The Director Unbound: Federal Circuit Holds NHK-Fintiv Exempt from APA Rulemaking

Patent

by Dennis Crouch

In Apple v. Squires, the Federal Circuit has again reinforced the USPTO Director's broad and largely unchecked discretionary power at the IPR institution stage. Over the past several years, the court has systematically closed every door that petitioners have tried to open. Most recently, it denied a wave of mandamus petitions challenging Director Squires' discretionary denials, holding that 35 U.S.C. § 314(d) bars review of institution decisions even when petitioners raise constitutional and APA claims. In its 2023 decision in this very case, the court held that substantive challenges to the NHK-Fintiv framework were themselves unreviewable. Apple Inc. v. Vidal, 63 F.4th 1 (Fed. Cir. 2023). Now, in the new decision, the court closed the next (and potentially last remaining) opening: the claim that the NHK-Fintiv instructions should have been adopted through notice-and-comment rulemaking under the Administrative Procedure Act. Apple Inc. v. Squires, No. 2024-1864 (Fed. Cir. Feb. 13, 2026).

Background:

Writing for a panel that included Judges Lourie and Chen, Judge Taranto held that the NHK-Fintiv instructions are a "general statement of policy" exempt from APA rulemaking requirements under 5 U.S.C. § 553(b). The reasoning rests on a structural feature of post-Arthrex patent administration that carries consequences well beyond the Fintiv factors themselves: because the Director is the statutory holder of institution authority, and the PTAB acts only as a delegatee whose decisions the Director can always displace, instructions to the Board about how to exercise that delegated authority cannot "bind" the agency in the APA sense.

The decision seems to confirm that there is no procedural legal constraint, short of a major constitutional challenge, on the Director's power to restrict or shut down IPRs through internal policy pronouncements.

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Ingevity’s $85 Million Lesson: Antitrust Tying Still Has Teeth

Patent

by Dennis Crouch

The Federal Circuit has affirmed an $84.9 million antitrust patent-misuse judgment against a patent owner who conditioned licenses on exclusive purchase of unpatented products, finding that the products were "staple goods" with substantial non-infringing uses and therefore outside the Congressionally created safe harbor 35 U.S.C. § 271(d). Ingevity Corp. v. BASF Corp., No. 2024-1577 (Fed. Cir. Feb. 11, 2026) (Lourie, J.).  Tying cases have used to be much more common in patent litigation, but largely went dormant after the Supreme Court's decision in Illinois Tool Works Inc. v. Independent Ink, Inc., 547 U.S. 28 (2006), which eliminated the presumption that patents confer market power.

In this essay, I look at the particular dispute between Ingevity and BASF and also the historic trajectory of this sort of antitrust liability for improper extension of patent rights.

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Pre-Alice Patents Keep Falling: Three Section 101 Decisions from the Federal Circuit

Patent

by Dennis Crouch

When I see a computer-related patent with a pre-2010 filing date, my first instinct is to check for eligibility problems. Patents drafted before the Supreme Court's 2014 decision in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), were written in a different era of patent law where Section 101 was often an absent watchman even for software and business method claims. Specifications from that period routinely described the problem being solved in business terms and the solution in generic technological ones. This made sense under the legal regime that existed at the time. But times have changed and the same specifications now must support claims that need to demonstrate a concrete technical improvement - and that can be a very hard task when the underlying disclosure treats computer components as interchangeable commodities.

Two decisions from the Federal Circuit this past week illustrate the problem. In the precedential GoTV Streaming, LLC v. Netflix, Inc., No. 2024-1669 (Fed. Cir. Feb. 9, 2026), Judge Taranto reversed an jury infringement verdict and held three related patents invalid under Section 101. The patents, with a 2007 priority date, claim methods for tailoring content display specifications to the capabilities of a wireless device. In the nonprecedential Innovaport LLC v. Target Corporation, No. 2024-1545 (Fed. Cir. Feb. 6, 2026), the court affirmed summary judgment invalidating all 55 asserted claims across six related patents claiming priority back to a 1999 application. Those patents cover systems for providing in-store product location information.

