by Dennis Crouch

In re Maplebear Inc. (d/b/a Instacart), No. 26-105 (Fed. Cir., petition filed Oct. 21, 2025), adds another voice to the chorus of technology companies asking the Federal Circuit to rein in the Patent Office's increasingly restrictive approach to IPR institution. The mandamus petition was filed a few days after the USPTO published a Notice of Proposed Rulemaking (NPRM) that further curtails access to inter partes review (IPR) proceedings, and argues that the denial of its institution was improperly based upon grounds not supported by the statutory framework.  The petition argues that Dir. Stewart's novel denial criteria were imposed without the notice-and-comment rulemaking required by the Administrative Procedure Act, exceed the Director's statutory authority under 35 U.S.C. § 314(a), and were applied retroactively to Instacart's petition in violation of due process. The petition argues that the NPRM is tacit admission of the rulemaking requirement.

The Maplebear case is the seventh mandamus on the same issue -- arguing that the USPTO's broadened discretionary denial approach is ultra vires. (SAP, Motorola , Google, Samsung, HighLevel, SanDisk, Western Digital, Cambridge Industries, and now Instacart).  These petitions are all sitting before the Federal Circuit - none have been decided yet.  The wave began after Acting Director Coke Morgan Stewart rescinded former Director Kathi Vidal's June 2022 guidance memoranda, which had provided "safe harbors" for petitioners who stipulated not to pursue the same prior art in parallel litigation (so-called Sotera stipulations).  Following that rescission, the PTAB expanded its use of discretionary denials based on expanded Fintiv factors, which balance whether to institute IPR when parallel district court litigation is pending.  But then the policy shift went well beyond Fintiv with Acting Director Stewart introducing two additional discretionary denial grounds through individual PTAB decisions rather than formal rulemaking.

• Settled expectations: IPR petitions are denied if the challenged patent had been in force for several years (roughly seven+ years in practice), on the theory that patent owners develop stronger reliance interests as their patents age.
• Roadmapping: IPRs were denied if any prior party (related or unrelated to the current petitioner) had previously challenged the same patent, on the theory that later petitioners would impermissibly benefit from the roadmap provided by earlier proceedings.

These two factors represented a dramatic departure prior IPR practice with the result of hundreds of IPR institution denials.

by Dennis Crouch

Earlier this year, the Federal Circuit decided its first "do it on AI" case - holding that Recentive Analytics' inventions were ineligible. The key patents at issue focused on training machine learning models for specific applications (event scheduling and network maps).

Recentive has now petitioned the Supreme Court for writ of certiorari.  Conventional wisdom is that a good certiorari petition needs to show the legal error below and also show why the case is important and timely.  The petition follows this dual framing strategy: (1) a doctrinal claim that the Federal Circuit has abandoned preemption as the touchstone of patent eligibility; and (2) a policy argument tied to what I think of as the "new great game" and what the Trump Administration calls "Winning the AI Race."  The case also arrives at the Supreme Court as the USPTO has begun to move aggressively toward limiting its use of eligibility in patent prosecution.

The petition particularly asks whether eligibility doctrine requires model-architecture improvements, whether it is enough to create a practical tool by applying machine learning to new data environments.

• Recentive Certiorari Petition (Oct 2025)
• Dennis Crouch, “Do it on AI” Claims Are Abstract Ideas, Patently-O (Apr. 18, 2025) (discussing the Federal Circuit’s ruling that generic AI use is an abstract idea).
• Ryan Abbott, Reflections on Recentive v. Fox: To Do or Not To Do It With AI?, Patently-O (Oct. 9, 2025) (guest post analyzing Recentive v. Fox and AI-patent eligibility).
• Dennis Crouch, Preemption Lost: The Federal Circuit’s Abandonment of Supreme Court Patent Eligibility Doctrine, Patently-O (Feb. 7, 2025) (examining how the Federal Circuit largely ignores the Supreme Court’s preemption doctrine).
• Dennis Crouch, USPTO AI Strategy, Patently-O (Jan. 14, 2025) (outlining the pre-Trump administration AI strategy).

by Dennis Crouch

In Centripetal Networks, LLC v. Palo Alto Networks, Inc., No. 2023-2027 (Fed. Cir. Oct. 22, 2025), the Federal Circuit held that an administrative patent judge's stock ownership in petitioner did not required vacatur of the PTAB institution and final written decisions.  The case is almost exactly parallel to a prior federal circuit decision vacating a $1.9 billion district court judgment -- with the court explaining the difference being that Article III judges are held to a different ethical standard than PTAB judges.

