by Dennis Crouch Return Mail recently filed its petition for certiorari with the Supreme Court, seeking a broader scope of patent eligibility under 35 U.S.C. § 101. You may remember that Return Mail won its case before the Supreme Court a few years ago. Return Mail, Inc. v. United States Postal Service, 587 U.S. 618 (2019) (federal agencies are not “any person” under the AIA and therefore cannot challenge patents via IPR). [Return Mail Eligiblity Petition] In its new petition, Return Mail frames the question presented as:  Whether the claimed invention is ineligible for patent protection ..read more

by Dennis Crouch This is our second discussion of collateral estoppel in as many days.  Yesterday I wrote about Koss v. Bose, a case where the Federal Circuit concluded that a district court’s final judgment of invalidity had a preclusive effect on USPTO IPR analysis — rendering the patentee Koss’s appeal moot.   Today’s focus is on SoftView v. Apple, and a focus on the USPTO’s estoppel regulations as they apply between an IPR and reexamination proceeding. Case No 23-1005 (Fed. Cir. July 26, 2024). Background on IPR Estoppel Against the Patentee in PTO Actions: Using its re ..read more

by Dennis Crouch Koss Corporation v. Bose Corporation, 22-2090 (Fed. Cir. July 19, 2024) In its final written decisions, the PTAB found a number of Koss patent claims invalid and Koss appealed to the Federal Circuit. In the end, though the appellate panel found the appeals moot because all the claims had been invalidated in parallel district court litigation. Although the prior litigation involved a different party (Plantronics), Bose was able to take advantage of that invalidation decision under the doctrine of non-mutual collateral estoppel established by the Supreme Court in Blonder-T ..read more

Guest post by Arti K. Rai, Elvin R. Latty Distinguished Professor of Law and Co-Director, Center for Innovation Policy at Duke Law In a flurry of recent decisions, the Supreme Court has continued its skepticism of administrative agencies.  Although these decisions may not have as significant an impact in patent law as in other areas, they do pose interesting puzzles with respect to stare decisis as well as agency rulemaking and discretion that will provide many litigation opportunities going forward. Consider first stare decisis and the Court’s overruling of Chevron deference (i.e. d ..read more

For several years, the most controversial part of the design patent world was patenting of portions of a display screen.  But, things have moved forward with a steady flow of animated portions of a display screen.  The chart above shows the year-over-year numbers of design patents issued claiming some form of an animated or transitional display.  For 2024, the numbers are just for the first half of the year. The MPEP identifies these as “changeable computer generated icons,” explaining that: Computer generated icons including images that change in appearance during viewing may ..read more

by Dennis Crouch In recent years, the United States Patent and Trademark Office (USPTO) has undergone a significant shift in its examiner composition, with real implications for patent prosecution strategies. Our data reveals a dramatic drop in the percentage of assistant examiners over the past decade. Prior to 2015, over 35% of patents were examined by assistant examiners. Since 2020, this number has plummeted to less than 20%. But these assistant examiners did not simply disappear. For the most part, they rose in rank and became primary examiners.   In other words, examiners are ..read more

by Dennis Crouch Although not a patent case, Feliciano v. Department of Transportation merits attention as one of only two Federal Circuit cases granted certiorari for the October 2024 Supreme Court term, alongside the veterans benefits case of Bufkin v. McDonough. In Feliciano, the Supreme Court will consider whether federal civilian employees who are called to active military duty are entitled to differential pay even if their service is not directly connected to a declared national emergency. The case stems from the Federal Circuit’s interpretation of the differential pay statute, 5 U.S.C ..read more

By Dennis Crouch In Miller Mendel, Inc. v. City of Anna, Texas, No. 2022-1753 (Fed. Cir. July 18, 2024), the Federal Circuit affirmed a district court’s judgment on the pleadings that the asserted claims of Miller Mendel’s U.S. Patent No. 10,043,188 (‘188 patent) are ineligible for patent protection under 35 U.S.C. § 101. The court also affirmed the denial of the defendant’s motion for attorneys’ fees under 35 U.S.C. § 285. The ‘188 patent is directed to “a web based software system for managing the process of performing pre-employment background investigations.” Representative claim 1 recite ..read more

In a recent decision out of the Southern District of Texas, Judge Lee Rosenthal found the patent infringement case brought by VDPP against Volkswagen to qualify for sanctions under the Patent Act 35 U.S.C. § 285.  The court also relied upon 28 U.S.C. § 1927 and its inherent powers to directly sanction VDPP’s attorney William P. Ramey (Ramey LLP). VDPP, LLC v. Volkswagen Group of America, Inc., No. H-23-2961 (S.D. Tex. July 11, 2024). VDPP Sanctions Memo VDPP Dismissal Memo VDPP’s US Patent No. 9,426,452 claims a system for presenting video content to a viewer wearing electrically contr ..read more

by Dennis Crouch Earlier this week I was reviewing some of the USPTO’s eligibility examples, noting that they were all quite old.  As if on cue, the Office has released a new set of updated guidelines – focusing on Artificial Intelligence related inventions and including three new examples.  In Bilski, the Supreme Court explained that the best way to understand whether a particular claimed invention is directed to an “abstract idea” is to look back on old examples for guidance.  The USPTO has found that a good way to administer this approach is to provide examples of situations ..read more