The Federal Circuit recently expanded its doctrine associated with specification changes in family member patent applications -- using minor changes in the specification justify differing claim construction across a patent family. FMC Corporation v. Sharda USA, LLC, No. 24-2335 (Fed. Cir. Aug. 1, 2025). This is helpful for careful patent attorneys, but also requires care when drafting non-provisional applications claiming priority back to a provisional. Notably, in both FMC and the 2024 DDR case, the construction hurt the patentee.
The Federal Circuit has denied en banc rehearing in Kroy IP Holdings, LLC v. Groupon, Inc., leaving in place a February 2025 panel decision that significantly limits the collateral estoppel effect of Patent Trial and Appeal Board (PTAB) unpatentability determinations. The denial includes contrasting from Chief Judge Moore and Judge Dyk. [23-1359.ORDER.8-1-2025_2553055]
A former USPTO patent examiner has petitioned the Supreme Court to review his exclusion from practicing before the USPTO. Shah Behnamian argues that the USPTO wrongfully denied his application to register as a patent attorney based on a disciplinary suspension that he claims was discriminatory retaliation. The case raises some questions about how the USPTO evaluates the moral character of former employees seeking to practice before the agency, and whether patent examination itself constitutes a "profession" warranting certain procedural protections under federal regulations. Behnamian v. Coke Morgan Stewart, No. 25-5251 (U.S. July 26, 2025) (Behnamian Petition) (Behnamian Appx).
Behnamian worked as a patent examiner from 2009 until May 2020, advancing to GS-14 level primary examiner with consistently outstanding performance ratings until close to the end of his employment. He ultimately resigned following what he alleges was discriminatory suspension related to his wife's pregnancy. In particular, in 2019, he was charged with being Absence Without Leave (AWOL) for 30 hours and 15 minutes over several days between April and June 2019, while still allegedly logging hours. He received a five-day suspension that he served in March 2020 and resigned a couple of months later.
After resigning, Behnamian applied to practice before the USPTO as a patent agent. The USPTO Office of Enrollment and Discipline initially granted his application, but then reversed course after learning (1) about the suspension that (2) Behnamian did not disclose in his registration application. Behnamian has been pursuing registration since then, in litigation that has now reached the Supreme Court.
In a brief order, the Federal Circuit has denied Fintiv's mandamus petition seeking relief from Judge Alan Albright's decision to move forward with an expedited trial in Fintiv v. Apple. Jury selection started this week and the trial is set to begin on Monday, August 4, 2025.
The Federal Circuit's decision in Jiaxing Super Lighting Electric Appliance Co. v. CH Lighting Technology Co., decided July 28, 2025, represents the first significant application of the court's recent en bancEcoFactor decision to patent damages expert testimony. The appellate panel vacated the $14 million damages award and remanded for a new trial once the district court applies EcoFactor's heightened reliability standards to evaluate the damages expert's testimony regarding apportionment of portfolio license agreements.
Separately, the court also reversed a JMOL of no-invalidity regarding two other patents -- finding that the district court abused its discretion by excluding key evidence that would have supported the invalidity defense. In the post, I take these issues in reverse order - first the JMOL then Damages.
The USPTO moved swiftly to shut down any hope that the Federal Circuit's recent decision in Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., No. 2023-1864 (Fed. Cir. July 14, 2025) had opened a broader pathway for using applicant-admitted prior art (AAPA) to supply missing claim limitations in inter partes review (IPR) proceedings. In a memorandum dated July 31, 2025 (two weeks after Shockwave), Acting Director Coke Morgan Stewart announced that the agency will "enforce and no longer waive" the requirement of 37 C.F.R. § 42.104(b)(4) that IPR petitions "must specify where each element of the claim is found in the prior art patents or printed publications relied upon." This regulatory enforcement appears to effectively prohibits the use of AAPA, expert testimony, common sense, and other forms of "general knowledge" to supply missing claim limitations, regardless of whether petitioners carefully avoid labeling such evidence as the "basis" of their challenges.
In my recent post, I traced how the Federal Circuit’s composition has shifted from a 10-1 Republican majority in the early 1990s to its present 8-3 Democratic-appointed tilt. Dennis Crouch, The Federal Circuit's Shifting Political Balance, Patently-O (June 15, 2025). That transformation has not only symbolic weight, but also real jurisprudential and institutional consequences, especially as the court faces more politically charged litigation such as the pending V.O.S. Selections v. Trump case. I note that the Federal Circuit’s response—en banc proceedings and unanimous per curiam orders—may reflect an institutional effort to shield itself from claims of partisanship.
