When (and Where) Does Amazon’s APEX Create Personal Jurisdiction

Patent

By Dennis Crouch

The Supreme Court will soon consider whether to review what I see as an important Federal Circuit decision finding personal jurisdiction based solely on a patentee’s use of Amazon’s private patent enforcement system. In Lighting Def. Grp. LLC v. SnapRays LLC, No. 24-524 (petition filed Nov. 5, 2024), Arizona-based LDG submitted a patent infringement complaint against Utah-based SnapPower through Amazon’s Washington-based Patent Evaluation Express (APEX) program.  To be clear: this is a private arbitration system that relates to selling on Amazon – it is not a federal court case.  Under APEX, Amazon notifies accused sellers who have three weeks to either participate in Amazon’s evaluation process, settle with the patent owner, or file a declaratory judgment action – otherwise their listings are removed.

SnapPower sued in Utah federal court seeking a declaratory judgment of non-infringement and invalidity. However, the district court dismissed for lack of personal jurisdiction since LDG (an AZ company) had no contacts with Utah. On appeal, the Federal Circuit reversed, holding that LDG’s use of the APEX system knowing it would affect SnapPower’s Utah operations was sufficient to create jurisdiction there. The cert petition argues this conflicts with Supreme Court precedent requiring contacts with “the forum State itself, not the defendant’s contacts with persons who reside there.” Walden v. Fiore, 571 U.S. 277 (2014). (more…)

The Silent Circuit: The Growing Backlash against Rule 36 No Opinion Judgments from the Federal Circuit

Patent

By Dennis Crouch

Four new amicus briefs were filed last week in ParkerVision v. TCL, bringing the total to eight and adding substantial firepower to the challenge against the Federal Circuit’s practice of issuing summary affirmances without opinion. I wanted to quickly run through the briefs and talk through their various perspectives on why the court’s Rule 36 practice warrants Supreme Court review.

You can read in the links below that I have written several times about this pending case and more generally about the no-opinion judgment problem. The basic background is that the Federal Circuit has an ongoing and extensive practice of issuing no-opinion judgments in a substantial percentage of its cases. ParkerVision argues, inter alia, that this practice violates 35 U.S.C. § 144’s explicit requirement that the Federal Circuit “shall issue . . . its mandate and opinion” when deciding Patent Office appeals.

The ParkerVision docket, along with companion case Island IP, has been distributed internally within the Supreme Court and scheduled to be discussed at the court’s January 10, 2025 conference. (more…)

Mass joinder: Falling apart in the NDIL?

Patent

By Sarah Fackrell, Professor of Law at Chicago-Kent College of Law

Toyota Motor Sales, U.S.A., Inc. v. The Partnerships and Unincorporated Associations Identified on Schedule A, No. 1:24-cv-09401 (N.D. Ill. Nov. 18, 2024), ECF 27.

The Northern District of Illinois’ “cottage industry,” Schedule A litigation, depends on mass joinder of defendants. Plaintiffs accuse dozens, hundreds—sometimes over a thousand—defendants of IP infringement in a single case. This allows the plaintiffs to save money on filing fees and maximize this litigation model’s profitability.

But lately, a number of judges are pushing back on joinder and raising that issue sua sponte. (more…)

Price Quote’s Written Acceptance Requirement Fails to Shield Patents from On-Sale Bar

Patent

by Dennis Crouch

The Federal Circuit has ruled that Crown Packaging’s high-speed necking machine patents are invalid under the pre-AIA on-sale bar, reversing a Virginia district court’s summary judgment decision. Crown Packaging Technology, Inc. v. Belvac Production Machinery, Inc., Nos. 2022-2299, 2022-2300 (Fed. Cir. Dec. 10, 2024).  The court held that a detailed price quotation marked “subject to written acceptance” can still constitute an invalidating offer for sale and not merely an invitation to make an offer.

Ooh la la … high speed necking.  For those wondering, “necking” in the beverage can industry refers to the manufacturing step of reducing a can’s diameter at the top to create the tapered shape we drink from. Crown’s patents at issue in the case (U.S. Patent Nos. 9,308,570; 9,968,982; and 10,751,784) protect their horizontal, multi-stage necking machines designed for such high-speed production.

