A new en banc petition challenges the Federal Circuit's odd approach to double-patenting and patent term adjustment issues stemming from In re Cellect, 81 F.4th 1216 (Fed. Cir. 2023) and Allergan USA, Inc. v. MSN Laboratories Private Ltd., 111 F.4th 1358 (Fed. Cir. 2024).  As I discuss below, the new case is Acadia Pharmaceuticals Inc. v. Aurobindo Pharma Ltd., No. 2024-1401 (Fed. Cir. 2025) and the patentee is the current winner -- but the patent challenger (MSN) believes that the court's ruling is improper because it insulates a PTA-extended patent from ODP invalidity based upon the Allergan exception - thereby allowing two obvious patents to coexist with different expiration dates, without restrictions on divided ownership, and effectively prolonging exclusivity. [Acadia v. Aurobindo Petition]

Obviousness-type double patenting (ODP) is a judicially-created doctrine with shifting justifications that has evolved over more than 150 years. Originally designed to prevent patent owners from extending exclusivity beyond the term of an original patent by obtaining subsequent patents for obvious variations of the same invention, see Miller v. Eagle Manufacturing Co., 151 U.S. 186 (1894), the doctrine's rationale has morphed significantly over time. Early cases like Odiorne v. Amesbury Nail Factory, 18 F. Cas. 578 (1819), focused on preventing indefinite patent term extension, while later decisions have emphasized theories of public dedication of unclaimed subject matter and prevention of harassment through multiple enforcement actions by different assignees. See In re Hubbell, 709 F.3d 1140 (Fed. Cir. 2013).

The 1995 Uruguay Round Agreements Act (URAA) fundamentally altered patent terms from 17 years from issuance to 20 years from the earliest effective filing date.  This change eliminated the most egregious ODP concerns since patents with common priority dates would typically expire simultaneously. Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208 (Fed. Cir. 2014).  But, Congress's introduction of patent term adjustment (PTA) in 1999, codified at 35 U.S.C. § 154(b), to compensate patentees for USPTO examination delays reintroduced variability in expiration dates among family members sharing priority dates. Most patents are part of a family, and it is common for one or more to have received an ODP rejection - overcome with a terminal disclaimer.  Notably, the PTA statute contains a provision (§ 154(b)(2)(B)) that terminal disclaimers filed to overcome ODP forfeit any PTA beyond the disclaimed expiration date.

The setup in the bulk of these cases reflects a structural quirk of patent prosecution. In a family where two patents/applications claim obvious variations of the same invention, the USPTO only polices double patenting a situation where one patent has already issued and an application is still pending claiming an obvious variant.  For the issued patent, its prosecution is closed, and the Office does not ask the owner to go back and file a terminal disclaimer to synchronize its term with issued family members.  This practice made sense when term was calculated from issuance date - the later issued would normally always expire later.  But today it is actually more common for earlier issued patents to expire later -- that is because prosecution is often longer in the first application than in continuations.  As a result, the disclaimer requirement falls only on the follow-on application, while the first-issued patent retains whatever PTA the statute provides. This asymmetry is at the heart of the current controversy: whether the judiciary should treat those earlier patents as vulnerable to ODP challenges?

The chart above shows this setup for Acadia. The ’740 patent was filed first (1/15/2004), issued first (10/13/2009), and—absent any adjustment—would have expired on 1/15/2024, but it received 980 days of PTA that pushed its term to 9/21/2026 (the subsequent PTE to 4/29/2030 is not at issue here). The later‑filed family member, the ’271 patent, issued on 2/14/2017 with no PTA and therefore expired on the ordinary 20‑year date, 1/15/2024. The ODP question is whether that later‑filed, later‑issued, earlier‑expiring ’271 patent can be used invalidate the '740 patent since no terminal disclaimer was filed in the parent.

by Dennis Crouch

Laboratory Corp. of Am. Holdings v. Qiagen Scis., LLC, 23-2350, 2025 WL 2327197 (Fed. Cir. Aug. 13, 2025)

In a significant post-trial reversal, the Federal Circuit set aside a Delaware jury’s willful-infringement verdict and directed entry of JMOL of non‑infringement on two Mass General patents now owned by LabCorp. The panel (Judge Lourie, joined by Judges Dyk and Cunningham) held that the district court improperly let the jury decide a disputed claim construction (O2 Micro error) and that the patentee’s doctrine‑of‑equivalents showing failed the function-way-result test under Warner‑Jenkinson and VLSI.