Although the patentee lost lost the recusal argument, it won on a separate argument -- that the PTAB failed to consider specific evidence of copying in its obviousness analysis. This part of the case thus reinforces the idea that secondary considerations evidence must always be evaluated if presented.

By Dennis Crouch

The USPTO Automated Pre-Examination Search Pilot Program launched today.  Here is how it works: Applicants filing original utility applications can petition to receive an Automated Search Results Notice (ASRN) before human examiner review. The pilot is currently limited to only 1,600 applications over the next six months. [PTO-P-2025-0011].  The ASRN program represents a modest but significant implementation of AI-assisted examination concepts I explored in a February 2025 proposal for pre-filing certification. While my proposal envisioned a comprehensive automated pre-filing examination, the ASRN happens after filing.  While both approaches share the core insight that automated prior art analysis before human examiner review can streamline prosecution and provide applicants with earlier intelligence about patentability, the timing shift from pre-filing to post-filing reflects the USPTO's preference particularly for streamlining the examination processes. This first step allows the agency to evaluate AI performance within established quality frameworks before considering more radical reforms.

To participate, applicants must file original, noncontinuing, nonprovisional utility applications electronically through Patent Center and enroll in the Patent Center e-Office Action Program. The petition also requires a $450 petition fee under 37 CFR 1.17(f) (discounted for small/micro entities) that should be filed with the application. The USPTO will process petitions after pre-examination processing completes, granting the petition if eligibility requirements are met or dismissing it without opportunity to correct deficiencies.

by Dennis Crouch

Causam Enterprises, Inc. v. International Trade Commission, No. 23-1769 (Fed. Cir. Oct. 15, 2025).

This case is ultimately about patent ownership -- and turns on whether a 2007 assignment covers "continuations-in-part."  The assignment document lists  certain covered patents along with "divisions, reissues, continuations and extensions," but does not particularly list "continuations-in-part."  Holding: The assignment does not include continuations-in-part.

by Dennis Crouch

The USPTO has published a notice of proposed rulemaking (NPRM) that would dramatically restrict access to inter partes review proceedings. Revision to Rules of Practice before the Patent Trial and Appeal Board, 90 Fed. Reg. [TBD] (Oct. 17, 2025).  The proposed amendments to 37 CFR Part 42 would create mandatory bars to IPR institution in three categories:

1. When claims of the challenged patent have previously been found valid in other proceedings;
2. Where parallel litigation involving the patent will likely reach a validity decision first; and
3. Where petitioners refuse to stipulate against raising any anticipation or obviousness challenge against the patent in other venues.

The rules formalize and expand practices that have emerged through both PTAB decisions and recent Director-level denials, converting discretionary factors into more categorical requirements.  Comments are due in a short 30 day window via www.regulations.gov (docket number PTO-P-2025-0025).  Notably, the USPTO simultaneously withdrew a proposed rule on discretionary denial under Former Director Vidal citing changes in administrative priorities.

Meanwhile the Federal Circuit is in the midst of considering a bolus of mandamus petitions arguing that the USPTO's already ramped-up discretionary denial approach has moved past the ultra vires threshold into the realm of actionable shenanigans. Director Vidal (back at Winston) recently filed an amicus brief to the FedCir on behalf of the Public Interest Patent Law Institute (PIPLA) arguing that the Settled Expectations denial doctrine goes too far: "The USPTO's own data reveals that its new 'settled expectations' rule protects the very patents most likely to be invalid."

by Dennis Crouch

Issue preclusion (also called collateral estoppel) prevents parties from relitigating issues already decided in prior proceedings. To apply issue preclusion, courts generally require: (1) the issue was actually litigated and decided in the prior proceeding; (2) the determination was essential to the judgment; (3) the party against whom preclusion is asserted had a full and fair opportunity to litigate; and (4) the party against whom preclusion is asserted was a party (or in privity) in the prior proceeding. Issue preclusion can sometimes dispose of an entire case, but it can also apply more narrowly -- operating to prevent relitigation of any individual issue of law or fact that was already resolved in a prior proceeding.

Issue preclusion has the potential of arising often in patent cases -- especially because most patent cases these days involve two different proceedings (1) the IPR; followed by (2) the district court litigation.

A key way this comes up is when an IPR cancels several claims, but then the patentee subsequently amends the lawsuit to assert other claims that are similar but not identical to those cancelled. An example here might be that the cancelled claim involved elements A, B, C, and D; and the newly asserted claim covers A, B, C, and Δ.  The accused infringer would hope to invoke issue preclusion, arguing that it is a settled fact that the prior art teach A, B, C, and D, leaving only the question of whether the Δ modification is obvious.

