by Dennis Crouch

In a decision that reinforces the controlling force of explicit patent definitions, the Federal Circuit affirmed a district court's claim construction that effectively ended Alnylam Pharmaceuticals' patent infringement suit against Moderna over lipid nanoparticle technology used in COVID-19 vaccines. Alnylam Pharmaceuticals, Inc. v. Moderna, Inc., No. 2023-2357 (Fed. Cir. June 4, 2025). Writing for a unanimous panel, Judge Taranto explained that when a patent specification clearly defines a claim term, the patentee faces a demanding standard to establish exceptions to that definition, even where the definition might exclude disclosed embodiments or seemingly conflict with other parts of the specification.

The case centered on whether Alnylam's patents covering cationic lipids for nucleic acid delivery were infringed by Moderna's use of the SM-102 lipid in its SPIKEVAX COVID-19 vaccine. The dispute turned entirely on claim construction of the term "branched alkyl," which the specification explicitly defined as requiring "one carbon atom in the group (1) is bound to at least three other carbon atoms and (2) is not a ring atom of a cyclic group" "[u]nless otherwise specified."

Alnylam argued this definition did not apply to claims covering "branching" at the "alpha position" adjacent to biodegradable groups, where the chemical structure would permit only two carbon-carbon bonds rather than three. The Federal Circuit rejected this argument, finding no clear indication in the intrinsic record that the claims "otherwise specified" a departure from the explicit definition.

The Supreme Court is being asked to resolve a high-stakes battle over when Internet Service Providers (ISPs) can be held liable for their users’ copyright infringement. Two petitions — Cox Communications, Inc. v. Sony Music Entertainment (No. 24-171) and Sony Music Entertainment v. Cox Communications, Inc. (No. 24-181) — stem from a Fourth Circuit decision involving a $1 billion jury verdict against Cox for music piracy on its network. In November 2024, the Court invited the Solicitor General (SG) to weigh in. In late May 2025, SG John Sauer filed the government's brief, recommending that the Supreme Court grant Cox’s petition to clarify—and  ultimately narrow—the standard for contributory infringement.

• Read the SG Brief.

For this post, I take a step back and talk through some of the legal doctrines at issue — contributory & vicarious liability — in the context of ISP copyright infringement and then delve into how they might apply in Cox.

Background: The litigation began when a consortium of record companies and music publishers (including Sony Music) sued Cox Communications for copyright infringement based upon actions by Cox’s internet subscribers. The alleged infringements occurred in 2013–2014, when Cox users engaged in massive peer-to-peer file sharing of music over networks like BitTorrent. At the time, anti-piracy agent, MarkMonitor, sent Cox hundreds of thousands of infringement notices identifying Cox subscribers by IP address. But, Cox’s internal policy was to follow an admittedly lax “thirteen-strike” system: repeat infringers would receive warnings and temporary suspensions, but Cox often declined to permanently terminate paying customers’ accounts. Evidence presented in the case showed Cox implemented its policy haphazardly—terminating only 33 subscribers for copyright abuse while tolerating many more—because it “wanted to avoid losing revenue” from monthly subscriber fees.

by Dennis Crouch

Sigray, Inc. v. Carl Zeiss X-Ray Microscopy, Inc., --- F.4th --- (Fed. Cir. 2025)

The Federal Circuit established an important precedent regarding inherent disclosure and implicit claim construction in this IPR appeal, holding that the Board's  purported interpretation of the prior art was rather an implicit claim construction that neither party requested.  The decision, went rely heavily on the Federal Circuit inherency decision in SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331 (Fed. Cir. 2005), allowing for inherency finding even for miniscule or undetectable features found in the prior art.  As I dug into the case though, I was surprised to find that the PTAB did not cite or reference SmithKline, nor did any of the briefs filed in the appeal.  As Judge Dyk wryly stated at oral arguments: "but of course, nobody showed them the SmithKline case." 

This case involved x-ray optics, with claims requiring "magnification of the projection x-ray stage is between 1 and 10 times." Although neither party ever asked for claim construction, the appellate panel went ahead to determine that this claim scope - based upon its "plain meaning" - "includes tiny, even undetectable, magnification" rejecting the PTAB's implicit construction that seemed to require a meaningful divergence from parallel.