Some of the asserted patents were prosecuted after Alice and overcame eligibility rejections during examination. The Federal Circuit found that fact irrelevant, citing its prior holding that courts "are not required to defer to Patent Office determinations as to eligibility." But, in my review, neither prosecution history developed a factual record supporting inventive concept at Alice step two. A more robust prosecution history, one that built up specific factual showings rather than simply amending around the examiner's rejection, might have given the courts something to work with.

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First Possession and Intellectual Property: A Supplement for Property Law

Patent

by Dennis Crouch

For my property law course this semester, students only get two credits, which means they get roughly half a page on patent law. That is not much space considering that I’ve written 9,000 posts covering every corner of our 235 year old system.  The reading comes immediately after reading on Popov v. Hayashi and Pierson v. Post.

A core insight here is that Pierson v. Post, 3 Cai. R. 175 (N.Y. Sup. Ct. 1805), and the America Invents Act of 2011 are doing the same work. Both define a formal act that counts as “possession” and award priority to whoever performs it first. In Pierson, the act is killing or capturing the fox. In patent law, the act is filing the application. The shift from the old first-to-invent system to first-inventor-to-file is a rehash of the majority-dissent split in Pierson. The old regime, which rewarded the first person to conceive of an invention (so long as she proved diligence in reducing it to practice), resembled Justice Livingston’s dissent, which would have awarded the fox to the pursuer in hot chase. The new regime, like the Pierson majority, demands a clear, unambiguous act of capture.  Note that this insight comes from Dotan Oliar & James Y. Stern, Right on Time: First Possession in Property and Intellectual Property, 99 B.U. L. Rev. 395 (2019), I just wrote it in a way that 1Ls can read and easily quickly. (more…)

Privity Without Duty: When Patent Inventors Are Bound but Not Represented

Patent

By Dennis Crouch

When a university scientist invents something valuable, a familiar sequence follows. The inventor assigns rights to the university as a condition of employment. The university licenses the patent to a corporate partner while the inventor retains a royalty interest. If infringement litigation erupts, the inventor watches from the sidelines while lawyers representing the university and its licensee make decisions that will determine the value of that royalty stream.  The inventor's interests often align with the university - but certainly not always.

A new cert petition filed by Dr. Monib Zirvi highlights this structural problem. Zirvi v. Akin Gump Strauss Hauer & Feld, LLP, No. 25-940 (petition filed February 2026). Zirvi, a Cornell-trained scientist who co-invented "ZipCode" DNA sequencing technology, claims that the law firms controlling patent infringement litigation on behalf of Cornell University and its exclusive licensee Thermo Fisher Scientific told him that his interests were "aligned" with theirs and that they "represented his interests." He spent hundreds of hours preparing confidential technical analysis at the lawyers' request. But when the case settled, he had no seat at the negotiating table.

Zirvi later sued the lawyers for malpractice, but ultimately received a one-two civil procedure punch.

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An Old Trick in the Patent Book: Targeted Drafting from 1876 to 2026

Patent

by Dennis Crouch

When Alexander Graham Bell filed his patent application on February 14, 1876, he titled it "Improvement in Telegraphy." Not "Telephone." Not "Apparatus for Transmitting Speech by Electricity." Just a modest tweak to the existing telegraph art. The United States government later alleged this was no accident. In United States v. American Bell Telephone Co., 128 U.S. 315 (1888), the government's bill of complaint charged that Bell "purposely framed his said application and claim in ambiguous and general terms" and "did not set forth or declare that his alleged invention had any relation to the art of transmitting articulate speech by means of electricity." The strategy worked, at least initially: the Patent Office examiner "did not understand the application to lay claim to the art of transmitting speech" and so "did not make an inquiry as to the state of that art or the patents or the printed publications concerning it." No search for the work of Reis, Meucci, or even the caveat filed that same day by Elisha Gray. Bell got his patent on March 7, 1876, three weeks after filing. The case raised serious fraud allegations that the Supreme Court addressed in a companion case, The Telephone Cases, 126 U.S. 1 (1888), but the patent survived.

Nearly 150 years later, patent attorneys are still doing the same thing, though the tools are better and the practice now has a name: targeted drafting. The basic idea is to frame an application so the USPTO routes it to a favorable art unit, where the examiner corps is more likely to allow claims. The mechanism is different from Bell's era, but the impulse is identical. A good negotiator picks a willing counterpart. A good patent prosecutor picks an art unit where the odds favor allowance. Analytics vendors have for years been marketing tools to predict art unit assignment and suggesting language changes to steer applications toward friendlier examiners.

