EcoFactor v. Google: Quick Review of Oral Arguments
The Federal Circuit recently heard oral arguments in the much-anticipated en banc review of EcoFactor, Inc. v. Google LLC, a case focusing on how courts evaluate expert testimony on patent damages. And, in particular, when a court should step-in to bar expert testimony that does not have sufficient factual basis for its conclusions. The arguments focused on whether EcoFactor's damages expert improperly derived royalty rates from license agreements that contained performative non-binding "whereas" clauses stating EcoFactor's belief about rates, while the operative provisions specified lump-sum payments. It seems clear to me that these provisions were added as elements of the patentee's smaller license agreements in order to later be used in larger cases, such as the one against Google.
Judge Alan Albright (W.D.Tex.) admitted testimony from EcoFactor's damages expert, David Kennedy, who derived a per-unit royalty rate from three prior EcoFactor settlement agreements to calculate a $20 million damages award against Google for infringing EcoFactor's smart thermostat patent, U.S. Patent 8,738,327.
EcoFactor v. Google: Listen Live This Morning
EcoFactor v. Google is the Federal Circuit’s first en banc utility patent case in years. The court will beholding oral arguments this morning, starting at 10:00 am Eastern.
- Listen here: https://www.youtube.com/watch?v=lwEZ2MlyOv8
- Ginger Anders (Google) will face off against Brian Ledahl (EcoFactor) before 10 members of the Court of Appeal. (Judge Newman is being excluded, and Judge Cunningham is not on the roster.)
The case generally relates to a district court judge’s gatekeeper role to prevent the Jury from hearing less-than-stellar expert testimony. Early briefing in the en banc case was a bit scatter shot, and the court released an precedential statement reiterating that the rehearing en banc is “limited to addressing the district court’s adherence to Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), in its allowance of testimony from EcoFactor’s damages expert assigning a per-unit royalty rate to the three licenses in evidence in this case.”
Federal Circuit Rejects “Once Generic, Always Generic” Rule in Trademark Dispute Between Whiskey Makers
by Dennis Crouch
Bullshine Distillery LLC v. Sazerac Brands, LLC, 2023-1682 (Fed. Cir. March 12, 2025)
In an interesting trademark decision, the Federal Circuit has clarified that terms once considered generic do not necessarily remain permanently unregistrable. provides important guidance on genericness timing and addresses a question of first impression in trademark law.
The case involves two alcohol producers:
- Bullshine Distillery sought to register “BULLSHINE FIREBULL” for alcoholic beverages;
- Sazerac, owner of “FIREBALL” branded cinnamon whiskey, and opposed the registration claiming likelihood of confusion.
Bullshine counterclaimed seeking cancellation of Sazerac’s marks, arguing “fireball” was generic for spicy cinnamon-flavored alcoholic drinks. The Trademark Trial and Appeal Board (TTAB) denied both parties’ claims, finding FIREBALL was not generic either at registration or the opposition trial, and determining there was no likelihood of confusion between the marks. Both parties appealed. The Federal Circuit, in an opinion by Chief Judge Moore, affirmed the TTAB decisions in both cases.
Convergence: Island IP Points to Wave of Rule 36 Petitions
What Does it Mean to Prove Prior Art Date by a Preponderance of the Evidence?
President Trump Formally Nominates John Squires as USPTO Director
by Dennis Crouch
President Trump has formally nominated John A. Squires to serve as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. The White House announced the nomination on Tuesday, and the Senate received it on Monday, March 10, referring it to the Committee on the Judiciary. The nomination confirms reporting by Dani Kass at Law360 from mid-February that identified Squires as the likely pick.
Squires currently serves as a partner at Dilworth Paxson LLP and brings substantial intellectual property experience to the role, including a nine-year tenure as Chief IP Counsel at Goldman Sachs (2000-2009). He has particularly focused on emerging technologies including artificial intelligence, blockchain, fintech, and cybersecurity. In addition though, Squires holds chemistry degree from Bucknell. According to reports, Squires beat out several other candidates for the role, including acting USPTO Director Coke Morgan Stewart; Intel's intellectual property policy leader Vishal Amin (who served as IP czar during Trump's first administration); former chief counsel for the Senate subcommittee on IP under Sen. Thom Tillis (R-N.C.) Brad Watts; and Pillsbury Winthrop Shaw Pittman LLP partner Bill Atkins.
