by Dennis Crouch

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:

• Dennis Crouch, In re SAP America: Sharpening the Dispute over PTAB Discretionary Denials, Patently-O (July 16, 2025);
• Dennis Crouch, SAP’s Mandamus Petition Challenging Trump Admin’s Discretionary Denial Policy Shift, Patently‑O (July 2, 2025);
• Dennis Crouch, Motorola Follows SAP with Mandamus Challenge to Acting Director Stewart’s IPR Policy Reversal, Patently‑O (July 10, 2025);

• Dennis Crouch, The Power of Unreviewability, Patently-O (July 22, 2025).

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. 

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]

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.

• Dennis Crouch, SAP’s Mandamus Petition Challenging Trump Admin’s Discretionary Denial Policy Shift, Patently‑O (July 2, 2025).
• Dennis Crouch, Motorola Follows SAP with Mandamus Challenge to Acting Director Stewart’s IPR Policy Reversal, Patently‑O (July 10, 2025),.

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:

• SAP - Petition
• SAP - PIPLA Amicus
• SAP - USMADE Amicus

Arguing Against Mandamus:

• SAP - Cyandia Response
• SAP - USIJ Amicus
• SAP - PTAAARMIGAN Amicus

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.

by Dennis Crouch

In Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926) [46_S.Ct._324], the Supreme Court established what has expanded into foundational patent law principle: all disclosures in an issued patent (whether claimed or unclaimed)  serve as prior art against later filed patents, effective as of the earlier patent's filing date rather than its issue date. This doctrine of "springing prior art" emerged from a dispute over welding and cutting torch technology, where the Court held that John Whitford's asserted patent (US1028410) for an oxy-acetylene cutting apparatus was invalid because Clifford had, a few months earlier, filed a patent application that fully disclosed the same invention—even though Clifford did not claim the features patented by Whitford.  Justice Holmes, writing for a unanimous Court, reasoned that allowing Whitford to "profit by the delay" of the Patent Office in processing Clifford's application would undermine the fundamental requirement that a patentee must be the "first inventor." I wanted reach back to this old case to highlight how deeply the Milburn doctrine has influenced modern patent prosecution and litigation strategies. The principle of "springing prior art," articulated 99 years ago, now significantly shapes patent law practice.

by Dennis Crouch

Before digging into this en banc petition, I just wanted to note that patent eligibility issues have been almost shockingly quiet over the past six months.  But, to me it feels something like a powder keg waiting to explode. While Acting Director Stewart has been incredibly active on other fronts since taking the helm in January 2025, she has remained notably silent on Section 101 reform initiatives. I believe there is some likelihood that this will change once John Squires is confirmed by the U.S. Senate -- given that he has already signaled support for patent eligibility reform measures like the Patent Eligibility Restoration Act (PERA).

Back to the case: In Longitude Licensing Ltd. v. Google LLC, No. 2024-1202 (Fed. Cir. Apr. 30, 2025), the Federal Circuit affirmed a N.D. Cal. dismissal of infringement claims under 35 U.S.C. § 101, holding Longitude’s asserted image processing patents were directed toward digital image processing.  Longitude’s patents (U.S. Patents Nos. 7,668,365, 8,355,574, 7,454,056, and 7,945,109) cover methods of identifying a primary object within an image and adjusting image characteristics based on the object’s properties. The panel, consisting of Judges Lourie, Dyk, and Chen, determined that representative Claim 32 of the ’365 patent recited only generic, functional limitations without adequately describing how these limitations achieved the purported technological improvements.

32. An image processing method comprising:

determining the main object image data corresponding to the main object characterizing the image;

acquiring the properties of the determined main object image data;

acquiring correction conditions corresponding to the properties that have been acquired; and

adjusting the picture quality of the main object image data using the acquired correction conditions;

wherein each of the operations of the image processing method is executed by an integrated circuit.

Longitude has now petitioned the Federal Circuit for rehearing en banc, asserting that the panel improperly isolated the claim language from the specification and ignored evidence that the claimed methods improved computer functionality itself. The en banc petition frames the question presented as whether courts may determine patent eligibility under § 101 by analyzing claim language alone, divorced from supporting specification evidence, particularly where the specification describes specific technological improvements. The Federal Circuit has shown some interest in the case - requesting responsive briefing from Google, which is due in Mid-July 2025. [Longitude Licensing En Banc Petition].