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Patent Suit Over NASA’s Mars Helicopter Blocked by Government Contractor Immunity

Patent

by Dennis Crouch

The War Industry (formerly Defense) heavily invests in new technology and patents. But, we see very few patent infringement lawsuits. A key reason is 28 U.S.C. § 1498. That statute channels patent infringement claims involving government-authorized work away from private defendants and into the U.S. Court of Federal Claims, with the United States as the sole defendant (and a reasonable royalty as the only remedy). For government contractors and subcontractors, § 1498 operates as a powerful shield: if the infringing activity was performed "for the Government" and "with the authorization or consent of the Government," the patent holder's only remedy is a compensation action against the United States. The contractor walks free. This design reflects a deliberate policy choice. The government pays heavily for technology development with taxpayer dollars and, in exchange, retains control as the key point person - and it allows the administration to resolve patent disputes as it sees fit.

In Arlton v. AeroVironment, Inc., No. 2021-2049 (Fed. Cir. Feb. 2026) (nonprecedential), the Federal Circuit affirmed summary judgment shielding AeroVironment from patent infringement liability under § 1498 for its work developing NASA's Ingenuity Mars helicopter and a terrestrial copy called "Terry." The Arltons — co-inventors and co-owners of U.S. Patent No. 8,042,763, covering a counter-rotating coaxial rotor UAV — had developed the underlying technology under Small Business Innovation Research (SBIR) contracts with the military. When the government declined to award them follow-on work and instead contracted with AeroVironment through JPL and NASA, the Arltons sued AeroVironment for infringement.

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The ‘Narrow’ Question That Appears in Half of PTAB Obviousness Decisions

Patent

by Dennis Crouch

Samsung and the U.S. government have filed briefs urging the Supreme Court to deny certiorari in Lynk Labs, Inc. v. Samsung Electronics Co., No. 25-308. At issue is whether a patent application filed before a challenged patent’s priority date, but not published until afterwards, can serve as prior art in inter partes review. The Federal Circuit held that it can, applying the filing-date rule of pre-AIA 35 U.S.C. § 102(e)(1).  As I write below, I was not overly impressed with they briefing.

The case centers on the “Martin” reference, a patent application covering LED technology that was filed on April 16, 2003 and published on October 21, 2004. Martin was later abandoned and never became a patent. Lynk Labs’ ‘400 patent claims a priority date of February 25, 2004, placing it squarely in the gap between Martin’s filing and publication dates. Samsung successfully used Martin to challenge claims of the ‘400 patent as obvious in IPR.

As part of its streamlining effort, Congress limited what prior art can be used in inter partes review proceedings – only “prior art consisting of patents or printed publications.” 35 U.S.C.  § 311(b).  Although Martin was not publicly accessible when Lynk Labs filed its application, Martin was later published and also qualifies as prior art under pre-AIA 102(e)(1) (or its parallel post-AIA statute 102(a)(2)).  In reading the statute, the court concluded that Martin can be used in an IPR because it satisfies each of the two requirements (prior art + printed publication) even though its prior art date is well before its publication date.  Lynk’s cert petition frames this as a question about whether “printed publications” in § 311(b) carry the traditional public-accessibility timing requirement, or whether a published patent application can be backdated as prior art to its filing date in IPR.

I have previously written about this case at several stages. Dennis Crouch, Secret Springing Prior Art and Inter Partes Review, Patently-O (Oct. 2024); Dennis Crouch, Publications Before Publishing and the Federal Circuit’s Temporal Analysis, Patently-O (Jan. 2025); Dennis Crouch, Prior Art Document vs. Prior Art Process, Patently-O (July 2025); Dennis Crouch, Supreme Court Asked to Resolve “Secret Springing Prior Art” in Inter Partes Review Proceedings, Patently-O (Sept. 2025); Dennis Crouch, Lynk Labs: How the Least-Vetted Documents Destroy Issued Patents, Patently-O (December 2025).

