Fuel of Interest, Fire of Genius: Lincoln’s Patent Philosophy

Patent

by Dennis Crouch

Abraham Lincoln holds a unique distinction as the only U.S. President to hold a patent. U.S. Patent No. 6469, granted in 1849, covered a device for lifting riverboats over shallow waters using bellows and air chambers. Lincoln also litigated patents in his role as a lawyer.  His experience with the patent system informed what would become one of the most quoted aphorisms in intellectual property law, delivered during Lincoln’s largely forgettable 1858 lecture on “Discoveries and Inventions.” In that lecture delivered in Bloomington, Illinois, Lincoln declared that the patent system “added the fuel of interest to the fire of genius, in the discovery and production of new and useful things.” IMO, this elegant formulation captured the fundamental economic theory underlying patent law.  Humans have natural creativity and genius that is always burning, but the material incentive of exclusive rights is often needed to spur innovation.

Lincoln’s lecture traced the evolution of human innovation from the biblical first human invention (fig leaf clothing) to the Industrial Revolution.  He specifically praised the U.S. Constitution’s Patent Clause as itself a “a great step in the progress of civilization.”

I have already intimated my opinion that in the world’s history, certain inventions and discoveries occurred, of peculiar value, on account of their great efficiency in facilitating all other inventions and discoveries. Of these were the arts of writing and of printing — the discovery of America, and the introduction of Patent-laws.

The speech does not delve into contemporaneous decisions such as O’Reilly v. Morse, 56 U.S. 62 (1854), that raised the concern of overclaiming and monopolizing a broad principle (or abstract idea). However, the “fire” metaphor may have been an intentional inversion of Thomas Jefferson’s earlier fire imagery. In his 1813 letter to Isaac McPherson, Jefferson argued that ideas are “like fire, expansible over all space, without lessening their density in any point” and thus should spread freely rather than be subject to “exclusive appropriation.” Jefferson’s fire metaphor emphasized the non-rivalrous nature of knowledge – that ideas, like flames, can be shared infinitely without diminishing the original source. (more…)

When 100 Years of Use is Not Enough

Patent

by Dennis Crouch

In July 2025, the Federal Circuit reversed a Trademark Trial and Appeal Board (TTAB) dismissal of a likelihood of confusion opposition in Sunkist Growers, Inc. v. Intrastate Distributors, Inc., No. 24-1212 (Fed. Cir. July 23, 2025), finding that substantial evidence did not support the Board's conclusion that the marks SUNKIST and KIST have sufficiently different commercial impressions to avoid consumer confusion.  The complete reversal appears to mean that KIST will be blocked from registration.

I am familiar with the SUNKIST brand based upon its popularity rise as part of my sugary childhood in the 1980s. When I started reading the decision, I thought KIST must be a new upstart, but then I saw that their bottles include the year "1929." As it turns out, both KIST and SUNKIST have surprisingly robust heritage -- both dating back about 100 years.  And both with with trademark registrations for soft drinks and soda syrups dating from the 1920s.

The KIST brand changed multiple times over the decades and ultimately, their old registrations were all abandoned in the 2000s for failing to file the required statements of use.  Under standard US trademark law, once a mark has been formally abandoned, later resumption of use does not resurrect the original priority date.

The new owners of KIST filed their re-registration efforts in 2019, both with the word mark KIST and also a very simple stylized block letters shown here.

Interestingly, despite KIST's historical longevity, the evidentiary record from recent trademark litigation did not identify any sales between 1970 and 2000.  This is important because SUNKIST had relaunched its brand in the mid 1970s and has operated continuously since then.  Thus, the case seems to operate from the framework that SUNKIST is the superior mark, and KIST can only be re-registered if there is no likelihood of confusion between the two marks in the minds of consumers.