(more…)

Institutional Stonewalling: The Federal Circuit’s Silent Treatment Through Rule 36

Patent

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. (more…)

Making Changes: (Negative) Impact of Rewriting the Provisional Specification

Patent

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. (more…)

A Hole in the Whole: Federal Circuit Makes Inherency an Easier Path to Obviousness

Patent

The Federal Circuit recently issued an important decision further developing the role of inherency in patent law’s obviousness analysis. In Cytiva Bioprocess R&D AB v. JSR Corp., the court addressed how inherent properties interact with reasonable expectation of success and claim construction, providing important guidance that builds upon its 2020 Hospira decision.

Looking ahead, Cytiva appears to strengthen the hand of patent challengers by making it easier for the PTAB to invalidate patents that claim inherent properties of otherwise obvious inventions. The Federal Circuit’s framework essentially creates a streamlined path to unpatentability when properties inherent to the prior art are claimed without being essential to the objective motivation for creating the invention. While the decision attempts to carve out protection for claims where knowledge of inherent properties is necessary for motivation to combine or modify prior art, the practical effect may be to narrow the scope of patent protection available for discoveries of new properties in known compositions or processes.

The title of this blog post – A Hole in the Whole – refers to the Federal Circuit’s new framework of dividing obviousness analysis into two parts: first assessing the obviousness of a base combination of some of the limitations, then separately dismissing functional limitations as inherent properties, undermining Section 103’s requirement to evaluate claims ‘as a whole.'” (more…)

The Federal Circuit’s Blind Spot: ParkerVision and the Problem of Invisible Reasoning

Patent

by Dennis Crouch

Two more amicus briefs have been filed in support of ParkerVision’s petition challenging the Federal Circuit’s Rule 36 practice of issuing summary affirmances of USPTO appeal without opinion. Courts typically provide written explanations for their decisions – it’s a fundamental aspect of our judicial system that helps ensure accountability, enable meaningful review, and develop precedent. Yet the Federal Circuit has been issuing one-word affirmances in nearly half of its patent cases, leaving parties and the public in the dark about its reasoning. While this practice would be concerning in any context, ParkerVision’s petition raises a more precise challenge: 35 U.S.C. § 144 explicitly requires the Federal Circuit to “issue to the Director its mandate and opinion” in appeals from the Patent Office. Two new amicus briefs have been filed supporting ParkerVision’s argument that the court’s Rule 36 practice of issuing summary affirmances without opinion violates this statutory mandate. (more…)

Expert Witness Ethics and Economics: Unpacking the Federal Circuit’s En Banc Review of Damages Testimony in EcoFactor v. Google

Patent

by Dennis Crouch

This is a post about damages expert testimony and the pending en banc case of EcoFactor v. Google. But, before delving into those details I wanted to first provide a personal anecdote — my experience with expert witnessing.

My personal experience with expert witnessing has been quite limited but instructive.  While expert witnesses are charged with providing truthful and complete testimony, they are inevitably selected and compensated based upon their predicted ability to support a particular party’s position. Although my compensation wasn’t directly contingent on favorable testimony, I recognized that future engagements would depend on my perceived effectiveness as an advocate.  I started getting an icky feeling – a strong tug on my conscience. I particularly recall the internal pull to shade the truth in the client’s favor and even began to think of the client as “my client.”  That is an ethical problem.  The expert witness is expected to serve as an independent advisor to the court, providing objective analysis based solely on the facts and their expertise. This fundamental tension between duty to the court and financial incentives ultimately led me to step away from expert witnessing entirely.  If I’m going to be a “hired gun,” I want to do so as the attorney where my ethical duty is to side with my client rather than as a quasi-objective expert witness.