The case centered on U.S. Patents 10,017,810 and 10,450,597, both directed to methods for preparing DNA samples for sequencing through "enrichment" techniques. Rather than sequencing entire genomes, these patents describe methods for producing copies of specific regions of interest - such as sections suspected of containing disease-causing mutations - to make sequencing more efficient and cost-effective. The technology relies on polymerase chain reaction (PCR) to amplify target areas using various types of primers, including "target-specific primers" that anneal to sequences of interest, "adaptor primers" that work with artificial sequences attached to the native DNA fragments, and "sequencing primers" that enable the enriched fragments to be read by sequencing instruments.

After a five-day jury trial, the jury found that Qiagen's accused products willfully infringed both patents and awarded about $5 million in damages. Delaware Federal Judge Noreika subsequently denied Qiagen's renewed motion for judgment as a matter of law (JMOL) on infringement, invalidity, and damages.  On appeal, the Federal Circuit has now reversed.

by Dennis Crouch

After a second trip to the Federal Circuit and back, Fintiv, Inc. v. Apple Inc. (W.D. Tex. No. 1:21-cv-00896-ADA) has ended with a final judgment for Apple. On August 7, 2025, Judge Alan Albright granted summary judgment of noninfringement on most of the asserted claims of U.S. Patent No. 8,843,125, finding that Fintiv failed to identify any actual “widget” in Apple’s accused mobile wallet products as required by the claims.  Fintiv then voluntarily dismissed the remaining claims - indicating that it will appeal yet again.

• Fintiv v. Apple RICO Complaint

Having lost its patent clam, Fintiv has also filed a new corporate theft and racketeering lawsuit against Apple.  This post first looks at the dismissed patent case and then moves over to the RICO claims.

by Dennis Crouch

R.J. Reynolds has petitioned the Supreme Court to review a $95 million patent damages award that relied on the Federal Circuit's "built-in apportionment" doctrine, setting up a potential Supreme Court showdown. In R.J. Reynolds Vapor Company v. Altria Client Services LLC, Reynolds argues that the Federal Circuit effectively nullified the Supreme Court's 140-year-old mandate in Garretson v. Clark, 111 U.S. 120 (1884), that patent damages "must in every case" be apportioned between patented and unpatented features. [RJR v Altria Petition][RJR v. Altria - Appendix]

The RJR opinion released prior to the Federal Circuit's recent en banc decision in EcoFactor, Inc. v. Google LLC, 137 F.4th 1333 (Fed. Cir. 2025), and that case may be enough to warrant a new outcome (although note that EcoFactor does not mention RJR).  And, the petition for certiorari asks the Supreme Court to "grant, vacate, and remand in light of the Federal Circuit's recent en banc decision in EcoFactor."

The petition also asks a more fundamental question focusing Supreme Court precedent: "whether the Federal Circuit's "built-in apportionment" exception violates Garretson's apportionment requirement."

Meanwhile, EcoFactor has filed for an extension application so that its own petition for certiorari will be due mid-September 2025, with a likely parallel focus on the Federal Circuit's approach to patent damages expert testimony under Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993).  A third case focusing on apportionment, Jiaxing Super Lighting Electric Appliance Co. v. CH Lighting Technology Co. (Fed. Cir. July 28, 2025), would make an interesting trio for the Supreme Court to consider.

Famed Patent Litigator Bill Lee and Stanford professor Mark Lemley recently published an influential article that provides grounding for RJR's petition. William F. Lee & Mark A. Lemley, The Broken Balance: How “Built-In Apportionment” and the Failure to Apply Daubert Have Distorted Patent Infringement Damages, 37 Harv. J.L. & Tech. 256 (2024). The article extends prior work by both, including Lee's 2016 article with Prof. Melamed. Douglas A. Melamed and William F. Lee, Breaking the Vicious Cycle of Patent Damages, 101 Cornell L. Rev. 385 (2016).

by Dennis Crouch

American Science and Engineering v. Stewart, No. 23-2127 (Fed. Cir. 2025)

In this short non-precedential opinion, the Federal Circuit vacated and remanded the PTAB's anticipation conclusion -- finding too many gaps in the Board's analysis.  The invention here is an X-Ray inspection system used for moving objects.  The claims require two "pencil-beams" shot in specific perpendicular directions with reference to the object's direction of motion. Detectors are then used to collect the scattered radiation and integrate the overlapping bi-directional results.  In the IPR, the PTAB found a number of claims anticipated by "Seppi" and AS&E appealed - arguing that the finding lacked substantial evidence.

