by Dennis Crouch

This post offers some insight into four patent-focused academic articles that I've been reading lately.

1. A textualist approach to patent eligibility under § 101;
2. Reflections on the Myriad, ten years later
3. Message to Competition Regulators: Patents are not simply a necessary evil
4. Philosophical critique of AI inventorship

These pieces offer insights into ongoing debates within patent law and policy. Although I don't necessarily agree with the conclusions made by the various authors, each article provides fodder for continued discussion on these important topics.

We continue to see lots of action focusing on obviousness-type double patenting (ODP) in the U.S. patent law context.  In Allergan v. MSN, the Federal Circuit created a major loophole for patentees and undermined the 2023 Cellect decision by holding that extended PTA in one family-member patent does not create an ODP problem so long as the extended term is in a first-filed, first-issued patent. Allergan USA, Inc. v. MSN Laboratories Priv. Ltd., 111 F.4th 1358 (Fed. Cir. 2024).  Sun Pharma has petitioned for en banc rehearing - hoping to invalidate Allergan's protected patent.

Prior posts:

• En Banc Review in Allergan: Rehearing Petition Tackles ODP Safe Harbor and WD Essential Elements
• Family Planning Patent Style: Allergan, Cellect, and the ODP Maze

Two amicus briefs were recently filed supporting the petition - One by the Association for Accessible Medicines (AAM) and the other by a corporate group led by Alvogen PB.

by Dennis Crouch

The USPTO has issued final rules aimed at expanding opportunities for practitioners to appear before the Patent Trial and Appeal Board (PTAB). The rules, which go into effect on November 12, 2024, make several changes to the requirements for counsel in AIA-trial proceedings. However, the final rules do not go as far as some had proposed in allowing non-registered practitioners to take lead roles.  In other words, lead counsel must be a registered patent practitioner.

by Dennis Crouch

The landscape of patent litigation has been dramatically reshaped by the rise of third-party litigation funding (TPLF) over the past decade. As someone who has been involved in patent law issues for 20+ years, I can confidently say that if I were asserting a patent today, I would actively seek litigation finance to mitigate risk, even if I had sufficient resources to self-fund (which I don't). The availability of TPLF allows patent holders to create high-caliber legal teams and can also provide a strategic advantage by demonstrating to opponents that the case has been vetted by sophisticated investors willing to back it financially.

However, this trend toward litigation finance comes with complications and controversies. While TPLF has undoubtedly increased access for many patent holders, it has also given rise to significant ethical concerns and abuses. One of the most pressing issues is the potential for effectively sidelining the nominal plaintiff – the actual patent holder – in favor of the financial interests of funders and attorneys. In addition, there is some notion that TPLF is often channeled into the US via foreign sources -- something that has raised concerns that this could somehow destabilize the rule of law.

At the same time, it's important to acknowledge the positive impacts of TPLF. The availability of litigation finance has allowed larger, more established law firms to take on plaintiff-side patent cases that they might have previously declined due to risk or resource constraints. Anyone working in a law firm knows how difficult it is to convince partners to take on risk, and TPLF offers guaranteed partial payouts from funders even if the defendant wins.  That means that these firms can assemble formidable legal teams, potentially leveling the playing field against well-resourced defendants and improving the overall quality of patent litigation.

by Dennis Crouch

In a stunning development, the USPTO recently terminated proceedings in approximately 3,100 patent applications due to the fraudulent use of a practitioner's signature. This mass termination, announced on October 2, 2024, stems from an investigation that uncovered misconduct involving the unauthorized use of a registered patent agent's electronic signature.

The outcome here appears potentially over the top in the way that it punishes the patent applicants -- almost all Chinese companies -- for unknowingly participating in the fraud.  As one attorney who is now representing one of the impacted applicants explained to me: "punishing the applicants for the actions of the practitioner goes a bit far, especially where the punishment is termination with no remedy."  A number of the applicants used Chinese counsel who identified and hired the offending firm (W&K) years ago and worked with them for some time without issue.  I would not be surprised if some of these applicants push for judicial review, perhaps by filing an APA action.

by Dennis Crouch

The Supreme Court has denied certiorari in all of the patent cases it considered in its  first conference of the October 2024 term:

• Denied: 23-1349 Provisur Technologies, Inc. v. Weber, Inc..  Does an on sale product constitute a printed publication that can be asserted in an IPR.
• Denied: 23-1298 United Therapeutics Corporation v. Liquidia Technologies, Inc. Whether the IPR statute and SAS require the Federal Circuit to review de novo, or only for an abuse of discretion, the PTO's reliance on new grounds and new printed publications—not raised in the initial petition?
• Denied: 23-1231 Cellect, LLC v. Vidal.  Whether a patent procured in good faith can be invalidated on the ground that statutory Patent Term Adjustment created an improper term extension under the judge-made doctrine of obviousness type double patenting.
• Denied: 23-1217 Chestek PLLC v. Vidal. Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2).
• Denied: 23-1184 Eolas Technologies v. Amazon.com, Inc. Whether the claims recite patent-eligible subject matter under 35 U.S.C. § 101 and Alice Corp.
• Denied: 23-1142 Surti v. Fleet Engineers, Inc. Whether the Court erred in denying proper compensation.

