In Centripetal Networks, LLC v. Palo Alto Networks, Inc., No. 2023-2027 (Fed. Cir. Oct. 22, 2025), the Federal Circuit held that an administrative patent judge's stock ownership in petitioner did not required vacatur of the PTAB institution and final written decisions. The case is almost exactly parallel to a prior federal circuit decision vacating a $1.9 billion district court judgment -- with the court explaining the difference being that Article III judges are held to a different ethical standard than PTAB judges.
Although the patentee lost lost the recusal argument, it won on a separate argument -- that the PTAB failed to consider specific evidence of copying in its obviousness analysis. This part of the case thus reinforces the idea that secondary considerations evidence must always be evaluated if presented.
Economic historian Joel Mokyr recently received the 2025 Nobel Prize in Economics (shared with Philippe Aghion and Peter Howitt) for reshaping our understanding of why historic sustained technological progress and economic growth emerged in Europe in the 1700s. For patent law scholars and practitioners, Mokyr's work offers critical historical perspective on a question that echoes through modern IP policy debates: what institutional arrangements best promote innovation? His historic answer from the Industrial Revolution push against any patent-centric narrative, but still argue that knowledge dissemination is the key factor.
Mokyr's central insight is that the explosion of sustained economic growth beginning around 1750 resulted from an unprecedented accumulation and circulation of what he terms "useful knowledge." Joel Mokyr, Intellectual Property Rights, the Industrial Revolution, and the Beginnings of Modern Economic Growth, 99 Am. Econ. Rev. 349 (2009). This useful knowledge encompasses both propositional knowledge (understanding laws of nature and scientific principles) and prescriptive knowledge (understanding how to do things through practical techniques and skills). What made the Industrial Revolution revolutionary was not simply the existence of clever inventions, but rather the creation of positive feedback loops between scientific understanding and practical application, amplified by new institutions and cultural norms that encouraged the wide dissemination of both types of knowledge. The Enlightenment subsequently fostered what Mokyr calls an "Industrial Enlightenment" where artisans began engaging with natural philosophy and knowledge became viewed as a public good meant to improve human welfare rather than a proprietary secret to be guarded.
At this time, encyclopedias, technical journals, public lectures, and open demonstrations allowed practical knowledge to spread rapidly. The Royal Society of Arts promoted useful inventions through prizes and encouraged inventors to publish their methods rather than seek patents. Scientific academies in France and elsewhere operated similarly, offering pensions and honors to inventors who contributed to public knowledge. What emerges from Mokyr's account is a picture of innovation as fundamentally a social and cumulative process, with inventors standing on the shoulders of giants, as captured by Newton's famous phrase.
The Supreme Court's docket heading into its November and December conferences includes six pending certiorari petitions focusing on patent law and Federal Circuit procedure. I have loosely ranked them here according to some combined score that considers both the importance of the case and its likelihood of being granted certiorari.
The leading contender is Hikma Pharmaceuticals USA Inc. v. Amarin Pharma, Inc., No. 24-889, which asks whether a generic drug manufacturer that fully carves patented uses out of its FDA-approved label can nonetheless face induced infringement liability simply by calling its product a "generic version" of the brand-name drug or referencing publicly available information about the branded product's sales. The petition challenges a Federal Circuit decision that permitted inducement claims to proceed even when Hikma's FDA-approved label omitted all direct references to Amarin's patented method of use. Under the Hatch-Waxman Act's framework, generic manufacturers can obtain approval with so-called "skinny labels" that exclude patented indications, allowing them to market their products for unpatented uses only. 35 U.S.C. § 271(e)(2).
The USPTO Automated Pre-Examination Search Pilot Program launched today. Here is how it works: Applicants filing original utility applications can petition to receive an Automated Search Results Notice (ASRN) before human examiner review. The pilot is currently limited to only 1,600 applications over the next six months. [PTO-P-2025-0011]. The ASRN program represents a modest but significant implementation of AI-assisted examination concepts I explored in a February 2025 proposal for pre-filing certification. While my proposal envisioned a comprehensive automated pre-filing examination, the ASRN happens after filing. While both approaches share the core insight that automated prior art analysis before human examiner review can streamline prosecution and provide applicants with earlier intelligence about patentability, the timing shift from pre-filing to post-filing reflects the USPTO's preference particularly for streamlining the examination processes. This first step allows the agency to evaluate AI performance within established quality frameworks before considering more radical reforms.
To participate, applicants must file original, noncontinuing, nonprovisional utility applications electronically through Patent Center and enroll in the Patent Center e-Office Action Program. The petition also requires a $450 petition fee under 37 CFR 1.17(f) (discounted for small/micro entities) that should be filed with the application. The USPTO will process petitions after pre-examination processing completes, granting the petition if eligibility requirements are met or dismissing it without opportunity to correct deficiencies.
