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.
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.
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:
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.
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…)
by Dennis Crouch
In January 2024 a then-secret order from US Customs and Border Protection (CPB) had a major impact in the Masimo v. Apple case. That opinion from CBP's Exclusion Order Enforcement (EOE) Branch has now been released in redacted form and provides some insight into how Apple was able to quickly modify its Apple Watch designs to avoid the ITC's limited exclusion order that would have blocked import of the infringing devices. The CBP EOE ruling determined that Apple's redesigned watches, which disabled the infringing pulse oximetry functionality, were sufficiently modified to fall outside the scope of the ITC's exclusion order, allowing them to be imported and sold in the US.
by Dennis Crouch
The Federal Circuit recently issued a decision in Maxell, Ltd. v. Amperex Technology Limited, No. 2023-1194 (Fed. Cir. Mar. 6, 2024), reversing Judge Alan Albright's finding that certain claims of Maxell's patent covering rechargeable lithium-ion battery indefinite under 35 U.S.C. § 112, ¶ 2 (112(b)). U.S. Patent No. 9,077,035.
The case provides important cover for patent prosecutors who inelegantly add narrowed limitations from the dependent claims into the independent claims without rewriting or deleting the corresponding broader element descriptions already there.
by Dennis Crouch
The Federal Circuit has affirmed the PTAB's finding that Pfizer's pneumococcal vaccine patent is obvious, but has vacated and remanded the Board's denial of Pfizer's motion to amend certain claims. Pfizer Inc. v. Sanofi Pasteur Inc., No. 19-1871 (Fed. Cir. Mar. 5, 2024); U.S. Patent No. 9,492,559. Pfizer v. Sanofi Opinion.
I am super excited to be part of a big interdisciplinary conference this week here at the University of Missouri where we'll be focusing on AI and Society: Government, Policy, and the Law. Co-hosted by the Truman School of Government and Public Affairs and the University of Missouri School of Law, this two-day event on March 7-8, 2024, will bring together a diverse group of experts to explore four main themes: AI in Government, Impact of AI on Democracy, Government Regulation and AI, and Creating an AI Ready Public Sector; and a collection of the papers will be published in the Missouri Law Review.
by Dennis Crouch
The Federal Circuit regularly affirms PTAB judgments without issuing any explanatory opinion to justify the result. Although not found in the Rules of Appellate procedure, the court has created its own local rule allowing itself to "enter a judgment of affirmance without opinion." In a 2017 paper, I argued that these no-opinion affirmances violated both the spirit and letter of 35 U.S.C. 144, which requires the court to issue a "mandate and opinion" in cases appealed from the USPTO. Since that time, the Federal Circuit has continued its practice, issuing hundreds of no-opinion judgments. Throughout this time, dozens of losing parties have petitioned for en banc rehearing with the Federal Circuit or certiorari to the Supreme Court. Up to now, both courts have remained silent and have refused to address the issue.
A new pending petition raises the issue once again. Virentem Ventures v. Google (Supreme Court 2023). Virentem sued Google for patent infringement, and Google responded with a set of Inter Partes Review (IPR) petitions. The PTAB eventually sided with Google and invalidated the claims of all seven challenged patents. Virentem appealed; but the Federal Circuit affirmed the PTAB's judgement without opinion under its local Rule 36.
The new petition to the Supreme Court asks four related questions:
The Virentem patents relate to time-scale modification -- the speeding-up or slowing-down of media. You may remember Alvin, Simon, and Theodore -- the Chipmunks. That unintelligible high pitch arguably is not really time-scale modification because it is such a failure. Rather, TSM modern impliedly requires maintaining pitch and intelligibility. In this case though, the PTAB broadly interpreted the term to include any system that speeds-up or slows-down media. With that broad interpretation, the tribunal then was able to find prior art rendering the claims obvious. Virentem argued that its patents would be seen as valid under the narrower construction. The PTAB's response: If you wanted that limitation in the claim, you should have added it to the claim.