Method Claims can Cover an Entire Process Flow – Including All Conditional Branches
Descriptive or Highly Descriptive? The Federal Circuit Reviews the iVoters vs iVoterGuide Trademark Dispute
Back to the Classics: Importing Limitations from the Specification into the Claims
by Dennis Crouch
The fine line between construing claims in light of the specification and improperly importing limitations from the specification represents one of patent law's most persistent interpretive challenges. The Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) established that while claims "must be read in view of the specification," courts must avoid "reading a limitation from the specification into the claim" absent express definition (lexicography) or disavowal.
In IQRIS Technologies LLC v. Point Blank Enterprises, Inc., 2023-2062 (Fed. Cir. Mar. 7, 2025), the Federal Circuit has vacated and remanded a S.D. Fla. grant of summary judgment of noninfringement on this issue, finding that the district court's claim construction improperly limited the term "pull cord."
The case centers on two IQRIS patents, US7814567 and US8256020, which share a common specification and relate to quick release systems for tactical vests worn by soldiers, law enforcement officers, and first responders. The patent propose a "pull cord" that actuates a release hook to detach portions of the vest.
Point Blank and National Molding were accused of infringement based on their "Quad Release" and "Evil Twin" quick-release systems. Both systems have use triggers that the user pulls or flips, that then actuate "Bowden" cables (similar to bicycle brake cables) to release the vest. One example of this trigger is shown above.
Federal Circuit offers Another Important Expansion of the Domestic Industry Requirement for USITC Jurisdiction
by Dennis Crouch
The United States International Trade Commission (USITC or ITC) operates as an independent, quasi-judicial federal agency the mission of safeguarding US domestic industries from injury caused by foreign imports. This is a protectionist agency. In the patent context, the ITC exercises its authority under Section 337 of the Tariff Act of 1930, which prohibits the importation of articles that infringe valid U.S. patents. Unlike district courts, the ITC cannot award monetary damages but instead provides exclusion orders that block infringing imports at the border and cease-and-desist orders that prevent domestic sales of previously imported infringing products. These orders are then enforced by US Customs and Border Protection (CBP), a branch of Homeland Security. The ITC is attractive to patent holders because of its relatively expeditious "target date" of 16-18 months from institution to final determination (compared to multi-year district court proceedings), its experienced Administrative Law Judges who frequently handle patent matters, the difficulty respondents face in staying ITC investigations during parallel PTAB trial proceedings, and, as mentioned above, the availability of injunctive relief (via exclusion order) despite eBay.
One measure Congress took to ensure the ensures stays on-mission is through the "domestic industry" requirement. Before the ITC can block infringing imports, the patent holder must to show the existence of a domestic industry "relating to the articles protected by the patent." 19 U.S.C. § 1337(a)(2). This requirement has two components: the "economic prong" and the "technical prong" that we'll dig into later.
When is Transnational Activity Sufficiently Domestic: The Federal Circuit's recent decision in Lashify highlights an ongoing situation with regard to domestic industry. Lashify, Inc. v. ITC, No. 23-1245 (Fed. Cir. Mar. 5, 2025). Lashify designs its fake eyelash products in the U.S., but manufactures them abroad, and the question is when domestic non-manufacturing activity is enough to satisfy the domestic industry requirement.
Estoppel Timing and Procedural Traps in Patent Challenges
by Dennis Crouch
In February 2021, Gesture Technology sued several companies, including Apple, LG Electronics, and Google, for infringing its U.S. Patent No. 7,933,431. The patent, which expired in July 2020, covers technology for using cameras to detect user gestures as input for controlling handheld computing devices. Four IPR petitions followed:
- Unified Patents filed on May 14, 2021. IPR2021-
00917; - Apple filed on May 21, 2021. IPR2021-00920;
- LG Electronics and Google later filed "nearly identical" petitions that were joined with Apple's IPR. IPR2022-00091 and IPR2022-00359.
The PTAB instituted the IPRs and ultimately came out with a mixed result - cancelling most of the claims, but leaving a couple standing (claims 11 and 13). On appeal, the Federal Circuit has now affirmed. Apple Inc. v. Gesture Technology Partners, LLC, No. 23-1475 (Fed. Cir. Mar. 4, 2025) (precedential); Gesture Technology Partners, LLC v. Unified Patents, LLC, No. 23-1444 (Fed. Cir. Mar. 4, 2025) (non-precedential). In the pair of opinions, both authored by Judge Prost, the court focused both on procedural IPR issues as well as substantive patent law issues. In this post, I focus mainly on the court's explanation of the obviousness standards, claim construction under §112 ¶6, IPR jurisdiction over expired patents, and IPR estoppel. The Federal Circuit explanation here makes sense except for its analysis of estoppel, which comes at the bottom of the post.