This case is ultimately about patent ownership -- and turns on whether a 2007 assignment covers "continuations-in-part." The assignment document lists certain covered patents along with "divisions, reissues, continuations and extensions," but does not particularly list "continuations-in-part." Holding: The assignment does not include continuations-in-part.
The USPTO continues to move quickly with sweeping changes to its "popular" inter partes review (IPR) process. On October 17, 2025, the agency announced that Director John Squires is reclaiming personal authority over all IPR and PGR institution decisions. In an "Open Letter" titled "Bringing the USPTO Back to the Future," Director Squires announced that effective October 20, 2025, he will personally determine whether to institute trial proceedings rather than delegating this function to PTAB panels. The announcement came on the same day that the agency published a notice of proposed rulemaking (NPRM) to create mandatory bars to IPR institution in multiple categories. These actions follow a rapid ramping-up of discretionary denials over the past nine months under President Trump. Together, these developments represent a coordinated effort to dramatically restrict access to IPRs in ways that favor patent owners under the banner of restoring "quiet title" to issued patents.
I believe we will see a major downturn in IPR petitions in the coming months. Over the past decade, the IPR process has been an extremely effective tool used by accused infringers to cancel patents as obvious. Director Squires has argued that it is too effective with high institution rates and successful invalidity challenges destabilizing patent rights and undermined validity confidence that issued patents should enjoy. From this perspective, patents survive examination by expert examiners only to face a "second bite at the apple" through PTAB review, creating uncertainty that discourages innovation and investment. The Director frames these reforms as restoring proper respect for the Patent Office's examination process and the presumption of validity that issued patents deserve. But there's a reason accused infringers prefer IPRs to litigation: although obviousness can also be challenged in court, history shows that a novice jury is much less likely to find the claims obvious than would a PTAB panel of subject matter experts.
In Barrette Outdoor Living, Inc. v. Fortress Iron, LP, No. 2024-1231 (Fed. Cir. Oct. 17, 2025), the FedCir affirmed a non-infringement judgment based on prosecution disclaimer, holding that statements made during prosecution of a later-filed continuation application limited the scope of already-issued patents from the same family. This reinforces a similar holding in Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015) (statements in prosecution files of related patents are relevant to claim construction "regardless of whether the statement pre- or post-dates the issuance of the particular patent at issue."). Most US patents are part of a larger family and the risk created by these decisions has potential implications for a large number patent holders.
What are your best practices when making an argument in a continuation case about the scope of a particular claim limitation that part of an already issued patent? In this case, one solution would have been to amend the continuation to spell out the limitation rather force the limitation by argument. This path would have separated the two patents and better protect against that carry over.
The USPTO has published a notice of proposed rulemaking (NPRM) that would dramatically restrict access to inter partes review proceedings. Revision to Rules of Practice before the Patent Trial and Appeal Board, 90 Fed. Reg. [TBD] (Oct. 17, 2025). The proposed amendments to 37 CFR Part 42 would create mandatory bars to IPR institution in three categories:
When claims of the challenged patent have previously been found valid in other proceedings;
Where parallel litigation involving the patent will likely reach a validity decision first; and
Where petitioners refuse to stipulate against raising any anticipation or obviousness challenge against the patent in other venues.
The rules formalize and expand practices that have emerged through both PTAB decisions and recent Director-level denials, converting discretionary factors into more categorical requirements. Comments are due in a short 30 day window via www.regulations.gov (docket number PTO-P-2025-0025). Notably, the USPTO simultaneously withdrew a proposed rule on discretionary denial under Former Director Vidal citing changes in administrative priorities.
Meanwhile the Federal Circuit is in the midst of considering a bolus of mandamus petitions arguing that the USPTO's already ramped-up discretionary denial approach has moved past the ultra vires threshold into the realm of actionable shenanigans. Director Vidal (back at Winston) recently filed an amicus brief to the FedCir on behalf of the Public Interest Patent Law Institute (PIPLA) arguing that the Settled Expectations denial doctrine goes too far: "The USPTO's own data reveals that its new 'settled expectations' rule protects the very patents most likely to be invalid."
Issue preclusion (also called collateral estoppel) prevents parties from relitigating issues already decided in prior proceedings. To apply issue preclusion, courts generally require: (1) the issue was actually litigated and decided in the prior proceeding; (2) the determination was essential to the judgment; (3) the party against whom preclusion is asserted had a full and fair opportunity to litigate; and (4) the party against whom preclusion is asserted was a party (or in privity) in the prior proceeding. Issue preclusion can sometimes dispose of an entire case, but it can also apply more narrowly -- operating to prevent relitigation of any individual issue of law or fact that was already resolved in a prior proceeding.