Before getting into the merits of the responses, I first want to note how both briefs appear shockingly disingenuous in their discussion of the limited impact of the decision. (more…)

When Obviousness Rejections Pile On: Rethinking Multi-Reference Combinations

Patent

by Dennis Crouch

Last month I examined the challenges of single-reference obviousness rejections, where examiners attempt to show that a claimed invention would have been obvious based on just one prior art document. The opposite problem deserves equal attention: obviousness rejections that pile on reference after reference, sometimes combining five, seven, or even a dozen separate documents to reconstruct the claimed invention. In a thoughtful new working paper, patent attorney John Goodhue argues that the Federal Circuit should reconsider In re Gorman, 933 F.2d 982 (Fed. Cir. 1991), which held that "the criterion is not the number of references, but what they would have meant to a person of ordinary skill in the field." John Goodhue, Rethinking In Re Gorman: Why the Number of References Does Matter in Obviousness Determinations Under 35 U.S.C. § 103 (Working Paper, 2026). Goodhue's diagnosis: when an examiner assembles numerous disparate references to arrive at a claimed invention, this strongly suggests hindsight reconstruction rather than forward-looking obviousness analysis.

Goodhue proposes a tiered presumption framework keyed to reference count. Under his approach, one to two references would trigger no presumption; three references would create a weak presumption against obviousness; four to five references would create a moderate presumption; and six or more would create a strong presumption rebuttable only in exceptional circumstances. The presumption would yield to evidence that the references teach the same solution, that multi-reference synthesis is routine in the field, or that one reference explicitly directs combination with others. While I share Goodhue's concerns about kitchen-sink rejections, I suggest that creating numerical thresholds and novel presumptions is unnecessary. The existing doctrinal requirements of motivation to combine and reasonable expectation of success already contain the tools needed to police multi-reference combinations. When applied properly, these requirements simply become harder to satisfy as reference count increases.  In my view, courts and the Patent Office should recognize this relationship rather than layering on new presumptions.

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Who Are You? YMTC’s Refusal to Identify Its Real Parties in Interest

Patent

by Dennis Crouch

In January 2026, USPTO Director John Squires issued his first decision targeting a Chinese state-linked entity's inter partes review petition, and the result is both less dramatic and more revealing than the national-security framing might suggest. Yangtze Memory Technologies Co. v. Micron Technology, Inc., IPR2025-00098 & IPR2025-00099, Paper 38 (USPTO Jan. 15, 2026).  The Director vacated the PTAB's decisions granting institution and denied YMTC's petitions challenging two Micron NAND flash memory patents (U.S. Patent Nos. 8,945,996 and 10,872,903). The decision is designated informative.

The case sits at the intersection focal points. The first is geopolitical. YMTC is a Chinese semiconductor manufacturer founded in 2016 by the partially state-owned Tsinghua Unigroup with approximately $24 billion in initial state-backed investment. The company was placed on the Bureau of Industry and Security's Entity List in December 2022 as an organization "reasonably believed to be involved, or to pose a significant risk of being or becoming involved, in activities contrary to the national security or foreign policy interests of the United States." 15 C.F.R. § 744.11. The Department of Defense separately designated YMTC as a "Chinese Military Company Operating in the United States" in January 2024. Against this backdrop, YMTC filed IPR petitions challenging two Micron NAND flash memory patents. After Micron sought Director Review, Dir. Squires issued a Show Cause order on November 10, 2025, requiring YMTC to justify why adjudicating its petitions was an appropriate use of the Office's limited resources given its Entity List designation. See Dennis Crouch, Shutting the Patent Office Door: YMTC and the Entity List, Patently-O (Nov. 16, 2025).

The second focal point is IPR process. Dir. Squires has been systematically tightening the IPR petition process, including the real-party-in-interest requirement. In September 2025, he de-designated SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020), which had permitted PTAB judges to ignore RPI deficiencies in some instances. With SharkNinja gone, the statutory text of § 312(a)(2) returned to full force as an independent threshold requirement: a petition "may be considered" only if it identifies "all" real parties in interest.  Failure to disclose means the petition is simply not in condition for consideration.

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The USPTO and the Board of Peace

Patent

by Dennis Crouch

The United States Patent and Trademark Office has filed two intent-to-use trademark applications for the mark BOARD OF PEACE, the name of the international body President Trump formally launched at the World Economic Forum in Davos on January 22, 2026. Trump described it as "the Greatest and Most Prestigious Board ever assembled at any time, any place." The trademark applications, both signed and filed personally by USPTO Director John A. Squires, represent an unusual instance of a federal agency seeking trademark protection for a nascent governmental initiative.

