by Dennis Crouch

Trading Technologies (TT) has petitioned the Supreme Court to review a Federal Circuit decision raising three significant questions about patent law and civil procedure. The case stems from TT's patent infringement suit against IBG LLC and Interactive Brokers LLC over patents related to electronic trading user interfaces.  U.S. Patent Nos. 6,766,304, 6,772,132, 7,676,411, and 7,813,996.  (I have mentioned this previously, but TT is a former client and I was involved with enforcing the '304 and '132 patents in the past).

The case caption now lists Harris Brumfield as trustee following TT's 2021 sale, though the litigation began and was primarily conducted by Trading Technologies. 20250103171844464_2025-01-02 No 24- Petition.

by Dennis Crouch

Just after President Trump spoke the oath of office, Coke Morgan Stewart was also sworn in as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO on January 20, 2025. She is serving as Acting Director. The previous Director, Kathi Vidal, departed to Winston & Strawn in December, and Deputy Director Derrick Brent, who had been serving in an interim capacity, has also now resigned. Commissioner Vaishali Udupa is remaining in her position for now as is Commissioner Gooder.

Welcome Director Stewart.

by Dennis Crouch

I've been looking at some of the fastest issued US patents.  A majority of the fastest issued are part of the Global IP5 Patent Prosecution Highway (PPH) pilot that gives substantial weight to patent allowances from a partner country.  A substantial number of Chinese applications are using this program to great effect -- especially when coupled with the remarkable speed of the China National Intellectual Property Administration (CNIPA).

The PPH program allows applicants who receive a ruling from a first patent office that at least one claim is patentable to request accelerated prosecution of corresponding claims in a second patent office. The program aims to reduce examination workload and speed patent grants through work-sharing between patent offices.

The following are a couple of new patents that I picked out from the many available. Both patents moved from filing to issuance in less than four months (including receiving and responding to a non-final rejection). 

by Dennis Crouch

The America Invents Act (AIA) created a delicate dance between district court litigation and inter partes review (IPR) proceedings.  Patent owners often race to reach trial before the PTAB rules on validity, while accused infringers typically seek stays pending IPR. The one-year statutory deadline for IPR final written decisions provides some comfort to district courts considering stays - the delay, while substantial, is at least bounded. But what was initially conceived as a streamlined alternative to litigation has evolved into a potentially years-long process, with final written decisions now being followed by requests for USPTO Director Review and subsequent Federal Circuit appeals. This timeline extension puts courts in a difficult position when considering stays, particularly late in district court proceedings.

A recent mandamus petition highlights this tension. In In re Viasat, Inc., No. 2025-110 (Fed. Cir. Jan. 17, 2025), Judge Albright took the unusual step of sua sponte staying a patent case just days before trial in a case that had completed its IPR review and was instead awaiting Federal Circuit's appellate review. The IPR decision had cancelled some of the asserted claims, but left Claim 16 as untouched - and the patent challenger appealed to the Federal Circuit.  The patentee then narrowed the litigation to focus only on that sole remaining claim and asked the court to proceed with trial. The Federal Circuit has now declined to disturb that stay through mandamus.

By Dennis Crouch

The Federal Circuit has earned a reputation as the most technically demanding appellate court in the federal system when it comes to procedural compliance. I regularly review federal court dockets and continue to be astounded by the prevalence of filing errors and subsequent correction requirements in Federal Circuit appeals - even among the nation's most sophisticated appellate practitioners. The situation has become so routine that finding a Federal Circuit appeal without at least one notice of non-compliance is more noteworthy than finding one with multiple filing corrections.  The court's exacting standards create a procedural gauntlet that seems designed to catch all but the most careful attorneys willing to check in with the clerks office before each filing.  Although I have not done a comprehensive study, my experience is that the Federal Circuit clerk's office rejects filings as non-compliant much much more often than any other Circuit Court of Appeal.

In 2023 the Federal Circuit Clerk's Office issued a memo detailing "Common Filing Errors" - apparently recognizing the scope of the problem and attempting to push the responsibility onto the filers. However, the practitioners continue to demonstrate the exact same errors as those cited in the memo. It's as if many folks didn't get the memo - quite literally. That said, given the consistently high caliber of counsel involved and the monetary importance of these appeals, a substantial part of the difficulty may well lie with the clerk's office's approach rather than with the practitioners.

Let's examine some particularly telling examples:

by Dennis Crouch

A new petition for certiorari filed by Provisur Technologies challenges the Federal Circuit's approach to reviewing jury verdicts in patent cases, particularly regarding willful infringement findings.  In its opinion, the Federal Circuit had rejected a jury verdict of willful infringement and the judge's resulting damages enhancement.  The petition argues that this is an improper reexamination of the jury's factual findings and a violation of the JMOL standard. Provisur v. Weber, No. 24-723.

by Dennis Crouch

The USPTO's new AI Strategy document both recounts the work the USPTO has already done and sets forth something of a vision for artificial intelligence.  Of course the document's release just one week before the transition to the Trump administration raises questions about its ultimate implementation. Time will tell whether the document is shelved, substantially modified, or implemented as written.