Issue preclusion has the potential of arising often in patent cases -- especially because most patent cases these days involve two different proceedings (1) the IPR; followed by (2) the district court litigation.
A key way this comes up is when an IPR cancels several claims, but then the patentee subsequently amends the lawsuit to assert other claims that are similar but not identical to those cancelled. An example here might be that the cancelled claim involved elements A, B, C, and D; and the newly asserted claim covers A, B, C, and Δ. The accused infringer would hope to invoke issue preclusion, arguing that it is a settled fact that the prior art teach A, B, C, and D, leaving only the question of whether the Δ modification is obvious.
But, the Federal Circuit has generally prohibited this approach because in IPRs facts are are decided under the lower preponderance-of-the-evidence standard while invalidating a patent in court requires the higher clear-and-convincing standard for invalidity. In issue preclusion lingo, this means that the IPR decision is not the same issue being decided in litigation. The court has addressed this issue in some prior cases, including ParkerVision, Inc. v. Qualcomm Inc., 116 F.4th 1345 (Fed. Cir. 2024), and Kroy IP Holdings, LLC v. Groupon, Inc., 127 F.4th 1376 (Fed. Cir. 2025).
The court's newest decision makes clear the broad scope of the rule:
by Dennis Crouch (This is a long blog post about TM opposition standing - buried inside though is a roadmap for how Director Squires could administratively restrict IPR petitioner standing using the same Lexmark framework).
Professor Rebecca Curtin has filed her petition for writ of certiorari seeking rights to challenge United Trademark Holdings' application to register RAPUNZEL for dolls and toy figures. Curtin has a great case that the mark is generic. The problem with Curtin's case is procedural. Curtin is a consumer, not a competing doll maker, and the Federal Circuit ruled that consumers do not have standing to oppose trademarks based upon their genericness, descriptiveness, or failure to function as a trademark. Curtin v. United Trademark Holdings, Inc., 137 F.4th 1359 (Fed. Cir. 2025).
The statute allows opposition proceedings to be filed by "[a]ny person who believes that he would be damaged by the registration of a mark upon the principal register." 15 U.S.C. § 1063. And, a textual approach would seem to allow consumer oppositions -- and even those who would read an implicit "reasonableness" into the statute ("reasonably believes he would be damaged"). Here, for instance, Curtin offered a clear basis for harm that is particularized to her as a longtime, avid collector of classic fairy-tale dolls and toy figures, including those depicting Rapunzel. She demonstrated that registration would reduce marketplace competition for Rapunzel products she collects, likely increase costs for such dolls, and chill the creation of new interpretations of the character that she values and seeks to add to her collection.
But, the Federal Circuit offered a narrow interpretation of the standing requirement (eliminating consumer standing) that stems from a somewhat parallel situation in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014). The basic question to the Supreme Court is whether they intended the litigation standing requirements of Lexmark to extend to administrative actions before the USPTO.
Whether a party desiring to participate in an administrative agency proceeding, including a trademark opposition proceeding at the United States Patent and Trademark Office, must satisfy the zone-of-interests and proximate-causation tests set forth in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), for causes of action in federal court.
Curtin Cert Pet. Curtin is a trademark law professor and so it's not surprising that the brief is well written. Folks at Workman Nydegger (Salt Lake City) filed the brief with a team that included John Stringham, Matthew Barlow, David Todd, and Ryan Morris.
Computer scientist Dr. Stephen Thaler has petitioned the Supreme Court to resolve whether artificial intelligence systems can generate copyrightable works without traditional human authorship. In Thaler v. Perlmutter, No. 25-___ (petition filed Oct. 9, 2025), Thaler seeks review of the D.C. Circuit's March 2025 decision affirming the Copyright Office's denial of registration for a visual artwork titled "A Recent Entrance to Paradise," which was autonomously created by Thaler's AI system known as the "Creativity Machine." Thaler v. Perlmutter, 130 F.4th 1039 (D.C. Cir. 2025). The petition asks:
Whether works outputted by an AI system without a direct, traditional authorial contribution by a natural person can be copyrighted.
We are now a decade past the Supreme Court’s eligibility revolution in Alice and Mayo. Legislative efforts have coalesced around the Patent Eligibility Restoration Act of 2025 (PERA), while USPTO Director John Squires has simultaneously launched a campaign of administrative reinterpretation to restore what he calls “expansive eligibility.” The Federal Circuit, once reluctant to embrace the new eligibility approach, now serves as the principal stabilizing force and is the principle backstop to Patent Office experimentation.
