[Update – I should have noted that these are limited to appeals from the USPTO – primarily IPR decisions focusing on the issue of obviousness]
The pie chart shown here depicts the distribution of Federal Circuit case outputs from 2000 to 2024 across three categories. The plurality of cases, 44%, resulted in a Non-Precedential Opinion, indicating a substantial volume of decisions with limited precedential impact. Following this, 38% of outcomes are categorized as “No Opinion (R.36).” These are cases where the court issued a summary affirmance of a lower tribunal holding without any written explanation. I want to note for a moment here that other federal appellate courts also have an approach known as “summary affirmance, but those courts always provide at least a brief explanation of the ruling and its justification. The Federal Circuit provides no opinion, just the judgment.
The final segment, 18% of dispositions, represent cases with Precedential Opinion. This represents the smallest category and highlighting the court’s selection of cases deemed to warrant formal published opinions with binding effect on subsequent decisions.
In early January 2025, I wrote about Peterson v. Minerva Surgical, No. 24-712, a case involving a former Minerva sales director (Dan Peterson) seeking Supreme Court review of an arbitration award that went against his whistleblower claims. See Dennis Crouch, Patents as Product Liability Admissions: A Cert Petition Highlights Novel Use of Patent Filings in Whistleblower Case, Patently-O (Jan. 4, 2025). As I explained in that post, Peterson's argument for review relies on Minerva's own patent filings as evidence that the company knew about safety issues with its endometrial ablation device —and that it fraudulently provided contradictory testimony during the arbitration proceedings.
The case has now drawn additional attention through an amicus brief filed by Lift Our Voices (LOV), filed by my University of Missouri Law School colleague Professor Michael Tripp. LOV, led by former Fox News anchor Gretchen Carlson, advocates for workplace safety and equity -- and has particularly focused on how forced arbitration and non-disclosure agreements lead to a continuation of sexual harassment in the workforce. The brief presents the case as emblematic of broader concerns about the use of forced arbitration and non-disclosure agreements (NDAs) to shield corporate misconduct from public scrutiny.
Federal Appellate Judge: "I have No Power": LOV's brief emphasizes how the Tenth Circuit's extreme deference to arbitrators has effectively nullified any meaningful judicial review. The brief directly quotes the circuit court's striking admissions of powerlessness, including statements that federal courts "do not have discretion," "do not have power," and "cannot set aside an arbitration award based on legal error." This language, LOV argues, represents a concerning abdication of Article III judicial authority that Congress never intended when enacting the Federal Arbitration Act (FAA) -- concluding that the Arbitrator was faced with a factual dispute about safety and decided that the device had not yet been proven unsafe.
The case provides stark language about the extremely limited scope of judicial review over arbitration awards. Specifically, the Tenth Circuit emphasizes in Peterson v. Minerva Surgical, Inc., No. 24-3003 (10th Cir. Aug. 15, 2024): "the standard of review of arbitral awards 'is among the narrowest known to the law.'" The court goes on to state directly that "federal courts do not have power to review an arbitrator's factual findings." And when it comes to legal errors, the court explains that it "cannot set aside an arbitration award based on legal error unless it amounts to 'a manifest disregard of the law, defined as willful inattentiveness to the governing law.'"
In a pair of significant decisions issued today, the Federal Circuit upheld preliminary injunctions blocking the launch of biosimilar versions of Regeneron's blockbuster drug EYLEA® (aflibercept). Regeneron Pharms., Inc. v. Mylan Pharms. Inc., No. 2024-1965 (Fed. Cir. Jan. 29, 2025) (precedential); and Regeneron Pharms., Inc. v. Mylan Pharms. Inc., No. 2024-2009 (Fed. Cir. Jan. 29, 2025) (nonprecedential). The cases pit Regeneron against foreign manufacturers, including Samsung Bioepis (SB) and Formycon AG, who had obtained FDA approval for their biosimilar products under the Biologics Price Competition and Innovation Act (BPCIA). Writing for a unanimous panel, Judge Taranto focused on three key issues: (1) personal jurisdiction over foreign biosimilar manufacturers; (2) obviousness-type double patenting in the biologics context; and (3) standards for preliminary injunctive relief. The decisions effectively maintain Regeneron's market exclusivity for EYLEA®, which generates approximately $6 billion in annual sales and serves as a primary treatment for several serious eye conditions including wet age-related macular degeneration. U.S. Patent No. 11,084,865.
