Mandamus Denied: Fintiv’s Trial Moves Forward

Patent

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.

Bravo to the Federal Circuit for handling this efficiently.

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Federal Circuit Extends EcoFactor Framework to Patent Damages Apportionment in Jiaxing Decision

Patent

by Dennis Crouch

The Federal Circuit's decision in Jiaxing Super Lighting Electric Appliance Co. v. CH Lighting Technology Co., decided July 28, 2025, represents the first significant application of the court's recent en banc EcoFactor decision to patent damages expert testimony.  The appellate panel vacated the $14 million damages award and remanded for a new trial once the district court applies EcoFactor's heightened reliability standards to evaluate the damages expert's testimony regarding apportionment of portfolio license agreements.

Separately, the court also reversed a JMOL of no-invalidity regarding two other patents -- finding that the district court abused its discretion by excluding key evidence that would have supported the invalidity defense.  In the post, I take these issues in reverse order - first the JMOL then Damages.

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USPTO Closes AAPA Door: New Memo Practically Reverses Shockwave from Below

Patent

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.

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Ideology, Expertise, and the Evolving Federal Circuit

Patent

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.

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Federal Circuit Steps Into Apple-Fintiv Discovery Fight Days Before August 4 Trial

Patent

by Dennis Crouch

In an unusual move, the Federal Circuit on July 29, 2025, ordered Apple to respond to Fintiv's petition for writ of mandamus seeking to halt the upcoming August 4 trial date over unresolved discovery disputes. In re Fintiv, Inc., Docket No. 25-00142 (Fed. Cir. July 29, 2025).  Fintiv Petition.

Fintiv is primarily seeking discovery related to meetings between Fintiv's predecessor (CorFire) and Apple three years before Apple Pay's launch.  In those meetings, CorFire allegedly shared key aspects of its patented mobile wallet technology. This includes documents and depositions of three individuals with deep knowledge of those meetings, including one who at the time worked for CorFire and later became Apple's Director of Apple Pay & Wallet Product Management.

Apple's response is due July 31, 2025.

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The New Trump-Lutnick Patent Tax: Trading Innovation Policy for Deficit Reduction

Patent

by Dennis Crouch

The Trump administration is reportedly considering a radical transformation of the US patent system that would replace the current flat-fee maintenance structure with a percentage-based "property tax" on patent value, according to a recent Wall Street Journal report. Howard Lutnick and his Commerce Department team are discussing a tax of between 1% and 5% of overall patent value annually, a shift that could dramatically increase costs for certain patent holders while making the US an international anomaly among major patent systems.  The report led to market drops - especially in biotech.

Under the current system established by the Patent Act, patent holders pay three flat maintenance fees: at 3.5 years, 7.5 years, and 11.5 years after patent issuance. The final fee is the largest (currently $8,280), and almost half of all patents are abandoned without paying this final fee. For patents that have become virtually worthless by their 11.5-year mark, owners might actually prefer a value-based tax (2% of nothing...). However, any new proposal would likely be additional to existing maintenance fees rather than a replacement.

Implementation Strategy: Targeting High-Value Patents

One potential approach would focus revenue collection on patents that are demonstrably high-value, using existing public mechanisms for identification. This targeted system could include:

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The Great Power Competition: Federal Circuit Reinforces Commerce’s Anti-China Trade Arsenal

Patent

by Dennis Crouch

The Federal Circuit's recent decision in Jilin v. US underscores how US courts are fortifying legal foundations for aggressive trade enforcement against China as part of the ongoing global power competition between the two great nations.  In a unanimous ruling reversing the Court of International Trade (CIT), the Federal Circuit validated Commerce's decades-old presumption that all Chinese exporters are government-controlled unless they can prove otherwise. See Jilin Forest Industry Jinqiao Flooring Group Co. v. United States, No. 2023-2245 (Fed. Cir. July 28, 2025).  Some presumptions are easy to overcome, but this burden that has proven nearly insurmountable in practice.