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No CA Fed Jurisdiction in _This_ Arbitration Award Challenge

Patent

by Dennis Crouch

Since Gunn v. Minton (2013), the Federal Circuit has been quite shy about non-patent patent cases. These are cases where the cause of action is not something like infringement, but that still involve substantial patent law analysis.  The newest example is Acorda v. Alkermes (Fed. Cir. 2025) involving a petition to modify an arbitration award based upon patent law public policy issues. The Federal Circuit ultimately transferred the case to the Second Circuit for lack of jurisdiction, holding that because the petitioner had pleaded alternative non-patent grounds for relief alongside its patent law arguments, the patent law issue was not "necessarily raised" under Gunn's first prong—meaning the district court could have granted relief without resolving any substantial question of federal patent law. Acorda Therapeutics, Inc. v. Alkermes PLC, No. 2023-2374 (Fed. Cir. July 25, 2025).

This narrow holding allowed the court to sidestep broader questions about when patent law issues arising in arbitration contexts warrant Federal Circuit review, leaving practitioners and lower courts without clear guidance on the boundaries of Federal Circuit jurisdiction over patent-related arbitration disputes.

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The Services Problem That Undermines Crocs’ Textualist False Advertising Defense

Patent

by Dennis Crouch

A recent petition for certiorari in Crocs v. Dawgs asks the U.S. Supreme Court to clarify whether the Lanham Act's false advertising provision can reach a company's false claims that its product is patented. Crocs argues that the statute's prohibition on misrepresentations about a product's "nature, characteristics, [or] qualities" should be limited to tangible attributes and thus should not extend to intangible legal designations like patent status. I argue here that this interpretation creates a fundamental problem that Crocs appears to have overlooked: the same statutory language applies equally to services, which are inherently intangible and lack any tangible characteristics that could be misrepresented under Crocs' proposed framework. [Petition for a Writ of Certiorari][Appendix]

The case arises from a long-running legal battle between Crocs – maker of the eponymous foam clogs – and Double Diamond (known for “Dawgs” shoes) that began back in 2006 with a design patent infringement lawsuit.  The most recent battle grounds is a counterclaim by Double Diamond alleging false marketing under § 43(a) of the Lanham Act (15 U.S.C. § 1125(a)) -- particularly alleging that Crocs falsely marketed the its "Croslite" foam material as “patented,” “proprietary,” and “exclusive.”  In fact, the material was not patented and was essentially the same EVA foam many competitors use. Double Diamond contended that this misleading use of patent-related terms gave consumers the (false) impression that Crocs’ material was unique or superior.

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More Briefs in SAP and Motorola

Patent

In June 2025 SAP and Motorola each filed petitions for writs of mandamus asking the Federal Circuit to order the USPTO to reinstate the Vidal Memo safe‑harbors and to overturn Acting Director Coke Stewart’s decisions to vacate institutions of their inter partes review (IPR) petitions. I have been covering the cases on Patently-O:

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The Power of Unreviewability

Patent

by Dennis Crouch

The Federal Circuit in IGT v. Zynga Inc. affirmed the PTAB IPR final written decision finding patent claims obvious. In addition, the court refused another institution challenge — holding that the Agency’s use of “interference estoppel” is an aspect of institution decisions that are generally non-reviewable on appeal.  This decision reinforces my belief that the pending SAP and Motorola petitions will be denied.

To understand this case, we need to step back to 2003, when patent interference practice still governed priority disputes between competing inventors. IGT owned U.S. Patent No. 7,168,089 for gaming software authorization systems. When Zynga’s predecessor copied IGT’s published claims into its own application, the USPTO declared an interference in 2010. Zynga moved for judgment that IGT’s patent was obvious over certain prior art references (Carlson, Wells, and Alcorn).  Ultimately, the Board terminated the interference based upon a finding that Zynga’s application lacked adequate written description support for IGT’s claims. (more…)

Fungi, Bacteria and the U.S. Plant Patent Act

Patent

by Dennis Crouch

It was probably middle school biology where I learned that plants and fungi are classified in two separate kingdoms.  It wasn't until today that I learned why - despite their separate classification - both plants and fungi are protectable under the Plant Patent Act of 1930.

Now codified at 35 U.S.C. § 161, the Plant Patent Act adds a third form of U.S. patent, alongside utility (useful inventions) and design (ornamental designs) patents.  For a plant patent, the inventor must have invented or discovered and asexually reproduced a "distinct and new variety of plant." The provision expressly include "cultivated sports, mutants, hybrids, and newly found seedlings" but excludes "tuber propagated plant[s]" such as potatoes as well as plants simply found in the wild ("found in an uncultivated state").