The briefs - one from Law Professor Michael Risch along with a group of patent trial attorneys and another from the Alliance of U.S. Startups and Inventors for Jobs (USIJ) argue that Google's position - further limiting expert damages testimony - threatens to undermine core aspects of patent damages law while potentially violating the Seventh Amendment's right to a jury trial. The third brief, filed by Professor Gregory Dolin argues that Judge Newman - who the court "temporarily" suspended in 2023 - should be permitted to sit on the en banc panel. (I put "temp" in scare quotes because it appears that this suspension is - in fact - permanent).
The Supreme Court is being asked to decide a case that could have a major impact on copyright law. The case involves photographs taken by Michael Grecco in 2017, but the lawsuit was not filed until 2021. The key question is whether the Copyright Act's three-year statute of limitations runs from when copyright infringement occurs or from when the copyright holder discovers it. The circuits are currently split on this issue, and the Supreme Court may finally settle the issue that has been brewing for years. (Note that the split overwhelmingly favors the discovery rule but there are differences in how it is applied).
Although we don't delve into the issues of model-rights here -- it is interesting to note that Michael Grecco was the photographer; the model is a famous model Amber Rose (not involved in the lawsuit) and the shoes are designed by famed designer Ruthie Davis, who is also the accused infringer.
The USPTO must develop a comprehensive plan addressing not just space and staffing, but also the “risks, barriers, and resource constraints” that could prevent expeditious return to in-person work. While patent examiners await official word from agency leadership about their specific situations, the clock is ticking on what could be the most significant operational change at the USPTO in decades.
As someone who practiced 20 years ago — at a time when USPTO examiner morale was low and the agency had difficulty recruiting quality candidates — I recognize that things are so much better today. (Do you agree?). For those of us outside the USPTO, now is the time to voice support both for the examiner community and uninterrupted USPTO operations — especially if you can provide Dir. Stewart with evidence that will aid efforts to water-down the negative effect of these orders.
The Supreme Court will soon consider whether to hear an important case about fraud on the court (and the USPTO) and the judiciary's obligation to address it. Marco Destin, Inc. v. Levy, Case No. 24-787. The issue now before the Court asks whether it was proper for the lower court to overlook fraud that affects the judicial process itself in favor of finality of judgment. [Marco Destin Petition]
Fraud cases are typically interesting reads, and this one fits the bill. In 1993, L&L Wings entered into a trademark license agreement with Shepard Morrow for the use of the "WINGS" mark in retail store services -- particularly for use on beach merchandise. L&L Wings made only the initial $10,000 royalty payment under the agreement, then defaulted on the remaining payments. Despite losing its rights to the mark, L&L Wings continued using the mark and even began sublicensing it to others, including Marco Destin (Alvin's Island) in 1998.
In 2007 L&L Wings (owned by respondents Shaul Levy and Meir Levy) sued Marco Destin for trademark infringement in the Southern District of New York. According to the cert petition, L&L's attorney Bennett Krasner knew at the time that L&L Wings had no rights to the mark, having personally negotiated the earlier failed licensing deal with Morrow. Yet the complaint omitted any mention of Morrow's ownership or L&L Wings' status as a former licensee.
During that litigation, Krasner allegedly deepened the deception by obtaining a federal trademark registration for "WINGS" through what the petition characterizes as fraudulent representations to the USPTO. The application claimed L&L Wings had been in "continuous high-profile use" of the mark for nearly 30 years and failed to disclose Morrow's prior ownership. After obtaining the registration, Krasner introduced it as evidence in the New York case, leading to summary judgment against Marco Destin and ultimately a $3.5 million settlement.
The fraud only came to light years later through separate litigation in North Carolina between L&L Wings and Beach Mart. There, a jury found that L&L Wings had knowingly made false representations to the USPTO to obtain the WINGS registration. The court canceled the registration and awarded $12.5 million in punitive damages. This verdict drove L&L Wings into bankruptcy.
Armed with evidence of the fraud, Marco Destin sought to vacate the earlier $3.5 million settlement through an independent action authorized under Federal Rule of Civil Procedure 60(d)(3). As suggested above, all of this is part of the L&L Wings bankruptcy proceedings and and so Marco Destin is unlikely to obtain its full recovery even if it wins this case -- instead it will form part of the queue with the other creditors.
