IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
Results for "Patent"
Subscribe to Results for "Patent"'s Posts

USPTO Director IPR institution discretion survives APA challenge

by | Feb 26, 2026 |

The US Court of Appeals for the Federal Circuit concluded that the United States Patent and Trademark Office’s (USPTO) framework for discretionary denials of inter partes review (IPR) is a general statement of policy, not a substantive rule, and therefore is exempt from the Administrative Procedure Act’s notice‑and‑comment requirements.

The USPTO Director issued a trio of related instructions to the Patent Trial & Appeal Board for its exercise of delegated non-institution authority, addressing the common situation where the IPR petitioner and the patent owner are already involved in a district court litigation over the patent at issue. Two of the instructions were in the form of precedential Board decisions, which set forth six exclusive factors, weighing in favor or against institution, that the Board must assess. These instructions are generally referred to as the NHK-Fintiv instructions that, as Board precedent, bind only the Board and not the USPTO Director.

Several IPR petitioners argued that the Director’s instructions to the Board effectively bind the USPTO as an agency and thus should have been promulgated through formal rulemaking.

The Federal Circuit disagreed, emphasizing that institution decisions rest ultimately with the USPTO Director. The Court explained that while the NHK-Fintiv framework provides guidance on how that discretionary authority may be exercised, the Director retains the ability to depart from the framework in any given case. To that end, the guidance does not carry the force and effect of law and does not impose legally binding obligations on the agency or the public.

Practice note: The decision reinforces the Federal Circuit’s post‑Arthrex theme that the Director enjoys broad and largely unreviewable discretion at the IPR institution stage.



read more

The meaning is plain as day: Just follow the grammar

by | Feb 26, 2026 |

The US Court of Appeals for the Federal Circuit reversed and vacated a decision by the Patent Trial & Appeal Board, explaining that the Board failed to consider common textual modifier language when applying the plain meaning to a disputed claim term. Netflix, Inc. v. DivX, LLC, Case No. 24-1541 (Fed. Cir. Feb. 13, 2026) (Moore, C.J.; Dyk, Taranto, JJ.)

DivX sued Netflix for infringing its patent directed to systems and methods for streaming partly encrypted media content. The patent uses encryption/decryption, a Digital Rights Management (DRM) technique, to protect streams of media content from unauthorized access or copying. This technique requires that cryptographic information be relayed to the playback device for users to watch streamed media content. The patent explains that encrypting parts of streamed media decreases the resources needed for encryption/decryption and provides the playback device with information on the portions that are encrypted and “common” decryption information.

Netflix petitioned for inter partes review (IPR) of all claims on the basis of obviousness. The Board rejected DivX’s proposed construction of limitation [l] of the representative claim: “locating encryption information that identifies encrypted portions of frames of video within the requested portions of the selected stream of protected video.” DivX’s argued that the “encryption information” must be located “within the requested portions of the selected stream of protected video.” The Board deemed DivX’s proposed claim construction as “too restrictive,” concluding that the claim suggested that the encryption information just needed to identify encrypted portions of frames that themselves were “within the requested portions of the selected stream of protected video.”

In its final written decision, the Board agreed with Netflix that a person of skill in the art would have been motivated to combine the asserted prior art but held that the artisan would not have reasonably expected success in combining the prior art and that therefore Netflix did not establish obviousness of the challenged claims.

The Federal Circuit vacated the Board’s decision on appeal and remanded the matter. On remand, the Board again concluded that Netflix did not demonstrate obviousness but this time accepted DivX’s originally proposed claim construction. Netflix appealed.

The Federal Circuit found the Board’s construction of limitation [l] was erroneous, agreeing with Netflix that limitation [l] was taught by the asserted prior art combination. Using the plain language doctrine, the Court found that limitation [l] was susceptible to two interpretations: “the modifier ‘within the requested portions of the selected stream of protected video’ could modify either ‘encrypted portions of frames of video’ or ‘encryption information.’” Accordingly, the Court relied on the principle that where commas or other textual signals are not used, it is presumed that the modifier is tied to the nearest available semantically plausible modificand. The Court determined that only the “encrypted portions of frames of video” needed to be “within the requested portions of the selected stream of protected video.” The Federal Circuit also determined that the context of the claim itself, the specification, and the prosecution history supported the construction that [...]

