Silicon Valley Judicial Ties: The Cellspin Recusal Case

Patent

by Dennis Crouch

Google has skipped its chance to respond to Cellspin's petition for writ of certiorari  in a case raising questions about judicial recusal standards. In Cellspin Soft v. Fitbit, the petitioner asks the Supreme Court to address when federal judges must recuse themselves under 28 U.S.C. § 455 and whether appellate courts must determine recusal issues before reaching the merits of a case.  The petition stems from patent infringement litigation initiated by Cellspin against several technology companies, including Fitbit (owned by Google), asserting Bluetooth media upload patents.

The recusal issue emerged after N.D. Cal. Judge Yvonne Gonzalez Rogers granted summary judgment of non-infringement to all defendants. Cellspin subsequently filed a motion seeking the judge's recusal under 28 U.S.C. § 455, which governs judicial disqualification. The motion was based primarily on two grounds: (1) the judge's spouse worked as an operating partner at Ajax Strategies, a venture capital firm with financial ties to Google (seemingly as co-investors), and (2) the judge personally owned investments in a hedge fund worth between $5-25 million with undisclosed investments.

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Judge Shopping vs. Judge Dodging: Federal Circuit Denies SAP’s Transfer Request

Patent

by Dennis Crouch

In a precedential opinion, the Federal Circuit has denied SAP's mandamus petition seeking to transfer its patent infringement case from the Marshall Division to the Sherman Division within the Eastern District of Texas -- and also change judges. In re SAP America, Inc., No. 2025-118 (Fed. Cir. Apr. 10, 2025).   Although SAP made good arguments in the case, they just were not good enough to overcome the particularly high burdens for transfer and mandamus.

Although it has failed, the bold petition is a continuation of the successful extra-legal campaign that turned Judge Albright's Waco courtroom back into a ghost town. On the legal side, the decision highlights the high bar for obtaining mandamus relief in disputes over convenient venue, particularly for intra-district transfers under 28 U.S.C. 1404(a).  The case is also notable as the first Federal Circuit appeal brought by Kathi Vidal since leaving her role as USPTO director and rejoining her old 1,000 attorney firm Winston & Strawn. Matthew Berkowitz (Reichman Jorgensen) and his team successfully defended against the mandamus petition, which the court decided without oral arguments. (I also hope that neither of them are too upset by their ChatGPT image remakes)

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When Five Years of Use Isn’t Enough: The High Bar for Highly Descriptive Marks

Patent

by Dennis Crouch

Federal Circuit has affirmed the Trademark Trial and Appeal Board's (TTAB) finding that "iVoterGuide" and "iVoterGuide.com" are highly descriptive terms that failed to acquire distinctiveness. Heritage Alliance, AFA Action, Inc. v. The American Policy Roundtable, No. 2024-1155 (Fed. Cir. Apr. 9, 2025). The ruling maintains the dismissal of Heritage's opposition to American Policy Roundtable's (APR) applications to register "iVoters" and "iVoters.com" as trademarks.

This case presents a classic trademark problem: When is a mark distinctive enough to receive protection, especially when it describes the service being offered?

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Non-Tariff Countermeasures to U.S. Tariff Hikes: IP, Services, and Investment Implications

Patent

by Dennis Crouch

In April 2025, President Trump took initiative to sharply increased tariffs on imports, citing trade imbalances and reciprocity. In response, major trading partners such as the European Union (EU), China and others are considered countermeasures that go beyond tit-for-tat tariffs. President Trump's actions were ostensibly driven by the large U.S. trade deficit in goods, but it also threatens key areas of U.S. strength – namely services, intellectual property (IP), and foreign investment where the U.S. runs global surpluses that far outpace the goods deficit. This asymmetry means that broad U.S. tariffs on goods can be met by partners' retaliation in areas where U.S. firms rely heavily on foreign markets. Non-tariff measures (NTMs) can include a variety of impediment to open markets reducing access without raising a customs duty. NTMs have been a major aspect of global trade initiatives over the past several decades--with the U.S. most often pushing our global partner nations to reduce barriers and provide open markets with free trade. That world has now changed.