China's designation as a "non-market economy" (NME) lies at the heart of the case. Under WTO antidumping rules, investigating authorities typically compare export prices to domestic prices in the exporting country to determine if "dumping" has occurred. However, NME status allows the US to disregard Chinese domestic prices entirely, instead using "surrogate country" methodology that substitutes prices from third countries deemed more "market-oriented." The US Tariff Act defines an NME country as "any foreign country that the administering authority determines does not operate on market principles of cost or pricing structures, so that sales of merchandise in such country do not reflect the fair value of the merchandise." 19 U.S.C. § 1677(18)(A).  This use of surrogate markets produces systematically higher dumping margins, with Chinese companies face antidumping duties that are substantially higher than other countries.  China has (unsuccessfully thus far) argued that this discriminatory treatment should have ended in 2016 when certain provisions of its WTO accession protocol expired.

In its decision, the CIT sided with Jilin on multiple grounds that challenged the fundamental legal basis of Commerce's NME presumption that all Chinese exporters are government-controlled. The court found that Commerce had failed to identify any statutory authority for its policy of presuming all Chinese exporters are government-controlled, noting that "Commerce makes no claim to Chevron deference and . . . identify[ies] no statutory source for the NME presumption." More importantly, the CIT determined that Commerce's presumption directly conflicts with the Anti-Dumping Act's explicit statutory requirement to calculate "individual weighted average dumping margins" for each "known" exporter, including mandatory respondents like Jilin. The court emphasized that while Commerce may apply adverse facts available in certain circumstances, "the statute does not indicate that Commerce can simply assign a rate to a mandatory respondent based on its relationship to an NME government." As Jilin argued in its CAFC brief: "An agency policy is not tantamount to a statute or regulation and is not entitled to deference under Chevron or any other framework."

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Copyright Thicket and President Trump’s AI Training Data Solution

Patent

by Dennis Crouch

President Trump’s recent remarks at the White House AI summit signaled an important policy shift in the AI copyright debate. “Common sense” application of intellectual property rules should allow AI developers to train on books and articles without paying or negotiating a license for each one.  The bottom line: requiring copyright licensing would hamper the US’s ability to have continued AI growth.

 You can’t be expected to have a successful AI program when every single article, book, or anything else that you’ve read or studied, you’re supposed to pay for. Gee. I read a book. I’m supposed to pay somebody. And, you know, we we appreciate that, but you just can’t do it because it’s not doable. And if you’re going to try and do that, you’re not going to have a successful program.

The US continues to see AI development as a particular American national interest — both as the key to continued economic growth and for national security purposes.  For Trump, China immediately comes to mind, with his statement “China’s not” paying for copyright. “And if you’re going to be beating China . . . you have to be able to play by the same set of rules.”

Although his suggestion here is that training data should be fair use, President Trump concludes that outputs should not be copied: “Of course, you can’t copy or plagiarize an article. But if you read an article and learn from it, we have to allow AI to use that pool of knowledge without going through the complexity of contract negotiations of which there would be thousands for every time we use AI.” (more…)

Fuel of Interest, Fire of Genius: Lincoln’s Patent Philosophy

Patent

by Dennis Crouch

Abraham Lincoln holds a unique distinction as the only U.S. President to hold a patent. U.S. Patent No. 6469, granted in 1849, covered a device for lifting riverboats over shallow waters using bellows and air chambers. Lincoln also litigated patents in his role as a lawyer.  His experience with the patent system informed what would become one of the most quoted aphorisms in intellectual property law, delivered during Lincoln’s largely forgettable 1858 lecture on “Discoveries and Inventions.” In that lecture delivered in Bloomington, Illinois, Lincoln declared that the patent system “added the fuel of interest to the fire of genius, in the discovery and production of new and useful things.” IMO, this elegant formulation captured the fundamental economic theory underlying patent law.  Humans have natural creativity and genius that is always burning, but the material incentive of exclusive rights is often needed to spur innovation.

