by Dennis Crouch

The USPTO has begun implementing a comprehensive enforcement system for false assertions of small entity and micro entity fee status. This is continuation of a process began under Director Vidal and implementation of statutory changes in 2023.  See Statutory Penalties for False Assertions or Certifications of Small and Micro Entity Status (June 2025).  The memo explains a notice-and-order process that removes applications from examination pending resolution and can result in significant financial penalties, examination delays, and patent term adjustment reductions for applicants who improperly claim small or micro entity status.

2023 legislation added a penalty provisions to 35 U.S.C. § 41(j) for small entity violations and § 123(f) for micro entity violations. A subsequent December 2024 amendment added explicit good faith exceptions to both penalty provisions.  The statute provides for a penalty of "not less than 3 times the amount that the entity failed to pay as a result of the false certification" and does not provide a timeline for enforcement - noting that the fine applies "whether the Director discovers the false certification before or after the date on which a patent has been issued."

by Dennis Crouch

The new Realtek decision highlight an interesting quirk of ITC appeals: a jurisdictional gap associated with review of ITC sanctions decisions.  Here, court dismissed Realtek's appeal from the ITC's denial of sanctions against Future Link Systems, finding it lacked jurisdiction to review sanctions decisions that are not ancillary to a final determination. Realtek Semiconductor Corporation v. International Trade Commission, 2023-1187 (Fed. Cir. June 18, 2025).

The case involved a litigation financing arrangement that included a lump sum payment from MediaTek to Future Link if Future Link filed suit against Realtek.  Realtek called this the "$1 million bounty clause." While the administrative law judge expressed "alarm" at this agreement and questioned its lawfulness, no sanctions were ultimately imposed. The Federal Circuit's dismissal for lack of jurisdiction means this potentially improper arrangement will not receive appellate review.

by Dennis Crouch

Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung e.V. v. Sirius XM Radio Inc., 2023-2267 (Fed. Cir. June 9, 2025)

In this infringement case, Judge Bataillon (D.Del) sided with the accused infringer on summary judgment -- finding that Fraunhofer's infringement claim was barred by equitable estoppel. The Federal Circuit reversed on appeal - finding genuine disputes of material fact on the key estoppel issue of detrimental reliance. Although equitable estoppel remains an important defense, the case makes clear that it requires more than post-hoc rationalization of business decisions.  Instead, defendants must show they actually considered and relied upon the patentee's conduct when making key infringement decisions.

The case involves a fairly complex licensing dispute regarding multicarrier modulation technology used in satellite radio systems. Fraunhofer is a German research organization and patent holder that licensed its MCM patents to WorldSpace back in 1998. WorldSpace then sublicensed the technology to XM Satellite Radio (now SXM) for use in developing the XM DARS satellite radio system. WorldSpace filed for bankruptcy in 2008 and its trustee used the bankruptcy powers to reject reject the Fraunhofer agreement. Fraunhofer claims that rejection eliminated the sublicense to SXM.  (The legal status is disputed.) Fraunhofer waited until 2015 to notify SXM of potential infringement, and ultimately sued in 2017 over the now-expired patents.

In the past, defendants raised the equitable defense of laches in cases (like this  one) involving significant delays by patentees in asserting their rights. However, the Supreme Court's decision in SCA Hygiene v. First Quality, 580 U.S. 328 (2017), eliminated laches as a defense to damages claims for patent infringement. The Court held that Congress's enactment of a specific six-year limitations period precluded application of the judge-made laches doctrine within that statutory window. By eliminating that previously common defense, SCA Hygeine heightened the importance of the somewhat parallel defense of equitable estoppel.

But, as discussed below, equitable estoppel requires proof beyond simply unreasonable enforcement delay.

by Dennis Crouch

The Federal Circuit today issued a detailed scheduling order expedited resolution of the constitutional challenge to President Trump's global tariff program. V.O.S. Selections, Inc. v. Trump, Nos. 2025-1812, 2025-1813 (Fed. Cir. June 13, 2025). The per curiam order, issued by all participating active judges sitting en banc (excluding Judge Newman), establishes a six-week briefing schedule culminating in oral arguments on July 31, 2025—less than two months after the Court of International Trade's permanent injunction against the tariffs.  The court allocated 45 minutes per side for oral argument, double the typical time, signaling recognition of the case's exceptional constitutional significance.

The case consolidates two separate CIT cases - one filed by commercial actors led by V.O.S. and the other led by the State of Oregon.   The scheduling order explicitly authorized separate response briefs for the two plaintiff groups, rather than requiring coordination.  The order also permits amicus participation by waiving the usual consent and leave requirements -- there will likely be extensive third-party briefing.