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.
In a significant development likely affecting USPTO operations, the Office of Personnel Management (OPM) has issued detailed implementation guidance for President Trump's January 20, 2025 return-to-office mandate. The guidance provides strict timelines and requirements that could force dramatic changes at the USPTO, where remote work has been a cornerstone of operations for decades.
The OPM memo, signed by Acting Director Charles Ezell, requires agencies to take immediate action, with initial steps due by January 24, 2025 (tomorrow).
The Technology: The patent at issue (U.S. Patent No. 7,332,277) relates to methods for non-invasive fetal DNA testing. This is an incredibly important area of technology because the leading prior form of testing (amniocentesis) is relatively dangerous to the growing fetus. Cell free fetal DNA (cffDNA) floats around in the mother's blood stream. But, not very much, and what is there tends to be somewhat unstable. The claimed method involves analyzing cell-free fetal DNA from maternal blood samples while using agents that prevent cell lysis (breakdown). The key independent claim requires "determining the sequence of a locus of interest on free fetal DNA" from a maternal blood sample that includes both the fetal DNA and a cell lysis inhibitor. A dependent claim specifically identifies the inhibitor as being selected from glutaraldehyde, formaldehyde, or formalin. The patent at issue here lists Ravgen's founder Ravinder Dhallan as the inventor and claims back to a 2003 provisional application filing.
It is tough that one of the very first acts of new USPTO Director Coke Morgan Stewart’s was to cancel hiring for the agency. Two weeks ago I saw a notice that the USPTO expected to hire over 800 new examiners during 2025 in an attempt to address the ever growing backlog of unexamined patent applications. But, today the agency rescinded offers already given and cancelled its job ads. Although unclear, examiners still in their first year probationary period may also be let go. What we have here is the patent office being caught up in the larger political theatre with real world consequences — directly for those individuals losing promised employment and more generally for the intellectual property system as a whole.
This is the first time I have ever searched USAJobs and found nothing for the USPTO.
Still, this week the USPTO did not rescind the notices of allowances already mailed. And the patents issued on time at 12:01 am on Tuesday 1/21/25. This includes US12206106 and US12204163. These two are notable because they each list 28 inventors. One of the more interesting is US12205207, issued to Snap Inc. The ‘207 patent describes a system for automated image generation within a messaging or social media platform. The core innovation enables users to generate custom images directly within the platform’s interface by entering text prompts, which are then processed by an AI text-to-image generator to create multiple image options. Users can select from these generated images and immediately apply them as profile backgrounds, chat wallpapers, or media content backgrounds without leaving the platform.
1. A system comprising:
a memory that stores instructions; and
one or more processors configured by the instructions to perform operations comprising:
causing presentation, at a first user device associated with a first user of an interaction system, of a prompt selection interface of an interaction application provided by the interaction system, the interaction application enabling the first user to obtain automatically generated images and to interact with at least a second user of the interaction system;
receiving, from the first user device and via the prompt selection interface of the interaction application, an image generation request comprising a text prompt;
responsive to receiving the image generation request via the prompt selection interface of the interaction application, generating, via an automated text-to-image generator associated with the interaction system and based on the text prompt, an image;
causing presentation, at the first user device, of the image in an image selection interface of the interaction application;
receiving, from the first user device and via the image selection interface of the interaction application, an indication of user input to select the image; and responsive to receiving the indication of the user input to select, via the image selection interface of the interaction application, the image generated via the automated text-to-image generator: modifying, using the selected image generated via the automated text-to-image generator, a user image that is associated with the first user within the interaction system, and enabling the second user of the interaction system to be presented with the modified user image via the interaction application.
The chart above is not an EKG. Rather, it shows the ebb and flow of USPTO activity -- the heartbeat of the 10,000+ patent examiners whose activity follows the bi-weekly quota system. The regular peaks come every two weeks, but the chart shows an overlay of two additional quotas: quarterly quotas (the higher blip every 3 months) and yearly quotas (the messy blip at the end of each fiscal year). Like their patent attorney counterparts, patent examiners are also deadline driven and their output increases as each deadline approaches.
The next chart focuses in on a single 14 day biweek and the blue line shows data collected from from more than a million non-final and final office actions entered 2022-2024.
