When the Supreme Court in Cuozzo Speed Technologies v. Lee, 579 U.S. 261 (2016), barred judicial review of the USPTO's decisions to institute (or deny institution) of inter partes review, it left a small door ajar for agency "shenanigans." This post asks whether USPTO Director John Squires recent decision in Interactive Communications International, Inc. v. Blackhawk Network Inc., IPR2024-00465 (Dir. Rev. Oct. 1, 2025), may be the case that finally gives "shenanigans" real content.
In Blackhawk, Director John Squires vacated a PTAB final written decision (FWD) that had already found all challenged claims unpatentable. Ordinarily a director review decision would still be appealable to the Federal Circuit, but Dir. Squires took the case to the next step. In addition to rejecting the PTAB opinion, Dir. Squires also terminated the proceeding and expressly declared that his order "does not constitute a final written decision under § 318(a)." The maneuver left the petitioner without an appealable decision -- even though the case had already been fully litigated and decided on the merits.
This post focuses on the appealability problem raised by Blackhawk and situates it alongside the five pending mandamus petitions now before the Federal Circuit challenging the Trump Administration's expanding assertion of institutional control over IPR proceedings. The pattern here is clear and undisputed that USPTO leadership is using the cloak of § 314(d)'s nonappealability to achieve policy ends. The question though is whether the aggressive approach crosses some yet-undefined line. Blackhawk is in line with 2025’s broader posture: the Trump Administration has pushed presidential prerogative in many areas of national policy - leveraging statutory gray zones that earlier administrations largely treated with self-restraint. That new assertiveness forces Article III courts to step in and draw clearer outer bounds.
Following up on my September 29 post covering the patent and trademark cases at the Supreme Court's long conference, the Court released its order list on October 6, 2025, and the results are in. All patent cases denied.
The Court denied certiorari in all four patent cases that were decided:
Purdue Pharma v. Accord Healthcare (No. 24-1132) - nexus requirements for objective indicia of non-obviousness
Lavery v. Pursuant Health (No. 24-1311) - post-expiration royalty payments under Brulotte and Kimble
R.J. Reynolds v. Altria (No. 25-158) - "built-in apportionment" exception to Garretson damages rules
USAA v. PNC Bank (No. 25-149) - APA review of PTAB IPR decisions (Justice Alito recused)
Two notable absences:MSN Pharmaceuticals v. Novartis (No. 25-225) The Entresto case focusing on failure to describe after-arising technology; and Gesture Technology v. Apple (Nos. 24-1280, 24-1281) PTAB jurisdiction over expired patents. These cases were originally scheduled for the Long Conference, but were delayed by the Court's request for response the respondents. Briefing is ongoing and we'll get a cert decision later this fall.
The USPTO has quietly rolled out substantial changes to its examiner Performance Appraisal Plan (PAP) for FY2026. PAP is the formal framework the USPTO uses to measure, evaluate, and rate patent examiners’ job performance. These changes are made easier because of last month's elimination of union rights of patent examiners (POPA) based upon their presidentially declared national security role. However, this post is based upon discussions with examiners because the USPTO has not released documents regarding the plan.
In US Inventor, Inc. v. United States Patent and Trademark Office, No. 2024-1396 (Fed. Cir. Oct. 3, 2025), a group of inventor advocacy organizations petitioned the USPTO for rulemaking that would allow small entity patent owners to opt out of inter partes review and post-grant review proceedings. The USPTO denied their petition and the orgs sued, led by US Inventor. Their lawsuit was dismissed by the district court and the appellate panel has affirmed - holding that the organizations lacked Article III standing because the alleged injury to their members was too speculative, requiring a chain of contingent events largely dependent on the independent actions of third parties.
US Inventor and National Small Business United had filed a rulemaking petition in August 2020 proposing amendments to 37 C.F.R. sections 42.108 and 42.208 that would prohibit institution of IPR or PGR proceedings if the patent owner objected and met certain criteria, including being a small or micro entity who was the original patent applicant and had actually reduced the challenged claims to practice. The USPTO denied the petition in October 2021, explaining that the issues raised overlapped with those in a separate request for comments and that the petition's suggestions would be considered in any future rulemaking. When the organizations challenged this denial in district court under the Administrative Procedure Act, the district court dismissed for lack of standing, and the Federal Circuit affirmed that dismissal applying D.C. Circuit law.