USPTO Withdraws Biden Era AI Strategy
PTAB Bar Association Advocates for Stability Amid USPTO Turmoil
The Last Word: ParkerVision’s Reply Brief Makes Final Push for Supreme Court Review of Rule 36
Second-Guessing the Jury: The Federal Circuit’s Flawed Take on Enhanced Damages in Halo v. Pulse
OpenEvidence v. Pathway: The Legal Battle Over AI Reverse Engineering
Guest Post by Professor Camilla Hrdy (Rutgers Law)
Can generative AI models like ChatGPT be “reverse engineered” in order to develop competing models? If so, will this activity be deemed legal reverse engineering or illegal trade secret misappropriation?
I have now written a few articles exploring this question, including Trade Secrecy Meets Generative AI and Keeping ChatGPT a Trade Secret While Selling It Too. But when I first asked this question a year and a half ago, I was getting responses purely in the negative. I asked a panel at a trade secret conference at Georgetown in 2023, “Can ChatGPT be reverse engineered?” Several members of the panel laughed. I would talk to AI experts, and the answer I got was along the lines of: “it’s not going to happen.”
But one of my students, Devin Owens at Akron Law, who has both a patent law and a computer science background, insisted to me that reverse engineering was possible using “model extraction attacks.” A model extraction attack entails imputing a massive number of queries into a “target AI model” and using the target’s responses to train a new model that mimics the original’s behavior and functionality. Devin wrote a student note about this, arguing that AI models are so vulnerable to extraction attacks that they can’t really be “owned” by anyone.
Now it seems clear that at least partial reverse engineering of generative AI models is indeed possible, and of increasing concern to AI developers. (more…)
The Fintiv Pendulum Swings Again: More Discretionary Denials Coming Soon
The pendulum of the mind
alternates between sense and nonsense,
not between right and wrong.
- Carl Jung (Memories, Dreams, Reflections)
By Dennis Crouch
In a significant policy shift, Acting USPTO Director Coke Stewart has rescinded the June 21, 2022, Vidal memorandum that had significantly curtailed discretionary denials of PTAB post-grant proceedings. This rescission signals a potentially dramatic return to broader PTAB discretion in denying institution of inter partes reviews (IPRs) in cases with parallel district court litigation. I believe we can expect a significant uptick in discretionary denials of IPR institution petitions. And, patent holders in district court will be looking for ways to quickly move cases forward in order to provide evidence that IPR denial is appropriate.
The tersely worded announcement from the USPTO simply directs parties to once again rely on PTAB precedent for guidance, specifically highlighting the precedential PTAB decisions of Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) and Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). The announcement further states that any portions of PTAB or Director Review decisions relying on the now-rescinded Vidal Memorandum shall not be binding or persuasive.
Since its creation under the AIA, the PTAB has rapidly established itself as America's most active patent litigation forum -- and the only one that is effectively risk-free for patent challengers. Before the AIA created the IPR system, district courts rarely invalidated patents on obviousness grounds because of the doctrine's technical complexity that often went beyond the span of generalist federal judges and juries. PTAB judges are hired for their willingness and ability to dig deeply into complex obviousness arguments involving the combination of multiple references. Over the past decade, the PTAB has invalidated tens of thousands of patent claims as obvious. To put this in perspective, I am fairly confident the PTAB has invalidated more patent claims on obviousness grounds in its short life than all federal courts combined since the founding of our patent system in 1790. AIA Trials have been a huge shock to the patent system -- a shock that has almost entirely favored patent challengers. Thus, Director Stewart's new policy change is important as it is likely to redirect access to this powerful alternative forum.
Ninth Circuit Rejects Patent Misuse Defense in Minimum Royalty Dispute, Setting Up Potential Supreme Court Review
The USPTO’s Innovation Double Standard: Which Diversity Initiatives Survive
by Dennis Crouch
I sometimes have difficulty following doublethink. The recent implementation of the Republican Administration's executive orders on diversity initiatives has created a nuanced and seemingly contradictory landscape in federal agencies, including the USPTO.
In January 2025, the White House issued executive orders "Ending Radical And Wasteful Government DEI Programs And Preferencing" and "Ending Illegal Discrimination and Restoring Merit-Based Opportunity." These orders were followed by a February 5, 2025 memorandum from the Office of Personnel Management providing additional guidance on implementation. At the same time, the White House has repeatedly offered statements and other executive actions that focus particularly on protecting and "defending women."
The USPTO's implementation response has been notably selective.