But what about mushrooms and other fungi:

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Does US Innovation Drive the Dollar’s Global Dominance?

Patent

by Dennis Crouch

In their recent article, Professors Mauro Bambi and Sara Eugeni from Durham University (UK) propose an intriguing hypothesis connecting patent-driven innovation with the global dominance of reserve currencies, particularly the US dollar.  They look at Patent Cooperation Treaty (PCT) applications over the years, including high-value "triadic" patent families and argues that higher patenting activities significantly influence central banks' decisions to hold a particular currency as a reserve asset. Eugeni, Sara and Bambi, Mauro, Silicon Valley and the Greenback: Does US Innovation Fuel the Dollar's Global Dominance? (Working Paper from June 26, 2025).

Figure 1 from their paper (above) visualizes this correlation: as a country's share of PCTs increase, so too does the share of its currency in global reserves. 

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Federal Circuit Expands Prosecution History Estoppel to Simple Claim Cancellations in Colibri Heart Valve

Patent

by Dennis Crouch

In a decision that broadens the reach of prosecution history estoppel (and thus limits doctrine of equivalents), the Federal Circuit reversed a $106 million jury verdict in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC, No. 2023-2153 (Fed. Cir. July 18, 2025). The court held that prosecution history estoppel barred Colibri from asserting doctrine of equivalents infringement based solely on the cancellation of a broad claim during prosecution—even though the asserted claim itself was original and never amended. This represents a notable, but not surprising, expansion of estoppel doctrine beyond traditional claim amendments to encompass strategic claim cancellations that communicate narrowing to persons of ordinary skill in the art. [23-2153.OPINION.7-18-2025_2546584]

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Uncomfortable Truths: Prosecution History Disclaimer in Design Patents

Patent

Top Brand LLC v. Cozy Comfort Company LLC, 24-2191 (Fed. Cir. July 17, 2025)

The Federal Circuit has rejected Cozy Comfort's $15 million verdict -- finding that its hoodie design patent was not infringed.  D859,788.  The case turns on prosecution history - with a holding that the patentee had disclaimed aspects of the design when distinguishing the invention from the asserted prior art.

The image here shows the Top Brand accused design (left), Cozy Comfort's patented design (right), and the White prior art (middle).

After a three-week jury trial, Top Brand was found liable for both design patent and trademark infringement, with the jury awarding $15.4 million for design patent infringement and $3.08 million for trademark infringement of "THE COMFY" mark. The district court denied judgment as a matter of law, but the Federal Circuit reversed on both counts.

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In re SAP America: Sharpening the Dispute over PTAB Discretionary Denials

Patent

by Dennis Crouch

The Federal Circuit continues to grapple with fundamental questions surrounding the USPTO’s broad discretionary authority to deny Inter Partes Review (IPR) petitions.  Both implementation issues by former Director Vidal as well as the about-change by Acting Director Stewart.

In two recent posts, I discussed the pending In re SAP, 25-132 (Fed. Cir. 2025), mandamus action that challenge the "retroactive" actions by Director Stewart -- particularly rescinding the 2022 "Vidal Memo," which had provided explicit safe harbors for IPR petitions to avoid discretionary denials. SAP argues that Stewart’s reversal constitutes an unlawful retroactive policy shift, violates due process, and exceeds administrative authority. Several new briefs opposing mandamus have now been filed in the case, with the USPTO's response expected July 21, 2025, following an extension.