Jason Rantanen and co-authors Paul Gugliuzza and Jonathan Nash have added more empirical substance to this conversation with a major study of separate opinions and dissents at the Federal Circuit from 2008–2021. Their article, Expertise, Ideology, and Dissent, provides powerful data to help make sense of how political ideology, judicial expertise, and institutional dynamics intersect at this court.
In an unusual move, the Federal Circuit on July 29, 2025, ordered Apple to respond to Fintiv's petition for writ of mandamus seeking to halt the upcoming August 4 trial date over unresolved discovery disputes. In re Fintiv, Inc., Docket No. 25-00142 (Fed. Cir. July 29, 2025). Fintiv Petition.
Fintiv is primarily seeking discovery related to meetings between Fintiv's predecessor (CorFire) and Apple three years before Apple Pay's launch. In those meetings, CorFire allegedly shared key aspects of its patented mobile wallet technology. This includes documents and depositions of three individuals with deep knowledge of those meetings, including one who at the time worked for CorFire and later became Apple's Director of Apple Pay & Wallet Product Management.
The Trump administration is reportedly considering a radical transformation of the US patent system that would replace the current flat-fee maintenance structure with a percentage-based "property tax" on patent value, according to a recent Wall Street Journal report. Howard Lutnick and his Commerce Department team are discussing a tax of between 1% and 5% of overall patent value annually, a shift that could dramatically increase costs for certain patent holders while making the US an international anomaly among major patent systems. The report led to market drops - especially in biotech.
Under the current system established by the Patent Act, patent holders pay three flat maintenance fees: at 3.5 years, 7.5 years, and 11.5 years after patent issuance. The final fee is the largest (currently $8,280), and almost half of all patents are abandoned without paying this final fee. For patents that have become virtually worthless by their 11.5-year mark, owners might actually prefer a value-based tax (2% of nothing...). However, any new proposal would likely be additional to existing maintenance fees rather than a replacement.
One potential approach would focus revenue collection on patents that are demonstrably high-value, using existing public mechanisms for identification. This targeted system could include:
The Federal Circuit's recent decision in Jilin v. US underscores how US courts are fortifying legal foundations for aggressive trade enforcement against China as part of the ongoing global power competition between the two great nations. In a unanimous ruling reversing the Court of International Trade (CIT), the Federal Circuit validated Commerce's decades-old presumption that all Chinese exporters are government-controlled unless they can prove otherwise. See Jilin Forest Industry Jinqiao Flooring Group Co. v. United States, No. 2023-2245 (Fed. Cir. July 28, 2025). Some presumptions are easy to overcome, but this burden that has proven nearly insurmountable in practice.
China's designation as a "non-market economy" (NME) lies at the heart of the case. Under WTO antidumping rules, investigating authorities typically compare export prices to domestic prices in the exporting country to determine if "dumping" has occurred. However, NME status allows the US to disregard Chinese domestic prices entirely, instead using "surrogate country" methodology that substitutes prices from third countries deemed more "market-oriented." The US Tariff Act defines an NME country as "any foreign country that the administering authority determines does not operate on market principles of cost or pricing structures, so that sales of merchandise in such country do not reflect the fair value of the merchandise." 19 U.S.C. § 1677(18)(A). This use of surrogate markets produces systematically higher dumping margins, with Chinese companies face antidumping duties that are substantially higher than other countries. China has (unsuccessfully thus far) argued that this discriminatory treatment should have ended in 2016 when certain provisions of its WTO accession protocol expired.
In its decision, the CIT sided with Jilin on multiple grounds that challenged the fundamental legal basis of Commerce's NME presumption that all Chinese exporters are government-controlled. The court found that Commerce had failed to identify any statutory authority for its policy of presuming all Chinese exporters are government-controlled, noting that "Commerce makes no claim to Chevron deference and . . . identify[ies] no statutory source for the NME presumption." More importantly, the CIT determined that Commerce's presumption directly conflicts with the Anti-Dumping Act's explicit statutory requirement to calculate "individual weighted average dumping margins" for each "known" exporter, including mandatory respondents like Jilin. The court emphasized that while Commerce may apply adverse facts available in certain circumstances, "the statute does not indicate that Commerce can simply assign a rate to a mandatory respondent based on its relationship to an NME government." As Jilin argued in its CAFC brief: "An agency policy is not tantamount to a statute or regulation and is not entitled to deference under Chevron or any other framework."
