Motorola Follows SAP with Mandamus Challenge to Acting Director Stewart’s IPR Policy Reversal

by Dennis Crouch

The Federal Circuit is now confronting a second major mandamus petition challenging the USPTO's major changes with regard to its approach to discretionary denials in inter partes review proceedings. In re Motorola Solutions, Inc., No. 25-134 (Fed. Cir. 2025).  Motorola presents an even more procedurally compelling challenge to Acting Director Stewart's retroactive system changes than the earlier In re SAP petition I discussed previously. While both cases attack the same underlying agency action, Motorola's petition benefits from having actually obtained PTAB institution decisions before they were subsequently vacated, creating a more concrete harm from the retroactive policy change.

Responsive briefs are due July 14 in SAP and July 21 in Motorola.


To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Google v. Sonos: Oral Arguments

Today the Federal Circuit is hearing oral arguments in Google v. Sonos on the doctrine of prosecution laches. The panel is interesting and has the potential of resulting in a pro-Google decision.  Federal Circuit Judges Prost and Lourie, along with  D.N.J. District Court Judge Renée Marie Bumb, sitting by designation.

Judge Lourie authored the Symbol v. Lemleson decision that revived the doctrine back in 2005. More interestingly, Judge Lourie wrote the opinion in Cancer Research Tech. Ltd. v. Barr Laboratories, Inc., 625 F.3d 724 (Fed. Cir. 2010), with Judge Prost in dissent. In that case, the majority found no laches, but Judge Prost would have found the patent unenforceable due to prosecution laches.


To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Overlapping Ranges and the Presumption of Obviousness

by Dennis Crouch

The Federal Circuit's decision in Janssen v. Teva narrows the scope of the overlapping-range presumption of obviousness, holding that when a patent claim involves an integrated, time-dependent sequence of steps rather than a simple selection of numeric values, courts must conduct a full obviousness analysis instead of applying the presumption that overlapping ranges are obvious.


To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Prior Art Document vs. Prior Art Process: How Lynk Labs Exposes a Fundamental Ambiguity in Patent Law

by Dennis Crouch

The upcoming Supreme Court petition in Lynk Labs, Inc. v. Samsung Electronics Co., 125 F.4th 1120 (Fed. Cir. 2025), presents more than just another dispute about inter partes review scope. In my mind, it highlights a fundamental conceptual tension that has largely gone unnoticed in patent law discourse: the ambiguity in what we mean by "prior art" itself. This manifests as a clash between two competing frameworks that I call "prior art as document" versus "prior art as process." This distinction is crucial because it explains why seemingly straightforward statutory language in 35 U.S.C. § 311(b) becomes so contentious when applied to the "secret" or "springing" prior art under § 102(a)(2).

In Lynk Labs, the Federal Circuit held that a patent application filed by a competitor but kept secret until after the challenged patent's filing date could be used as prior art in an IPR proceeding. Samsung had successfully challenged Lynk's patent using an earlier-filed patent application (the "Martin" reference) that was filed in April 2003—months before Lynk's February 2004 priority date—but did not publish until October 2004, well after Lynk's filing. The court concluded that this reference satisfied § 311(b)'s requirement that IPR challenges be based on "prior art consisting of patents or printed publications" because the prior application had, by the time of the IPR, become a "printed publication" and § 102(a)(2) independently established its prior art status.  Although 102(a)(2) does not define a "prior art . . . printed publication," it does create "prior art," and the documentary evidence is a "printed publication."


To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Corcept v. Teva Oral Argument: Infringement by Drug Label, Again

Guest post by Paul R. Gugliuzza & Jacob S. Sherkow

An important recent development in pharmaceutical patent law is the Federal Circuit’s embrace of a theory we call, in a forthcoming article, infringement by drug label. In several decisions since 2021, the court has approved claims of induced infringement against generic drug companies simply because (i) the generic’s product label could be read to contain a patented method-of-use and, in some cases, (ii) the generic stated that its product is an FDA-equivalent to the brand’s.

