, 2025). The court made a number of holdings (applying Texas trade secrecy law), most notably:

1. A trade secret becomes "properly accessible" when it could have been reverse-engineered rather than when it actually was reverse-engineered - limiting the appropriate "head-start period" for calculating damages; and
2. But, disgorgement of profits is proper for all sales arising from a misappropriation-based "design win" that occurred during the head-start period, even if actual sales occurred later;
3. A plaintiff may recover damages for both trade secret misappropriation and breach of contract when the damages are based on different sales or injuries.

by Dennis Crouch

In a unique decision, the Federal Circuit has dismissed an appeal seeking to obtain a patent that would have issued after its expiration date. In re Forest, No. 2023-1178 (Fed. Cir. Apr. 3, 2025).   The dismissal on jurisdictional grounds holds that the would-be patent owner (here, the inventor) has no standing to appeal because any resulting patent would have no zero patent term.  (Note - I might have written "appears to hold" since the court does not actually use the term "standing")

The focus of the decision is on a novel argument about provisional rights under 35 U.S.C. § 154(d).  Ordinarily, we think of a patentee having only inchoate rights until the patent issues. While that is generally true, "provisional rights" provide some potential of back-pay for infringement that occurs between publication and issuance.  In particular, once a patent issues, the a patentee can collect a reasonable royalty from parties were infringing the claims even while pending - so long as they were on actual notice of the application publication and the issued claims are "substantially identical" to those that in the published application.  Importantly, as suggested, these provisional rights can only be enforced retroactively after a patent actually issues.

by Dennis Crouch

Last week, Acting USPTO Director Coke Morgan Stewart granted Director Review and vacated the PTAB's decision instituting several inter partes reviews (IPRs) in Motorola Solutions, Inc. v. Stellar, LLC. [IPR2024-01205, -01206, -01207, -01208 Director Review Decision] Stewart's March 28 decision applies the Fintiv factors more aggressively than the Board, signaling a shift toward increased discretionary denials under 35 U.S.C. § 314(a). This is a situation where denial seems appropriate in my opinion. The Stellar's infringement lawsuit was filed in August 2024, with Motorola waiting 11 months to file IPR petitions.  District Court Judge Sam Jordan (E.D.Tx) has has already issued Markman orders and parties have filed their summary judgment. A jury trial is set for July 2025.