Continue Reading



read more

Attorney-client relationship owed to both joint IP owners

by | Feb 19, 2026 |

Addressing attorney-client relationship formation and legal malpractice, the US Court of Appeals for the First Circuit reversed in part, vacated in part, and remanded a district court’s grant of summary judgment. The Court concluded that an attorney-client relationship existed as a matter of law and that a malpractice claim was premature for resolution at the summary judgment stage. BlueRadios, Inc. v. Hamilton, Brook, Smith & Reynolds, P.C., Case No. 24-1942 (1st Cir. Feb. 2, 2026) (Gelpi, Thompson, Montecalvo, JJ.)

In 2007, technology companies BlueRadios and Kopin Corporation entered into an agreement to jointly own intellectual property developed through their collaboration and assigned primary responsibility for patent prosecution to Kopin. That responsibility included retaining patent counsel. Kopin selected Hamilton, Brook, Smith & Reynolds (HBSR) to prosecute patents arising from the collaboration. HBSR worked with both companies to prepare and file patent applications, but over time the relationship between the agreement parties deteriorated.

In 2017, during discovery in unrelated litigation with Kopin, BlueRadios uncovered alleged conduct by HBSR that BlueRadios contended was contrary to its interests. On December 5, 2017, BlueRadios and HBSR entered into an agreement preserving any timely claims. BlueRadios filed suit against HBSR in 2021, asserting malpractice and related claims. The parties agreed that Massachusetts law governed and that, under the tolling agreement and the applicable statute of limitations, BlueRadios’ claims were timely if they accrued after December 5, 2014.

The district court granted summary judgment in HBSR’s favor, concluding that BlueRadios’ claims were time-barred, that no equitable tolling doctrine applied, and that no attorney-client relationship existed between BlueRadios and HBSR. BlueRadios appealed.

The First Circuit concluded that the district court failed to view the record in the light most favorable to BlueRadios when addressing the statute of limitations. The parties disputed when BlueRadios knew or reasonably should have known of the alleged harm caused by HBSR. Under Massachusetts law, this issue is typically a question of fact for the jury. Given the technical complexity of patent prosecution and BlueRadios’ lack of patent expertise, the Court found multiple reasonable interpretations of the record. The Court rejected the notion that internal correspondence or business decisions by BlueRadios conclusively demonstrated sufficient knowledge to trigger the statute of limitations as a matter of law.

The First Circuit further noted that BlueRadios’ later engagement of independent patent counsel did not necessarily reflect suspicion of malpractice, and that a reasonable jury could conclude that the review was undertaken for ordinary business reasons. Declining to aggregate the knowledge of client and counsel to establish accrual where neither independently possessed the requisite awareness, the Court reversed the district court’s statute-of-limitations ruling and vacated its dismissal of the related claims.

The First Circuit also addressed whether an implied attorney-client relationship existed between BlueRadios and HBSR, concluding that as a matter of law there was such a relationship. Applying Massachusetts law, the Court rejected the district court’s conclusion that BlueRadios failed to seek legal assistance from HBSR independent of Kopin. The 2007 agreement made clear that Kopin’s selection [...]

Continue Reading



read more

Method steps must be done in order where there is logical dependency

by | Feb 12, 2026 |

In a second appeal, the US Court of Appeals for the Federal Circuit affirmed a district court’s summary judgment of noninfringement based on an implicit ordering of steps in a method claim after disagreeing with the lower court on another basis for noninfringement. Sound View Innovations, LLC v. Hulu, LLC, Case No. 24-1092 (Fed. Cir. Jan. 29, 2026) (Chen, Prost, Wallach, JJ.)