There are several problems with holding generic companies liable for inducing doctors (or patients) to perform a patented method of use based on a court’s (or, sometimes, an expert witness’s) interpretation of the generic’s label and the generic’s unremarkable—and often, legally required—statements about equivalence. (more…)

Quick Post on Egenera

by Dennis Crouch

Egenera, Inc. v. Cisco Sys., Inc., No. 2023-1428, slip op. (Fed. Cir. July 7, 2025)

During claim construction proceedings, The patentee Egenera and defendant Cisco disputed several claim terms including "computer processor/processor" and aspects of "emulate Ethernet functionality over the internal communication network". However, "neither party asked the district court to determine what the patent specifically means by 'emulate Ethernet functionality,'" content to leave this key term to its "plain and ordinary meaning."  This strategic choice ultimately proved fatal when the case reached summary judgment. The district court found that Cisco's CPUs "used" Ethernet functionality but found no evidence of emulation, concluding that "use of a communications network is not emulation of the functionality of that network." 


To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Back to 1789: How Founding-Era Equity Could Resurrect NPE Injunctions

by Dennis Crouch

The pending Radian Memory case could fundamentally reshape patent litigation.  This is a follow-on article about the preliminary injunction motion in Radian Memory v. Samsung pending before Judge Gilstrap in the Eastern District of Texas. The patentee-plaintiff is a non-practicing entity -- but still argues that it has a right to injunctive relief based upon traditional equitable principles, even under the requirements of eBay. In June, the DOJ and USPTO filed a statement of interest in the case supporting the availability of injunctive relief as pro-competitive. Both sides have now provided additional arguments with a July 16 evidentiary hearing scheduled. Radian particularly argues that the recent Supreme Court cases of Trump v. CASA, Inc., 24A884, 602 U.S. ___ (June 27, 2025) and Mahmoud v. Taylor, 24-297, 602 U.S. ___ (June 27, 2025), reaffirm that the key source of law should be founding-era equity practices. The key sticking point for NPE injunctive relief is irreparable harm -- and Radian's point is that the founding era cases are clear that ongoing infringement of a property right inherently causes irreparable harm.

Radian’s argument has some legs -- and would be a major transformation if successful.  Almost certainly, the “principles of equity” in 35 U.S.C. § 283 incorporate the historical practices of English Chancery and the Founding era.  Although eBay has been read as eliminating any presumption of irreparable harm due to ongoing infringement, that result is only implied by the case. eBay itself made historical errors that make it difficult to know whether the court intended to apply a straight historical analysis, or one that is more fictionalized.


To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

PTAB’s New “Settled Expectations” Doctrine

by Dennis Crouch

Acting Director Coke Morgan Stewart has been incredibly active in reshaping the PTAB's approach to IPR discretionary denials.  This post focuses on her newly implemented "settled expectations" doctrine that treats patent age as a primary factor for denying institution. This new framework was formalized in the March 26, 2025 "Interim Process for PTAB Workload Management" memorandum and subsequently applied in a series of Director Discretionary Denial decisions in June 2025. The doctrine creates a temporal shield for older patents and calls forth some interesting parallels to existing doctrine, including laches and trademark incontestability.


To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

SAP’s Mandamus Petition Challenging Trump Admin’s Discretionary Denial Policy Shift

by Dennis Crouch

This post digs into the pending mandamus action In re SAP.  In the case, SAP raises a constitutional challenge to Director Stewart's aggressive discretionary denial approach -- as a violation of both due process and separation of powers.

The IPR statute provides the USPTO Director virtually unreviewable authority to grant or deny inter partes review (IPR) petitions. As part of the initial implementation of the IPR system, then USPTO Director Dave Kappos delegated authority to the PTAB to make those determinations. But, Acting Director Coke Morgan Stewart has substantially shifted the practice in recent months by substantially expanding the scope of discretionary institution denials -- these are refusals to institute IPRs even when the petition raises a substantial enough  patentability challenge.  Under Director Vidal, one important approach avoid discretionary denial was the Sotera safe harbor, stemming from Sotera Wireless, Inc. v. Masimo Corp.. In Sotera, the petitioner stipulated that it would not pursue in the parallel litigation any invalidity ground that it could raise in the IPR, thus eliminating most potential overlap in issues between the IPR and any parallel litigation. This broad stipulation (often called a “Sotera stipulation”) became a de facto safe harbor that was then formally embraced by a 2022 memorandum by Director Kathi Vidal.  That memo clearly stated that the the Board would not discretionarily deny institution” in two key situations: (1) when the petitioner agreed to a broad Sotera stipulation (foregoing any invalidity arguments in court that could have been raised in the IPR), despite ongoing parallel litigation, or (2) when the petition presented a “compelling” unpatentability challenge.  This interim guidance operated as binding agency internal policy that curbed Fintiv denials and reassured petitioners that certain bright-line safe harbors would be respected. The result was a substantial decrease in discretionary denials.