Although the CIT issued a permanent injunction against President Trump's tariffs, earlier this week the Federal Circuit issued an emergency stay pending resolution of the appeal. This means that the White House can move forward with its tariffs.

Timeline for the appeal:

• Opening brief by US and any supporting amici: June 24.*
• Responsive briefs by V.O.S. and Oregon and any supporting Amici: July 8.
• Reply: July 18.
• Full Appendix: July 23.

by Dennis Crouch

In a significant development that places the Federal Circuit at the center of a major  political debate and constitutional question, the court recently issued a rare en banc order granting the United States' motions for stays of permanent injunctions that had halted President Trump's sweeping tariff program. The unanimous per curiam order in V.O.S. Selections, Inc. v. Trump allows the contested tariffs to remain in effect while the court considers what it characterized as "issues of exceptional importance warranting expedited en banc consideration of the merits in the first instance." [ORDER].

The Federal Circuit's decision comes against a backdrop of contradictions between the Trump administration's public posture and its private legal arguments as detailed in recent NYTimes reporting. While Commerce Secretary Howard Lutnick publicly dismissed the lower court's adverse ruling as costing them only "a week, maybe" and insisted that other countries "came right back to the table," the government's emergency filings argued that the injunction could "catastrophically harm our economy" and create a "foreign policy disaster scenario."  Similarly US Trade Representative Jamieson Greer publicly characterized the court challenge as "just kind of a bump in the road," while simultaneously filing sworn declarations arguing that halting the tariffs would deal a devastating blow to sensitive trade negotiations."

The Federal Circuit delivered an important clarification on the enablement standard for prior art Agilent Technologies, Inc. v. Synthego Corp., No. 2023-2186 (Fed. Cir. June 11, 2025), affirming PTAB decisions that invalidated all claims of two CRISPR gene-editing patents. The case featured arguments by IP luminaries Mark Lemley and Edward Reines, with the patent challenger, Reines, coming up on top this time.  The case distinguishes Amgen Inc. v. Sanofi, 598 U.S. 594 (2023): establishing clear boundaries between the enablement requirements for patent validity under 35 U.S.C. § 112 and the enablement standards for anticipatory prior art under § 102.

The unanimous Judge Prost decision also establishes that abandoned patent applications and research projects retain their full potency as prior art, rejecting arguments that abandonment should diminish their anticipatory effect.  The patentee's appellant brief had pointedly asked:

Did the Board err in finding that the claims were anticipated by and obvious over a prior art reference that never worked, was ultimately withdrawn, and which offered quadrillions of possible art combinations with no guidance to choose one that might work?

In rejecting the appeal, the court reinforced that prophetic examples in prior art can serve as anticipating references even in unpredictable fields, provided they contain sufficient enabling disclosure, and also concluded that the PTAB's decision was based upon substantial evidence.

by Dennis Crouch

The Supreme Court has rescheduled its consideration of the copyright statute of limitations petition in RADesign v. Michael Grecco (No. 24-768), moving the conference from May 29, 2025, to June 5, 2025. This delay appears strategic, as the Court has simultaneously distributed for the same June 5 conference another intellectual property limitations case: Jem Accessories, Inc. v. Harman International Industries, Inc. (No. 24-1011), which presents questions about laches in trademark law.  Both of these cases are sparked by prior statute of limitations cases - particularly the two laches cases of Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014) (copyright) and SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 580 U.S. 328 (2017) (patent) alongside the 2024 SOL case of Warner Chappell Music, Inc. v. Nealy, 601 U.S. ___ (2024).

The pairing of these cases suggests the Court may be considering extending its trans-doctrinal approach to limitations and laches doctrines across intellectual property law. Both petitions raise basic questions about when rights holders must act to preserve their claims, though they approach the issue from different statutory frameworks.

by Dennis Crouch

Micron Technology has petitioned the Supreme Court for a writ of mandamus to reverse a discovery order requiring the company to produce 73 pages of its most sensitive source code in paper form to Chinese state-owned semiconductor manufacturer Yangtze Memory Technologies Company (YMTC). The case, In re Micron Technology Inc., presents significant questions about the enforcement of protective order terms and the consideration of national security concerns in patent litigation discovery.  The dispute centers on YMTC's request for printed copies of source code from Micron's "150 Series Traveler Presentation," which apparently describes the company's most technologically advanced 3D NAND semiconductor products and contains code that fewer than a dozen of Micron's 50,000+ employees have access to.  Micron is seeking to turn this into a national security and competitiveness issue based upon the fact that YMTC was only founded in 2016 but has already become the global leader in 3D NAND flash based upon strong support from the Chinese government.  The company is also listed in the "Entity List."

