The Federal Circuit's decision in Janssen v. Teva narrows the scope of the overlapping-range presumption of obviousness, holding that when a patent claim involves an integrated, time-dependent sequence of steps rather than a simple selection of numeric values, courts must conduct a full obviousness analysis instead of applying the presumption that overlapping ranges are obvious.
The upcoming Supreme Court petition in Lynk Labs, Inc. v. Samsung Electronics Co., 125 F.4th 1120 (Fed. Cir. 2025), presents more than just another dispute about inter partes review scope. In my mind, it highlights a fundamental conceptual tension that has largely gone unnoticed in patent law discourse: the ambiguity in what we mean by "prior art" itself. This manifests as a clash between two competing frameworks that I call "prior art as document" versus "prior art as process." This distinction is crucial because it explains why seemingly straightforward statutory language in 35 U.S.C. § 311(b) becomes so contentious when applied to the "secret" or "springing" prior art under § 102(a)(2).
In Lynk Labs, the Federal Circuit held that a patent application filed by a competitor but kept secret until after the challenged patent's filing date could be used as prior art in an IPR proceeding. Samsung had successfully challenged Lynk's patent using an earlier-filed patent application (the "Martin" reference) that was filed in April 2003—months before Lynk's February 2004 priority date—but did not publish until October 2004, well after Lynk's filing. The court concluded that this reference satisfied § 311(b)'s requirement that IPR challenges be based on "prior art consisting of patents or printed publications" because the prior application had, by the time of the IPR, become a "printed publication" and § 102(a)(2) independently established its prior art status. Although 102(a)(2) does not define a "prior art . . . printed publication," it does create "prior art," and the documentary evidence is a "printed publication."
During claim construction proceedings, The patentee Egenera and defendant Cisco disputed several claim terms including "computer processor/processor" and aspects of "emulate Ethernet functionality over the internal communication network". However, "neither party asked the district court to determine what the patent specifically means by 'emulate Ethernet functionality,'" content to leave this key term to its "plain and ordinary meaning." This strategic choice ultimately proved fatal when the case reached summary judgment. The district court found that Cisco's CPUs "used" Ethernet functionality but found no evidence of emulation, concluding that "use of a communications network is not emulation of the functionality of that network."
The pending Radian Memory case could fundamentally reshape patent litigation. This is a follow-on article about the preliminary injunction motion in Radian Memory v. Samsungpending before Judge Gilstrap in the Eastern District of Texas. The patentee-plaintiff is a non-practicing entity -- but still argues that it has a right to injunctive relief based upon traditional equitable principles, even under the requirements of eBay. In June, the DOJ and USPTO filed a statement of interest in the case supporting the availability of injunctive relief as pro-competitive. Both sides have now provided additional arguments with a July 16 evidentiary hearing scheduled. Radian particularly argues that the recent Supreme Court cases of Trump v. CASA, Inc., 24A884, 602 U.S. ___ (June 27, 2025) and Mahmoud v. Taylor, 24-297, 602 U.S. ___ (June 27, 2025), reaffirm that the key source of law should be founding-era equity practices. The key sticking point for NPE injunctive relief is irreparable harm -- and Radian's point is that the founding era cases are clear that ongoing infringement of a property right inherently causes irreparable harm.
Radian’s argument has some legs -- and would be a major transformation if successful. Almost certainly, the “principles of equity” in 35 U.S.C. § 283 incorporate the historical practices of English Chancery and the Founding era. Although eBay has been read as eliminating any presumption of irreparable harm due to ongoing infringement, that result is only implied by the case. eBay itself made historical errors that make it difficult to know whether the court intended to apply a straight historical analysis, or one that is more fictionalized.
Acting Director Coke Morgan Stewart has been incredibly active in reshaping the PTAB's approach to IPR discretionary denials. This post focuses on her newly implemented "settled expectations" doctrine that treats patent age as a primary factor for denying institution. This new framework was formalized in the March 26, 2025 "Interim Process for PTAB Workload Management" memorandum and subsequently applied in a series of Director Discretionary Denial decisions in June 2025. The doctrine creates a temporal shield for older patents and calls forth some interesting parallels to existing doctrine, including laches and trademark incontestability.
This post digs into the pending mandamus action In re SAP. In the case, SAP raises a constitutional challenge to Director Stewart's aggressive discretionary denial approach -- as a violation of both due process and separation of powers.
The IPR statute provides the USPTO Director virtually unreviewable authority to grant or deny inter partes review (IPR) petitions. As part of the initial implementation of the IPR system, then USPTO Director Dave Kappos delegated authority to the PTAB to make those determinations. But, Acting Director Coke Morgan Stewart has substantially shifted the practice in recent months by substantially expanding the scope of discretionary institution denials -- these are refusals to institute IPRs even when the petition raises a substantial enough patentability challenge. Under Director Vidal, one important approach avoid discretionary denial was the Sotera safe harbor, stemming from Sotera Wireless, Inc. v. Masimo Corp.. In Sotera, the petitioner stipulated that it would not pursue in the parallel litigation any invalidity ground that it could raise in the IPR, thus eliminating most potential overlap in issues between the IPR and any parallel litigation. This broad stipulation (often called a “Sotera stipulation”) became a de facto safe harbor that was then formally embraced by a 2022 memorandum by Director Kathi Vidal. That memo clearly stated that the the Board would not discretionarily deny institution” in two key situations: (1) when the petitioner agreed to a broad Sotera stipulation (foregoing any invalidity arguments in court that could have been raised in the IPR), despite ongoing parallel litigation, or (2) when the petition presented a “compelling” unpatentability challenge. This interim guidance operated as binding agency internal policy that curbed Fintiv denials and reassured petitioners that certain bright-line safe harbors would be respected. The result was a substantial decrease in discretionary denials.