By my count, we have nine patent cases with en banc petitions pending before the Federal Circuit. I have divided these up into five categories: patent eligibility, claim construction, IPR procedures and estoppel, equitable defenses (estoppel), and design patent infringement.
In July 2025, the Federal Circuit reversed a Trademark Trial and Appeal Board (TTAB) dismissal of a likelihood of confusion opposition in Sunkist Growers, Inc. v. Intrastate Distributors, Inc., No. 24-1212 (Fed. Cir. July 23, 2025), finding that substantial evidence did not support the Board's conclusion that the marks SUNKIST and KIST have sufficiently different commercial impressions to avoid consumer confusion. The complete reversal appears to mean that KIST will be blocked from registration.
I am familiar with the SUNKIST brand based upon its popularity rise as part of my sugary childhood in the 1980s. When I started reading the decision, I thought KIST must be a new upstart, but then I saw that their bottles include the year "1929." As it turns out, both KIST and SUNKIST have surprisingly robust heritage -- both dating back about 100 years. And both with with trademark registrations for soft drinks and soda syrups dating from the 1920s.
The KIST brand changed multiple times over the decades and ultimately, their old registrations were all abandoned in the 2000s for failing to file the required statements of use. Under standard US trademark law, once a mark has been formally abandoned, later resumption of use does not resurrect the original priority date.
The new owners of KIST filed their re-registration efforts in 2019, both with the word mark KIST and also a very simple stylized block letters shown here.
Interestingly, despite KIST's historical longevity, the evidentiary record from recent trademark litigation did not identify any sales between 1970 and 2000. This is important because SUNKIST had relaunched its brand in the mid 1970s and has operated continuously since then. Thus, the case seems to operate from the framework that SUNKIST is the superior mark, and KIST can only be re-registered if there is no likelihood of confusion between the two marks in the minds of consumers.
Since Gunn v. Minton (2013), the Federal Circuit has been quite shy about non-patent patent cases. These are cases where the cause of action is not something like infringement, but that still involve substantial patent law analysis. The newest example is Acorda v. Alkermes (Fed. Cir. 2025) involving a petition to modify an arbitration award based upon patent law public policy issues. The Federal Circuit ultimately transferred the case to the Second Circuit for lack of jurisdiction, holding that because the petitioner had pleaded alternative non-patent grounds for relief alongside its patent law arguments, the patent law issue was not "necessarily raised" under Gunn's first prong—meaning the district court could have granted relief without resolving any substantial question of federal patent law. Acorda Therapeutics, Inc. v. Alkermes PLC, No. 2023-2374 (Fed. Cir. July 25, 2025).
This narrow holding allowed the court to sidestep broader questions about when patent law issues arising in arbitration contexts warrant Federal Circuit review, leaving practitioners and lower courts without clear guidance on the boundaries of Federal Circuit jurisdiction over patent-related arbitration disputes.
A recent petition for certiorari in Crocs v. Dawgs asks the U.S. Supreme Court to clarify whether the Lanham Act's false advertising provision can reach a company's false claims that its product is patented. Crocs argues that the statute's prohibition on misrepresentations about a product's "nature, characteristics, [or] qualities" should be limited to tangible attributes and thus should not extend to intangible legal designations like patent status. I argue here that this interpretation creates a fundamental problem that Crocs appears to have overlooked: the same statutory language applies equally to services, which are inherently intangible and lack any tangible characteristics that could be misrepresented under Crocs' proposed framework. [Petition for a Writ of Certiorari][Appendix]
The case arises from a long-running legal battle between Crocs – maker of the eponymous foam clogs – and Double Diamond (known for “Dawgs” shoes) that began back in 2006 with a design patent infringement lawsuit. The most recent battle grounds is a counterclaim by Double Diamond alleging false marketing under § 43(a) of the Lanham Act (15 U.S.C. § 1125(a)) -- particularly alleging that Crocs falsely marketed the its "Croslite" foam material as “patented,” “proprietary,” and “exclusive.” In fact, the material was not patented and was essentially the same EVA foam many competitors use. Double Diamond contended that this misleading use of patent-related terms gave consumers the (false) impression that Crocs’ material was unique or superior.
In June 2025 SAP and Motorola each filed petitions for writs of mandamus asking the Federal Circuit to order the USPTO to reinstate the Vidal Memo safe‑harbors and to overturn Acting Director Coke Stewart’s decisions to vacate institutions of their inter partes review (IPR) petitions. I have been covering the cases on Patently-O:
It was probably middle school biology where I learned that plants and fungi are classified in two separate kingdoms. It wasn't until today that I learned why - despite their separate classification - both plants and fungi are protectable under the Plant Patent Act of 1930.