At the district court, Sound View asserted an expired patent against Hulu’s use of a central content server connected to end users through intermediate edge servers. The asserted claim recites downloading streaming content from a buffer in a helper server to an end user while concurrently retrieving more streaming content from a content server.

The district court issued a decision in favor of Hulu, which Sound View appealed. In that first appeal, the Federal Circuit vacated and remanded the district court’s ruling, based on the district court’s negative claim construction.

On remand, the district court determined Hulu did not infringe, finding that the claimed method requires the steps of “receiving a request” and “allocating a buffer” to be performed in sequence. Since Hulu did not perform these claimed steps in order, the district court found there was no infringement. Sound View appealed.

The claim-at-issue recites:

Source: Sound View Innovations, LLC v. Hulu, LLC, Case No. 24-1092 (Fed. Cir. Jan. 29, 2026), Slip Op. at 4.

The Federal Circuit reasoned that the phrase “requested SM object” in the buffer-allocation step grammatically and logically depended on the prior step of “receiving a request,” because an object cannot be “requested” until a request has occurred. The Court explained that “‘requested’ is not only a grammatical descriptor, but also is a status indicator reflecting a completed action – the receiving of a request.”

The Federal Circuit applied precedent on implicit ordering of method steps and noted that “[o]ur caselaw on implicit ordering does not help Sound View, as it does not require a finding that the performance of the claimed steps would be inoperable if the steps are not followed in the order they appear in the claim” (emphasis added). The Court explained that the “logical” dependency between the method steps mandates that the request-receiving step precede buffer allocation. Because there was no dispute that the accused systems performed these steps in a different order, the Court affirmed summary judgment of noninfringement.



read more

Skinny label: Supreme Court to weigh inducement claims against generics

by | Jan 29, 2026 |

The Supreme Court granted certiorari to review whether a generic drugmaker that fully carves out a patented use from its label can nonetheless be held liable for induced infringement based solely on marketing its product as a generic version of a branded drug and referencing public information about the branded product, without promoting the patented use.

In Amarin Pharma v. Hikma Pharmaceutical USA, Case No. 23-1169 (Fed. Cir. June 25, 2024), the US Court of Appeals for the Federal Circuit concluded that Amarin adequately pleaded induced infringement based on allegations that Hikma marketed its product as a “generic” version of Vascepa and cited publicly available information about Vascepa, even though Hikma’s label carved out the patented indication pursuant to Section viii of the Hatch-Waxman Act.

In its petition to the Supreme Court, Hikma argued that the Federal Circuit’s ruling threatened the statutory balance struck by Hatch-Waxman by exposing skinny-label generic manufacturers to inducement liability based on conduct unrelated to the carved-out use. According to Hikma, permitting inducement claims under these circumstances would effectively nullify Hatch-Waxman Section viii by allowing plaintiffs to rely on generic marketing statements that do not instruct or encourage use of the patented method.

The questions presented are:

  • When a generic drug label fully carves out a patented use, are allegations that the generic drugmaker calls its product a “generic version” and cites public information about the branded drug (e.g., sales) enough to plead induced infringement of the patented use?
  • Does a complaint state a claim for induced infringement of a patented method if it does not allege any instruction or other statement by the defendant that encourages, or even mentions, the patented use?


read more

Hot out of the oven: Trademark limits on pizza-inspired names

by | Jan 29, 2026 |

The US Court of Appeals for the Seventh Circuit affirmed-in-part and reversed-in-part a preliminary injunction barring the use of PIZZA PUFF, concluding that the trademark owner failed to demonstrate a likelihood of success on the merits because the term was likely generic and, in any event, was descriptively and fairly used. Illinois Tamale Company, Inc. v. LC Trademarks, Inc., Case Nos. 24-3317; 25-1072; -1076; -1112 (7th Cir. Jan. 16, 2026) (Scudder, St. Eve, Jackson-Akiwumi, JJ.)

