Federal Circuit Tightens Expert Testimony Standards in Trudell, Previewing Potential Approach to EcoFactor
Patently-O
by Dennis Crouch
9h ago
The Federal Circuit's recent decision in Trudell Med. Int'l Inc. v. D R Burton Healthcare, LLC, 23-1777 (Fed. Cir. Feb. 7, 2025), follows a framework for excluding expert testimony that either (1) violates discovery obligations or (2) contradicts claim construction. The appellate court rejected a jury verdict of non-infringement after finding the district court abused its discretion by admitting expert testimony that both failed to comply with Fed. R. Civ. P. 26's expert disclosure requirements and violated Federal Rule of Evidence 702's reliability standards.  The case also notably resul ..read more
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Docket This: Working with Clients to Manage the USPTO Continuation Surcharges
Patently-O
by Dennis Crouch
9h ago
by Dennis Crouch The USPTO's new fee structure, which took effect on January 19, 2025, introduces significant changes that will reshape patent prosecution strategy in the coming years. While the update includes generally higher fees across the board, one notable development is a substantial surcharge targeting continuation applications filed long after their earliest benefit date (EBD). Under this new structure, applicants now face a $2,700 surcharge for continuations filed six years after the EBD, with the fee jumping to $4,000 for applications filed nine or more years out. Small and micro en ..read more
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Patent Applications After Final Rejection: A One-Year Follow-Up Study
Patently-O
by Dennis Crouch
16h ago
by Dennis Crouch I have been looking at after final practice, and potential changes going forward in how applicant's respond to this important decision point. The chart above looks at fate of patent applications that received final rejections in January 2024 -- and shows an optimistic picture one-year out. Among the 15,813 applications tracked, nearly half (48%) have issued as patents or at least received a notice of allowance, suggesting that a final rejection, while a significant hurdle, is far from the end of the road for many applications. And, that an allowance may well be on the horizon ..read more
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From Sculptors to Headnotes: Chiseling Out Copyright Protection for Westlaw Content
Patently-O
by Dennis Crouch
2d ago
by Dennis Crouch In a surprising decision today, Judge Stephanos Bibas ruled that ROSS Intelligence's use of Westlaw content to train its legal AI system constituted copyright infringement. Thomson Reuters Enter. Ctr. GmbH v. Ross Intel. Inc., No. 1:20-cv-613-SB (D. Del. Feb. 11, 2025).  I have been following a number of AI intellectual property challenges. Most of these have favored the makers and users of AI over the owners of the IP (typically copyright holders). In 2023, Judge Bibas largely denied Thomson Reuters' motions for summary judgment on copyright infringement and fair use. Th ..read more
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Different Burdens of Proof Prevent IPR Estoppel from Extending to Non-Challenged Claims
Patently-O
by Dennis Crouch
2d ago
The Federal Circuit has significantly limited the reach of inter partes review estoppel in Kroy IP Holdings, LLC v. Groupon, Inc., No. 2023-1359 (Fed. Cir. Feb. 10, 2025). The court held that a PTAB unpatentability finding cannot create collateral estoppel (issue preclusion) against asserting other claims from the same patent in district court - even if those other claims are materially identical for invalidity purposes. The decision, authored by Judge Reyna, emphasizes the critical distinction between IPR's preponderance standard and district court litigation's clear and convincing evidence r ..read more
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Million-Dollar Mysteries: Recent Complex Patent Cases Lost to Rule 36
Patently-O
by Dennis Crouch
3d ago
by Dennis Crouch In a recent batch of Rule 36 summary affirmances, the Federal Circuit disposed of several complex patent cases without written opinions. This continues to raise serious questions in my mind about the court’s ongoing reliance on this practice. While some judges defend Rule 36 affirmances as appropriate for easy to see “losers,” an examination of these recent cases reveals sophisticated legal issues involving millions of dollars in dispute. For instance, in Lu v. Hyper Bicycles, the court declined to address important questions the quantum of evidence needed to survive summary j ..read more
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USPTO After Final Practice: More Rejections, Fewer Appeals, and the Future of RCEs
Patently-O
by Dennis Crouch
3d ago
by Dennis Crouch Over the past decade, the rate at which applicants file a Notice of Appeal (NOA) following a Final Office Action has steadily declined. This chart presents a quarterly snapshot of appeal activity by dividing the count of NOAs filed by the number of final rejections issued in that same period. Unlike a cohort analysis that tracks the fate of individual applications, this approach provides a broad view of how frequently applicants are choosing to challenge examiners' decisions via the Patent Trial and Appeal Board (PTAB).  To control for distortions, this dataset is limited ..read more
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Federal Circuit Upholds ITC Import Ban: Key Rulings on Storage Defense and Domestic Industry Requirements
Patently-O
by Dennis Crouch
4d ago
by Dennis Crouch The Federal Circuit has affirmed a US International Trade Commission (ITC) determination that Wuhan Healthgen violated Section 337 through importation of clinical-grade recombinant human serum albumin (rHSA) products that infringe Ventria Bioscience’s U.S. Patent No. 10,618,951. Wuhan Healthgen Biotechnology Corp. v. International Trade Commission, No. 2023-1389 (Fed. Cir. Feb. 7, 2025). The patentee in the case – Ventria / ExpressTec – is a small biotech company  operating out of Junction City Kansas.  Their asserted patent is directed to a cell culture media contai ..read more
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Vaishali Udupa Resigns as Commissioner of Patents
Patently-O
by Dennis Crouch
5d ago
by Dennis Crouch USPTO Commissioner of Patents Vaishali Udupa has resigned after just over two years in office. Under 35 U.S.C 2, the Commissioner is appointed by Secretary of Commerce for a term of 5-years.  For much of US history, the Commissioner of Patents was the top dog at the patent office. However, in the 1990s Congress created an additional layer of the Director and Deputy Director - both having undersecretary roles within Commerce.  The Commissioner can be removed prior to the 5-year mark by the Secretary of Commerce, but the statute suggests that there must be cause: "for ..read more
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Preemption Lost: The Federal Circuit’s Abandonment of Supreme Court Patent Eligibility Doctrine
Patently-O
by Dennis Crouch
5d ago
by Dennis Crouch One of the most perplexing aspects of patent eligibility doctrine involves the role of preemption - the concern that patents might lock up basic tools of scientific and technological work in ways that limit individual liberty and or that may unduly block fundamental progress.  The Supreme Court has repeatedly emphasized that these  preemption concerns "undergird" and "drive" the judicially created exceptions to patent eligibility under 35 U.S.C. § 101. Yet in practice, the Federal Circuit has consistently regarded evidence of preemption (or the lack thereof) as basic ..read more
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