by Dennis Crouch

The USPTO's new fee structure, which took effect on January 19, 2025, introduces significant changes that will reshape patent prosecution strategy in the coming years. While the update includes generally higher fees across the board, one notable development is a substantial surcharge targeting continuation applications filed long after their earliest benefit date (EBD). Under this new structure, applicants now face a $2,700 surcharge for continuations filed six years after the EBD, with the fee jumping to $4,000 for applications filed nine or more years out. Small and micro entities receive their typical discounts. This change forces patent practitioners to reconsider long-established prosecution timing strategies, particularly the common practice of sequential continuation filings. The impact will be especially significant for foreign applicants and companies maintaining large continuation portfolios, requiring some immediate attention to docketing practices and client communication schedules.

by Dennis Crouch

USPTO Commissioner of Patents Vaishali Udupa has resigned after just over two years in office. Under 35 U.S.C 2, the Commissioner is appointed by Secretary of Commerce for a term of 5-years.  For much of US history, the Commissioner of Patents was the top dog at the patent office. However, in the 1990s Congress created an additional layer of the Director and Deputy Director - both having undersecretary roles within Commerce.  The Commissioner can be removed prior to the 5-year mark by the Secretary of Commerce, but the statute suggests that there must be cause: "for misconduct or nonsatisfactory performance under the performance agreement."  In this case, I suspect Udupa received substantial encouragement to leave because of her support and close ties to the prior director Kathi Vidal as well as support for a variety of diversity and equity initiatives. In addition, the backlog of pending patents has risen significantly over the past two years and is a key stated focus of the new Secretary of Commerce. (Howard Lutnick is not yet the Secretary, but will be very soon).

Her resignation comes amidst a strong push by President Trump to encourage all federal workers to resign -- with each worker receiving an email encouraging them to leave their "lower productivity jobs" working for the government and move into the private sector. Udupa met the deadline for the offered "buyout" package of no-responsibility pay through September 2025, although it is unclear whether she is seeking payments under that package.

by Dennis Crouch

The Federal Circuit has affirmed the PTAB finding of obviousness in an inter partes review (IPR) challenge to an integrated circuit manufacturing patent, even while disagreeing with the Board's claim construction. HD Silicon Solutions LLC v. Microchip Technology Inc., No. 2023-1397 (Fed. Cir. Feb. 6, 2025). The decision is fairly narrow - offering a situation where the lower tribunal's errors can be harmless when alternative grounds support the ultimate conclusion.

by Dennis Crouch

The well-worn advice to trial lawyers, famously captured by Carl Sandburg, has long been: "If the law is against you, pound on the facts. If the facts are against you, pound on the law. If both are against you, pound on the table."

This traditional dichotomy between law and fact reflects a fundamental principle of American jurisprudence - that certain questions are reserved for judges (law) while others are reserved for juries (fact).  And, even in cases where the judge serves both roles, the law provides for a strict separation of role. See FRCP 52(a).  But patent law doctrine often defies this clean separation. Take patent eligibility as an example: while courts characterize the atextual eligibility doctrine as ultimately a question of law, the analysis may require underlying factual determinations about what was conventional in the relevant field at the time of invention. And, even the "legal" aspects of eligibility analysis - like whether claims are "directed to" an abstract idea - require their own form of proof and evidence. The difference is that because courts have labeled these as questions of law, they bypass traditional evidentiary standards. This creates a peculiar framework where some elements of proof are subject to strict evidentiary requirements while closely related elements are left to judicial reasoning without similar constraints.  The problem has been further complicated in the eligibility area because the Federal Circuit has not generally required district courts to carefully separate their analysis between law and fact -- even at the pretrial stage where judicial factual conclusions are usually avoided.  These issues are raised to some extent in BBiTV's newly filed petition for certiorari, which challenges how courts handle disputed factual issues when deciding patent eligibility on summary judgment.

For me, BBiTV's argument raises deeper questions about how courts have arrived at this procedural framework for handling patent eligibility determinations. In my view, several historical developments in patent law have contributed to the current state of affairs, where judges increasingly make what appear to be factual determinations under the guise of eligibility legal analysis. These developments, combined with institutional pressures and uncertainties about the role of the Seventh Amendment in patent eligibility determinations, have somewhat blurred the distinction between law and fact. After reviewing the BBiTV case in particular, I move on to examine these contributing factors and their implications for how courts handle disputed facts in patent eligibility cases.

by Dennis Crouch

WC Realty recently filed a petition for certiorari that builds upon and expands the issues presented in the Property Matters case that I wrote about recently.  Both cases focus on whether a voluntary dismissal of a copyright infringement action under Rule 41(a)(1) bars "prevailing party" status under §505 of the Copyright Act.  Under Section 505, "the court may also award a reasonable attorney’s fee to the prevailing party."   This is almost identical to the Patent Act's fee shifting provision except that patent law limits discretion to "exceptional cases."  35 U.S.C. 285.

The petition presents two distinct but related questions about how voluntary dismissals should be handled under §505 of the Copyright Act. The first question addresses the fundamental threshold issue: whether a defendant can even qualify as a "prevailing party" after a plaintiff voluntarily dismisses under Rule 41(a)(1). The Eleventh Circuit has created a categorical bar, holding that defendants cannot be prevailing parties without court-ordered dismissal, even when the dismissal is "with prejudice" and precludes refiling. The second question examines how voluntary dismissals should be weighed when courts exercise their discretion to award fees under §505.

Voluntary Dismissals and Attorney Fees

The case arose when Affordable Aerial Photography (AAP) sued WC Realty for copyright infringement over real estate photographs. After WC Realty incurred substantial defense costs, AAP voluntarily dismissed its claims "with prejudice" under Rule 41(a)(1). The district court denied WC Realty's request for attorney's fees, and the Eleventh Circuit affirmed, holding that WC Realty could not be a "prevailing party" because there was no "judicial action rejecting or rebuffing" AAP's claims.

by Dennis Crouch

Recent Senate testimony from Commerce Secretary nominee Howard Lutnick provides a window into how intellectual property rights will likely become a central battlefield in escalating international trade tensions. During his confirmation hearing before the Senate Commerce Committee, Lutnick articulated an aggressive stance on protecting American intellectual property, particularly focusing on stated abuses by China.

I have cued his testimony in the video below to begin with his a retelling of key aspects of his life story that is truly a testament to extraordinary resilience.

by Dennis Crouch

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.'"