Associational Standing Requirements
Organizations can assert "associational standing" to sue on behalf of their members if three requirements are met: (1) at least one member would have standing to sue in their own right; (2) the interests at stake are germane to the organization's purpose; and (3) neither the claim nor the relief requires participation of individual members. Only the first element was contested in this appeal. To establish individual standing, a plaintiff must show injury in fact that is concrete and particularized, actual or imminent (not conjectural or hypothetical), fairly traceable to the defendant's conduct, and likely redressable by a favorable decision.
In his first Director Review decision, new USPTO Director John Squires has gone the extra mile -- in addition to granting director review and reversing the Board's decision favoring the patent challenger, Dir. Squires also ordered immediate termination of the proceedings based upon unreliable expert testimony. This more dramatic termination is important because that looks more like a withdrawal of institution which is not appealable.
Blackhawk's challenged U.S. Patent No. 11,488,451 a method for selling pre-printed lottery tickets through a retailer’s existing point-of-sale (POS) terminals without requiring specialized lottery hardware. Instead of printing a new ticket at a dedicated lottery terminal, the system uses pre-manufactured tickets that carry unique identifiers and are activated when scanned and paid for at checkout. This framework allows the pre-printed ticket itself (once activated) to serve as the legal lottery instrument, while enabling lottery sales across all checkout lanes without specialized installations.
Nominal damages are proper - The Patent Act sets a "reasonable royalty" damages floor, but only if there is an evidentiary basis.
Comparable-license apportionment is mandatory - when a comparable license covers more than simply the patent at issue, additional evidence must be presented to the jury to explain how to apportion the license value between the patent at issue in the case, and the other rights licensed.
Click to see images from the patents (kind of gross).
There is a lot to question about this decision, but ultimately I think it comes down to the statement that Intuitive's attorney made at oral arguments:
Melanie L. Bostwick: This is not in the record because Rex didn't do its job in present this evidence.
Background: Days before trial, District Judge Maryellen Noreika excluded Rex's damages expert Douglas Kidder from testifying about the key comparable license in the case—a $10 million settlement agreement between Rex and Covidien that covered not only the '650 patent at issue, but also a related patent that had been the subject of a lawsuit (the '892 patent), eight other U.S. patents, seven U.S. patent applications, and nineteen foreign patents or applications. The district court found that Kidder had failed to adequately apportion the license payment among all these patents, rendering his methodology unreliable.
Trial moved forward without expert testimony. The jury was provided the prior license and heard testimony from Rex's president Lindsay Carter, who had negotiated the prior license. Intuitive cross examined Carter, but did not provide any witnesses or other evidence to prove no damages or a lower damages amount. Intuitive had been prepared to call its own damages expert (Todd Schoettelkotte), who had opined that a reasonable royalty would have been about $1–1.6 million. The Jury ultimately found infringement and awarded $10 million in damages.
On post-trial motions, the district court granted judgment as a matter of law reducing the damages award to $1, finding that the jury lacked sufficient evidence to apportion the Covidien license to the '650 patent alone. The court also denied Rex's request for a new damages trial, reasoning that Rex had the opportunity to present other evidence but chose to rely on the very license the court had already precluded its expert from using. Rex appealed both the exclusion of its expert and the reduction of the jury award, while Intuitive cross-appealed on infringement and invalidity grounds.
Rex Medical, L.P. v. Intuitive Surgical, Inc., Nos. 2024-1072, 2024-1125 (Fed. Cir. Oct. 2, 2025).
The Federal Government's fiscal year begins on October 1, as does the Supreme Court's term. The new term always begins with a "long conference" that considers certiorari petitions briefed over the court's summer break. The conference was held on September 29, 2025, and we will soon be hearing which of these cases (if any) will be granted certiorari.
Patent
MSN Pharmaceuticals, Inc. v. Novartis Pharmaceuticals Corp., No. 25-225
This case addresses whether courts may consider after-arising technology when evaluating patent validity under 35 U.S.C. § 112(a)'s written description and enablement requirements. Novartis's patent for Entresto (a blockbuster heart failure drug generating over $3 billion annually) claimed a combination of valsartan and sacubitril, but the actual commercial product uses a form discovered four years after the patent filing that was not particularly described in the original specification. The Federal Circuit held that later-discovered technology cannot invalidate patents, creating some tension with precedents like The Incandescent Lamp Patent, 159 U.S. 465 (1895), and Amgen Inc. v. Sanofi, 598 U.S. 594 (2023), which seem to require patents to enable the full scope of their claims.