The central complaint is that the Board failed to explain its intermediary fact finding -- i.e., that "the Board failed to find Seppi’s scatter detectors can detect scattered radiation from two perpendicular pencil beam sources."

by Dennis Crouch

The Federal Circuit recently expanded its doctrine associated with specification changes in family member patent applications -- using minor changes in the specification justify differing claim construction across a patent family.  FMC Corporation v. Sharda USA, LLC, No. 24-2335 (Fed. Cir. Aug. 1, 2025).  This is helpful for careful patent attorneys, but also requires care when drafting non-provisional applications claiming priority back to a provisional.  Notably, in both FMC and the 2024 DDR case, the construction hurt the patentee.

by Dennis Crouch

The Federal Circuit has denied en banc rehearing in Kroy IP Holdings, LLC v. Groupon, Inc., leaving in place a February 2025 panel decision that significantly limits the collateral estoppel effect of Patent Trial and Appeal Board (PTAB) unpatentability determinations. The denial includes contrasting from Chief Judge Moore and Judge Dyk. [23-1359.ORDER.8-1-2025_2553055]

by Dennis Crouch

A former USPTO patent examiner has petitioned the Supreme Court to review his exclusion from practicing before the USPTO.  Shah Behnamian argues that the USPTO wrongfully denied his application to register as a patent attorney based on a disciplinary suspension that he claims was discriminatory retaliation. The case raises some questions about how the USPTO evaluates the moral character of former employees seeking to practice before the agency, and whether patent examination itself constitutes a "profession" warranting certain procedural protections under federal regulations. Behnamian v. Coke Morgan Stewart, No. 25-5251 (U.S. July 26, 2025) (Behnamian Petition) (Behnamian Appx).

Behnamian worked as a patent examiner from 2009 until May 2020, advancing to GS-14 level primary examiner with consistently outstanding performance ratings until close to the end of his employment. He ultimately resigned following what he alleges was discriminatory suspension related to his wife's pregnancy.  In particular, in 2019, he was charged with being Absence Without Leave (AWOL) for 30 hours and 15 minutes over several days between April and June 2019, while still allegedly logging hours.  He received a five-day suspension that he served in March 2020 and resigned a couple of months later.

After resigning, Behnamian applied to practice before the USPTO as a patent agent.  The USPTO Office of Enrollment and Discipline initially granted his application, but then reversed course after learning (1) about the suspension that (2) Behnamian did not disclose in his registration application.  Behnamian has been pursuing registration since then, in litigation that has now reached the Supreme Court.

by Dennis Crouch

In a brief order, the Federal Circuit has denied Fintiv's mandamus petition seeking relief from Judge Alan Albright's decision to move forward with an expedited trial in Fintiv v. Apple.  Jury selection started this week and the trial is set to begin on Monday, August 4, 2025.

• 25-142.ORDER.8-1-2025_2552950
• Dennis Crouch, Federal Circuit Steps Into Apple-Fintiv Discovery Fight Days Before August 4 Trial, Patently-O (July 30, 2025).

Bravo to the Federal Circuit for handling this efficiently.

by Dennis Crouch

The USPTO moved swiftly to shut down any hope that the Federal Circuit's recent decision in Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., No. 2023-1864 (Fed. Cir. July 14, 2025) had opened a broader pathway for using applicant-admitted prior art (AAPA) to supply missing claim limitations in inter partes review (IPR) proceedings. In a memorandum dated July 31, 2025 (two weeks after Shockwave), Acting Director Coke Morgan Stewart announced that the agency will "enforce and no longer waive" the requirement of 37 C.F.R. § 42.104(b)(4) that IPR petitions "must specify where each element of the claim is found in the prior art patents or printed publications relied upon."  This regulatory enforcement appears to effectively prohibits the use of AAPA, expert testimony, common sense, and other forms of "general knowledge" to supply missing claim limitations, regardless of whether petitioners carefully avoid labeling such evidence as the "basis" of their challenges.

by Dennis Crouch

In my recent post, I traced how the Federal Circuit’s composition has shifted from a 10-1 Republican majority in the early 1990s to its present 8-3 Democratic-appointed tilt. Dennis Crouch, The Federal Circuit's Shifting Political Balance, Patently-O (June 15, 2025).  That transformation has not only symbolic weight, but also real jurisprudential and institutional consequences, especially as the court faces more politically charged litigation such as the pending V.O.S. Selections v. Trump case.  I note that the Federal Circuit’s response—en banc proceedings and unanimous per curiam orders—may reflect an institutional effort to shield itself from claims of partisanship.

Jason Rantanen and co-authors Paul Gugliuzza and Jonathan Nash have added more empirical substance to this conversation with a major study of separate opinions and dissents at the Federal Circuit from 2008–2021. Their article, Expertise, Ideology, and Dissent, provides powerful data to help make sense of how political ideology, judicial expertise, and institutional dynamics intersect at this court.