The first application, Serial No. 76720938, was filed on December 30, 2025, for a standard character mark. The second application, Serial No. 76720939, filed January 21, 2026, covers a design mark featuring a globe superimposed on a shield flanked by laurel branches. The logo used at the Board of Peace's inaugural meeting features a globe showing most of the United States along with portions of the Western Hemisphere, rendered in a gold color scheme. Both applications identify the USPTO itself as the applicant, described as an "Agency of the United States Government" holding rights in stewardship.

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Find the Differences vs Substantial Similarity: Chief Judge Moore Challenges Federal Circuit’s Design Patent Infringement Framework

Patent

by Dennis Crouch

The Federal Circuit's decision in Range of Motion Products, LLC v. Armaid Company Inc., No. 2023-2427 (Fed. Cir. Feb. 2, 2026), affirms summary judgment of non-infringement in a design patent dispute involving body massaging devices.  The most important part of the case is Chief Judge Moore's dissent, which offers an attack on how the Federal Circuit has been applying the "plainly dissimilar" standard for design patent infringement. Drawing on psychological research, empirical survey data from recent amicus briefs, and a children's puzzle from Highlights magazine, Chief Judge Moore argues that the court's post-Egyptian Goddess framing has fundamentally shifted the infringement analysis away from the Supreme Court's "substantially similar" test in Gorham Co. v. White, 81 U.S. 511 (1871).

The majority opinion in this case, authored by Judge Cunningham and joined by Judge Hughes, dismisses these concerns in a footnote, setting up what may become a vehicle for Supreme Court review.  Note that in September 2025, the Federal Circuit denied en banc rehearing on a similar issue in North Star Technology v. Latham Pool Products, 23-02138 (Fed. Cir. 2025).

The oral arguments included lots of interesting statements including the following:

Judge Hughes: Well, first of all, the problem is you have failed to give a specific claim construction that would allow us to determine what's ornamental and what's not. You just say "the appearance." Well, that's just like your dumb patent ...

Chief Judge Moore: You said that out loud. That was not just in your head.

Judge Hughes: I'm perfectly content saying it out loud. I mean, you look at the front of your blue brief and you say the claim is this picture. Well, sure, that's the way you do design patents, but when you're doing claim construction, we use words and you have to give them words. And just saying "overall appearance" is not words.

Judge Hughes also authored the North Star Tech. opinion.  Listening to the North Star Tech oral arguments, I also note Judge Chen's disregard of the patent in that case:

Judge Chen: I mean, we've had rectangular pools since there were pools. We've had rectangular tanning ledges ever since there were tanning ledges. We've had full-width steps from tanning ledges to the other part of the pool since forever. We've had deep-end benches since forever. And so I don't understand what was the contribution. What's the ornamentality here? Because other than what I just identified, this pool design doesn't have anything. It's so elemental. So basic.

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Supreme Court IP Docket February 1, 2026: Hikma Leads, Section 101 and IPR Questions on Deck

Patent

by Dennis Crouch

As January 2026 wraps up, I wanted to take a fresh look at the Supreme Court patent docket.  The centerpiece is Hikma v. Amarin after the Court granted certiorari on January 16, 2026. Hikma focuses on the doctrine of inducement - and particularly on how the patent doctrine fits with the Hatch-Waxman Act's skinny label provisions. The Court previously looked at Skinny Label litigation almost fifteen years ago in Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S, 566 U.S. 399 (2012). That earlier case addressed the Hatch-Waxman counterclaim provisions but did not resolve when a generic manufacturer's marketing conduct crosses the line into inducement. Several other petitions have attracted Court attention through "Response Requested" orders, including cases challenging the Federal Circuit's Section 101 jurisprudence and the scope of prior art available in inter partes review proceedings.