Trading Technologies (TT) has petitioned the Supreme Court to review a Federal Circuit decision raising three significant questions about patent law and civil procedure. The case stems from TT's patent infringement suit against IBG LLC and Interactive Brokers LLC over patents related to electronic trading user interfaces. U.S. Patent Nos. 6,766,304, 6,772,132, 7,676,411, and 7,813,996. (I have mentioned this previously, but TT is a former client and I was involved with enforcing the '304 and '132 patents in the past).
The case caption now lists Harris Brumfield as trustee following TT's 2021 sale, though the litigation began and was primarily conducted by Trading Technologies. 20250103171844464_2025-01-02 No 24- Petition.
Two executive orders issued by President Trump on January 20, 2025, may present significant challenges for the USPTO's operations. The first order mandates a return to in-person work across federal agencies, while the second implements a broad federal hiring freeze. Although the outcome is still unclear, these directives could substantially impact the USPTO's approximately 13,000 remote workers, most of whom are patent examiners, and potentially disrupt the office's plans to expand its examining corps to address growing application backlogs and increasing pendency.
USPTO officials will likely be seeking exemptions, but the sheer number of USPTO remote workers may well undermine the administration's broader return-to-office messaging if left unreduced.
Just after President Trump spoke the oath of office, Coke Morgan Stewart was also sworn in as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO on January 20, 2025. She is serving as Acting Director. The previous Director, Kathi Vidal, departed to Winston & Strawn in December, and Deputy Director Derrick Brent, who had been serving in an interim capacity, has also now resigned. Commissioner Vaishali Udupa is remaining in her position for now as is Commissioner Gooder.
I've been looking at some of the fastest issued US patents. A majority of the fastest issued are part of the Global IP5 Patent Prosecution Highway (PPH) pilot that gives substantial weight to patent allowances from a partner country. A substantial number of Chinese applications are using this program to great effect -- especially when coupled with the remarkable speed of the China National Intellectual Property Administration (CNIPA).
The PPH program allows applicants who receive a ruling from a first patent office that at least one claim is patentable to request accelerated prosecution of corresponding claims in a second patent office. The program aims to reduce examination workload and speed patent grants through work-sharing between patent offices.
The following are a couple of new patents that I picked out from the many available. Both patents moved from filing to issuance in less than four months (including receiving and responding to a non-final rejection).
As someone quite familiar with the subject matter, I was looking forward to writing about the trademark battle of Nerdio, Inc. v. NerdIO Limited. The appeal was recently dismissed based upon a joint stipulation, but I still wanted to dig into the TTAB file for a few nuggets. Nerdio, Inc. v. NerdIO Limited, Cancellation No. 92075281 (TTAB May 14, 2024). As the headline suggests, the mark was cancelled here based upon two days of prior use by the opposition.
Petitioner Nerdio, Inc. provides cloud-based IT services to small and mid-sized businesses under the NERDIO mark and the website getnerdio.com. Respondent NerdIO Limited is owned by Honk-Kong based Edmond Chow, who purchased the nerdio.com domain name in 1999 with stated plans to eventually commercialize it for software services. In May 2016, Nerdio’s predecessor attempted to purchase the nerdio.com domain from Chow through a series of escalating offers, sending twelve separate emails between May 4-27. Chow rejected these offers with a single reply stating “The domain is not for sale.” (The dollar values of the offers is confidential). After a final purchase attempt on June 8, 2016, Chow filed an intent-to-use application for the NERDIO mark the very next day (June 9, 2016). Registration No. 6153453 issued to NerdIO Limited on September 15, 2020, for various computer software related services. Meanwhile, after failing to acquire the domain, Nerdio’s predecessor launched its services at getnerdio.com and later petitioned to cancel Chow’s registration based on its alleged prior common law rights in the NERDIO mark.
First-in-Time: Just like the old fox case from property law, trademark priority is fundamentally based on a first-in-time principle. At common law, we’re looking for the first use of a mark in commerce, but the Lanham Act provides important constructive use rights for intent-to-use (ITU) applications. Under Section 7(c) of the Trademark Act, 15 U.S.C. § 1057(c), filing an ITU application establishes a nationwide constructive use date as of the application filing date, contingent upon eventual registration.
(c) Application to register mark considered constructive use.
Contingent on the registration of a mark on the principal register . . . the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against . . .