Fast forward to 2025 and dramatic policy changes by Acting Director Coke Morgan Stewart substantially increasing discretionary denials. In particular, Stewart rescinded the June 2022 Vidal memo and ultimately reinstated the broader pre-2022 Fintiv framework. A Sotero stipulation is no longer sufficient to avoid discretionary denials, and Director Stewart has more recently expanded the justifications for discretionary denials, including "settled expectations" where the patent issued 7+ years ago and was not challenged during that interim.
Importantly for SAP, this policy change was applied immediately and retroactively to pending cases. In other words, IPR petitions filed while the Vidal Memo was in effect could still be decided under the new more expansive discretionary denial regime, as long as the PTAB had not yet instituted by the time of the rescission. This is precisely what happened to SAP.
Eye Therapies v. Slayback offers a concerning example of the Federal Circuit departing from well-established patent claim construction doctrine. In this case, the court abandoned the standard interpretation of the transitional phrase "consisting essentially of" after finding that the patentee's prosecution statements created sufficient grounds to narrow claim scope. As I explain below, in my opinion, this result conflicts with the court's own Ecolab precedent and threatens to shift claim-transition interpretation from its traditional position as a canon of claim construction.
Judge Alsup issued his controversial unenforceability decision in Sonos v. Google back in October 2023, and the appeal has been pending since then. The Federal Circuit recent scheduled arguments for July 10, 2025. I wanted to offer a bit of a preview of these upcoming oral arguments.
In 2020, Sonos sued Google for infringing its “zone scenes” patents, which cover techniques for grouping networked speakers into saved scenes (including overlapping groups of speakers). U.S. Patent Nos. 10,848,885 and 10,469,966. A jury found Google liable and awarded $30 million in damages. N.D.Cal. Judge William Alsup then took the unusual step of throwing out the verdict. Ruling on post-trial motions, Judge Alsup found the two patents unenforceable due to prosecution laches and invalid for lack of written description support. Sonos promptly appealed, and it is that appeal that is now pending.
Judge Alsup’s Decision: In his 55-page order, Judge Alsup found that Sonos had engaged in a “daisy chain” continuation strategy to keep its patent family alive for over 13 years. Sonos filed an initial provisional application in 2006, but did not present the asserted overlapping-scene claims for examination until 2019. By then, Google and others had already developed and sold products implementing the overlapping-zone technology.
I learned of this significant development from Michael Shapiro's Bloomberg article reporting that the U.S. government took the unusual step of filing a statement of interest in a district court patent case, urging consideration of preliminary injunctive relief for a non-practicing entity (NPE). Radian Memory Systems LLC v. Samsung Electronics Co., No. 2:24-cv-1073 (E.D. Tex. 2025). The June 24, 2025 filing represents a notable intervention by both the Department of Justice Antitrust Division and the U.S. Patent and Trademark Office in what is part of its "America First Antitrust Enforcement" efforts.
Driscoll's operates as the world's largest berry company, controlling about one-third of the $6 billion U.S. berry market. For the most part, however, Driscoll's does not grow the berries itself, but rather develops new varieties and then licenses their use through local farmers across dozens of countries. These agreements include anti-breeding provisions layered on top of their plant patent rights.
The defendant in this case, California Berry Cultivars, LLC (CBC), was founded by Dr. Doug Shaw, a former UC Davis professor who led the university's strawberry breeding program for decades. In 2017 Shaw was found liable for infringing several UC Davis strawberry patents. During the UC litigation, some documents apparently revealed that CBC had used Driscoll's varieties in their breeding programs.
Driscoll then sued Shaw and CBC for infringement of their patents. PP 18,878; PP 22,247; and PP 23,400. Ultimately, however, the district court sided with the accused infringer -- granting summary judgment based upon Driscoll’s failed to produce sufficient evidence that patented plants were specifically used as maternal plants (i.e., the plant bearing the seeds) in the crosses, or that any seeds derived from patented plants were imported or used within the United States.
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."
I did a double-take earlier this week as I read the 1923 Supreme Court case of Woodbridge v. U.S., 263 U.S. 50, 44 S.Ct. 45. Although the case was decided after WWI, the facts center on a cannon projectile patent originally filed in 1852 – well before the U.S. Civil War. The 70 year saga involved the inventor’s prolonged quest for a patent (and later for compensation). The Supreme Court’s ultimate decision, delivered by the former U.S. President and Chief Justice Taft, planted the seeds for what we now call prosecution laches – the equitable doctrine barring patents obtained after unreasonable, prejudicial delay in prosecution.
