by Dennis Crouch

The Supreme Court recently received a petition for certiorari from NexStep, Inc., challenging a Federal Circuit decision that epitomizes a four-decades-long trend of restricting the doctrine of equivalents (DOE). The petition in NexStep, Inc. v. Comcast Cable Communications, LLC (No. 24-1137), presents a fundamental question: Has the Federal Circuit improperly shackled the doctrine of equivalents with rigid, formulaic requirements contrary to Supreme Court precedent?  More particularly, the petition asks: "Whether a patentee must in every case present 'particularized testimony and linking argument' to establish infringement under the doctrine of equivalents."

• Dennis Crouch, Doctrine of Equivalents: Expert Testimony Must Include Particularized Links, Patently-O (Oct. 22, 2024) (discussion of the original CAFC decision).

The case also has a nice baseball analogy.  The patent requires a "single action" performed by a user, and the accused device needs three button pushes.  The patentee's expert, when presenting the DOE case to the jury, used a baseball pitcher analogy - recognizing that throwing a ball includes numerous small steps to accomplish the single action of throwing.  The argument here, which the jury agreed was meritorious, is that the three button pushes - while not literally the same as a single action - was the equivalent and thus infringing.  The Federal Circuit wanted more - holding that the jury did not have enough evidence to reach that conclusion.

by Dennis Crouch

In a significant decision narrowing the scope of Inter Partes Review (IPR) estoppel, the Federal Circuit has held that a patent challenger who previously pursued an IPR can still rely on system prior art in district court litigation, even when that system was fully documented in publications that could have been raised during the IPR.  A key implication from this case is that despite the estoppel provision, a printed publication from an IPR can be later used in the litigation as part of the same combination of references used in the IPR, so long as the publications are categorized by the patent challenger in the litigation as proving that the invention was known/used/on-sale. Ingenico Inc. v. IOENGINE, LLC, No. 23-1367 (Fed. Cir. May 7, 2025). Writing for a unanimous panel, Judge Hughes explained:

IPR estoppel does not preclude a petitioner from relying on the same patents and printed publications as evidence in asserting a ground that could not be raised during the IPR, such as that the claimed invention was known or used by others, on sale, or in public use.

The decision resolves a long-standing split among district courts regarding the proper interpretation of the term "ground" in 35 U.S.C. § 315(e)(2), which bars IPR petitioners from asserting in district court "any ground that the petitioner raised or reasonably could have raised during that inter partes review." The Federal Circuit held that "ground" refers to the specific statutory basis for invalidity (e.g., anticipation or obviousness based on patents or printed publications), not the prior art references themselves.  The Federal Circuit clarified that 'ground' refers specifically to the statutory bases available in an IPR (anticipation or obviousness via patents/printed publications). As such, petitioners remain free to use identical prior art evidence to support district court invalidity grounds not available in IPR—such as prior public use or sale.

by Dennis Crouch

The Federal Circuit's May 6, 2025 decision in Jazz Pharmaceuticals v. Avadel focuses on the scope of injunctive relief for infringement under 271(e).  The appellate court held that a district court may not enjoin a pharmaceutical company from initiating new clinical trials or offering open-label extensions where such activities are protected by the Hatch-Waxman Act's safe harbor provision, even when the company's commercial product has been found to infringe a valid patent. The court reversed the portions of the injunction that would have prohibited these activities, and vacated and remanded the portion that barred seeking FDA approval for new indications.

Jazz Pharmaceuticals, Inc. v. Avadel CNS Pharmaceuticals, LLC, No. 24-2274, slip op. (Fed. Cir. May 6, 2025).

by Dennis Crouch

The Federal Circuit's 1993 decision in In re Rijckaert, 9 F.3d 1531 (Fed. Cir. 1993), set an important boundary on the use of inherency in obviousness determinations. I recently reread the case and wanted to reintroduce the case that continues to be regularly cited in both patent prosecution and litigation.

Rijckaert involved a patent application for a magnetic recording apparatus that established a precise mathematical relationship between time expansion/compression and three variables: α (the wrapping angle of tape around the drum), n (the number of head pairs), and M (non-recording intervals). This relationship—expressed as α*n/(180*(M+1))—allowed for optimal track filling on the magnetic tape.  The approach was designed to allow reduction of acoustic noise by positioning heads close together with rigid mechanical coupling, while maintaining proper signal timing and track alignment regardless of drum wobble or other mechanical imperfections.  The PTO rejected the application as obvious two prior art references, despite neither reference teaching the claimed relationship or even discussing all three variables in combination.