• Read the Petition.
• Lower Court Decisions.
• The Agreed Upon Protective Order.

by Dennis Crouch

In Dolby v. Unified Patents, the Federal Circuit confronted an unusual procedural question: can a patent owner who prevails in an inter partes review (IPR) challenge the PTAB's reasoning underlying that favorable outcome? The court's answer was a resounding no - at least in this instance - dismissing Dolby's appeal for lack of standing.

Dolby successfully defended its patent claims before the PTAB, with the Board concluding that Unified Patents failed to prove any challenged claims unpatentable. Yet Dolby appealed, seeking not to overturn this favorable result but to challenge the Board's refusal to determine whether Unified had properly identified all real parties in interest under 35 U.S.C. § 312(a)(2). This statute requires that a petition "may be considered only if the petition identifies all real parties in interest."

Dolby argued that nine additional entities should have been named as additional real parties in interest, but the Board declined to adjudicate this dispute. Following its precedential decision in SharkNinja, the Board explained that it would not resolve real party in interest disputes unless they were material to time bar or estoppel issues in the current proceeding. Since no such issues were implicated, the Board saw no need to determine the identities of the actual parties behind Unified's challenge.

by Dennis Crouch

On May 28, 2025, the Court of International Trade issued a sweeping permanent injunction against President Trump's unilateral global tariffs, only to have the Federal Circuit grant an immediate administrative stay in a rare en banc order.  The stay is likely to remain in place only for about two weeks as the Court considers (likely en banc) whether to allow the tariffs to remain in place while it considers the merits of the U.S. government's appeal.  The dispute centers on fundamental questions about the scope of presidential emergency powers under the International Emergency Economic Powers Act (IEEPA) and represents one of the most significant judicial challenges to executive trade authority in decades.

The Court of International Trade's decision in V.O.S. Selections, Inc. v. United States, Slip Op. 25-66 (Ct. Int'l Trade May 28, 2025) [CIT Decision], struck down both President Trump's "Worldwide and Retaliatory Tariffs" and his "Trafficking Tariffs" as exceeding congressional delegation of authority.  The underlying legal framework is that the U.S. Constitution grants Congress, not the President, authority to set tariffs.  However, Congress has expressly delegated aspects of that authority to the President - most particularly under IEEPA, which authorizes the President to "regulate . . . importation" of foreign goods during declared national emergencies to address "unusual and extraordinary threat[s]" to national security, foreign policy, or the economy. 50 U.S.C. § 1702(a)(1)(B), § 1701(a). Congress enacted IEEPA in the 1970s after determining that President Nixon had abused a prior, more expansive delegation under the Trading with the Enemy Act (TWEA). See United States v. Yoshida Int'l, Inc., 526 F.2d 560 (C.C.P.A. 1975).

by Dennis Crouch

Acufloor, LLC v. EvenTile, Inc., No. 2023-1887 (Fed. Cir. May 28, 2025)

Although new, this case offers a classic claim construction debate with three-way divide between the majority, dissent, and district court over what counts as the "edge" of a tile. The patents here cover a tile leveling device used during install to avoid "lippage"—where one tile's edge is higher than an adjoining tile's edge. The key dispute centered on what constitutes the "edge" of a tile when the claims require "edge-to-mortar-to-subfloor contact."  U.S. Patent Nos. 10,704,274 and 10,513,857.

• Video of Operation: Presenting the Eventile Leveling System

The accused devices operate near the edge of the tile, but do not allow direct tile-to-mortar-to-subfloor contact at the very edge of the tile.  By arguing for a narrow construction of "edge"—limited specifically to the precise boundary line of the tile's surface—the defendants position themselves outside the patent claims.  The district court agreed and narrowly construed edge to "the line at which a surface of a tile terminates."  On appeal, both the the majority (Judge Bryson, joined by Judge Lourie) and the dissent (Judge Stark) agreed that the district court's construction was too narrow—concluding that "edge" of a tile in this patent is wider than the Euclidian edge definition.  However, the majority and dissent disagreed on whether the claimed "edge" contact necessarily include the very edge of the tile.

The majority construes "edge" to include the very boundary line of the tile, but also extends slightly inward to include some portion of the tile's surface adjacent to that line. In contrast, the dissent argues for a broader construction where the claimed "edge" is defined more expansively as a region or area around the tile’s boundary, and thus does not require mortar to reach precisely to the boundary line.