The NYIPLA Brief: Advocating for Patent Term Adjustments

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by Dennis Crouch

The Federal Circuit’s 2023 decision in In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023) has set the stage for a potentially significant Supreme Court case on the interplay between the Patent Term Adjustment (PTA) statute, 35 U.S.C. § 154(b), and the judicially-created doctrine of obviousness-type double patenting (ODP). Cellect is now seeking certiorari, and the New York Intellectual Property Law Association (NYIPLA) has stepped in with an amicus brief supporting the petition, arguing that the case presents “questions of exceptional importance.” Brief for New York Intellectual Property Law Association as Amicus Curiae Supporting Petitioner at 23, Cellect, LLC v. Vidal, No. 23-1231 (U.S. May 28, 2024). (more…)

Celebrity Names and Trademark Claims: Insights from the Hobbs Winery Case

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by Dennis Crouch

The Federal Circuit’s recent decision involving Paul Hobbs and Hobbs Winery raises a number of important issues for anyone investing in celebrities or influencers.  In the case, early investors in Hobbs Winery were unable to prevent Mr. Hobbs from using his name in other wine ventures, even though a registered mark on PAUL HOBBS was owned by Hobbs Winery. This case was decided on statutory grounds – with a holding that minority owners in a company are not authorized to bring a TM cancellation to protect a mark held by the company.  This is an important decision because it prevents the TTAB from being used to settle internal corporate management issues. (more…)

WIPO Adopts Treaty on Intellectual Property, Genetic Resources, and Associated Traditional Knowledge

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by Dennis Crouch

For many years, there have been concerns about “biopiracy” – the misappropriation of genetic resources (GR) and traditional knowledge (TK) from indigenous peoples and local communities, often in developing countries. Biopiracy involves researchers or companies obtaining GR or TK, using it to develop commercial products like medicines, and obtaining patents without adequately compensating or getting permission from the original TK/GR holders.

Some well-known examples of alleged biopiracy include: patents on wound-healing properties of turmeric, which had long been known in India; patents related to neem tree extracts, also used for centuries in India; Japanese and American patents on extracts of the African “Hoodia” cactus, traditional used by San people to stave off hunger; and a US patent on the Amazonian “ayahuasca” vine, considered sacred and used in ceremonies by indigenous peoples. You can see a Sean Connery look-alike doing this in my image below.

World Intellectual Property Organization (WIPO) member states have adopted a groundbreaking new treaty addressing patent rights in the context of these genetic resources and traditional knowledge associated with genetic resources. The WIPO Treaty on Intellectual Property, Genetic Resources, and Associated Traditional Knowledge, finalized on May 24, 2024, (more…)

USPTO Adapts to CAFC’s New Guidelines: What Design Patent Examiners Need to Know

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by Dennis Crouch

On May 22, 2024, the day after the Federal Circuit’s en banc LKQ v. GM decision, the USPTO issued a memorandum to its examiners providing updated guidance and examination instructions in light of the court’s overturning of the long-standing Rosen-Durling test for determining obviousness of design patents. The memo, signed by USPTO Director Kathi Vidal, aims to immediately align USPTO practices with the more flexible approach outlined by the Federal Circuit, which eliminated the rigid requirements that: (1) a primary reference be “basically the same” as the claimed design, and (2) secondary references be “so related” to the primary reference that features in one would suggest application to the other.  This is a major shift in examination practice for design patents so it will be important to watch the developments to see whether the office ramps up design examination. (more…)

Speck v. Bates: Federal Circuit’s Two-Way Test for Pre-Critical Date Claims Limits Belated Interferences and Derivation Proceedings

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by Dennis Crouch

Speck v. Bates, No. 23-1147 (Fed. Cir. May 23, 2024)

In likely one of the last interference proceeding appeals, the Federal Circuit has applied a “two-way test” to determine whether pre-critical date claims and post-critical date claims are “materially different” under pre-AIA 35 U.S.C. § 135(b)(1). The court found that Bates’ post-critical date claims in its U.S. Patent Application No. 14/013,591 were time-barred because they were materially different from Bates’ pre-critical date claims.