The Board of Patent Appeals upheld the rejection by assuming that the relationship would be inherently satisfied if one assumed specific values for the variables. The Federal Circuit, however, reversed, emphasizing that the prior art failed to establish a prima facie case of obviousness because it neither disclosed nor suggested the claimed relationship.

by Dennis Crouch

Although the Supreme Court permits color itself to serve as a trademark, the cases have generally not been strongly supportive. The Federal Circuit's recent decision on green medical examination gloves fits this standard like a ... glove. In re PT Medisafe Technologies (Fed. Cir. April 29, 2025). The decision particularly focuses on color mark genericness, holding that the dark green color for chloroprene medical examination gloves was "so common in the industry that it cannot identify a single source."

by Dennis Crouch

Last week, Acting USPTO Director Coke Morgan Stewart vacated Final Written Decisions invalidating two semiconductor patents, remanding the cases back to the PTAB with instructions to permit discovery into potential privity relationships. Semiconductor Components Industries, LLC v. Greenthread, LLC, IPR2023-01242, IPR2023-01243, IPR2023-01244 (April 24, 2025). This represents a significant rebuke of the PTAB's handling of time-bar issues and privity allegations under 35 U.S.C. § 315(b), and is yet another general victory for patentees seeking relief from IPR cancellations. IPR2023-01242 -1243 -1244 Semiconductor v Greenthread DR Decision

Although the privity issue is juicy because it suggests backroom dealing, two additional aspects of the decision may end up being more important: the Board's refusal to hear certain arguments about prior art disclosures and its improper exclusion of district court claim construction orders.

by Dennis Crouch

In 2024, the USPTO released its AI inventorship guidance that established a "significant contribution" standard for human inventorship for AI-assisted innovation situations. This short essay argues that the USPTO's approach creates a fundamental legal inconsistency with patent law's bedrock requirement of complete human conception. Because the USPTO's approach lacks both legal weight and legal merit, it ultimately threatens the validity of patents covering inventions generated with substantial AI-assistance.

By Dennis Crouch

Although most of our fare is IP related, I have also been keeping an eye on other Federal Circuit cases.  On April 28, 2025, the Supreme Court hears oral arguments in  one of those, Soto v. US, a case could significantly impact thousands of combat-disabled veterans seeking retroactive benefits. The Court will decide whether veterans can receive full retroactive Combat-Related Special Compensation (CRSC) payments or are instead limited to six years of backpay under the federal Barring Act.

Background: Marine veteran Simon Soto served in Mortuary Affairs during Operation Iraqi Freedom, where he retrieved fallen service members, often under combat conditions. This obviously stressful assignment led to severe PTSD, resulting in his medical retirement in 2006. In December 2008, the Department of Veterans Affairs rated him 100% disabled due to combat-related PTSD, which qualified him for CRSC under a 2008 program expansion that opened benefits to all medically retired veterans with combat-related disabilities.

However, Soto did not apply for these benefits until 2016, approximately eight years after becoming eligible. While the Navy approved his claim, it only provided retroactive payments dating back six years (to December 2010), citing the six year statute of limitations found in the "Barring Act." 31 U.S.C. § 3702.  Soto argues that the CRSC statute itself (10 U.S.C. § 1413a) contains its own settlement mechanism that displaces the Barring Act's time limitation.  The Barring Act provides "authority to settle claims" against the U.S. Government, and particularly identifies a settlement process with the six-year statute of limitations to be used "except as provided [by] another law."  The question then is whether the CRSC statute does, in fact, provide, alternative settlement authority.  The basic problem is that the CRSC statute does not expressly state that it is providing "settlement" authority and it contains no statute of limitations.  On this second point, Soto suggests that the absence of a SOL is a feature

As I wrote last November, the Federal Circuit split 2-1 in reversing the district court's ruling in favor of Soto. Judge Todd Hughes, writing for the majority, applied a formalist approach requiring specific statutory language. Hughes concluded that nothing in the CRSC statute expressly supersedes the Barring Act, looking for "magic words" such as specific authorization to "settle" claims or an alternative limitations period.  Judge Jimmie Reyna dissented, advocating for a more functional analysis that would benefit the disabled veterans. Reyna argued that the majority's test was unnecessarily rigid, pointing out that over a century ago, the Supreme Court defined "settle" in this context to simply mean making an administrative determination of the amount of money due on a claim. In his view, the CRSC process unquestionably meets that definition. This divide between Hughes and Reyna reflects a broader philosophical tension I've observed across multiple cases, with Hughes typically adopting a text-focused formalist approach and Reyna favoring a more purposive or justice-oriented analysis that considers practical impacts.