Supporting Mandamus:

Arguing Against Mandamus:

This dispute hinges upon the USPTO’s internal guidance documents governing discretionary denials of IPR petitions under the Fintiv framework, originally developed in PTAB precedent under Director Iancu (favoring patentees) and later modified by Director Vidal (favoring petitioners). SAP relied on Vidal’s 2022 guidance, which offered two clear safe harbors: (1) a broad Sotera stipulation in which petitioners agree not to pursue overlapping invalidity grounds in parallel litigation, or (2) a petition presenting a “compelling” case for invalidity. The rescission announced by Chief Judge Boalick in early 2025 withdrew these safe harbors and ultimately expanded upon the original NHK-Fintiv factors to include additional justifications for discretionary denials.  The new approach was then retroactively applying to pending petitions such as SAP’s that included a Sotero stipulation.  After initially meeting the standards set under Vidal’s memo, SAP’s petition was nevertheless denied under the revived, broader factors. The PTAB specifically rejected SAP’s stipulation as insufficient, stating that SAP could still raise "system" prior art defenses not covered by the stipulation in parallel district court litigation, thus undermining judicial economy and efficiency.

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Thinking back on Milburn and Secret/Springing Prior Art

Patent

by Dennis Crouch

In Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926) [46_S.Ct._324], the Supreme Court established what has expanded into foundational patent law principle: all disclosures in an issued patent (whether claimed or unclaimed)  serve as prior art against later filed patents, effective as of the earlier patent's filing date rather than its issue date. This doctrine of "springing prior art" emerged from a dispute over welding and cutting torch technology, where the Court held that John Whitford's asserted patent (US1028410) for an oxy-acetylene cutting apparatus was invalid because Clifford had, a few months earlier, filed a patent application that fully disclosed the same invention—even though Clifford did not claim the features patented by Whitford.  Justice Holmes, writing for a unanimous Court, reasoned that allowing Whitford to "profit by the delay" of the Patent Office in processing Clifford's application would undermine the fundamental requirement that a patentee must be the "first inventor." I wanted reach back to this old case to highlight how deeply the Milburn doctrine has influenced modern patent prosecution and litigation strategies. The principle of "springing prior art," articulated 99 years ago, now significantly shapes patent law practice.

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The Narrow Semantic Line on AAPA: Federal Circuit’s Latest Take in Shockwave

Patent

by Dennis Crouch

The Federal Circuit's decision in Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., No. 2023-1864 (Fed. Cir. July 14, 2025) makes good on the court's overly-semantic approach to defining the "basis" of inter partes review proceedings -- especially with reference to applicant-admitted-prior-art (AAPA).  Recall that under 35 U.S.C. § 311(b) IPRs can be filed "only on the basis of prior art consisting of patents or printed publications."

The court's approach in Shockwave turned on whether the petitioner labelled its prior art evidence as "basis" versus "reference."  In my opinion, this formalistic undermines the IPR system and suggests additional gamesmanship. Here, it produced what I see as an absurd result - where evidence supplying a claim limitation is not deemed a "basis" of the legal challenge.

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Timing is Everything: PTAB’s Renewed Reliance on Litigation Timelines and Patent Longevity

Patent

by Dennis Crouch

In 2025, the USPTO’s Acting Director Coke Morgan Stewart began implementing a new bifurcated and expanded process for PTAB trial institution decisions -- with a particularly enhanced focus on discretionary denials before a PTAB panel even considers the merits.  This past week, several dozen new discretionary denials were released. These new decisions primarily focus on two justifications for denial:

  1. The status of parallel litigation, especially the proximity of a scheduled district court trial to the PTAB’s projected final written decision date; and
  2. The “settled expectations” arising from a patent’s long time in force.

In each case, the decision states a holistic "totality of the evidence and arguments” approach, but in most cases these two factors were the keys.

Perhaps most notable among recent decisions is the Director’s increasing reliance on the concept of "settled expectations." This factor refers to the notion that patent owners and market participants have some reliance interest based upon the fact that the patent that has remained unchallenged for a significant period.

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En Banc Ineligibility Petition in Longitude Licensing v. Google

Patent

by Dennis Crouch

Before digging into this en banc petition, I just wanted to note that patent eligibility issues have been almost shockingly quiet over the past six months.  But, to me it feels something like a powder keg waiting to explode. While Acting Director Stewart has been incredibly active on other fronts since taking the helm in January 2025, she has remained notably silent on Section 101 reform initiatives. I believe there is some likelihood that this will change once John Squires is confirmed by the U.S. Senate -- given that he has already signaled support for patent eligibility reform measures like the Patent Eligibility Restoration Act (PERA).