I recently wrote about the Senate Hearing on PERA. I wanted to follow up to discuss written submissions by two leading commentators: USPTO Director John Squires , and Stanford Law Professor Mark Lemley. Squires written statement calls for restoration of "expansive eligibility." In addition to the potential for legislation, Squires also highlights his ongoing administrative reinterpretation of eligibility doctrine and suggests doctrinal correction by the courts to correct what he sees as a misinterpretation of Alice/Mayo. Lemley takes the opposite view on virtually all issues. He argues that current judicial doctrine is working well and that the real problem lies in the USPTO's refusal to follow existing law, particularly its recent pattern of denying inter partes review (IPR) petitions in violation of the AIA.
Director Squires' statement opens with a personal narrative. He recounts surviving the September 11, 2001 terrorist attacks three times that morning: walking through the North Tower of the World Trade Center just sixteen minutes before the first plane struck, watching the second plane hit from his office at 1 New York Plaza, and fleeing the collapse of the South Tower. Squires describes how, in the aftermath of 9/11, he and his colleagues at Goldman Sachs developed the Risk Data Consortium, filing forty patents "expedited by the USPTO as inventions to combat terrorism" and deploying them as "instruments of war" against terrorist financing networks. This experience, Squires argues, demonstrates that "patent eligibility is not an abstract debate" but rather "a matter of national security, of resilience, and of ensuring that America's system of innovation remains robust enough to confront the challenges of the twenty-first century." For Squires, the question of what is patent-eligible is inseparable from the question of whether America can deploy its private sector innovation capacity to meet existential threats—from terrorism to artificial intelligence competition with China.
Lincoln famously said that the patent system adds “the fuel of interest to the fire of genius.” For Squires, the post-9/11 patent response shows that it can also channel the fire of patriotism. In this account, the patent system became a mechanism for channeling the nationalistic urgency into concrete counterterrorism tools. Patent protection meant that innovators could rapidly deploy their systems against an immediate threat while retaining some assurance of eventual compensation -- satisfying that other urge of self-interest.
Director Squires' statement explicitly advocates for institutional and doctrinal change through USPTO leadership and administrative decisions, independent of congressional action. He highlights is recent actions to restore "expansive eligibility" through agency policy and adjudication. One example is Squires’s recent Director Review decision in Ex parte Desjardins, where the PTAB had rejected claims directed to AI training methods under § 101. In his decision overturning that rejection, Squires emphasized that Section 101 should not be misused as a blunt instrument to exclude entire technological fields and that examiners should use Sections 102, 103, and 112—rather than Section 101—to police patent quality. Squires' testimony frames this approach as a return to historical practice.
Regarding the Supreme Court's duo of Alice and Mayo, Squires argues that these cases have been misconstrued and that instead courts should read them narrowly as simply restating the old decisions in cases such as O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1854), Diamond v. Chakrabarty, 447 U.S. 303 (1980) ("anything under the sun") and Diamond v. Diehr, 450 U.S. 175 (1981).
On October 8, 2025, the Senate Judiciary Subcommittee on Intellectual Property held a hearing on the Patent Eligibility Restoration Act (PERA) of 2025 (S. 1546), legislation that would fundamentally reshape 35 U.S.C. § 101 and effectively overturn the Supreme Court's Mayo, Myriad, and Alice decisions. The hearing featured testimony from former USPTO Directors Andrei Iancu and David Kappos, China IP expert Mark Cohen, biotech executives, patient advocates, and retail industry representatives, all addressing whether Congress should replace the judge-made "abstract idea" and "law of nature" exceptions with a set of narrow statutory exclusions. Chairman Thom Tillis (R-NC) and ranking member Adam Schiff (D-CA) both acknowledged the widespread confusion in current eligibility jurisprudence, with Tillis noting that the status quo "continues to be hopelessly confused" and expressing determination to move the bill forward to committee markup. The Bill has bipartisan support in the Senate, but it is unclear how hard those in opposition would push if the bill started to move forward.
PERA was originally introduced back in 2019 as a draft proposal. It was later reintroduced as S.4734 in 2022 and has been refined through successive versions, with the current 2025 bill (S.1546) representing a more measured approach than earlier drafts while still fundamentally overhauling § 101. The 2019 proposal included explicit language stating that all judicially created exceptions were "hereby abrogated." Later versions achieve the same result more subtly by specifying that eligibility is determined "subject only to" the enumerated statutory exclusions. The 2022 version would have made isolated human genes patent-eligible, directly contradicting Myriad's core holding, but the 2025 bill narrows this by removing "isolated" from the human gene provision—meaning mere isolation of natural DNA wouldn't suffice for eligibility, though purified, modified, or engineered genes used in inventions would still qualify. Similarly, where the 2022 draft used the ambiguous term "non-technological" to define excluded business methods, the 2025 version asks whether the machine is "necessary to practically perform" the invention. Probably most importantly, the 2025 bill adds new guardrails against patenting superficial computerization of otherwise abstract ideas.
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.