Although the decision is based upon an interference proceeding, the same provision is found within the new version of 135(b) that covers (more…)

Decoding Patent Ownership beginning with Core Principles

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by Dennis Crouch

In a recent decision, the Federal Circuit vacated a district court’s grant of summary judgment that an inventor, Dr. Mark Core, had automatically assigned a patent associated with his PhD thesis to his then-employer and education funder TRW.  Core Optical Techs., LLC v. Nokia Corp., Nos. 23-1001 (Fed. Cir. May 21, 2024). The key issue was whether Dr. Core developed the patented invention “entirely on [his] own time” under his employment agreement. The majority opinion written by Judge Taranto and joined by Judge Dyk held the contract language was ambiguous on this point and remanded for further factual development to determine the parties’ intent.  Judge Mayer dissented.

Although not discussed in the court’s decision, the appellant brief includes a suggestion that the Federal Circuit should “narrow or overrule” the automatic assignment law seen in FilmTec Corp. v. Allied Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991), and its progeny (more…)

Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness

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by Dennis Crouch

In a highly anticipated en banc decision, the Federal Circuit has overruled the longstanding Rosen-Durling test for assessing obviousness of design patents. LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, slip op. at 15 (Fed. Cir. May 21, 2024) (en banc). The court held that the two-part test’s requirements that 1) the primary reference must be “basically the same” as the claimed design, and 2) any secondary references must be “so related” to the primary reference that features from one would suggest application to the other, “impose[] limitations absent from § 103’s broad and flexible standard” and are “inconsistent with Supreme Court precedent” of both KSR (2007) and Whitman Saddle (1893). Rejecting the argument that KSR did not implicate design patent obviousness, the court reasoned that 35 U.S.C. § 103 “applies to all types of patents” and the text does not “differentiate” between design and utility patents.  Therefore, the same obviousness principles should govern.  This decision will generally make design patents harder (more…)

Cellect or Reject? SCOTUS Asked to Consider Fate of ODP Doctrine

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by Dennis Crouch

In its new petition for certiorari in Cellect LLC v. Vidal, No. __ (U.S. May 20, 2024), Cellect argues that the Federal Circuit erred in upholding the PTAB’s (PTAB) invalidation of Cellect’s four patents based on the judicially-created doctrine of obviousness-type double patenting (ODP). The key issue is whether ODP can cut short the patent term extension provided by the Patent Term Adjustment (PTA) statute, 35 U.S.C. § 154(b). Meanwhile, Dir. Vidal is looking to extend the power of ODP via rulemaking. This is an important case coming at an important time.  (more…)

Federal Circuit Limits Defendant Attorneys’ Fees Awards for IPR Expenses

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by Dennis Crouch

The Federal Circuit’s recent decision in Dragon Intellectual Property LLC v. DISH Network L.L.C. affirms the district court’s grant of attorneys’ fees to the successful defendants, while denying recovery of fees incurred solely in the IPR proceedings and from plaintiff’s counsel.  The case offers important legal conclusions for attorney fees in cases that involve both district court and IPR litigation.

The district court found the case exceptional under § 285 due to the substantive weakness of Dragon’s infringement position, including clear prosecution history disclaimer precluding infringement by the accused products. A key issue on appeal was whether § 285 allows recovery of fees incurred in parallel IPR proceedings. The majority held that when a defendant voluntarily pursues an invalidity challenge through IPR, the fees incurred solely in the IPR are not recoverable. The court distinguished the facts from its prior decision in PPG Industries v. Celanese Polymer, where the defendant’s participation in reissue proceedings was not optional because the plaintiff had initiated them.

The majority also held that § 285 does not permit prevailing defendants to recover fees from plaintiff’s counsel. The statute’s silence on counsel’s liability, in contrast to other statutes and rules explicitly allowing recovery from attorneys, indicated that Congress did not intend § 285 to extend liability to counsel.

However, Judge Bencivengo, sitting by designation at the Federal Circuit, dissented in part, arguing that in exceptional cases based on the complaint being objectively baseless from the start, district courts should have discretion to award defendants all reasonable fees, including those incurred in an IPR that resolved invalidity defenses asserted in response to the baseless complaint. The dissent viewed the IPR as a substitute for the stayed district court litigation on invalidity, rather than a truly parallel proceeding.

While 35 U.S.C. § 285 does not permit holding plaintiff’s counsel jointly and severally liable for attorneys’ fees, other statutes and rules may allow for the recovery of fees from attorneys in certain circumstances.  In this case the court specifically points to two examples:

  1. 28 U.S.C. § 1927, which states that “[a]ny attorney . . . who so multiplies the proceedings in any case unreasonably and vexatiously may be required by the court to satisfy personally the excess costs, expenses, and attorneys’ fees reasonably incurred because of such conduct.”
  2. Federal Rule of Civil Procedure 11, which “expressly allows the court to impose monetary sanctions on attorneys and law firms, which can include ‘all of the reasonable attorney’s fees and other expenses’ incurred as a result of sanctionable conduct.”