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Federal Circuit on Trade Secret Remedies in AMS-OSRAM v. Renesas

Patent

by Dennis Crouch

The Federal Circuit issued a significant trade secret remedies decision AMS-OSRAM USA Inc. v. Renesas Electronics America, Inc., Nos. 2022-2185, 2022-2186 (Fed. Cir. Apr. 4, 2025). The court made a number of holdings (applying Texas trade secrecy law), most notably:

  1. A trade secret becomes "properly accessible" when it could have been reverse-engineered rather than when it actually was reverse-engineered - limiting the appropriate "head-start period" for calculating damages; and
  2. But, disgorgement of profits is proper for all sales arising from a misappropriation-based "design win" that occurred during the head-start period, even if actual sales occurred later;
  3. A plaintiff may recover damages for both trade secret misappropriation and breach of contract when the damages are based on different sales or injuries.

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What I’m doing with LLM-Based GenAI Tools

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by Dennis Crouch

As many of you know, I have done machine learning work for many years -- starting in the 1990s while in college.  However, like most of the world, I have been surprised and amazed by the power of LLM-based GenAI technology and have been trying to figure out ways to use it both for patent practice and in my job as a law professor.  I hope that it helps me become both more effective and more efficient.

On the Patently-O side,

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Patent Term Adjustment and Obviousness-Type Double Patenting: Cellect’s Bid for Supreme Court Review

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by Dennis Crouch

The Federal Circuit's August 2023 decision in In re Cellect, LLC has set-up a significant question regarding the interplay between the patent term adjustment (PTA) statute, 35 U.S.C. § 154(b), and the judicially-created doctrine of obviousness-type double patenting (OTDP). Now, Cellect is seeking Supreme Court review, recently filing a petition for an extension of time that also indicated its intent to file. Cellect's petition is now due May 20, 2024, and I expect significant support from the patent owner community.

Patentees often receive PTA due to USPTO delays that otherwise eat into the 20-year patent term.  A fundamental issue in Cellect boils down to whether a patentee must forfeit their PTA term extensions to avoid an OTDP invalidity finding.  This comes up in situations where a patentee has two patents that cover only slightly different inventions.  Most often this is seen in family-member continuation applications, but it can also arise when applicants file several applications all within a short period.

Under the judge-made law of OTDP

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The Design Law Treaty and the Struggle for International Harmonization of Industrial Design Protection

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By Dennis crouch

The international IP community is moving toward further harmonizing legal protection for industrial designs. For almost twenty years, member states of the World Intellectual Property Organization (WIPO) have been negotiating a Design Law Treaty (DLT) that would streamline and align procedural requirements for obtaining registered design rights across jurisdictions. If successful, the DLT would make it "significantly easier for small and medium-sized enterprises to obtain industrial design protection overseas as a result of simplified, streamlined and aligned procedures and requirements."[1]  The DLT can be seen as parallel to the Patent Law Treaty (PLT) adopted in 2000 that helped to harmonize and standardize the formal patent procedures such as the filing requirements sufficient for obtaining a filing date.

Throughout this time, it has been difficult to implement almost any global IP treaty because

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Guest post by Prof. Holbrook: Extraterritoriality and Patent Damages Under § 271(a)

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Guest post by Tim Holbrook. Robert B. Yegge Endowed Distinguished Professor of Law and Provost's Professor, University of Denver Sturm College of Law.

United States patents are generally territorial.  Their exclusive rights only operate within the United States and its territories.  Or so one may think reading the Patent Act.  Moreover, in a global marketplace, the territorial nature of intellectual property rights can create challenges. It would be simpler for a patent holder to just use the U.S. patent to cover foreign activity. This is especially true if a domestic act of infringement has spillover effects into other countries.