But, the Federal Circuit has generally prohibited this approach because in IPRs facts are are decided under the lower preponderance-of-the-evidence standard while invalidating a patent in court requires the higher clear-and-convincing standard for invalidity. In issue preclusion lingo, this means that the IPR decision is not the same issue being decided in litigation.   The court has addressed this issue in some prior cases, including ParkerVision, Inc. v. Qualcomm Inc., 116 F.4th 1345 (Fed. Cir. 2024), and Kroy IP Holdings, LLC v. Groupon, Inc., 127 F.4th 1376 (Fed. Cir. 2025).

The court's newest decision makes clear the broad scope of the rule:

by Dennis Crouch (This is a long blog post about TM opposition standing - buried inside though is a roadmap for how Director Squires could administratively restrict IPR petitioner standing using the same Lexmark framework).

Professor Rebecca Curtin has filed her petition for writ of certiorari  seeking rights to challenge United Trademark Holdings' application to register RAPUNZEL for dolls and toy figures.  Curtin has a great case that the mark is generic. The problem with Curtin's case is procedural.  Curtin is a consumer, not a competing doll maker, and the Federal Circuit ruled that consumers do not have standing to oppose trademarks based upon their genericness, descriptiveness, or failure to function as a trademark. Curtin v. United Trademark Holdings, Inc., 137 F.4th 1359 (Fed. Cir. 2025).

The statute allows opposition proceedings to be filed by "[a]ny person who believes that he would be damaged by the registration of a mark upon the principal register."  15 U.S.C. § 1063.  And, a textual approach would seem to allow consumer oppositions -- and even those who would read an implicit "reasonableness" into the statute ("reasonably believes he would be damaged"). Here, for instance, Curtin offered a clear basis for harm that is particularized to her as a longtime, avid collector of classic fairy-tale dolls and toy figures, including those depicting Rapunzel. She demonstrated that registration would reduce marketplace competition for Rapunzel products she collects, likely increase costs for such dolls, and chill the creation of new interpretations of the character that she values and seeks to add to her collection.

But, the Federal Circuit offered a narrow interpretation of the standing requirement  (eliminating consumer standing) that stems from a somewhat parallel situation in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014).  The basic question to the Supreme Court is whether they intended the litigation standing requirements of Lexmark to extend to administrative actions before the USPTO.

Whether a party desiring to participate in an administrative agency proceeding, including a trademark opposition proceeding at the United States Patent and Trademark Office, must satisfy the zone-of-interests and proximate-causation tests set forth in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), for causes of action in federal court.

Curtin Cert Pet.  Curtin is a trademark law professor and so it's not surprising that the brief is well written.  Folks at Workman Nydegger (Salt Lake City) filed the brief with a team that included John Stringham, Matthew Barlow, David Todd, and Ryan Morris.

by Dennis Crouch

Computer scientist Dr. Stephen Thaler has petitioned the Supreme Court to resolve whether artificial intelligence systems can generate copyrightable works without traditional human authorship. In Thaler v. Perlmutter, No. 25-___ (petition filed Oct. 9, 2025), Thaler seeks review of the D.C. Circuit's March 2025 decision affirming the Copyright Office's denial of registration for a visual artwork titled "A Recent Entrance to Paradise," which was autonomously created by Thaler's AI system known as the "Creativity Machine." Thaler v. Perlmutter, 130 F.4th 1039 (D.C. Cir. 2025). The petition asks:

Whether works outputted by an AI system without a direct, traditional authorial contribution by a natural person can be copyrighted.

Thaler-v-Perlmutter-Petition.

by Dennis Crouch

We are now a decade past the Supreme Court’s eligibility revolution in Alice and Mayo. Legislative efforts have coalesced around the Patent Eligibility Restoration Act of 2025 (PERA), while USPTO Director John Squires has simultaneously launched a campaign of administrative reinterpretation to restore what he calls “expansive eligibility.” The Federal Circuit, once reluctant to embrace the new eligibility approach, now serves as the principal stabilizing force and is the principle backstop to Patent Office experimentation.

I recently wrote about the Senate Hearing on PERA.  I wanted to follow up to discuss written submissions by two leading commentators: USPTO Director John Squires , and Stanford Law Professor Mark Lemley.  Squires written statement calls for restoration of "expansive eligibility."  In addition to the potential for legislation, Squires also highlights his ongoing administrative reinterpretation of eligibility doctrine and suggests doctrinal correction by the courts to correct what he sees as a misinterpretation of Alice/Mayo.  Lemley takes the opposite view on virtually all issues.  He argues that current judicial doctrine is working well and that the real problem lies in the USPTO's refusal to follow existing law, particularly its recent pattern of denying inter partes review (IPR) petitions in violation of the AIA.