While most expert witnesses are not attorneys, the modern American expert witness system essentially places compensated advocates on the stand.  The folks who are hired to testify are great at testifying.  I like the quote I found in a Unified Patents brief from a century ago where P.G. Wodehouse captured this reality in Mike and Psmith: “He was rigidly truthful, where the issue concerned only himself. Where it was a case of saving a friend, he was prepared to act in a manner reminiscent of an American expert witness.” In the quote, Wodehouse suggests that an expert witness’s testimony, while technically under oath, may be shaped more by allegiance to the retaining party than by rigid adherence to objectivity. (more…)

USPTO Withdraws Controversial Terminal Disclaimer Rule – But Core Issues Remain

Patent

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.  (more…)

Many Paths to Patent Issuance

Patent

by Dennis Crouch

Daedalus’s labyrinth was so complex that even its creator needed Ariadne’s thread to find his way out.  I would suggest that the pathways through USPTO patent prosecution are at least as intricate and manifold. While prosecution statistics reveal some common routes through the maze—each application charts its own course through a complex network of non-final rejections, final rejections, RCEs, and after-final practice. Even experienced practitioners sometimes need their own version of Ariadne’s thread.

I wanted to identify the most “typical” pathways for recently issued patents and so parsed through USPTO file wrapper data looking for rejection-response cycles as applications navigate their way to issuance. This post examines the most common prosecution pathways, accounting for 95% of issued patents.  My sample here: The two million issued patents granted from applications filed 2016-2020.  A separate post will bring-in patent families that continue to be an integral aspect of patent strategy and USPTO timelines. (more…)

Thorner and the (Not So) Bright Line Rules of Claim Construction

Patent

by Dennis Crouch

The Federal Circuit’s 2012 decision in Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362 (Fed. Cir. 2012) has become one of the court’s most cited cases from the past 15 years.  In fact, the decision has over 9,000 citations since being released 12 years ago (according to Westlaw search).  The case did not really make new ground, but is most often cited for Judge Moore’s statement of the clear boundaries for when courts can permissibly deviate from the “plain and ordinary meaning” of claim terms. While the decision presents these as bright-line rules, I would argue that the reality is much more nuanced. (more…)

The Next USPTO Director: Duffy’s Four Factor Test

Patent

by Dennis Crouch

In a prior post, I focused on President Elect Trump’s nomination of Howard Lutnick as Commerce Secretary, but the most direct impact for the patent system will be the upcoming nomination of the next USPTO Director. Dennis Crouch, Howard Lutnick and the Patent System, Patently-O (November 25, 2024).  Like the Secretary of Commerce, the Director (who is also Undersecretary of Commerce) must also be nominated by the President and confirmed by the Senate under 35 U.S.C. § 3.

Professor John Duffy (UVa) recently outlined four essential qualities for the next USPTO Director. [Part 1][Part 2].  Duffy was my law professor at UChicago back in 2002, and I have deeply respected his work since then – both as a scholar and teacher.  Back then we were at the apex of broad patent eligibility doctrine.  The landscape has shifted dramatically then, with decisions like Alice and Mayo fundamentally reshaping what inventions qualify for patent protection. Duffy and I align in thinking that eligibility scope has been unduly narrowed.  We also align on another axis – that the obviousness should be robustly examined at the USPTO as the central patentability doctrine. Recall here that Duffy was one of the key forces behind KSR v. Teleflex that eliminated the Federal Circuit’s more rigid “TSM” test.  As I get into this post, I also want to recognize the background that – despite these major changes to the patent system seemingly making it more difficult to obtain patent protection – the allowance rate is higher than anytime in the past 15 years. Dennis Crouch, USPTO Patent Grant Rate and Growing Backlog, Patently-O (Nov. 29, 2024).

Duffy’s Four Part Framework for USPTO Leadership: First, Duffy argues that the new Director “should be open to a more reasonable, expansive, and text-based approach to patentable subject matter.” As he notes, this is particularly important given the rapid advancement of information-based technologies in the 21st century. He rightly recognizes that the patent system must adapt to embrace new technological fields while maintaining its fundamental principles.

Second, the Director must possess familiarity with emerging technologies, particularly in areas like cryptocurrencies and artificial intelligence. As Duffy explains, the Director’s role as Under Secretary of Commerce for Intellectual Property demands leadership across all IP fields—a scope that continues to expand with technological advancement.