Gesture Technology Partners, LLC v. Apple Inc., No. 24-1280 and 24-1281
These cases questions whether the PTAB has constitutional authority under Article III and the public rights doctrine to conduct inter partes review proceedings on patents that expired before the IPR petition was filed. Gesture Technology's camera-based sensing patents expired in 2020, but Apple filed an IPR petition in May 2021, and the PTAB subsequently invalidated the claims, extinguishing Gesture's ability to collect damages for past infringement. The Federal Circuit held that PTAB has jurisdiction over expired patents because patent owners retain limited rights (damages for past infringement), but Gesture argues that once exclusionary rights expire, only Article III courts can adjudicate retrospective damage claims. Gesture also argues that Apple should be estopped under 35 U.S.C. § 315(e)(1) because Apple is a member of Unified Patents and should be treated as a real party in interest or privy, but the Federal Circuit held Gesture forfeited this argument.
R.J. Reynolds Vapor Company v. Altria Client Services LLC, No. 25-158
This case addresses whether the Federal Circuit's "built-in apportionment" exception violates Garretson v. Clark, 111 U.S. 120 (1884), which requires patentees to "in every case give evidence tending to separate or apportion the defendant's profits and the patentee's damages between the patented feature and the unpatented features." After a 2022 jury trial, Reynolds was found to infringe Altria's e-cigarette patents and ordered to pay $95.2 million based on a 5.25% royalty rate calculated using a lump-sum license. The Federal Circuit majority affirmed in December 2024, finding sufficient evidence of "built-in apportionment" in the comparable license, but Reynolds argues this undermines the fundamental requirement to separate the patent's contribution from unpatented features. Reynolds alternatively requests a grant-vacate-remand in light of the Federal Circuit's intervening May 2025 en banc decision in EcoFactor, Inc. v. Google LLC, 137 F.4th 1333 (Fed. Cir. 2025), which vacated a $20 million damages award and held district courts must rigorously assess damages expert testimony regarding comparable licenses.
United Services Automobile Association v. PNC Bank N.A., No. 25-149
This case presents an administrative law question about whether the PTAB's IPR decision was arbitrary and capricious under the Administrative Procedure Act (APA) when it reached different conclusions than prior PTAB proceedings involving "saliently similar facts" but different parties. USAA owns patents covering mobile check deposit technology, and when Wells Fargo challenged these patents in IPR using functionally identical prior art, the PTAB denied the challenges and found claims not obvious, leading to a $200 million jury award against Wells Fargo in 2019.
Although the federal government shutdown appears ready to begin at 12:01 AM on October 1, 2025, the United States Patent and Trademark Office is likely to continue in normal operation by drawing on its Operating Reserve which the agency has been building up over the past several years. A prolonged shutdown would eventually exhaust the reserves and trigger an end to spending.
The constitutional foundation for shutdown protocols lies in the Appropriations Clause, which provides that "No Money shall be drawn from the Treasury, but in Consequence of Appropriations made by Law." U.S. Const. art. I, § 9, cl. 7. This clause requires congressional approval before executive agencies may spend federal funds. The Antideficiency Act, 31 U.S.C. § 1341 et seq., enforces this constitutional mandate by prohibiting agencies from creating obligations or making expenditures exceeding available appropriations. The Act contains limited exceptions for activities necessary to protect life or property, but routine government operations—including patent examination—do not qualify for these exceptions.
The Antideficiency Act, codified at 31 U.S.C. § 1341–1342, prohibits federal agencies from obligating or expending funds in advance of appropriations, with narrow exceptions for emergencies involving the safety of human life or protection of property. Violations carry criminal penalties. During appropriations lapses, agencies must furlough employees and suspend operations unless funds remain available from prior appropriations or mandatory spending authorities.
Spending of the USPTO's Operating Reserve does not violate this prohibition because these funds were already appropriated in previous fiscal years under prior appropriations legislation. When the USPTO spends from its reserve during a lapse, it is drawing on money that Congress previously authorized for agency use—not creating new obligations without appropriations authority.
The USPTO's Operating Reserve functions as a financial cushion that enables continued operations precisely because these funds were already appropriated in previous fiscal years. The reserve represents unspent balances from prior appropriations that the agency carried forward. When new appropriations lapse, the USPTO does not violate the Antideficiency Act by spending from this reserve because Congress previously authorized the use of these specific funds. This arrangement distinguishes the USPTO from agencies dependent on annual discretionary appropriations with no carryover authority.