Illinois Tamale Company (Iltaco), a Chicago-based food company, has sold its signature “Pizza Puff” since 1976, distributing the product nationwide alongside other “Puff”-branded products. Iltaco owns federal trademark registrations for PIZZA PUFF (registered in 2009) and PUFF (registered in 2022).

In March 2024, Little Caesars introduced “Crazy Puffs,” small baked dough cups filled with pizza ingredients. The product launched as part of Little Caesars’ long-running “Crazy” line and was marketed prominently under the Little Caesars name, logo, and orange trade dress. Little Caesars secured its own federal registration for CRAZY PUFFS, and the United States Patent and Trademark Office identified no conflicting marks during examination.

Following the product launch, Iltaco sent a cease-and-desist letter claiming that CRAZY PUFFS and the phrase “4 Hand-Held Pizza Puffs” infringed its trademarks. When Little Caesars declined to change its marketing, Iltaco sued for trademark infringement and unfair competition and sought a preliminary injunction. The district court issued a split ruling, enjoining Little Caesars from using PIZZA PUFF but permitting continued use of CRAZY PUFFS and PUFF. Both parties appealed.

The Seventh Circuit found that the district court applied the wrong legal standard in assessing the protectability of PIZZA PUFF. The Court explained that rather than asking whether competitors could offer similar products without using the term, trademark protectability turns on the “primary significance” test, which is whether consumers primarily understand the term as a brand name or as the common name of a product. Because generic terms can never function as trademarks, the Court focused on evidence of consumer perception.

Applying that framework, the Seventh Circuit found substantial evidence that PIZZA PUFF was generic:

  • More than 80% of surveyed consumers viewed the term as referring to a product category rather than a brand.
  • Dictionary definitions treated the term generically.
  • Third-party filings and industry usage consistently employed the phrase as a common name.

This evidence rebutted the presumption of validity afforded by Iltaco’s federal registration, and Iltaco failed to demonstrate a likelihood of proving distinctiveness at trial. The Court therefore concluded that Iltaco did not show a likelihood of success on the merits and reversed the preliminary injunction barring Little Caesars’ use of PIZZA PUFF.

The Seventh Circuit further found that even if PIZZA PUFF were distinctive, Iltaco still could not obtain injunctive relief because Little Caesars was likely to prevail on a fair-use defense. The Court emphasized that fair use requires only descriptive, good-faith use, and not a perfect fit between the challenged term and the product. Here, PIZZA PUFF plausibly described Little Caesars’ light, pizza-filled food [...]

Continue Reading



read more

Baseball was very good to Roberto: Lanham Act permits claims against government officials in personal capacity

by | Jan 29, 2026 |

In a decision addressing the intersection of trademark law, sovereign immunity, and constitutional takings, the US Court of Appeals for the First Circuit partially revived Lanham Act claims brought by the heirs of baseball legend Roberto Clemente against senior officials of the Commonwealth of Puerto Rico. While affirming dismissal of claims against the Commonwealth itself and related public entities, the Court concluded that certain Lanham Act claims against individual government officials in their personal capacities were plausibly alleged and not barred by qualified immunity at the pleading stage. Clemente Props., Inc. v. Pierluisi-Urrutia, Case No. 23-1922, 2026 WL 125574 (1st Cir. Jan. 16, 2026) (Barron, Lipez, Thompson, JJ.)

The plaintiffs, Clemente’s sons and affiliated entities, alleged that Commonwealth officials improperly used Clemente’s name and likeness on commemorative license plates and registration tags without authorization. Proceeds from the program were directed toward a public initiative intended to replace an earlier Clemente-founded project. Plaintiffs claimed trademark infringement, false endorsement, false advertising, and dilution under the Lanham Act, as well as a taking in violation of the Fifth and Fourteenth Amendments. Defendants moved to dismiss on immunity grounds and for failure to state a claim. The district court granted the motions in full. Plaintiffs appealed.