Third, and perhaps most pragmatically, Duffy emphasizes the need for bureaucratic reform. Managing over 10,000 patent examiners requires not just administrative skill but also the vision to “rethink the PTO from the ground up.” This is particularly relevant given the agency’s evolution into what Duffy describes as a “complex Rube Goldberg machine” of initial examinations and administrative reviews.

Fourth, Duffy insists on rigorous enforcement of the nonobviousness requirement, calling it “central to the proper functioning of the patent system.” This point deserves particular emphasis and expansion. (more…)

USPTO Patent Grant Rate and Growing Backlog

Patent

by Dennis Crouch  The USPTO utility patent grant rate data reveals an interesting narrative of policy shifts and administrative changes over the past fifteen years. The graph shows a clear upward trajectory from a notable low point around December 2009, when the grant rate bottomed out near 50%, to recent levels hovering around 75-80%. This dramatic shift beginning in 2010 coincided with Director David Kappos taking the helm at the USPTO, marking a decisive break from the more restrictive patent policies of his predecessor Jon Dudas. Under Kappos’s leadership, the office embraced a more applicant-friendly approach, focusing on working with inventors to achieve allowable claims rather than pursuing multiple rounds of rejection.

More recent data points to subtle but noteworthy changes in USPTO practice. Since Director Kathi Vidal’s confirmation in April 2022, the grant rate has shown a modest decline from its peak levels of around 80-85% during 2020-2021. While the current grant rate remains substantially higher than the pre-Kappos era, this recent downward trend suggests a potential recalibration of examination practices under Vidal’s leadership.

The grant rate shown in the graph represents a monthly calculation derived by dividing the number of issued patents by the total number of resolved patent applications for each month, but with an important limitation: the analysis includes only published patent applications. This restriction is necessary because the USPTO does not publicly release abandonment dates for unpublished applications. Thus, for each month, the rate reflects the number of patents granted divided by the total number of published applications that were either granted or abandoned. While this methodology provides valuable insights into USPTO practices, it notably excludes applications that were maintained as secrets through non-publication requests under 35 U.S.C. § 122(b)(2)(B) and the small number that issued too quickly to be published.

As the allowance rate has slipped, the backlog of unexamined applications has risen sharply in recent years — reaching 804,658 applications in October 2024 which is a concerning increase from approximately 526,000 applications in early 2018.  Pendency and backlog issues reached a crisis point in 2008, but we are now above that high point.  To be clear, these numbers report what the USPTO calls the “unexamined patent application inventory” which includes applications awaiting a First Office Action by the patent examiner (limited to utility, plant, and reissue (UPR) applications).  The backlog of all pending applications also recently reached an all time high at over 1.2 million. (more…)

Two Decades and Counting: The Never-Ending Section 101 Battle Over Financial Analytics

Patent

Application No. 10/028,284, filed in December 2001, provides a fascinating window into the evolution of patent eligibility jurisprudence. This application – assigned to GE Financial and prosecuted by folks at Hunton and Williams – is still pending 23 years after its original filing date. Filed pre-Bilski and still pending post-Alice, the application claims a “waterfall tool” that analyzes financial product pricing by tracking how actual revenue “cascades down” from list price through various deductions (like underwriting errors, discounts, commissions, and bonuses) to arrive at the final “pocket price.”

The system integrates data from multiple sources, including actuarial, commission, and bonus systems, to identify and manage “revenue leaks” in financial products like insurance policies. The tool specifically measures metrics like underwriting error rates and premium leakages (caused by risk reclassification), and implements automated control plans when metrics hit predetermined trigger levels. I expect that in the decades since it was filed, these methods have become widely used in the industry.

Why is the application still pending?: This is one of the rare cases that folks complaining about the patent system can point to regarding zombie patent applications. The examiner has issued dozens of rejections, including 15 final rejections.  The applicant took the case to the PTAB – and lost – and has kept the application pending by filing RCE-after-RCE.  The most recent Request for Continued Examination (number 14) was filed in June 2024 after yet another final rejection on eligibility grounds. I should note here that I did not randomly identify this application bout identified it as one of the oldest applications still pending at the USPTO. (more…)

Genius, Gratitude, and the Patent System

Patent

I want to wish everyone a happy Thanksgiving 2024 from Columbia, Missouri. While I write about inventors and inventions daily, I rarely pause to express gratitude for their profound contributions to our lives. Though patent law often dwells on technical minutiae and legal boundaries, today I want to recognize the remarkable human elements that drive innovation forward.  Thank you!