Over the past couple of years, I have noticed increased willingness of the Federal Circuit to reject jury verdicts, especially in situations involving potentially inadequate expert testimony. This past summer, the Federal Circuit's en banc EcoFactor decision followed this pattern by overturning a $20 million jury verdict based upon flaws in the patentee's damages expert testimony. EcoFactor, Inc. v. Google LLC, 137 F.4th 1333 (Fed. Cir. 2025) (en banc). In my view, the decision did not alter any law associated with expert testimony, but rather served as a pointed reminder to district to rigorously scrutinize whether the expert's opinions are actually tied to sufficient facts in the record and whether the methodology is reliably applied to the specific circumstances of the case. But, this rigor has some potential of improperly overstepping into the jury's role as fact finder.
The key Constitutional issue is the Seventh Amendment, which guarantees a trial in patent cases where the patentees are seeking legal damages. The Seventh Amendment also prohibits "re-examin[ing]" any fact tried by the jury, other "than according to the rules of the common law." The "common law" language cues the court to look back to 1791 and consider what was available at the time.
EcoFactor presents three questions in its new petition for writ of certiorari:
Whether the Federal Circuit violated the Seventh Amendment by substituting its own evaluation of evidence for the jury's factual findings;
Whether the Federal Circuit applies a uniquely stringent standard for admitting damages expert testimony under Federal Rule of Evidence 702 that conflicts with other circuits; and
Whether the court violated EcoFactor's Fifth Amendment due process rights by deciding the appeal on contract interpretation grounds never raised or briefed by the parties.
The petitioner's basic argument here is that the appellate court engaged in improper reweighing of facts rather than sticking to the narrow post-verdict options available in 1791.
Federal Rule of Evidence 702 governs the admission of expert testimony in federal court. As amended in 2023, the rule requires that expert testimony be based on "sufficient facts or data," use "reliable principles and methods," and reflect "a reliable application" of those principles to the case facts. The district court acts as gatekeeper, admitting expert testimony only when the proponent demonstrates by a preponderance of evidence that these requirements are met. The rule aims to ensure that expert opinions assist the jury without overwhelming it with unreliable speculation.
In a striking early display of directorial authority, newly sworn-in Under Secretary of Commerce and USPTO Director John Squires has vacated a Patent Trial and Appeal Board (PTAB) decision that had entered a new ground of rejection under 35 U.S.C. § 101 against DeepMind Technologies' machine learning patent application. The September 26, 2025 decision in Ex parte Desjardins, Appeal 2024-000567, Application 16/319,040, represents one of Director Squires' first substantive actions since taking office one week ago and offers yet another clear signal that Section 101 reform is building steam. SquiresPTABDecision.
Squires writes:
Categorically excluding AI innovations from patent protection in the United States jeopardizes America's leadership in this critical emerging technology. . . the panel essentially equated any machine learning with an unpatentable 'algorithm' and the remaining additional elements as 'generic computer components,' without adequate explanation. . . . most troubling [the Panel] eschewed the clear teachings of Enfish, and instead substituted only a cursory analysis that ignored this well-settled precedent. Panels should treat such precedent with more care, especially when acting sua sponte.
Finally, and most clearly a signal to all USPTO employees to back-off with regard to patent eligibility, he writes:
This case demonstrates that §§ 102, 103 and 112 are the traditional and appropriate tools to limit patent protection to its proper scope. These statutory provisions should be the focus of examination.
The application, filed by DeepMind (owned by Google) and prosecuted by Fish & Richardson, claims methods for training machine learning models on multiple sequential tasks while avoiding "catastrophic forgetting," which is defined as the phenomenon where neural networks lose knowledge of previous tasks when trained on new ones. As someone with some ADHD tendencies, I recognizing this issue.
On September 23, 2025, John A. Squires—just sworn in as the 60th Director of the USPTO—issued his first public act. In his first official act as USPTO Director, John Squires held a ceremonial signing of two newly issued patents—one covering diagnostic methods using a discovered antibody and the the other a blockchain-based resource allocation FinTech software. U.S. Patent Nos. 12,419,201 and 12,419,202. These choices appear to me a deliberate signal. Squires highlighted technologies that sit squarely within the domains that the Supreme Court and Federal Circuit have restricted most heavily over the past decade via the expanded patent eligibility doctrine of Alice and Mayo. In his remarks, Squires emphasized his intended signal: “the U.S. Patent Office is open for business, especially for the technologies of tomorrow.”