Lincoln’s lecture traced the evolution of human innovation from the biblical first human invention (fig leaf clothing) to the Industrial Revolution.  He specifically praised the U.S. Constitution’s Patent Clause as itself a “a great step in the progress of civilization.”

I have already intimated my opinion that in the world’s history, certain inventions and discoveries occurred, of peculiar value, on account of their great efficiency in facilitating all other inventions and discoveries. Of these were the arts of writing and of printing — the discovery of America, and the introduction of Patent-laws.

The speech does not delve into contemporaneous decisions such as O’Reilly v. Morse, 56 U.S. 62 (1854), that raised the concern of overclaiming and monopolizing a broad principle (or abstract idea). However, the “fire” metaphor may have been an intentional inversion of Thomas Jefferson’s earlier fire imagery. In his 1813 letter to Isaac McPherson, Jefferson argued that ideas are “like fire, expansible over all space, without lessening their density in any point” and thus should spread freely rather than be subject to “exclusive appropriation.” Jefferson’s fire metaphor emphasized the non-rivalrous nature of knowledge – that ideas, like flames, can be shared infinitely without diminishing the original source. (more…)

When 100 Years of Use is Not Enough

Patent

by Dennis Crouch

In July 2025, the Federal Circuit reversed a Trademark Trial and Appeal Board (TTAB) dismissal of a likelihood of confusion opposition in Sunkist Growers, Inc. v. Intrastate Distributors, Inc., No. 24-1212 (Fed. Cir. July 23, 2025), finding that substantial evidence did not support the Board's conclusion that the marks SUNKIST and KIST have sufficiently different commercial impressions to avoid consumer confusion.  The complete reversal appears to mean that KIST will be blocked from registration.

I am familiar with the SUNKIST brand based upon its popularity rise as part of my sugary childhood in the 1980s. When I started reading the decision, I thought KIST must be a new upstart, but then I saw that their bottles include the year "1929." As it turns out, both KIST and SUNKIST have surprisingly robust heritage -- both dating back about 100 years.  And both with with trademark registrations for soft drinks and soda syrups dating from the 1920s.

The KIST brand changed multiple times over the decades and ultimately, their old registrations were all abandoned in the 2000s for failing to file the required statements of use.  Under standard US trademark law, once a mark has been formally abandoned, later resumption of use does not resurrect the original priority date.

The new owners of KIST filed their re-registration efforts in 2019, both with the word mark KIST and also a very simple stylized block letters shown here.

Interestingly, despite KIST's historical longevity, the evidentiary record from recent trademark litigation did not identify any sales between 1970 and 2000.  This is important because SUNKIST had relaunched its brand in the mid 1970s and has operated continuously since then.  Thus, the case seems to operate from the framework that SUNKIST is the superior mark, and KIST can only be re-registered if there is no likelihood of confusion between the two marks in the minds of consumers.

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No CA Fed Jurisdiction in _This_ Arbitration Award Challenge

Patent

by Dennis Crouch

Since Gunn v. Minton (2013), the Federal Circuit has been quite shy about non-patent patent cases. These are cases where the cause of action is not something like infringement, but that still involve substantial patent law analysis.  The newest example is Acorda v. Alkermes (Fed. Cir. 2025) involving a petition to modify an arbitration award based upon patent law public policy issues. The Federal Circuit ultimately transferred the case to the Second Circuit for lack of jurisdiction, holding that because the petitioner had pleaded alternative non-patent grounds for relief alongside its patent law arguments, the patent law issue was not "necessarily raised" under Gunn's first prong—meaning the district court could have granted relief without resolving any substantial question of federal patent law. Acorda Therapeutics, Inc. v. Alkermes PLC, No. 2023-2374 (Fed. Cir. July 25, 2025).

This narrow holding allowed the court to sidestep broader questions about when patent law issues arising in arbitration contexts warrant Federal Circuit review, leaving practitioners and lower courts without clear guidance on the boundaries of Federal Circuit jurisdiction over patent-related arbitration disputes.