Only a handful of cases are still pending before the court:

by Dennis Crouch

In a significant ruling that breathes new life into false patent marking claims, the Federal Circuit has held that falsely advertising a product as "patented" can give rise to liability under the Lanham Act's prohibition on false advertising. In Crocs, Inc. v. Effervescent, Inc., the appellate panel reversed a Judge Brimmer (D.Colo) summary judgment ruling, thus allowing competitor Dawgs to pursue false advertising claims against Crocs for allegedly misrepresenting its "Croslite" material as patented and 'exclusive.'  One advertisement read to the appellate panel stated: The reason the shoes are so comfortable is that they are made of a patented closed-cell resin. The resin has many positive aspects ..."  But, the closed-cell resin was not patented and instead was commercially available for anyone to use.

This ruling opens up a new avenue for challenging false patent marking after the America Invents Act severely curtailed such claims under the Patent Act itself. The decision also clarifies the scope of false advertising claims under the Lanham Act in light of key Supreme Court and Federal Circuit precedents such as Dastar and Baden Sports.

Professor Rebecca Tushnet is a leading commentator on Dastar and its progeny. In an earlier post, she also argued that the district court decision was "wrong" for much the same reason expressed by the appellate panel:

The patented/proprietary/exclusive language here is not the same as claiming authorship; it’s claiming uniqueness as a reason for consumers to believe that Crocs possess superior product characteristics to those of competitors’ products. To the extent that the claims lead consumers to believe that Crocs are “made of a material ‘different than any other footwear,’” a difference made credible to consumers by reference to patents and/or proprietary knowledge, that is a claim about the physical nature of specific product components, not about authorship. When the Supreme Court left 43(a)(1)(B) claims open in Dastar, this is the kind of thing that fits well.

Tushnet (September 2021).  See also, my prior discussion of the case that includes links to the briefs.

by Dennis Crouch

US Synthetic Corp. v. ITC, Docket No. 23-01217 (Fed. Cir., pending appeal)

The United States International Trade Commission (ITC) is often seen as a pro-patentee venue -- but not for US Synthetics and its attempts to enforce its patents covering drill bit diamond tips.

In its October 2022 decision, the ITC found the asserted claims of USS's US10508502 invalid under 35 U.S.C. § 101 even though the patent claims polycrystalline diamond compacts ("PDCs") used in drill bits and other applications. The ITC's decision is now on appeal to the Federal Circuit, with oral arguments set for October 8, 2024.  PhRMA provided amicus support for the patentee, arguing that the ITC's decision represents an unprecedented expansion of abstract idea analysis to invalidate composition of matter claims. PhRMA contends such claims should be deemed inherently non-abstract and tangible, unlike computer programs that may rightfully be seen as mental processes or mathematical concepts.

Professor Jeffrey Lefstin (UC SF Law) provided an earlier blog post on the original ITC decision that included a detailed historical perspective on this case. Lefstin traced the evolution of functional claim language in patent law, from its initial rejection in cases like General Electric v. Wabash Appliance (1938) to its acceptance in In re Swinehart (1971). He argued that the ITC's decision in the PDC case, following the Federal Circuit's reasoning in American Axle, represents a dramatic shift away from decades of established patent jurisprudence. His analysis underscores the potential far-reaching implications of applying the American Axle framework to composition claims, suggesting it could invalidate many biotechnology patents and upend well-established enablement doctrines.

by Dennis Crouch

Termination of AFCP 2.0 Program: The USPTO has announced that the After Final Consideration Pilot (AFCP) 2.0 program will expire on December 14, 2024. This decision comes after the Office proposed implementing a new fee for AFCP 2.0 requests earlier this year, which received significant pushback.

Take-Home Points for Patent Practitioners:

1. AFCP 2.0 has been popular with over 60,000 requests filed annually for the past 8 years.
2. Last day for AFCP 2.0 requests: December 14, 2024
3. Reason for termination: Program is costly and applicants do not provide any direct fee recovery.
4. Proposed fee ($500 for large entities) was met with significant push-back.

As the USPTO bids farewell to this popular program, patent practitioners are focusing on reshuffling their after-final strategies.