I extend special thanks to the innovators who purposefully work to transform our society in a positive direction; to those who bring forth new knowledge and understanding from the ether; and to those who dedicate their creative energies to solving humanity’s most pressing challenges. Their work transcends mere technological advancement to serve higher purposes. The patent system’s genius lies in how it channels individual creativity toward collective benefit—promoting the progress of science and useful arts.

I have found inspiration in mythologist Michael Meade’s perspective on genius. Rather than viewing it as the exclusive domain of celebrated inventors, Meade, drawing from ancient philosophy, suggests that each person carries within them an innate genius—a unique gift waiting to unfold. Finding and expressing one’s genius becomes an act of self-discovery, akin to finding one’s dharma or true calling. When uncovered, this genius enables individuals to contribute meaningfully to society. Yet in our current era, many find themselves constrained by perceived limitations and inner doubts. As we gather with family and friends this holiday, I encourage each of us to reflect on how we might better harness our own innovative capacities while creating space for others to discover and express their own genius.

Happy Thanksgiving!

Dennis Crouch

Howard Lutnick and the Patent System

Patent

by Dennis Crouch

The USPTO’s position within the Department of Commerce means that Commerce Secretary nominees warrant careful attention from the patent community. President-elect Trump’s nominee for Secretary of Commerce, Howard Lutnick, brings particularly relevant experience to the role, shaped by extensive involvement with the U.S. patent system both as a prolific inventor and as CEO of Cantor Fitzgerald, a company that has operated on multiple sides of patent disputes. (more…)

The Federal Circuit’s Oracle: When Silence Speaks Louder Than Words

Patent

by Dennis Crouch

The Supreme Court currently has two cases that each provide opportunity to address a longstanding problem with the Federal Circuit’s practice of issuing no-opinion summary affirmances in patent cases. In ParkerVision v. TCL Industries Holdings Co., No. 24-518, and Island Intellectual Property LLC v. TD Ameritrade, Inc., No. 24-461, the petitioners challenge the Federal Circuit’s use of Rule 36 judgments – where the court simply affirms the lower tribunal’s decision without any written opinion. Both petitions are well drafted by expert counsel and both have recently received strong amicus support.

The cases present the issue from different angles. ParkerVision focuses on appeals from the Patent Trial and Appeal Board (PTAB), arguing that the Federal Circuit’s use of Rule 36 violates 35 U.S.C. § 144’s explicit requirement that the court “shall issue . . . its mandate and opinion” when deciding appeals from the Patent Office. The case arose after the Federal Circuit summarily affirmed PTAB decisions invalidating ParkerVision’s wireless communication technology patents. Island IP, on the other hand, challenges a Rule 36 affirmance of a district court’s summary judgment invalidating its patent under 35 U.S.C. § 101. Island IP argues that the one-word affirmance masked the district court’s failure to properly apply summary judgment standards to disputed factual issues underlying the eligibility determination.

Both cases highlight how the Federal Circuit’s frequent use of Rule 36 undermines transparency and accountability in patent law. In ParkerVision’s case, the practice allows the court to sidestep its statutory duty to oversee administrative patent judges through reasoned decision-making. For Island IP, the summary affirmance obscures whether the court properly reviewed the district court’s handling of disputed factual evidence in the summary judgment context.

The timing of these petitions is particularly significant, as both cases have recently received substantial amicus support highlighting distinct but complementary concerns about the Federal Circuit’s Rule 36 practice. In ParkerVision, two friend-of-the-court briefs filed on November 20, 2024, emphasize national security implications and statutory interpretation. Meanwhile, in Island IP, three briefs amici were filed on November 22, 2024, along with a responsive brief on opposition. These parallel sets of briefs provide the Court with robust arguments for why intervention is needed to address what many view as a troubling lack of transparency in patent appeals. (more…)