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The Services Problem That Undermines Crocs’ Textualist False Advertising Defense

Patent

by Dennis Crouch

A recent petition for certiorari in Crocs v. Dawgs asks the U.S. Supreme Court to clarify whether the Lanham Act's false advertising provision can reach a company's false claims that its product is patented. Crocs argues that the statute's prohibition on misrepresentations about a product's "nature, characteristics, [or] qualities" should be limited to tangible attributes and thus should not extend to intangible legal designations like patent status. I argue here that this interpretation creates a fundamental problem that Crocs appears to have overlooked: the same statutory language applies equally to services, which are inherently intangible and lack any tangible characteristics that could be misrepresented under Crocs' proposed framework. [Petition for a Writ of Certiorari][Appendix]

The case arises from a long-running legal battle between Crocs – maker of the eponymous foam clogs – and Double Diamond (known for “Dawgs” shoes) that began back in 2006 with a design patent infringement lawsuit.  The most recent battle grounds is a counterclaim by Double Diamond alleging false marketing under § 43(a) of the Lanham Act (15 U.S.C. § 1125(a)) -- particularly alleging that Crocs falsely marketed the its "Croslite" foam material as “patented,” “proprietary,” and “exclusive.”  In fact, the material was not patented and was essentially the same EVA foam many competitors use. Double Diamond contended that this misleading use of patent-related terms gave consumers the (false) impression that Crocs’ material was unique or superior.

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More Briefs in SAP and Motorola

Patent

In June 2025 SAP and Motorola each filed petitions for writs of mandamus asking the Federal Circuit to order the USPTO to reinstate the Vidal Memo safe‑harbors and to overturn Acting Director Coke Stewart’s decisions to vacate institutions of their inter partes review (IPR) petitions. I have been covering the cases on Patently-O:

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The Power of Unreviewability

Patent

by Dennis Crouch

The Federal Circuit in IGT v. Zynga Inc. affirmed the PTAB IPR final written decision finding patent claims obvious. In addition, the court refused another institution challenge — holding that the Agency’s use of “interference estoppel” is an aspect of institution decisions that are generally non-reviewable on appeal.  This decision reinforces my belief that the pending SAP and Motorola petitions will be denied.

To understand this case, we need to step back to 2003, when patent interference practice still governed priority disputes between competing inventors. IGT owned U.S. Patent No. 7,168,089 for gaming software authorization systems. When Zynga’s predecessor copied IGT’s published claims into its own application, the USPTO declared an interference in 2010. Zynga moved for judgment that IGT’s patent was obvious over certain prior art references (Carlson, Wells, and Alcorn).  Ultimately, the Board terminated the interference based upon a finding that Zynga’s application lacked adequate written description support for IGT’s claims. (more…)

Fungi, Bacteria and the U.S. Plant Patent Act

Patent

by Dennis Crouch

It was probably middle school biology where I learned that plants and fungi are classified in two separate kingdoms.  It wasn't until today that I learned why - despite their separate classification - both plants and fungi are protectable under the Plant Patent Act of 1930.

Now codified at 35 U.S.C. § 161, the Plant Patent Act adds a third form of U.S. patent, alongside utility (useful inventions) and design (ornamental designs) patents.  For a plant patent, the inventor must have invented or discovered and asexually reproduced a "distinct and new variety of plant." The provision expressly include "cultivated sports, mutants, hybrids, and newly found seedlings" but excludes "tuber propagated plant[s]" such as potatoes as well as plants simply found in the wild ("found in an uncultivated state").

But what about mushrooms and other fungi:

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Does US Innovation Drive the Dollar’s Global Dominance?

Patent

by Dennis Crouch

In their recent article, Professors Mauro Bambi and Sara Eugeni from Durham University (UK) propose an intriguing hypothesis connecting patent-driven innovation with the global dominance of reserve currencies, particularly the US dollar.  They look at Patent Cooperation Treaty (PCT) applications over the years, including high-value "triadic" patent families and argues that higher patenting activities significantly influence central banks' decisions to hold a particular currency as a reserve asset. Eugeni, Sara and Bambi, Mauro, Silicon Valley and the Greenback: Does US Innovation Fuel the Dollar's Global Dominance? (Working Paper from June 26, 2025).