ROSS Intelligence has filed its opening brief in the Third Circuit, challenging Judge Stephanos Bibas's decision that the AI company's use of Westlaw headnotes to train its legal search engine constituted copyright infringement. The case presents fundamental questions about the intersection of copyright law and artificial intelligence training that could significantly impact the development of AI systems across industries. Thomson Reuters Enter. Ctr. GmbH v. Ross Intel. Inc., No. 25-2153 (3d Cir. appeal filed Sept. 2025).
ROSS Intelligence built an AI legal search engine designed to let users ask legal questions in plain English and receive ranked, cited passages from judicial opinions as answers. To train the system, ROSS commissioned 25,000 legal memoranda from LegalEase Solutions, each posing a question and providing multiple ranked answers. Many of the questions were adapted directly from Westlaw headnotes summarize points of law from judicial opinions. These headnote-derived questions served as labeled examples that helped the AI learn how to identify, rank, and distinguish between relevant and irrelevant case passages. Although the headnotes themselves were not displayed to ROSS users, they were incorporated into the training process as inputs, making them central to the copyright infringement dispute between Thomson Reuters (owner of Westlaw) and ROSS.
Judge Bibas' February 2025 decision granted summary judgment in favor of the copyright holder -- finding that Westlaw's headnotes were sufficiently original for copyright protection and that ROSS's use for training did not qualify qualified as fair use. The district court certified the copyright questions for immediate interlocutory appeal under 28 U.S.C. § 1292(b), recognizing the novel and difficult nature of the issues presented.
In its newly filed appeal, ROSS presents two issues:
Is a short quote or paraphrase of a judicial holding copyrightable?
Does the fair use doctrine protect ROSS’s internal use of Westlaw’s headnotes in memos that served as training data for an AI legal search engine that produced only non-infringing outputs?
Two additional mandamus petitions have joined the Federal Circuit's growing docket challenging the USPTO's 2025 shift toward more restrictive inter partes review (IPR) institution practices under President Trump, bringing the total to five pending cases that collectively test the boundaries of appellate review under 35 U.S.C. § 314(d). The newest petitions are In re HighLevel, Inc. (No. 25-148) and In re SanDisk Technologies, Inc. (No. 25-152). Both challenge Director Stewart expanded discretionary denial approach that rescinded the Vidal memo that petitioners had previously relied upon. HighLevel challenges the USPTO's categorical use of § 101 district court rulings to deny IPR institution for §§ 102/103 challenges, while SanDisk attacks the agency's invocation of "settled expectations" and resource management concerns to deny institution despite litigation stays and Sotera stipulations limiting claim scope overlap. Prior Patently-O Posts:
Dennis Crouch, The Power of Unreviewability, Patently-O (July 22, 2025) (exploring how § 314(d) implicates unreviewability of institution decisions; particularly whether legal or constitutional challenges survive when the agency asserts that § 314(d) makes certain decisions final and non-appealable).
The Federal Circuit has requested responses from both the USPTO and IPR petitioners in all five cases (including the earlier In re SAP America, Inc., In re Motorola Solutions, Inc., and In re Google LLC petitions). This is an unusual step that the court often skips in mandamus practice and signals at least some judicial interest in the underlying legal issues.
Each petition attempts to characterize the USPTO's February 28, 2025 rescission of the Vidal Memo and subsequent policy implementations as constitutional violations or ultra vires agency action.
Inter partes review have been shown to be a powerful mechanism for challenging and ultimately cancelling questionable patents. The process was designed by Congress to be somewhat streamlined and thus has a strict limitation that IPR trials only focus on novelty/obviousness and, those challenges must be based only on "prior art consisting of patents or printed publications." 35 U.S.C. § 311(b).
In ordinary patent law, a prior art printed publication consists of some document that was published before the "critical date" of the patent application. Although Section 102 was reorganized somewhat by the America Invents Act, this principle still rings true today as it has for the past 150+ years.
But, here is where it gets weird: in Lynk Labs, the Federal Circuit concluded that for the purposes of 311(b), a "prior art ... printed publication" includes documents that were published well after the challenged-patent's filings date. Treating these as two separate requirements, the court found that a reference could be used so long as it (1) qualified as prior art; and (2) was ultimately published at some point.
