by Dennis Crouch

In an interesting decision affecting one of the most high-profile patent disputes in biotechnology, the Federal Circuit has partially vacated and remanded a PTAB decision that awarded priority of invention for CRISPR-Cas9 technology in eukaryotic cells to scientists at the Broad Institute. Regents of the University of California v. Broad Institute, Inc., Nos. 2022-1594, 2022-1653 (Fed. Cir. May 12, 2025). The court determined that the PTAB applied an incorrect legal standard for "conception," a fundamental concept in patent law's priority determination under the pre-America Invents Act first-to-invent system.

Understanding Conception Under Patent Law: The court reiterated the classic definition of conception as "the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." Burroughs Wellcome Co. v. Barr Lab'ys, Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994). The court emphasized that "conception is complete only when the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation."

However, conception is not complete invention -- something that also requires construction to practice, either actual or constructive. Notably, it is the process of reduction to practice that truly shows that the invention works.  Backtracking, this means that for conception "an inventor need not know that his invention will work for conception to be complete."

by Dennis Crouch

In a precedential opinion, the Federal Circuit has denied SAP's mandamus petition seeking to transfer its patent infringement case from the Marshall Division to the Sherman Division within the Eastern District of Texas -- and also change judges. In re SAP America, Inc., No. 2025-118 (Fed. Cir. Apr. 10, 2025).   Although SAP made good arguments in the case, they just were not good enough to overcome the particularly high burdens for transfer and mandamus.

Although it has failed, the bold petition is a continuation of the successful extra-legal campaign that turned Judge Albright's Waco courtroom back into a ghost town. On the legal side, the decision highlights the high bar for obtaining mandamus relief in disputes over convenient venue, particularly for intra-district transfers under 28 U.S.C. 1404(a).  The case is also notable as the first Federal Circuit appeal brought by Kathi Vidal since leaving her role as USPTO director and rejoining her old 1,000 attorney firm Winston & Strawn. Matthew Berkowitz (Reichman Jorgensen) and his team successfully defended against the mandamus petition, which the court decided without oral arguments. (I also hope that neither of them are too upset by their ChatGPT image remakes)

The pendulum of the mind
alternates between sense and nonsense,
not between right and wrong. 
- Carl Jung (Memories, Dreams, Reflections)

By Dennis Crouch

In a significant policy shift, Acting USPTO Director Coke Stewart has rescinded the June 21, 2022, Vidal memorandum that had significantly curtailed discretionary denials of PTAB post-grant proceedings. This rescission signals a potentially dramatic return to broader PTAB discretion in denying institution of inter partes reviews (IPRs) in cases with parallel district court litigation. I believe we can expect a significant uptick in discretionary denials of IPR institution petitions. And, patent holders in district court will be looking for ways to quickly move cases forward in order to provide evidence that IPR denial is appropriate.

The tersely worded announcement from the USPTO simply directs parties to once again rely on PTAB precedent for guidance, specifically highlighting the precedential PTAB decisions of Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) and Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). The announcement further states that any portions of PTAB or Director Review decisions relying on the now-rescinded Vidal Memorandum shall not be binding or persuasive.

Since its creation under the AIA, the PTAB has rapidly established itself as America's most active patent litigation forum -- and the only one that is effectively risk-free for patent challengers. Before the AIA created the IPR system, district courts rarely invalidated patents on obviousness grounds because of the doctrine's technical complexity that often went beyond the span of generalist federal judges and juries. PTAB judges are hired for their willingness and ability to dig deeply into complex obviousness arguments involving the combination of multiple references. Over the past decade, the PTAB has invalidated tens of thousands of patent claims as obvious. To put this in perspective, I am fairly confident the PTAB has invalidated more patent claims on obviousness grounds in its short life than all federal courts combined since the founding of our patent system in 1790.  AIA Trials have been a huge shock to the patent system -- a shock that has almost entirely favored patent challengers.  Thus, Director Stewart's new policy change is important as it is likely to redirect access to this powerful alternative forum.