Back to the case: In Longitude Licensing Ltd. v. Google LLC, No. 2024-1202 (Fed. Cir. Apr. 30, 2025), the Federal Circuit affirmed a N.D. Cal. dismissal of infringement claims under 35 U.S.C. § 101, holding Longitude’s asserted image processing patents were directed toward digital image processing.  Longitude’s patents (U.S. Patents Nos. 7,668,365, 8,355,574, 7,454,056, and 7,945,109) cover methods of identifying a primary object within an image and adjusting image characteristics based on the object’s properties. The panel, consisting of Judges Lourie, Dyk, and Chen, determined that representative Claim 32 of the ’365 patent recited only generic, functional limitations without adequately describing how these limitations achieved the purported technological improvements.

32. An image processing method comprising:

determining the main object image data corresponding to the main object characterizing the image;

acquiring the properties of the determined main object image data;

acquiring correction conditions corresponding to the properties that have been acquired; and

adjusting the picture quality of the main object image data using the acquired correction conditions;

wherein each of the operations of the image processing method is executed by an integrated circuit.

Longitude has now petitioned the Federal Circuit for rehearing en banc, asserting that the panel improperly isolated the claim language from the specification and ignored evidence that the claimed methods improved computer functionality itself. The en banc petition frames the question presented as whether courts may determine patent eligibility under § 101 by analyzing claim language alone, divorced from supporting specification evidence, particularly where the specification describes specific technological improvements. The Federal Circuit has shown some interest in the case - requesting responsive briefing from Google, which is due in Mid-July 2025. [Longitude Licensing En Banc Petition].

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Federal Circuit Wrestles with Prosecution Laches in Sonos v. Google

Patent

In 2020, Sonos sued Google in the N.D. of California, asserting two “zone scenes”  wireless speaker patents (US 10,848,885 and 10,469,966) that allow for overlapping groups of speakers. A jury found Google liable and awarded $30 million in damages. In an unusual move, District Judge William Alsup threw out the verdict in a 55-page post-trial order. He held the patents unenforceable for prosecution laches and invalid for lack of written description support. Judge Alsup found Sonos had engaged in a “daisy chain” continuation strategy to keep the patent family alive for over 13 years.  Although longer than average, this timeline is not long for a patent family recognized as valuable.  But, one quirk is that the particular “overlapping zone scene” claims  were not presented in claim form until 2019. And, they were added after Google began selling products with that feature. Judge Alsup also concluded that Sonos’s 2019 amendments were directed to new matter not supported by the original 2006–2007 applications -- i.e., lacking written description suport.  Without that priority claim, those earlier filings became anticipatory prior art to the later would-be continuation.

The appeal is now pending, and the Federal Circuit held oral arguments on July 10, 2025.  The case raises fundamental questions about the scope of the "sparingly applied" doctrine of prosecution laches and also about the proper procedure for raising written description/anticipation issues during trial.

I believe that a typical Federal Circuit panel would side with the appellant Sonos. But, the panel in this case is somewhat unique. The combination of Judges Prost and Lourie creates an interesting dynamic given their opposing positions in the 2010 prosecution laches case of Cancer Research. Judge Prost's dissent in that case shows her willingness to apply prosecution laches.  Although Judge Lourie did not find laches in Cancer Research, he is Judge Lourie authorship of Symbol v. Lemelson—the decision that revived prosecution laches in 2005.

In ratings of "patent friendliness" (including one by Google's attorney Dan Bagatel), Judges Prost and Lourie are among the three least patent-friendly judges on the Federal Circuit.  Judge Bumb, sitting by designation from the District of New Jersey, adds unpredictability as she lacks the extensive patent law track record of her colleagues. All three are Republican appointees who generally embrace textualist approaches, but that judicial philosophy matters less here since prosecution laches is an entirely judge-made equitable doctrine with minimal congressional guidance beyond Section 282's broad authorization of equitable defenses.

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

Patent

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.

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Google v. Sonos: Oral Arguments

Patent

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.

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Overlapping Ranges and the Presumption of Obviousness

Patent

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.

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