Fast forward to 2025 and dramatic policy changes by Acting Director Coke Morgan Stewart substantially increasing discretionary denials.  In particular, Stewart rescinded the June 2022 Vidal memo and ultimately reinstated the broader pre-2022 Fintiv framework.  A Sotero stipulation is no longer sufficient to avoid discretionary denials, and Director Stewart has more recently expanded the justifications for discretionary denials, including "settled expectations" where the patent issued 7+ years ago and was not challenged during that interim.

Importantly for SAP, this policy change was applied immediately and retroactively to pending cases. In other words, IPR petitions filed while the Vidal Memo was in effect could still be decided under the new more expansive discretionary denial regime, as long as the PTAB had not yet instituted by the time of the rescission. This is precisely what happened to SAP.


To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Supreme Court Grants Cert in First (and only) IP Case of 2024: Billion-Dollar ISP Copyright Contributory Liability Case

by Dennis Crouch

This week the Supreme Court granted certiorari in Cox Communications, Inc. v. Sony Music Entertainment, No. 24-171, while denying the competing petition in Sony Music Entertainment v. Cox Communications, No. 24-181. This grant/deny pair follows the Trump Administration’s Solicitor General recommendation and sets up another major Supreme Court battle over the scope of contributory copyright infringement–this one focusing on how internet service providers handle allegations of user piracy.

USDOJ: Contributory Infringement Requires Conscious and Culpable Acts

The case centers on fundamental questions about when companies can be held liable for their users’ copyright infringement—issues that parallel similar debates in patent law regarding inducement under 35 U.S.C. § 271(b) and contributory infringement under 35 U.S.C. § 271(c). Patent and copyright cases share common purposes and a core tension of how to hold those who facilitate infringement accountable without stifling innovation or access.

The Sony v. Cox litigation began when a consortium of record companies and music publishers sued Cox Communications, an internet service provider with millions of customers, for copyright infringement based on actions by Cox’s subscribers during 2013-2014. During this period, anti-piracy company MarkMonitor sent Cox over 160,000 automated notices alleging that specific IP addresses on Cox’s network were being used to share particular copyrighted music via peer-to-peer networks like BitTorrent.

Cox had implemented what it called a “graduated response program” under which repeat infringers would receive escalating consequences: email warnings, temporary suspensions, and ultimately possible termination. However, Cox’s application of this policy was admittedly inconsistent. Over the relevant period, Cox terminated only 33 subscribers for copyright violations while terminating over 600,000 for nonpayment. Internal emails showed Cox employees expressing frustration with the volume of infringement notices and resistance to aggressive termination policies that would cost the company subscriber revenue. (more…)

Eye Therapies v. Slayback: Federal Circuit Abandons Standard Transition Construction

by Dennis Crouch

Eye Therapies v. Slayback offers a concerning example of the Federal Circuit departing from well-established patent claim construction doctrine. In this case, the court abandoned the standard interpretation of the transitional phrase "consisting essentially of" after finding that the patentee's prosecution statements created sufficient grounds to narrow claim scope.  As I explain below, in my opinion, this result conflicts with the court's own Ecolab precedent and threatens to shift claim-transition interpretation from its traditional position as a canon of claim construction.


To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Hedging on Claim Construction: USPTO Says Keep It to One IPR Petition

by Dennis Crouch

In an “informative” decision addressing the limits of multiple IPR petitions, Acting USPTO Director Coke Morgan Stewart granted Director Review and vacated the PTAB’s institution of two IPR proceedings challenging the same patent claims. CrowdStrike, Inc. v. GoSecure, Inc., IPR2025-00068, IPR2025-00070 (USPTO June 25, 2025). The Director found that the Board abused its discretion by allowing CrowdStrike to pursue two separate IPR proceedings against the same claims of Patent 9,954,872 B2, where the primary difference between the petitions was alternative constructions of a single claim term. The Director’s opinion states that allowing multiple petitions based solely on alternative claim constructions “effectively expands the permitted word count and places a substantial and unnecessary burden on the Board and the patent owner.” On remand back to the PTAB, the parties are instructed to submit claim construction briefs in order to allow the Board to consider moving forward with an IPR.

Interestingly, this remand may give the petitioner exactly what it wants in this case – room to make the alternative arguments within a single IPR petition. (more…)

USPTO Updates for 2025 – Free Webinar

A lot has been happening at the USPTO over the past six months! Join me along with an interesting panel of patent law experts for a 1-hour discussion sponsored by the LAIPLA.