The court notes that these statutes and rules “explicitly allow parties to recover costs and fees from counsel” and are “more appropriate vehicles to recover fees from counsel” compared to § 285, which is silent on the issue of counsel’s liability for fee awards.

Discussing Stern’s “Myth of Nonrivalry” for Patent Law

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By Dennis Crouch

Two people cannot wear the same sock (at least at the same time) but they can think the same thought, sing the same song, or undergo the same medical procedure. As Thomas Jefferson famously put it, part of the ‘peculiar character’ of an idea is that ‘no one possesses the less, because every other possesses the whole of it.’

This quote from Professor James Stern’s new article introduces the conventional view that ideas and information are nonrivalrous, in contrast to the rivalrous nature  of tangible goods.  As an idea based creation, intellectual property’s nonrivalrous nature has always placed it on airy ground as a statutory creation rather than a natural law.  The rivalrous nature of real and personal property has justified property regimes, but for IP we have always needed additional justification and additional limits because propertization creates artificial scarcity.  But Stern’s new article bucks the conventional wisdom and instead argues that the nonrivalry of IP is a myth. James Y. Stern, Intellectual Property and the Myth of Nonrivalry, 99 Notre Dame L. Rev. 1163 (2024).  Although many economists assume that more information is better, Stern makes clear that is not always true. He writes “it seems a safe bet that there are substantial numbers of people who would prefer the human race had never come up with such novelties as land mines, cigarettes, cargo shorts, Jet Skis, genetically modified foods, anabolic steroids, robocallers, date-rape drugs, subwoofers, Ponzi schemes, and crystal meth, to name just a few.”

Stern’s article challenges the widely held belief that information goods are inherently nonrivalrous, and that this characteristic distinguishes them from tangible property. He argues that the concept of rivalry, properly understood, encompasses not just conflicts between two active uses of a resource, but also conflicts where one person wants to use a resource and another simply wants that person to refrain from doing so. This broader conception of rivalry in terms of wants and desires, Stern contends, is relevant to many situations involving intellectual property.  One Stern’s key insights is that preferences to control and restrict access to ideas and information are ubiquitous, extending well beyond the domain of intellectual property law. He points to examples such as privacy laws, testimonial privileges, classified information and state secrets laws, and the Federal Witness Protection Program as evidence that conflicts over controlling access to information are common and demonstrate the potential for rivalrousness when it comes to ideas and information.  This insight serves to challenge the notion that the nonrivalrous nature of information goods necessarily means that granting exclusive rights over them is unjustified or socially harmful.

The article also examines how the characterization of intellectual property rights as “monopolies” has shaped legal doctrine, such as the Supreme Court’s reliance on the “public rights doctrine” to uphold adjudication of patent validity in administrative proceedings. Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365 (2018). Stern suggests that this rhetoric traces partly to the view that information goods differ fundamentally from physical property due to their supposed nonrivalry.

Although the article is not patent focused, Stern’s arguments have significant implications for patent law by undermining a key justification for limiting the scope and strength of patent protection. If rivalrousness is possible for patented inventions, then the case for treating patents as a form of property is stronger.  An example application here could be eBay and the role of damages and injunctions in patent cases.  Similarly, with respect to patent term, Stern’s article raises questions about the appropriate duration of patent rights. If the justification for time-limited patent rights rests partly on the assumption that inventions are nonrivalrous and therefore do not require permanent exclusivity, then recognizing the potential for rivalrousness in the use of inventions may suggest a need to reconsider the optimal term length. At the same time, concerns about dynamic efficiency and the importance of promoting follow-on innovation may still counsel in favor of limiting the duration of patent rights, even if some degree of rivalrousness is present.  Consider also double patenting, that is designed to ensure that the public should have access to the invention upon expiration of the patent. See In re Longi, 759 F.2d 887 (Fed. Cir. 1985).

Although I have not fully bought into his ideas, professor Stern has done a great job challenging us to rethink core aspects of intellectual property law.  Many courts, especially members of the Supreme Court, have long seen intellectual property as inherently suspect without any inherent value other than the incentive to innovate.  Stern’s article grapples with this argument that and highlights the need for a more nuanced understanding of the interests at stake.