Now, Lynk Labs has petitioned the Supreme Court for a writ of certiorari asking:
Whether patent applications that became publicly accessible only after the challenged patent’s critical date are “prior art * * * printed publications” within the meaning of 35 U.S.C. § 311(b).
It is Constitution Day 2025, and I am freshly inspired by a lecture from my Colleague Dr. Carli Conklin on the "pursuit of happiness" as used in the Declaration of Independence. Her scholarship reveals the phrase is not a hedonistic right that might be implied when used today, but rather part a collective project of human flourishing rooted in virtue, knowledge, and useful improvements. Although the Declaration is not directly part of the Constitution document, Professor Akhil Reed Amar's new book, BORN EQUAL: Remaking America's Constitution, 1840-1920, argues that the Declaration's ideals and commitments continued to reshape American constitutional development long after the founding era. In this book, he particularly focuses on how it worked through President Abraham Lincoln during and immediately after the Civil War.
Although "pursuit of happiness" is typically seen as a liberty interest -- a freedom from governmental interference -- historical record also reveals many examples of a more action-oriented approach, where that promise for the people calls for government action to eliminate barriers and "promote the progress." In his first annual message to Congress in 1790, President George Washington declared that "knowledge" is "the surest basis of public happiness." That same speech also urged Congress to act quickly to give "effectual encouragement" to this pursuit, particularly for the "introduction of new and useful inventions" into the United States. Within a few months of President Washington's speech, Congress responded with the Patent Act of 1790.
This post is intended to highlight this underappreciated connection that might already be apparent: the patent system represents one of the federal government's earliest (and most successful) efforts to transform a somewhat abstract right to pursue happiness into a concrete program that enables individual citizens to flourish through innovation and discovery. At the same time, it was never only about private gain. Promoting the progress of the useful arts means channeling individual ingenuity toward improvement of the common good -- ensuring that the fruits of invention would ultimately expand the shared store of knowledge that improves the nation as a whole. In that same 1790 speech, I see Washington referring to this when he spoke of fostering "a wise and happy Government."
Accused infringer iFit Inc. has filed a combined petition for panel rehearing and rehearing en banc in PowerBlock Holdings, Inc. v. iFit, Inc., No. 24-1177 (Fed. Cir. filed Sept. 10, 2025), challenging the Federal Circuit's recent decision finding the automated exercise equipment claims eligible. The petition argues that the panel's holding directly conflicts with the court's precedent in Yu v. Apple Inc., 1 F.4th 1040 (Fed. Cir. 2021) as well as Supreme Court precedent by allowing systems to avoid ineligibility simply by reciting conventional components that perform basic functions at a high degree of generality. The patent in this case seems to me similar to so many others -- it claims a known physical system at a fairly high level of generality and couples that with previously unknown information processing. This combination was enough to overcome an abstract idea challenge - and suggests a roadmap for artful dodging of the eligibility hurdles. In my view, the PowerBlock panel also seems to have have applied a mechanical versus software distinction that is not supported by Supreme Court precedent.
I hope that the original panel will take a hard look at their reasoning. As noted below, I believe there are a couple of specific errors that could be fixed while still reaching the same outcome. That result would help insure that this decision avoids working potential mischief.
The Federal Circuit is still sitting on a trio of related mandamus petitions asking the Court to step-in against the USPTO's 2025 up-ramp of discretionary denial practice.
In re SAP America, Inc., No. 25‑132 and 25-133 (petition filed Jun 16, 2025; briefing complete);
In re Motorola Solutions, Inc., No. 25‑134 (petition filed June 23, 2025; briefing complete); and
In re Google LLC, No. 25‑144 (petition filed August 18, 2025; briefing is ongoing).
In the early days, the USPTO granted very few discretionary denials. Those expanded somewhat under Director Iancu (Trump-I); then retracted somewhat under Director Vidal (Biden). Acting Director Stewart (Trump-II) has blown past Dir. Iancu in her approach, greatly expanding the use of discretionary denials.