"You only get one shot, do not miss your chance to blow. This opportunity comes once in a lifetime, yo." Emenim

The Federal Circuit recently affirmed the District of Delaware's denial of Franz Wakefield's motion for relief from judgment under Rule 60(b), underscoring the importance of timely raising arguments during the normal appeal process. Wakefield v. Blackboard Inc., Nos. 2024-2030 (Fed. Cir. Apr. 23, 2025).

Wakefield, proceeding pro se, sought to reopen a judgment invalidating his U.S. Patent No. 7,162,696 based on indefiniteness grounds more than two years after the district court's original judgment and more than a year after the Federal Circuit's affirmance. The Federal Circuit panel of Judges Lourie, Dyk, and Chen had little difficulty concluding that the district court did not abuse its discretion in finding the Rule 60(b) motion untimely. As the court emphasized, Rule 60(b) is not a substitute for appeal.

by Dennis Crouch

While a design patent can technically claim priority to a prior utility patent, that approach takes some planning and forethought to ensure that the utility patent's drawings and disclosure sufficiently show possession of the specific ornamental design features that will later be claimed in the design application.  Ideally, the drawings in the utility filing would be identical to those later included in the design application.

This situation is exemplified by the Federal Circuit's recent decision In re Floyd (Fed. Cir. April 22, 2025) (non-precedential).  The claimed design is a cooling blanket -- with the drawings showing a 6x5 array pattern.  The priority filing included a 6x6 array, a 6x4 array, and a statement that the array could include a plurality of array layouts.  But, the priority filing did not specifically and expressly include the 6x5.  The result: priority claim denied for lack of written description.

The case also illustrates the "daylight" between written description and anticipation standards, creating a trap where an applicant's own published application can both fail to provide written description support yet anticipate a later filing.  In this case, although Floyd's prior published application was insufficient as a priority document, the court found it served perfectly well as an anticipatory reference.

by Dennis Crouch

The Federal Circuit's AI-patent decision this week affirmed a district court's dismissal of the claims as ineligible, holding that "generic" machine learning technology is itself an abstract idea. Recentive Analytics, Inc. v. Fox Corp., No. 2023-2437 (Fed. Cir. Apr. 18, 2025).

In its decision, the court acknowledged the growing importance of machine learning, and exerted some care in limiting its holding:

Machine learning is a burgeoning and increasingly important field and may lead to patent-eligible improvements in technology. Today, we hold only that patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101.

At oral arguments, the patenee's attorney Robert Fredrickson (Goodwin) explained that one reason his client did not claim a new algorithm is that it would have raised 101 issues:

This wasn't an invention of a new machine learning technique, because that would fall into another one of this court's section 101 traps, is if the claim is improving the mathematical algorithm or making machine learning better, then we're claiming the natural law, the mathematical algorithm itself.

That question --  scope of protection for new machine learning algorithms -- will be left for another day.

by Dennis Crouch

Back when he was a law professor here at Mizzou, I recall taking with Sen. Josh Hawley about his favorite Supreme Court case - Marbury v. Madison, 5 U.S. (1 Cranch) 137 (1803).  The case has come to stand for the principle of judicial review, establishing the Supreme Court's authority to determine the constitutionality of laws and executive actions.  In the recent Federal Circuit case Xerox v. Facebook, Xerox relied on Marbury in a novel constitutional argument challenging the relationship between the PTAB and and Article III courts when it comes to claim construction -- arguing that the executive branch (the PTAB) is violating separation of powers principles by ignoring Article III court opinions. If you recall, the USPTO and PTAB have historically interpreted claims using broadest reasonable interpretation (BRI) rather than the standard approach outlined in Phillips v. AWH.  But, the USPTO changed its approach a few years ago and linked the standards -- with the result that the issue should not simply be ducked.

The basic question: does the PTAB have to follow a district court's prior claim construction of a patent term under principles of stare decisis?