By Dennis Crouch

In an extraordinary lawsuit filed today, Register of Copyrights Shira Perlmutter has sued President Trump and several administration officials, challenging her purported removal from office and the President's attempt to install Deputy Attorney General Todd Blanche as acting Librarian of Congress. Perlmutter v. Blanche, No. 25-cv-1659 (D.D.C. filed May 22, 2025). The case raises fundamental questions about the separation of powers and the unique status of the Library of Congress within our constitutional structure.

• Perlmutter Complaint
• Perlmutter TRO Motion
• Perlmutter Memorandum in Support
• Perlmutter Declaration
• Perlmutter Text of Proposed Order

The controversy began on May 8, 2025, when President Trump fired Librarian of Congress Dr. Carla D. Hayden via email. Two days later, the administration terminated Ms. Perlmutter, who had served as Register of Copyrights since 2020.   The President then purported to appoint Deputy Attorney General Todd Blanche as acting Librarian of Congress under the Federal Vacancies Reform Act (FVRA) as well as Paul Perkins as acting Register of Copyrights. When Mr. Blanche's representatives arrived at the Library on May 12 to assume control, Library staff refused to recognize his authority and contacted the Capitol Police.  The standoff crystallized a fundamental question: Does the President have the power to unilaterally control Congress's library and the US Copyright office housed within?

by Dennis Crouch

Rebecca Curtin – a law professor and parent who purchases princess dolls – filed a TTAB opposition against United Trademark Holdings’ application to register the mark “RAPUNZEL” for dolls and toy figures (Class 28). Curtin alleged the mark should not be registered because “RAPUNZEL” is a generic name, is merely descriptive, and fails to function as a trademark for doll products. UTH moved to dismiss the opposition, arguing that Curtin lacked standing (i.e., lacked “entitlement to a statutory cause of action”) under the Lanham Act’s opposition provision, 15 U.S.C. § 1063. Initially, the TTAB allowed Curtin’s case to proceed – relying on the Federal Circuit’s older, more permissive standing test from Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999), which had held that “any person who believes that she would be damaged” by a registration may oppose if she shows a real interest and a reasonable belief of harm. But by the final decision, the TTAB reversed course. Citing the Supreme Court’s intervening decision in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), and the Federal Circuit’s own decision in Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020), the Board dismissed Curtin’s opposition for lack of a statutory cause of action. The TTAB concluded that “mere consumers” generally are not entitled to oppose a trademark registration under § 1063, because their interests fall outside the zone of interests protected by that statute.

The Federal Circuit has now affirmed that dismissal in Curtin v. United Trademark Holdings, Inc., No. 23-2140 (Fed. Cir. May 22, 2025).  Judge Hughes penned the opinion holding that: to oppose a trademark under § 1063, an individual’s interests and alleged injuries must fall within the Lanham Act’s protected zone of interests, and those injuries must be proximately caused by the mark’s registration.  See also, Rebecca Curtin, Zombie Cinderella and the Undead Public Domain, 85 Tennessee Law Review 961 (2018).

Although all modern theories indicate that consumer protection is a primary purpose of trademark law, Curtin’s consumer-focused concerns did not satisfy the statutory requirements (according to the court).  Still, I'm drawn by her arguments -- as Curtin's attorney Ryan Morris (Workman Nydegger) explained:

With regard to the purposes of the Lanham Act, it absolutely has everything to do with consumers. . . . The interests of the consumers are at the heart of the Lanham Act. And to exclude them arbitrarily doesn't make a lot of sense.

Oral args. 29:05.

by Dennis Crouch

In a display of judicial frustration with attorney conduct, the Federal Circuit (i.e., Chief Judge Moore) recently confronted two appellants for apparently attempting to circumvent word count limitations through a "divide and conquer" briefing strategy.  The parties have responded to the court's show cause order in Focus Products Group International v. Kartri Sales Co., and we are now waiting for the court to act both on the merits of the case and potential sanctions.