Patrick Maloney (Cork Maloney) organized the event and the panel includes Jessica Hudak (Edwards Lifesciences); David Bailey (KPPB); and Dennis Crouch (Me).

 

 

Preview: Federal Circuit Oral Argument in Google v. Sonos (July 10, 2025)

by Dennis Crouch

Judge Alsup issued his controversial unenforceability decision in Sonos v. Google back in October 2023, and the appeal has been pending since then.  The Federal Circuit recent scheduled arguments for July 10, 2025.  I wanted to offer a bit of a preview of these upcoming oral arguments.

In 2020, Sonos sued Google for infringing its “zone scenes” patents, which cover techniques for grouping networked speakers into saved scenes (including overlapping groups of speakers). U.S. Patent Nos. 10,848,885 and 10,469,966.  A jury found Google liable and awarded $30 million in damages.  N.D.Cal. Judge William Alsup then took the unusual step of throwing out the verdict. Ruling on post-trial motions, Judge Alsup found the two patents unenforceable due to prosecution laches and invalid for lack of written description support. Sonos promptly appealed, and it is that appeal that is now pending.

Judge Alsup’s Decision: In his 55-page order, Judge Alsup found that Sonos had engaged in a “daisy chain” continuation strategy to keep its patent family alive for over 13 years. Sonos filed an initial provisional application in 2006, but did not present the asserted overlapping-scene claims for examination until 2019.  By then, Google and others had already developed and sold products implementing the overlapping-zone technology.


To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

U.S. Government: NPEs Deserve Injunctive Relief when their Patents Are Infringed

by Dennis Crouch

I learned of this significant development from Michael Shapiro's Bloomberg article reporting that the U.S. government took the unusual step of filing a statement of interest in a district court patent case, urging consideration of preliminary injunctive relief for a non-practicing entity (NPE). Radian Memory Systems LLC v. Samsung Electronics Co., No. 2:24-cv-1073 (E.D. Tex. 2025). The June 24, 2025 filing represents a notable intervention by both the Department of Justice Antitrust Division and the U.S. Patent and Trademark Office in what is part of its "America First Antitrust Enforcement" efforts.

Read the documents:


To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Seeds of Doubt: Sexual Reproduction and Territorial Limits in Plant Patent Law

by Dennis Crouch

Driscoll's operates as the world's largest berry company, controlling about one-third of the $6 billion U.S. berry market.  For the most part, however, Driscoll's does not grow the berries itself, but rather develops new varieties and then licenses their use through local farmers across dozens of countries. These agreements include anti-breeding provisions layered on top of their plant patent rights.

The defendant in this case, California Berry Cultivars, LLC (CBC), was founded by Dr. Doug Shaw, a former UC Davis professor who led the university's strawberry breeding program for decades.  In 2017 Shaw was found liable for infringing several UC Davis strawberry patents.  During the UC litigation, some documents apparently revealed that CBC had used Driscoll's varieties in their breeding programs.

Driscoll then sued Shaw and CBC for infringement of their patents.  PP 18,878; PP 22,247; and PP 23,400. Ultimately, however, the district court sided with the accused infringer -- granting summary judgment based upon Driscoll’s failed to produce sufficient evidence that patented plants were specifically used as maternal plants (i.e., the plant bearing the seeds) in the crosses, or that any seeds derived from patented plants were imported or used within the United States.


To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

USPTO Implements Penalty System for False Small/Micro Entity Status Claims

by Dennis Crouch

The USPTO has begun implementing a comprehensive enforcement system for false assertions of small entity and micro entity fee status. This is continuation of a process began under Director Vidal and implementation of statutory changes in 2023.  See Statutory Penalties for False Assertions or Certifications of Small and Micro Entity Status (June 2025).  The memo explains a notice-and-order process that removes applications from examination pending resolution and can result in significant financial penalties, examination delays, and patent term adjustment reductions for applicants who improperly claim small or micro entity status.

2023 legislation added a penalty provisions to 35 U.S.C. § 41(j) for small entity violations and § 123(f) for micro entity violations. A subsequent December 2024 amendment added explicit good faith exceptions to both penalty provisions.  The statute provides for a penalty of "not less than 3 times the amount that the entity failed to pay as a result of the false certification" and does not provide a timeline for enforcement - noting that the fine applies "whether the Director discovers the false certification before or after the date on which a patent has been issued."