An interesting mandamus petition is pending from Inari Agriculture -- asking the Federal Circuit to overturn the PTAB institution denial in a PGR challenging Pioneer Hi-Bred's inbred corn patent. U.S. Patent No. 11,659,803. In its decision, the PTAB denied Inari's obviousness challenge because it failed to sequence and analyze the genome of the deposited seed that defines the claimed plant variety. Inari argues this creates an unconstitutional "Catch-22" where challengers must risk patent infringement liability to file adequate PGR petitions, violating due process and separation of powers principles. [In re_-_ Inari Agriculture, Inc. Petition].
The '803 patent claims "seed, plant, plant part, or plant cell of inbred maize variety 1PFLQ21, representative seed of the variety having been deposited under NCMA accession number 202212046." The specification describes the variety solely through phenotypic characteristics (plant height, silk color, ear length) listed in Table 1, without providing genetic sequence data. Inari's PGR petition argued the claims were obvious based on prior art disclosing the variety's parent line PH1V5T and related varieties with similar phenotypic properties, following the approach endorsed by the Board in Ex parte C, 27 U.S.P.Q.2d 1492 (BPAI 1992), where plant utility claims were found obvious based purely on phenotypic comparison without deposit analysis.
As I noted in my 2024 post, this case is part of a larger ongoing patent dispute between these two companies and there is also a good amount of interesting strategy where Pioneer has obtained patents while keeping the parent lines secret. See, Dennis Crouch, Trade Secrets vs. Patents: Pioneer's Plant Patent Strategy Raises Thorny Issues, Patently-O (Oct. 24, 2024).
This case involves design patent infringement claims over the "Wallet Ninja," a credit-card-sized multi-tool covered by U.S. Patent No. D751,877. Patentee Dynamite Marketing sued Sherman Specialty (d/b/a The WowLine, Inc.). The case was complicated by inventorship disputes involving LaErik Cooper, a mechanical engineer who assisted in developing the design but was not named as an inventor on the patent. A jury ultimately found that Cooper was not entitled to co-inventor status, that Sherman willfully infringed the valid patent through its competing "TOL4" product line, and awarded Dynamite $1,850,000 in lost profits damages. The district court then awarded $1.54 million in attorney fees, bringing the total judgment to over $3.5 million.
On appeal, the Federal Circuit dismissed Sherman's challenge to the inventorship determination because Sherman lacked standing to appeal that issue, since it was not a party to Cooper's inventorship counterclaim and Cooper himself did not appeal his loss. The court affirmed all other aspects of the district court's decision -- including a non-obviousness finding that survived even after the Federal Circuit's intervening LKQ decision changed the legal standard for design patent obviousness.
In re VirtaMove, Corp., No. 2025-130 (Fed. Cir. Sept. 11, 2025) (Google case); In re VirtaMove, Corp., No. 2025-138 (Fed. Cir. Sept. 11, 2025) (Amazon case).
Federal Circuit has denied this pair of related mandamus actions. In both cases, the patentee VirtaMove challenged venue transfer orders moving its patent infringement suits from the Western District of Texas to the Northern District of California. As I discuss below, the non-precedential decisions have some interesting jurisdictional tension with recent Fifth Circuit law.
VirtaMove is a small Canadian software company holding patents on secure application containerization technology. VirtaMove sued Google LLC and Amazon Web Services in the Midland/Odessa Division of WDTX, alleging infringement of patents covering methods for migrating applications into portable, secure containers. Both defendants successfully moved to transfer under § 1404(a), with the district courts (Judge Counts in the Google case, Judge Albright in the Amazon case) finding that the Northern District of California was more convenient primarily due to the concentration of defendants' engineers involved in developing the accused products in the San Francisco Bay Area. VirtaMove's central argument on mandamus was that the district courts misapplied governing law by following Federal Circuit precedent rather than more recent Fifth Circuit authority that VirtaMove claimed established heightened standards for transfer.
28 U.S.C. § 1404(a) provides that "[f]or the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought." I think of this as the "convenient forum rule" which is separate and distinct from the "proper" venue requirements of §§ 1391 and 1400(b).
§ 1404(a) allows courts to determine where the case should be tried for optimal convenience and judicial efficiency. Someone seeking to move a case from one location to another (or as here move-it-back) bears the burden of demonstrating that the proposed transferee forum is "clearly more convenient" than the current venue by analyzing private interest factors (convenience of parties and witnesses, location of evidence, costs of litigation) and public interest factors (administrative difficulties, court congestion, local interest in deciding local controversies, and familiarity with governing law). These factors are not found in the statute, but rather are derived from a variety of precedent.