The docket's composition reflects persistent tensions in patent law. Three petitions have received orders requesting responses from parties who initially waived their right to respond: United Services Automobile Association v. PNC Bank N.A., No. 25-853 (abstract idea eligibility); Agilent Technologies, Inc. v. Synthego Corp., No. 25-570 (prior art enablement); and Lynk Labs, Inc. v. Samsung Electronics Co., No. 25-308 (printed publications in IPR), which has attracted a number of amicus briefs. Two petitions are scheduled to be decided at the February 20, 2026 conference, and two others are on deck - having received extensions of time to file. Two interesting trademark cases pending before the court include RiseandShine Corp. v. PepsiCo, Inc., No. 24-1016, asking whether trademark strength is a question of fact; and Curtin v. United Trademark Holdings, Inc., No. 25-435, which focuses on standing to oppose trademark registrations.

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Government Urges Supreme Court to Deny AI Copyright Case, Emphasizing Narrow Question and Statutory Text

Patent

by Dennis Crouch

The Solicitor General has filed a brief urging the Supreme Court to deny certiorari in Thaler v. Perlmutter, the case testing whether artificial intelligence can be recognized as an author under copyright law. The government's opposition takes a notably restrained approach, relying entirely on statutory interpretation while avoiding the policy arguments about innovation incentives and economic impact that have dominated public discourse. The brief includes a strategic reframing of the question presented -- attempting to narrow the case its unusual facts while leaving open the genuinely difficult questions about human-AI collaboration that will define copyright's future in the near term. Brief for the Respondents in Opposition, Thaler v. Perlmutter, No. 25-449 (U.S. Jan. 2026).

The case arises from computer scientist Stephen Thaler's application to register copyright in "A Recent Entrance to Paradise," a visual artwork generated by his AI system called the "Creativity Machine." Thaler's application listed the Creativity Machine as the sole author and stated the work was "created autonomously by machine" without any human creative contribution.

The Trump Administration brief is notable for its restrained approach, relying entirely on statutory text and structure without invoking policy arguments about innovation or economic impact. At the same time, the government's framing of the human authorship requirement appears more permissive than the Copyright Office's recent registration decisions have suggested. The brief quotes the district court opinion for the proposition that that copyright protection remains available for AI-assisted works in very broad terms:

The rule requires only that the author of that work be a human being—the person who created, operated, or used artificial intelligence—and not the machine itself.

This language could be read to encompass a broader range of AI users than the Office has previously accepted.

In these situations, the US Gov't brief will be signed by lawyers from both the DOJ and Copyright Office.  In this case, we only see DOJ attorneys, which suggests some disagreement in approach.  Of course, the Trump Administration (in control of the DOJ) is currently in litigation to remove the Copyright Registrar Shira Perlmutter, and so a lack of cooperation is not surprising.

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Large Entities Achieve Double the Patent Allowance Rate of Micro Entities

Patent

The USPTO classifies patent applicants into three entity categories: large entities (regular undiscounted), small entities (businesses with fewer than 500 employees, independent inventors, nonprofits), and micro entities (those meeting additional income and filing history limits). These classifications determine fee structures, with small entities receiving a 61% discount and micro entities an 80% discount on most USPTO fees.  These fee categories create an convenient mechanism for categorizing patent applicants and their patenting activity.

I analyzed USPTO disposition data for published patent applications from January 1-27, 2026, examining applications that either issued as patents or were abandoned during this period. Frankly, I was surprised by the disparity. Overall, 74% of disposed applications resulted in patents. But the allowance rate varies dramatically by entity size: large entities achieved an 80% allowance rate, small entities 61%, and micro entities just 40%.

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No Do-Over: Trade Secret Plaintiffs Must Crystallize Their Theory by Summary Judgment

Patent

by Dennis Crouch

The Federal Circuit has affirmed summary judgment against a trade secret plaintiff who, in the court's view, failed to adequately identify the boundaries of its alleged secrets. Applied Predictive Technologies, Inc. v. MarketDial, Inc., No. 24-1751 (Fed. Cir. Jan. 28, 2026) (nonprecedential).  This is a reality of trade secret litigation today - plaintiffs must explain the bounds of their alleged trade secrets both with clarity and supporting evidence showing that the specific information derives independent economic value from not being generally known or readily ascertainable by proper means.

The case is also interesting because it involves a McKinsey business consultant who started a new company to compete with a former client.

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Patent Venue’s Method Claim Problem: How Many Steps Must Occur in the District?

Patent

by Dennis Crouch

Comcast is pushing its proper venue argument.  After being denied by the district court and a Federal Circuit panel, it has now petitioned for en banc rehearing.  In re Comcast Cable Communications, LLC, No. 26-104 (Fed. Cir. Dec. 9, 2025).