This means that even though the applicant has not yet used the mark in commerce, once their mark registers, their priority rights will relate back to their application filing date. This constructive use right operates as a placeholder, effectively reserving priority from the application date against anyone who hasn’t used the mark before that date. However, if another party can prove actual use of the mark in commerce before the ITU application’s filing date, that party has superior rights. This operation is similar to the patent system where patent applications establish an inchoate right that becomes perfected upon patent issuance, trademark intent-to-use applications create a contingent priority right that becomes fixed when the mark registers. This concept also has historical parallels to the European doctrine of discovery in international law during the age of empires, where planting a flag could establish a preliminary claim to territory that would only become perfected through actual settlement and possession.
In Nerdio, Chow filed his intent-to-use in June 9, 2016 and eventually registered the trademark in the year 2000 — completing the requirement to establish the 2016 date.
Unfortunately for Chow, Nerdio Inc.’s predecessor (Adar IT) beat that date by two days via a June 7, 2016 email to its existing customers. The email informed these customers that the company had been “rebranded NERDIO.” Notice here that this email was not simply marketing, but was sent to actual customers who were already receiving IT services from the company. The TTAB found this significant because unlike other evidence of NERDIO usage (like the new website or promotional materials), this email was connected to actual services being rendered to paying customers.
In its decision, the TTAB found the email, combined with the context of ongoing service to these customers, established trademark use as of June 7 – just two days before NerdIO Limited’s June 9 intent-to-use application.
I couple of weeks earler, Nerdio Inc. had launched its getnerdio.com website – but the TTAB found that act was insufficient because it merely offered rather than rendered services. And, evidence of free trials starting June 2 failed because no trials actually began until after June 9. Similarly, social media promotion in early June showed only offers of service, not actual rendering. The TTAB cited Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015) for its conclusion that merely offering services is insufficient – the services must actually be rendered to constitute use in commerce.
Although Nerdio had a two day priority over Chow because of its prior use (via email to customers) – that priority does not settle the matter because common law use priority tends to be quite narrow in scope. When a party claims priority based on common law use against a registered mark, they must prove use of their mark for specific services that predate the registration’s priority date. This creates an important limitation – the prior user can only claim priority for the particular services they were actually providing before the critical date, not for related or expanded services they began offering later. While Nerdio Inc. proved it was providing certain IT services (monitoring computer systems, outsourced IT consulting, and implementing computer technologies) under the NERDIO mark two days before Chow’s filing date, the TTAB strictly limited Nerdio’s priority rights to just those three services even though though Nerdio later expanded to offer a broader range of services. Still, the Board found enough overlap to create a likelihood of confusion between Nerdio’s commercial offereings and Chow’s registration.
In the end, the TTAB granted Nerdio Inc.’s petition to cancel NerdIO Limited’s registration based on likelihood of confusion with Nerdio’s prior common law rights in the NERDIO mark. The key to this outcome was Nerdio’s ability to prove it was using the NERDIO mark for specific IT services two days before NerdIO Limited’s June 9, 2016 intent-to-use application date. The best evidence being an email to existing customers about the name change and continued provisioning of services to those customers.
= = =
K&L Gates LLP represented Nerdio Inc. with a team led by Alexis Crawford Douglas. Ice Miller LLP defended NerdIO Limited with Jacqueline Lesser leading the representation.
The America Invents Act (AIA) created a delicate dance between district court litigation and inter partes review (IPR) proceedings. Patent owners often race to reach trial before the PTAB rules on validity, while accused infringers typically seek stays pending IPR. The one-year statutory deadline for IPR final written decisions provides some comfort to district courts considering stays - the delay, while substantial, is at least bounded. But what was initially conceived as a streamlined alternative to litigation has evolved into a potentially years-long process, with final written decisions now being followed by requests for USPTO Director Review and subsequent Federal Circuit appeals. This timeline extension puts courts in a difficult position when considering stays, particularly late in district court proceedings.
A recent mandamus petition highlights this tension. In In re Viasat, Inc., No. 2025-110 (Fed. Cir. Jan. 17, 2025), Judge Albright took the unusual step of sua sponte staying a patent case just days before trial in a case that had completed its IPR review and was instead awaiting Federal Circuit's appellate review. The IPR decision had cancelled some of the asserted claims, but left Claim 16 as untouched - and the patent challenger appealed to the Federal Circuit. The patentee then narrowed the litigation to focus only on that sole remaining claim and asked the court to proceed with trial. The Federal Circuit has now declined to disturb that stay through mandamus.