The conduct dispute centers on how appellants Kartri Sales and Marquis Mills structured their briefs in appealing a district court decision that found the parties infringed both patents and trade dress related to shower curtain designs. The case was heard before a Federal Circuit panel consisting of Chief Judge Moore, along with Circuit Judges Clevenger and Chen. Patrice Jean of Hughes Hubbard & Reed represented Kartri Sales, Donald Cox his own firm represented Marquis Mills, and Morris Cohen of Goldberg Cohen represented the Sure Fit appellees.

by Dennis Crouch

In a significant development for PTAB practice, Acting USPTO Director Coke Morgan Stewart has issued a precedential decision that conclusively establishes IDS-cited art as grounds for discretionary denial while creating a narrow exception for "mega-IDSs." Ecto World, LLC v. RAI Strategic Holdings, Inc, IPR2024-01280_paper_13_20250519. The case places a burden on petitioners to demonstrate examiner error in situations where the ground for the IPR petition relies upon art that had been formally considered by the examiner during original prosecution.

This decision comes amid Stewart's broader transformation of PTAB practice since early 2025, characterized by the rescission of prior guidance limiting discretionary denials, the introduction of bifurcated review processes separating discretionary decisions from merits analysis, and the Director's personal involvement in discretionary determinations. The cumulative effect signals a decisive shift toward a more patent-owner friendly posture at the USPTO, with IPR institution rates reportedly dropping significantly over the past two months.

by Dennis Crouch

In a pair of nonprecedential decisions, the Federal Circuit affirmed three PTAB inter partes review decisions--finding BillJCo's patents unpatentable as obvious under 35 U.S.C. § 103. BillJCo, LLC v. Apple Inc., Nos. 23-2189 (Fed. Cir. May 16, 2025); and No. 23-2188 (Fed. Cir. May 16, 2025). The cases were both decided by the same three-judge panel, with Judge Stoll authoring one opinion and Judge Chen the other. In reading the cases, one key take-away is that the cases represent another example of the Federal Circuit's rigid approach to secondary considerations of non-obviousness. I recently highlighted this same phenomenon in discussing Purdue Pharma's pending petition for certiorari. See Dennis Crouch, The Federal Circuit's Rigid Approach to Secondary Considerations, Patently-O (May 5, 2025). The opinions also illustrate the court's approach to claim construction, particularly regarding interpreting a claim term to include a negative limitation. One case also relies upon a key prior art from now Secretary of Commerce Howard Lutnick.

by Dennis Crouch

I just read Atrium Medical's SCOTUS petition -- asking the court help resolve a circuit split involving the the Brulotte & Kimble doctrines that bars collecting royalties after a patent expires, even if agreed-to by contract.

In 1964, the Supreme Court established in Brulotte v. Thys Co. that "a patentee's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se." 379 U.S. 29 (1964). The Court reaffirmed this rule in 2015 in Kimble v. Marvel Entertainment, LLC, where it held that "a patent holder cannot charge royalties for the use of his invention after its patent term has expired." 576 U.S. 446 (2015). The Kimble Court explained that this rule should be "simplicity itself to apply." A court "need only ask whether a licensing agreement provides royalties for post-expiration use of a patent. If not, no problem; if so, no dice." Importantly, license agreements can properly extend beyond a patent's expiration date if the post-expiration royalties are payments for something else—such as unexpired patents, trade secrets, or know-how—rather than for the continued use of the expired patent. Despite this straightforward directive, the circuits have split on how to determine what royalties are actually "for."

• 20250505150357574_050525_Atrium_Cert_Petition
• 20250505150357574_050525_Atrium_Cert_appx

by Dennis Crouch

In an interesting decision affecting one of the most high-profile patent disputes in biotechnology, the Federal Circuit has partially vacated and remanded a PTAB decision that awarded priority of invention for CRISPR-Cas9 technology in eukaryotic cells to scientists at the Broad Institute. Regents of the University of California v. Broad Institute, Inc., Nos. 2022-1594, 2022-1653 (Fed. Cir. May 12, 2025). The court determined that the PTAB applied an incorrect legal standard for "conception," a fundamental concept in patent law's priority determination under the pre-America Invents Act first-to-invent system.

Understanding Conception Under Patent Law: The court reiterated the classic definition of conception as "the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." Burroughs Wellcome Co. v. Barr Lab'ys, Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994). The court emphasized that "conception is complete only when the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation."

However, conception is not complete invention -- something that also requires construction to practice, either actual or constructive. Notably, it is the process of reduction to practice that truly shows that the invention works.  Backtracking, this means that for conception "an inventor need not know that his invention will work for conception to be complete."