In 2020, Sonos sued Google in the N.D. of California, asserting two “zone scenes”  wireless speaker patents (US 10,848,885 and 10,469,966) that allow for overlapping groups of speakers. A jury found Google liable and awarded $30 million in damages. In an unusual move, District Judge William Alsup threw out the verdict in a 55-page post-trial order. He held the patents unenforceable for prosecution laches and invalid for lack of written description support. Judge Alsup found Sonos had engaged in a “daisy chain” continuation strategy to keep the patent family alive for over 13 years.  Although longer than average, this timeline is not long for a patent family recognized as valuable.  But, one quirk is that the particular “overlapping zone scene” claims  were not presented in claim form until 2019. And, they were added after Google began selling products with that feature. Judge Alsup also concluded that Sonos’s 2019 amendments were directed to new matter not supported by the original 2006–2007 applications -- i.e., lacking written description suport.  Without that priority claim, those earlier filings became anticipatory prior art to the later would-be continuation.

The appeal is now pending, and the Federal Circuit held oral arguments on July 10, 2025.  The case raises fundamental questions about the scope of the "sparingly applied" doctrine of prosecution laches and also about the proper procedure for raising written description/anticipation issues during trial.

• Listen to Oral Args; Rough Transcript.
• Dennis Crouch, Prosecution Laches from Woodbridge to Sonos: A 170-Year Journey, Patently-O (June 21, 2025),
• Dennis Crouch, Google v. Sonos: Oral Arguments, Patently-O (July 11, 2025),
• Dennis Crouch, Preview: Federal Circuit Oral Argument in Google v. Sonos (July 10, 2025), Patently-O (June 30, 2025),
• Dennis Crouch, Redefining Patent Continuation Strategy: Sonos v. Google Appeal, Patently-O (Feb. 13, 2024),
• Dennis Crouch, Federal Circuit Affirms ITC Divided Opinion in Sonos v. ITC, Patently-O (Apr. 9, 2024),
• Dennis Crouch, Sonos v. Google: Late Claiming Estoppel, Patently-O (Dec. 8, 2023).

I believe that a typical Federal Circuit panel would side with the appellant Sonos. But, the panel in this case is somewhat unique. The combination of Judges Prost and Lourie creates an interesting dynamic given their opposing positions in the 2010 prosecution laches case of Cancer Research. Judge Prost's dissent in that case shows her willingness to apply prosecution laches.  Although Judge Lourie did not find laches in Cancer Research, he is Judge Lourie authorship of Symbol v. Lemelson—the decision that revived prosecution laches in 2005.

In ratings of "patent friendliness" (including one by Google's attorney Dan Bagatel), Judges Prost and Lourie are among the three least patent-friendly judges on the Federal Circuit.  Judge Bumb, sitting by designation from the District of New Jersey, adds unpredictability as she lacks the extensive patent law track record of her colleagues. All three are Republican appointees who generally embrace textualist approaches, but that judicial philosophy matters less here since prosecution laches is an entirely judge-made equitable doctrine with minimal congressional guidance beyond Section 282's broad authorization of equitable defenses.

by Dennis Crouch

The Federal Circuit is now confronting a second major mandamus petition challenging the USPTO's major changes with regard to its approach to discretionary denials in inter partes review proceedings. In re Motorola Solutions, Inc., No. 25-134 (Fed. Cir. 2025).  Motorola presents an even more procedurally compelling challenge to Acting Director Stewart's retroactive system changes than the earlier In re SAP petition I discussed previously. While both cases attack the same underlying agency action, Motorola's petition benefits from having actually obtained PTAB institution decisions before they were subsequently vacated, creating a more concrete harm from the retroactive policy change.

• In re_ Motorola Solutions, Inc. - mandamus petition
• In re_ Motorola Solutions, Inc. - Unified amicus
• In re_ Motorola Solutions, Inc. - CCIA amicus
• In re_ Motorola Solutions, Inc. - US*MADE amicus

• Dennis Crouch, SAP’s Mandamus Petition Challenging Trump Admin's Discretionary Denial Policy Shift, Patently-O (July 10, 2025).

Responsive briefs are due July 14 in SAP and July 21 in Motorola.

Today the Federal Circuit is hearing oral arguments in Google v. Sonos on the doctrine of prosecution laches. The panel is interesting and has the potential of resulting in a pro-Google decision.  Federal Circuit Judges Prost and Lourie, along with  D.N.J. District Court Judge Renée Marie Bumb, sitting by designation.

Judge Lourie authored the Symbol v. Lemleson decision that revived the doctrine back in 2005. More interestingly, Judge Lourie wrote the opinion in Cancer Research Tech. Ltd. v. Barr Laboratories, Inc., 625 F.3d 724 (Fed. Cir. 2010), with Judge Prost in dissent. In that case, the majority found no laches, but Judge Prost would have found the patent unenforceable due to prosecution laches.