The Supreme Court is being asked to decide whether the PTAB can invalidate expired patents through inter partes review, in a case that could limit the reach of the landmark Oil States decision that found IPRs constitutionally permissive. In Apple Inc. v. Gesture Technology Partners, the Federal Circuit ruled that PTAB retains jurisdiction over expired patents, but the patentee argues in its petition that once patents expire, they become purely private property rights that require traditional court adjudication rather than administrative review. Certiorari petition - Gesture v. Apple.
In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 584 U.S. 325 (2018), the Supreme Court upheld the constitutionality of inter partes review (IPR) proceedings under Article III and the Seventh Amendment. Older property rights cases had barred administrative action to eliminate private property rights. But Oil States distinguished those cases -- holding that the patent is “the grant of a public franchise” – a government-conferred right to exclude others for a limited time. Because a patent “did not exist at common law” but is a creature of statute, Congress may condition or qualify that grant, including by providing for administrative reconsideration of the patent’s validity.
Under this framework, Oil States placed patent validity determinations within the Court’s public-rights doctrine, which permits adjudication in non-Article III forums for matters “closely integrated into a public regulatory scheme” involving the government. The Court explained that IPR “does not make any binding determination regarding ‘the liability of [one individual] to [another] under the law’” – instead, it remains a matter between the patent owner and the government (acting to correct its own grant). Because of this public-rights framing, the Court found no Article III violation in assigning patent reconsideration to the PTAB. Likewise, the Seventh Amendment jury right was not triggered: the IPR was not a “Suit at common law” between private parties, but an administrative proceeding reviewing a public franchise grant. Oil States ultimately likened IPR to a specialized extension of the patent examination process.
Notably, Oil States emphasized the narrowness of its holding. The Court explicitly reserved judgment on “whether other patent matters, such as infringement actions, can be heard in a non-Article III forum.” But, Oil States does not discuss the extent its reasoning would apply once a patent’s term had ended.
CeramTec GmbH v. CoorsTek Bioceramics LLC, (formerly known as C5 Medical Werks, LLC)
CeramTec GmbH has requested a 30-day extension to file a petition for certiorari in its dispute with CoorsTek Bioceramics LLC over pink ceramic hip implants, setting up what could be a significant Supreme Court review of the intersection between expired utility patents and trademark protection. The case presents a fairly clean vehicle for resolving a circuit split over the proper interpretation of TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001).
In TrafFix, the Court held that when features are claimed in an (expired) utility patent, this constitutes "strong evidence" that those claimed features are functional and thus ineligible for trademark protection. In CeramTec, the Federal Circuit took this holding a step further -- holding that a feature (pink coloration) that could result from practicing an expired patent was presumptively functional, regardless of whether the patent actually teaches advantages for that specific feature.
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.
In Ancora v. Roku, the Federal Circuit relaxed the rigid nexus requirement for objective evidence of non-obviousness -- but only for patent licensing evidence. The court emphasized that actual patent licenses (those worth > litigation costs) inherently reflect the validity of the patented technology. This decision contrasts with stricter standards still imposed on other types of objective indicia. Ancora Technologies, Inc. v. Roku, Inc., 2023-1674 (Fed. Cir. June 16, 2025).
In a significant decision with implications for patent litigation practice, the Federal Circuit has vacated both infringement and damages judgments totaling $300 million in Optis Cellular Technology v. Apple Inc., finding multiple errors by the Eastern District of Texas that undermined the validity of the jury's verdict. Judge Prost's opinion identified four distinct areas of reversible error:
Improper verdict form construction that violated Apple's Seventh Amendment right to jury unanimity,
Incorrect patent eligibility analysis under 35 U.S.C. § 101,
Erroneous means-plus-function determination under 35 U.S.C. § 112 ¶ 6, and
Abuse of discretion in admitting prejudicial settlement evidence under Federal Rule of Evidence 403.
Optis asserted several standard-essential patents (SEPs) covering Long-Term Evolution (LTE; aka 4G) technology against various Apple devices including iPhones, iPads, and Watches. After an initial jury verdict awarding $506.2 million, the district court granted a new trial on damages only, finding that the jury had not heard evidence regarding Optis's FRAND (fair, reasonable, and non-discriminatory) licensing obligations. The second jury awarded $300 million as a lump sum for past and future sales.
Competing jury form proposals
(patentee in green; accused in blue):
Single Broad Verdict Form from Judge Gilstrap
How Much is Hidden in the Jury Black Box: Patent cases are extremely complicated. And, this one involved five separate patents, including allegations of both literal and DOE infringement, willful infringement, and invalidity. In situations like this, district court judges look for ways to simplify the jury decision making. Judges often have legitimate concern that lay jurors will be overwhelmed by highly technical claim constructions and complex infringement theories across multiple patents, potentially leading to decisions based on confusion rather than careful consideration of the evidence. And, judges worry that overly detailed verdict forms increase the risk of logically inconsistent findings, which can complicate post-trial proceedings and create appellate complications.
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.
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.
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."