To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Label-Plus Infringement: The Tinderbox Theory of Generic Inducement

by Dennis Crouch

The Supreme Court recently issued a Call for the Views of the Solicitor General (CVSG) in the “skinny label” inducement case, Hikma v. Amarin.  I expect the CVSG brief will be filed in late fall by the Trump-appointed Solicitor General (currently D. John Sauer).  Behind the scenes lobbying will be ongoing between  the Republican populists (seeking lower drug prices) and more traditional Republicans (promoting innovator businesses).

At issue is Hikma’s generic version of Amarin’s Vascepa (icosapent ethyl). Initially approved to treat severe hypertriglyceridemia (SH), Amarin subsequently secured FDA approval and patent protection for using Vascepa to reduce cardiovascular (CV) risk, a second indication constituting the majority of sales. Hikma launched its generic with an FDA approved “skinny label” explicitly carving out the patented CV. Doctors have a strong incentive to prescribe the generic version for the patented CV use due to significantly lower costs, leading to broader patient access. Additionally, insurers and pharmacy benefit managers actively encourage or require the use of lower-priced generics whenever available, further motivating physicians to prescribe generic alternatives for patented indications.  We also know the unpatented SH use is closely related to the patented CV use.  Severe hypertriglyceridemia (very high triglyceride levels) typically coincides with increased cardiovascular risk.

Background Materials:

Amarin’s infringement lawsuit was initially dismissed by the district court, but the Federal Circuit reversed, holding that Amarin plausibly alleged induced infringement by Hikma. Despite the skinny label, the court pointed to Hikma’s statements describing its product as a “generic version” of Vascepa, press releases citing total sales dominated by the patented use, and removal of certain disclaimers in its label, concluding that collectively these actions could actively encourage infringement by healthcare providers.

This scenario exemplifies the “label-plus” theory of inducement, wherein a generic drug’s label alone, even if it suggests infringing use, cannot constitute infringement because it falls within a congressionally authorized regulatory scheme. However, when a generic label closely aligns with an infringing use and is combined with additional active steps, inducement liability may arise. In my view, the label itself is not part of the active step, but instead creates the underlying fragile conditions that make it easy to induce infringement. In Hikma’s case, Federal Circuit concluded these active steps involved explicitly highlighting parallels to the branded drug Vascepa—such as marketing it as a “generic version” and emphasizing sales data strongly associated with the patented cardiovascular use—while omitting any explicit mention of the label’s carve-out.  Note here that this was all at the motion-to-dismiss stage of the case; Amarin has not yet proven infringement but has alleged enough to allow the case to proceed into discovery. (more…)

USPTO Discontinues Accelerated Examination Program for Utility Applications (Design Patent Rocket Docket is also Suspended)

by Dennis Crouch

The USPTO is discontinuing its Accelerated Examination program on July 10, 2025.  The program has received fewer than 100 petitions in recent years, compared with 10,000+ Track One prioritized examination requests.  The USPTO anticipates further raising the annual limit on Track One requests in 2025.  The USPTO also recently terminated the Climate Change Mitigation Pilot Program on January 28, 2025. See Discontinuation of the Accelerated Examination Program for Utility Applications, 90 Fed. Reg. 24324 (June 10, 2025).

The Accelerated Examination program allowed applicants to advance their applications out of turn by filing a petition to make special along with a pre-examination search and examination support document.  The program was designed to provide expedited examination for applicants willing to invest significant effort in preparing detailed examination support materials, including prior art searches and claim charts mapping the prior art to each pending claim.  However, the program’s popularity plummeted following the introduction of Track One prioritized examination in 2011.  Unlike Accelerated Examination, Track One requires only payment of a fee—currently $4,200 for large entities—without the burden of preparing examination support documents or conducting pre-examination searches. (more…)

Prosecution Laches from Woodbridge to Sonos: A 170-Year Continuation?

By Dennis Crouch,

I did a double-take earlier this week as I read the 1923 Supreme Court case of Woodbridge v. U.S., 263 U.S. 50, 44 S.Ct. 45. Although the case was decided after WWI, the facts center on a cannon projectile patent originally filed in 1852 – well before the U.S. Civil War.  The 70 year saga involved the inventor’s prolonged quest for a patent (and later for compensation). The Supreme Court’s ultimate decision, delivered by the former U.S. President and Chief Justice Taft, planted the seeds for what we now call prosecution laches – the equitable doctrine barring patents obtained after unreasonable, prejudicial delay in prosecution.


To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.