Figure 1 from their paper (above) visualizes this correlation: as a country's share of PCTs increase, so too does the share of its currency in global reserves. 

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Federal Circuit Expands Prosecution History Estoppel to Simple Claim Cancellations in Colibri Heart Valve

Patent

by Dennis Crouch

In a decision that broadens the reach of prosecution history estoppel (and thus limits doctrine of equivalents), the Federal Circuit reversed a $106 million jury verdict in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC, No. 2023-2153 (Fed. Cir. July 18, 2025). The court held that prosecution history estoppel barred Colibri from asserting doctrine of equivalents infringement based solely on the cancellation of a broad claim during prosecution—even though the asserted claim itself was original and never amended. This represents a notable, but not surprising, expansion of estoppel doctrine beyond traditional claim amendments to encompass strategic claim cancellations that communicate narrowing to persons of ordinary skill in the art. [23-2153.OPINION.7-18-2025_2546584]

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Uncomfortable Truths: Prosecution History Disclaimer in Design Patents

Patent

Top Brand LLC v. Cozy Comfort Company LLC, 24-2191 (Fed. Cir. July 17, 2025)

The Federal Circuit has rejected Cozy Comfort's $15 million verdict -- finding that its hoodie design patent was not infringed.  D859,788.  The case turns on prosecution history - with a holding that the patentee had disclaimed aspects of the design when distinguishing the invention from the asserted prior art.

The image here shows the Top Brand accused design (left), Cozy Comfort's patented design (right), and the White prior art (middle).

After a three-week jury trial, Top Brand was found liable for both design patent and trademark infringement, with the jury awarding $15.4 million for design patent infringement and $3.08 million for trademark infringement of "THE COMFY" mark. The district court denied judgment as a matter of law, but the Federal Circuit reversed on both counts.

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In re SAP America: Sharpening the Dispute over PTAB Discretionary Denials

Patent

by Dennis Crouch

The Federal Circuit continues to grapple with fundamental questions surrounding the USPTO’s broad discretionary authority to deny Inter Partes Review (IPR) petitions.  Both implementation issues by former Director Vidal as well as the about-change by Acting Director Stewart.

In two recent posts, I discussed the pending In re SAP, 25-132 (Fed. Cir. 2025), mandamus action that challenge the "retroactive" actions by Director Stewart -- particularly rescinding the 2022 "Vidal Memo," which had provided explicit safe harbors for IPR petitions to avoid discretionary denials. SAP argues that Stewart’s reversal constitutes an unlawful retroactive policy shift, violates due process, and exceeds administrative authority. Several new briefs opposing mandamus have now been filed in the case, with the USPTO's response expected July 21, 2025, following an extension.

Supporting Mandamus:

Arguing Against Mandamus:

This dispute hinges upon the USPTO’s internal guidance documents governing discretionary denials of IPR petitions under the Fintiv framework, originally developed in PTAB precedent under Director Iancu (favoring patentees) and later modified by Director Vidal (favoring petitioners). SAP relied on Vidal’s 2022 guidance, which offered two clear safe harbors: (1) a broad Sotera stipulation in which petitioners agree not to pursue overlapping invalidity grounds in parallel litigation, or (2) a petition presenting a “compelling” case for invalidity. The rescission announced by Chief Judge Boalick in early 2025 withdrew these safe harbors and ultimately expanded upon the original NHK-Fintiv factors to include additional justifications for discretionary denials.  The new approach was then retroactively applying to pending petitions such as SAP’s that included a Sotero stipulation.  After initially meeting the standards set under Vidal’s memo, SAP’s petition was nevertheless denied under the revived, broader factors. The PTAB specifically rejected SAP’s stipulation as insufficient, stating that SAP could still raise "system" prior art defenses not covered by the stipulation in parallel district court litigation, thus undermining judicial economy and efficiency.

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