Director Squires' statement opens with a personal narrative. He recounts surviving the September 11, 2001 terrorist attacks three times that morning: walking through the North Tower of the World Trade Center just sixteen minutes before the first plane struck, watching the second plane hit from his office at 1 New York Plaza, and fleeing the collapse of the South Tower. Squires describes how, in the aftermath of 9/11, he and his colleagues at Goldman Sachs developed the Risk Data Consortium, filing forty patents "expedited by the USPTO as inventions to combat terrorism" and deploying them as "instruments of war" against terrorist financing networks. This experience, Squires argues, demonstrates that "patent eligibility is not an abstract debate" but rather "a matter of national security, of resilience, and of ensuring that America's system of innovation remains robust enough to confront the challenges of the twenty-first century." For Squires, the question of what is patent-eligible is inseparable from the question of whether America can deploy its private sector innovation capacity to meet existential threats—from terrorism to artificial intelligence competition with China.

Lincoln famously said that the patent system adds “the fuel of interest to the fire of genius.” For Squires, the post-9/11 patent response shows that it can also channel the fire of patriotism.  In this account, the patent system became a mechanism for channeling the nationalistic urgency into concrete counterterrorism tools. Patent protection meant that innovators could rapidly deploy their systems against an immediate threat while retaining some assurance of eventual compensation -- satisfying that other urge of self-interest.

Director Squires' statement explicitly advocates for institutional and doctrinal change through USPTO leadership and administrative decisions, independent of congressional action. He highlights is recent actions to restore "expansive eligibility" through agency policy and adjudication.  One example is Squires’s recent Director Review decision in Ex parte Desjardins, where the PTAB had rejected claims directed to AI training methods under § 101. In his decision overturning that rejection, Squires emphasized that Section 101 should not be misused as a blunt instrument to exclude entire technological fields and that examiners should use Sections 102, 103, and 112—rather than Section 101—to police patent quality.  Squires' testimony frames this approach as a return to historical practice.

Regarding the Supreme Court's duo of Alice and Mayo, Squires argues that these cases have been misconstrued and that instead courts should read them narrowly as simply restating the old decisions in cases such as O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1854), Diamond v. Chakrabarty, 447 U.S. 303 (1980) ("anything under the sun") and Diamond v. Diehr, 450 U.S. 175 (1981).

by Dennis Crouch

On October 8, 2025, the Senate Judiciary Subcommittee on Intellectual Property held a hearing on the Patent Eligibility Restoration Act (PERA) of 2025 (S. 1546), legislation that would fundamentally reshape 35 U.S.C. § 101 and effectively overturn the Supreme Court's Mayo, Myriad, and Alice decisions.  The hearing featured testimony from former USPTO Directors Andrei Iancu and David Kappos, China IP expert Mark Cohen, biotech executives, patient advocates, and retail industry representatives, all addressing whether Congress should replace the judge-made "abstract idea" and "law of nature" exceptions with a set of narrow statutory exclusions. Chairman Thom Tillis (R-NC) and ranking member Adam Schiff (D-CA) both acknowledged the widespread confusion in current eligibility jurisprudence, with Tillis noting that the status quo "continues to be hopelessly confused" and expressing determination to move the bill forward to committee markup. The Bill has bipartisan support in the Senate, but it is unclear  how hard those in opposition would push if the bill started to move forward.

PERA was originally introduced back in 2019 as a draft proposal. It was later reintroduced as S.4734 in 2022 and has been refined through successive versions, with the current 2025 bill (S.1546) representing a more measured approach than earlier drafts while still fundamentally overhauling § 101. The 2019 proposal included explicit language stating that all judicially created exceptions were "hereby abrogated." Later versions achieve the same result more subtly by specifying that eligibility is determined "subject only to" the enumerated statutory exclusions. The 2022 version would have made isolated human genes patent-eligible, directly contradicting Myriad's core holding, but the 2025 bill narrows this by removing "isolated" from the human gene provision—meaning mere isolation of natural DNA wouldn't suffice for eligibility, though purified, modified, or engineered genes used in inventions would still qualify. Similarly, where the 2022 draft used the ambiguous term "non-technological" to define excluded business methods, the 2025 version asks whether the machine is "necessary to practically perform" the invention. Probably most importantly, the 2025 bill adds new guardrails against patenting superficial computerization of otherwise abstract ideas.