The underlying dispute presents a question the appellate court seemingly has not squarely addressed: whether the “acts of infringement” prong of 28 U.S.C. § 1400(b) requires a plaintiff to allege that the defendant performed all steps of a claimed method within the judicial district, or whether alleging the performance a subset suffices.

Patent Venue Under § 1400(b): The patent venue statute provides that a civil action for patent infringement "may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business." 28 U.S.C. § 1400(b). After TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. 258 (2017), a domestic corporation "resides" only in its state of incorporation. For defendants sued outside their home state, plaintiffs must establish both "acts of infringement" and a "regular and established place of business" in the chosen forum.

Post TC Heartland (2017), I think of Section 1400(b) as being quite narrow.  But its 1897 origin was not as a restriction on patent plaintiffs but as an expansion of their options. At the time, the general venue provision limited civil suits to the district where the defendant was an “inhabitant.” Patent holders complained that this forced them to travel across the continent to sue infringers operating businesses in their own backyards. The 1897 statute responded by adding a second venue option: districts where the defendant had committed acts of infringement and maintained a regular and established place of business. This gave patentees meaningful access to forums where infringement was actually occurring.

Since then, however, the general venue statute has expanded greatly so that it now (basically) encompasses any district where the defendant is subject to personal jurisdiction.  What began as a plaintiff-friendly expansion became, through statutory drift, more of a defendant’s shelter.

Docs:

(more…)

Single-Reference Obviousness: Federal Circuit Says Don’t Re-Do the Prior Art’s Work

Patent

by Dennis Crouch

The Federal Circuit's recent nonprecedential decision in Guardant Health v. University of Washington focuses on single-reference obviousness findings.

The vast majority of obviousness cases are based upon two or more references that, when combined, teach each limitation of the claimed invention.  The key question in those cases boils down to whether a person of ordinary skill in the art would have had a sufficient motivation to combine those references to form the invention as well as a reasonable expectation of success in that endeavor.  In the single reference situation, the Federal Circuit in Guardant Health found that neither of those test make sense - particularly when elements appear together in a single embodiment in the prior art.

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The Thaw Begins?: What’s Driving IPR Institutions Under Director Squires

Patent

by Dennis Crouch

IPR institution rates under Director John Squires have begun to climb. My tracking data shows the six-week moving average rising from lows around 15% in August and September 2025 to somewhere in the range of 35-55% by late December 2025 and into January 2026. The rebound remains far below the historic average of roughly 67% that prevailed before Acting Director Coke Morgan Stewart began centralizing discretionary denial authority followed by Director Squires assumption of personal control of all institution decisions in October 2025.

Still, the uptick signals something meaningful: the IPR system is not dead, and a discernible framework for institution has begun to emerge from what initially appeared to be an era of blanket denials. The patterns in recent grants reveal that Director Squires is operating with something resembling an equitable framework that requires petitioners to go beyond the statutory "reasonable likelihood" threshold to encompass broader considerations of fairness and systemic efficiency. The USPTO's recent designation of numerous institution decisions as precedential or informative in early January 2026 provides additional clarity about the principles the Office considers settled enough to guide future practice.

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Tu Quoque Denied: Google’s Own Patents Irrelevant to §101 Defense

Patent

by Dennis Crouch

Google won today's eligibility case with an affirmance that  US7679637 is ineligible.  For me, the following are the two most interesting aspects of the decision:

  • Tu Quoque Rejected: The patent owner argued that  Google's own video conferencing patents use similar "functional claiming" techniques, and therefore Google must believe such claims are patent-eligible. The Federal Circuit rejected this hypocrisy-style argument, holding that the eligibility of Google's patents "is not before us and has no bearing on our analysis."
  • Where Does Functional Claiming Fit? At oral argument, Chief Judge Moore candidly admitted doctrinal uncertainty: "Is this result-oriented functional claiming problem . . . a Step 1 issue or a Step 2 issue? I'll be honest with you, I don't always know where that line is." The opinion resolves this by treating functional claiming as part of the Step 1 "directed to" inquiry.

US Patent No. 7,679,637 LLC v. Google LLC, No. 2024-1520 (Fed. Cir. Jan. 22, 2026).

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