• uspto-ai-strategy

I wanted to take a look at a few of the biggest developments affecting day-to-day patent law practice.

by Dennis Crouch

Back in October 2024, I previewed the Federal Circuit case of Lynk Labs v. Samsung in a post titled Secret Springing Prior Art and Inter Partes Review.  The court has now released its decision -- holding that in IPR proceedings a published patent application is considered prior art as of its filing date. [Read it here] This solidifies the approach already taken by the USPTO and is significant because a substantial percentage of references relied upon to cancel patent rights represent "secret prior art" that were non-public at the time the patent was originally filed. The court's analysis delves deep into statutory interpretation, legislative history, and the balance between different sections of patent law.  Unfortunately, the Judge Prost opinion is almost unintelligible at its most critical point - where it explains how the legal term "printed publication" is date agnostic.

Dennis Crouch

In a newly filed petition for certiorari, DISH Network has asked the Supreme Court to resolve two important questions about attorney fee awards in patent cases: whether district courts can (1) make plaintiff's attorneys jointly liable for fee awards in exceptional cases and (2) award fees incurred during parallel Inter Partes Review (IPR) proceedings. DISH Network L.L.C. v. Dragon Intellectual Property, LLC, No. 24-726 (petition filed Jan. 8, 2025).

by Dennis Crouch

In an important opinion exploring the relationship between patent validity and after-arising technology, the Federal Circuit has reversed a district court's invalidation of a pharmaceutical patent covering Novartis's blockbuster heart failure drug Entresto. Novartis Pharmaceuticals Corp. v. Torrent Pharma Inc., Nos. 2023-2218, 2023-2220, 2023-2221 (Fed. Cir. Jan. 10, 2025).

by Dennis Crouch

The Federal Circuit has affirmed the Trademark Trial and Appeal Board (TTAB) cancellation of CeramTec's trademark registrations for the pink color of its ceramic hip implants, and also providing an important analysis of functionality doctrine and its intersection with expired utility patents. CeramTec GmbH v. CoorsTek Bioceramics LLC, No. 2023-1502 (Fed. Cir. Jan. 3, 2024).  The cautionary outcome here is unsubstantiated statements in the utility patent left the patentee unable to later claim trade dress protection for the distinctive feature.  Patent attorneys should consider a trade dress discussion with their clients prior to filing a utility application that covers potentially distinctive trade dress. I discussed the case while it was pending. See Dennis Crouch, Pink Ceramic Hip Implants: When Functionality Trumps Trade Dress, Patently-O (October 2024).

by Dennis Crouch

The Patent Term Adjustment (PTA) statute was designed to ensure patent terms aren't unfairly shortened by USPTO delays during prosecution. 35 U.S.C. § 154(b). The basic framework provides day-for-day extension of patent term to account for certain examination delays, such as when the USPTO takes more than 14 months to issue a first office action or more than 4 months to respond to an applicant's reply.

But PTA is a two-way street. The statute also penalizes applicants who fail to "engage in reasonable efforts to conclude processing or examination." 35 U.S.C. § 154(b)(2)(C). The most common applicant delay comes from taking more than three months to respond to an office action. See 37 C.F.R. § 1.704(b).

by Dennis Crouch

In a recent non-precedential decision, the Federal Circuit provided an interesting analysis on how to evaluate evidence both supporting and undermining motivation to combine references in obviousness challenges. Laboratory Corporation of America Holdings v. Ravgen, Inc., No. 2023-1342, 2023-1345 (Fed. Cir. Jan. 6, 2025).

by Dennis Crouch

Yesterday, the Federal Circuit issued a divided opinion in Honeywell International Inc. v. 3G Licensing, S.A., No. 2023-1354 (Fed. Cir. Jan. 2, 2025), highlighting key disagreements about the proper role of appellate courts in reviewing Patent Trial and Appeal Board (PTAB) decisions.  The case appears to also foreshadow an internal fight over the exclusion of expert testimony that is currently pending en banc in EcoFactor v. Google.

The case centers on the validity of a patent related to encoding data in cellular communications, specifically focusing on methods for protecting important data bits from transmission errors.  Patent No. 7,319,718.  Writing for the majority, Judge Dyk reversed the PTAB's holding that the claims were not proven obvious. Judge Stoll write in dissent, arguing the majority improperly stepped into the role of fact-finder rather than acting as an appellate tribunal.  To be clear, Judge Stoll was no fan of the PTAB's opinion, but would have vacated and remanded for further factual development on the question of obviousness rather than entirely flipping the decision via reversal.

by Dennis Crouch

The Supreme Court will soon be asked to weigh in on the the skinny-label debate -- particularly the question of how much a generic drug manufacturers can say about their products without inducing patent infringement? The case is Hikma v. Amarin.

It is very common for a drug to follow the following innovation-patent pathway:

1. First the composition is discovered and patented along with a particular therapeutic use.
2. Later a more effective treatment regimen is discovered and patented.

Once the first set of patents expire, generic manufactures should be permitted to begin marketing the drug -- except for uses still patented.  But, this gets tricky.  We know that there will be a very $trong incentive for insurance companies, doctors, and patients to use the cheaper generic drug for the still-patented treatment regime.  The question is whether the generic manufacture can be blamed for inducing this infringement.

As we enter 2025, I wanted to pause for a moment to look at some of the Federal Circuit's 2024 development of U.S. patent law.  The court issued about 70 precedential patent cases along with a handful related to other IP doctrines (primarily trademark).