So, when – if ever – can a patent owner receive damages for foreign activity that may flow from acts of domestic infringement?

The Supreme Court answered that question  

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Using AI in your Patent Practice

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By Dennis Crouch

Over the past year I've been investigating various generative Artificial Intelligence (GenAI) tools for assisting patent attorneys in their practice.  I have a strong belief that these tools and their progeny are now fixtures in our legal environment and are being used to both improve efficient delivery of legal services and to also improve the quality of those services.  Of course the generative creativity of our LLMs go hand in hand with hidden false narratives or hallucinations. Vendors are stepping up to thread the needle here: providing valuable GenAI tools while limiting false story telling.  As we move forward some of the struggle will be a focus on how much the attorney needs to know about how the GenAI works in order to use it responsibly.

Enter the USPTO and its Wet Blanket: The USPTO has released new guidance on the use of AI tools in practice before the USPTO.

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Docketing Nightmare: CPA Global wins Despite their Docketing Error; Law Firm still on the hook for Missed Deadline

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By Dennis Crouch

In a recent unpublished decision, the Georgia Court of Appeals affirmed summary judgment in favor of CPA Global Support Services, LLC ("CPA") (now part of Clarivate) against a claim of negligent misrepresentation brought by inventor James C. Robinson, M.D. and his patent holding company (Spectrum Spine).  Robinson's firm FisherBroyles had relied upon the dates erroneously entered by CPA and missed the national stage filing deadlines.  The parallel case against FisherBroyles is still pending in Georgia state court. Robinson v. CPA Global Support Services, LLC, No. A24A0405 (Ga. Ct. App. Apr. 8, 2024). CPA vs Robinson.

The case serves as an important reminder about the limitations on vendor liability for negligent misrepresentation claims in the absence of contractual privity -- and how attorneys are often stuck in the middle.

What are your thoughts on how to avoid this situation?

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Federal Circuit Affirms ITC Divided Opinion in Sonos v. ITC

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by Dennis Crouch

In a non-precedential opinion, the Federal Circuit has affirmed the US International Trade Commission's (ITC) final determination in the patent infringement dispute between Sonos and Google involving smart speaker technology. Sonos, Inc. v. Int'l Trade Comm'n, Nos. 2022-1421, 2022-1573 (Fed. Cir. Apr. 8, 2024).  The ITC had issued a split opinion - finding that Google infringed a number of Sonos speaker patents, but concluded that Google's proposed work-around was non-infringing.  Both sides appealed and the Federal Circuit's deferential standard of review resulted in a full affirmance. The outcome then

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De Forest Radio v. GE: A Landmark Supreme Court Decision on the Invention Requirement

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By Dennis Crouch

In 1931, the United States Supreme Court decided a landmark case on the patentability of inventions, De Forest Radio Co. v. General Electric Co., 283 U.S. 664 (1931), amended, 284 U.S. 571 (1931). The case involved a patent infringement suit over an improved vacuum tube used in radio communications. While the case predated the codification of the nonobviousness requirement in 35 U.S.C. § 103 as part of the Patent Act of 1952, it nonetheless applied a similar requirement for "invention."

I wanted to review the case because it is one relied upon in the recent Vanda v. Teva petition, with the patentee arguing that the court's standard from 1931 has been relaxed by the Federal Circuit's "reasonable expectation of success" standard. The decision also provides an interesting case study in the way that the court seems to blend considerations of obviousness and

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Munsingwear Mootness in Sumitomo Pharma v. Vidal

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by Dennis Crouch

Although non-precedential, the Federal Circuit's new decision in Sumitomo Pharma v. Vidal offers the important conclusion that a patentee has no standing to appeal an invalidity holding once the patent expires, absent some showing of likely infringement during the prior six years.  Sumitomo Pharma Co. v. Vidal, No. 22-2276 (Fed. Cir. April 5, 2024).  The case is not so bad for the patentee because

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