USPTO ARP Panel Restores MPF Sanity, but Still Rejects Xencor’s Claims

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by Dennis Crouch

In a new Appeals Review Panel (ARP), the USPTO has clarified the Office’s position on means plus function claims — explaining that the specification need not describe statutory equivalents to satisfy the written description requirement.  The outcome here shows value for the intentional use of means-plus-function limitations as a mechanism for expanding patent scope when genus claims are otherwise unavailable.

Still the court maintained the written description rejection on other grounds — finding that the broad preamble “method of treating a patient” to be limiting and not adequately supported by the specification.  Perhaps on remand the patentee will amend the preamble to instead claim a “means of treating a patient.”  (more…)

Navigating the USPTO’s Regulatory Wave: Key Comment Deadlines for Summer 2024

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by Dennis Crouch

Over the past two months, the USPTO has issued an unusually large number of public comment requests related to various proposed rules and procedure changes. This wave of RFCs includes significant proposals aimed at adjusting patent fees for fiscal year 2025, refining terminal disclaimer practices, and addressing the impact of artificial intelligence on prior art and patentability. The agency is also seeking feedback on formalizing the Director Review process following Arthrex and various changes to IPR proceedings, including discretionary review. And there’s more… (more…)

The Legacy of A.B. Dick and Motion Picture Patents: How these 100+ Year Old Ruling Reshaped Patent Law

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by Dennis Crouch

I see the US Supreme Court’s 1912 decision in Henry v. A.B. Dick Co. as a major turning point in American patent and antitrust law. 224 U.S. 1 (1912).  The Court’s 4-3 decision favored the patentee and allowed the patent owner to place restrictions on the use of its patented product even after sale. But, that decision sparked a major reform effort.  Just a few years later, the Supreme Court reversed course in Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917), effectively overruling A.B. Dick and signaling a new largely anti-patent-monopoly era.

In A.B. Dick, (more…)

PREP Act Immunity and its Silent Treatment of Intellectual Property Rights

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by Dennis Crouch

Although the Federal Circuit has dismissed Copan v. Puritan on jurisdictional grounds, I use the case to talk through COVID-19 immunity under the PREP Act, and whether patent infringement is included within its scope. 

The 2005 Public Readiness and Emergency Preparedness (PREP) Act provides immunity for (more…)

How Chestek Impacts USPTO’s Rulemaking Authority and the Push to Restore

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by Dennis Crouch

The Federal Circuit’s recent decision in Chestek v. Vidal opened the door to extensive USPTO rulemaking that entirely avoids the notice and comment process required by the Administrative Procedure Act (APA). In re Chestek PLLC, 92 F.4th 1105 (Fed. Cir. 2024).  Chestek has now filed her petition for writ of certiorari to the U.S. Supreme Court asking: Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2).

(more…)

Gorsuch’s “Dead Letter” Prophecy: Hearst v. Martinelli may Settle Copyright’s Discovery Rule following the Warner Chappell Avoidance

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by Dennis Crouch

The pending Hearst v. Martinelli case may be the “dead letter” offered by Justice Gorsuch. This time, the Supreme Court might actually decide whether the “discovery rule” applies to the Copyright Act’s statute of limitations.

Copyright law provides (more…)

Terminal Disclaimers: A Growing Concern in Patent Practice

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by Dennis Crouch

In a recent post, I discussed major proposed changes to terminal disclaimer practice that could significantly impact the landscape of patent law. Today, I want to briefly note a trend that underscores why these proposed changes are more pertinent than ever: the increasing percentage of U.S. utility patents bound by a terminal disclaimer. (more…)

Major Proposed Changes to Terminal Disclaimer Practice (and You are Not Going to Like it)

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by Dennis Crouch

The USPTO recently issued a notice of proposed rulemaking that could significantly impact patent practice, particularly in the realm of terminal disclaimers filed to overcome non-statutory double patenting rejections.  Under the proposed rule, a terminal disclaimer must include an agreement that the patent will be unenforceable if it is tied directly or indirectly to another patent that has any claim invalidated or canceled based on prior art (anticipation or obviousness under 35 U.S.C. 102 or 103). The new enforceability requirement would be in addition to the existing provisions that require a terminal disclaimer to match the expiration date of the disclaimed patent to the referenced patent and promise enforcement only during common ownership.

This is a major proposal that fundamentally alters the effect of terminal disclaimers.  (more…)