Now codified at 35 U.S.C. § 161, the Plant Patent Act adds a third form of U.S. patent, alongside utility (useful inventions) and design (ornamental designs) patents. For a plant patent, the inventor must have invented or discovered and asexually reproduced a "distinct and new variety of plant." The provision expressly include "cultivated sports, mutants, hybrids, and newly found seedlings" but excludes "tuber propagated plant[s]" such as potatoes as well as plants simply found in the wild ("found in an uncultivated state").
In their recent article, Professors Mauro Bambi and Sara Eugeni from Durham University (UK) propose an intriguing hypothesis connecting patent-driven innovation with the global dominance of reserve currencies, particularly the US dollar. They look at Patent Cooperation Treaty (PCT) applications over the years, including high-value "triadic" patent families and argues that higher patenting activities significantly influence central banks' decisions to hold a particular currency as a reserve asset. Eugeni, Sara and Bambi, Mauro, Silicon Valley and the Greenback: Does US Innovation Fuel the Dollar's Global Dominance? (Working Paper from June 26, 2025).
Figure 1 from their paper (above) visualizes this correlation: as a country's share of PCTs increase, so too does the share of its currency in global reserves.
In a decision that broadens the reach of prosecution history estoppel (and thus limits doctrine of equivalents), the Federal Circuit reversed a $106 million jury verdict in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC, No. 2023-2153 (Fed. Cir. July 18, 2025). The court held that prosecution history estoppel barred Colibri from asserting doctrine of equivalents infringement based solely on the cancellation of a broad claim during prosecution—even though the asserted claim itself was original and never amended. This represents a notable, but not surprising, expansion of estoppel doctrine beyond traditional claim amendments to encompass strategic claim cancellations that communicate narrowing to persons of ordinary skill in the art. [23-2153.OPINION.7-18-2025_2546584]
Top Brand LLC v. Cozy Comfort Company LLC, 24-2191 (Fed. Cir. July 17, 2025)
The Federal Circuit has rejected Cozy Comfort's $15 million verdict -- finding that its hoodie design patent was not infringed. D859,788. The case turns on prosecution history - with a holding that the patentee had disclaimed aspects of the design when distinguishing the invention from the asserted prior art.
The image here shows the Top Brand accused design (left), Cozy Comfort's patented design (right), and the White prior art (middle).
After a three-week jury trial, Top Brand was found liable for both design patent and trademark infringement, with the jury awarding $15.4 million for design patent infringement and $3.08 million for trademark infringement of "THE COMFY" mark. The district court denied judgment as a matter of law, but the Federal Circuit reversed on both counts.
The Federal Circuit continues to grapple with fundamental questions surrounding the USPTO’s broad discretionary authority to deny Inter Partes Review (IPR) petitions. Both implementation issues by former Director Vidal as well as the about-change by Acting Director Stewart.
In two recent posts, I discussed the pending In re SAP, 25-132 (Fed. Cir. 2025), mandamus action that challenge the "retroactive" actions by Director Stewart -- particularly rescinding the 2022 "Vidal Memo," which had provided explicit safe harbors for IPR petitions to avoid discretionary denials. SAP argues that Stewart’s reversal constitutes an unlawful retroactive policy shift, violates due process, and exceeds administrative authority. Several new briefs opposing mandamus have now been filed in the case, with the USPTO's response expected July 21, 2025, following an extension.
This dispute hinges upon the USPTO’s internal guidance documents governing discretionary denials of IPR petitions under the Fintiv framework, originally developed in PTAB precedent under Director Iancu (favoring patentees) and later modified by Director Vidal (favoring petitioners). SAP relied on Vidal’s 2022 guidance, which offered two clear safe harbors: (1) a broad Sotera stipulation in which petitioners agree not to pursue overlapping invalidity grounds in parallel litigation, or (2) a petition presenting a “compelling” case for invalidity. The rescission announced by Chief Judge Boalick in early 2025 withdrew these safe harbors and ultimately expanded upon the original NHK-Fintiv factors to include additional justifications for discretionary denials. The new approach was then retroactively applying to pending petitions such as SAP’s that included a Sotero stipulation. After initially meeting the standards set under Vidal’s memo, SAP’s petition was nevertheless denied under the revived, broader factors. The PTAB specifically rejected SAP’s stipulation as insufficient, stating that SAP could still raise "system" prior art defenses not covered by the stipulation in parallel district court litigation, thus undermining judicial economy and efficiency.