The First Circuit reversed in part. The Court rejected the district court’s conclusion that the use of Clemente’s name and image was not “in connection with” goods or services under the Lanham Act. The Court explained that commemorative license plates and tags qualify as goods, and the fact that they were issued by a government entity did not remove them from the statute’s commercial scope. The Court also pointed to the United States Patent and Trademark Office’s Trademark ID Manual, which expressly recognizes license plates as registrable goods, and found no persuasive basis for excluding fundraising activities supporting the Roberto Clemente Sports District Fund from trademark scrutiny.

The First Circuit further concluded that plaintiffs adequately alleged commercial injury within the Lanham Act’s zone of interests and plausibly pleaded likelihood of confusion, including the mistaken impression that the Clemente family endorsed or financially benefited from the initiative. Accordingly, dismissal of Lanham Act claims under Section 32 (trademark infringement), Section 43(a) (false endorsement), and Section 43(c) (dilution) was improper with regard to officials sued in their personal capacities.

Sovereign immunity remained a shield for the Commonwealth, the Convention Center District Authority, and officials sued in their official capacities. However, the First Circuit concluded that qualified immunity did not bar the personal-capacity Lanham Act claims at the pleading stage and thus vacated dismissal and remanded for further proceedings.

The First Circuit affirmed dismissal of the false advertising claim, determining that plaintiffs failed to allege that defendants’ statements constituted commercial advertising or promotion as required under Section 43(a)(1)(B). The Court also affirmed dismissal of the Takings Clause claim, concluding that alleged infringements of intangible intellectual property do not support a categorical physical-taking theory and cannot be analyzed using frameworks applicable to physical occupation or appropriation.

Finally, the First Circuit deemed waived any [...]

Continue Reading



read more

Expert had firm grip on Rule 702

by | Jan 29, 2026 |

The US Court of Appeals for the Federal Circuit reversed an exclusion of expert testimony and grant of judgment as a matter of law, finding that the district court improperly conflated admissibility with credibility and weight of the evidence. Barry v. DePuy Synthes Companies, et al., Case Nos. 023-2226; -2234 (Fed. Cir. Jan. 20, 2026) (Prost, Taranto, Stark, JJ.) (Prost, J., dissenting).

Mark Barry owns patents covering surgical techniques and tools for treating spinal deformities. Barry sued DePuy alleging that DePuy induced surgeons to infringe the patents. The patents describe tools and methods, including levers, for applying force to vertebrae to realign the spinal column. Two of the patents required the presence of a “handle means,” which the district court construed as “a part that is designed especially to be grasped by the hand.”

At trial, Barry relied on two experts. His infringement expert, Dr. Walid Yassir, testified that DePuy’s accused tools could be assembled and used in infringing configurations and that certain components (or linked assemblies) constituted the claimed “handle means” under the court’s construction. Barry also offered expert testimony from Dr. David Neal, who conducted a surgeon survey to estimate how often DePuy’s tools were used in infringing configurations, which in turn supported Barry’s damages case.

Although the district court had denied DePuy’s pretrial Daubert motions regarding Barry’s experts, it reversed course mid-trial. The court excluded Yassir’s testimony on the ground that he contradicted the court’s claim construction by equating “handle means” with parts that must be grasped during assembly. The court also excluded Neal’s survey testimony, concluding that methodological flaws, such as nonprobability sampling and alleged defects in question design, rendered the survey unreliable. Having excluded both experts, the court granted DePuy judgment as a matter of law. Barry appealed.

The Federal Circuit agreed that expert opinion that contradicts a court’s claim construction would not be helpful to a jury and should be excluded under Rule 702. The Court found, however, that Yassir did not contradict the court’s construction but instead applied it in a manner a reasonable factfinder could accept or reject – a disputed application that DePuy challenged on cross-examination. However, DePuy did not object to Yassir’s direct testimony despite having secured a pretrial ruling barring evidence inconsistent with the claim construction.

The Federal Circuit concluded that Yassir’s testimony did not contradict the court’s claim construction but rather exposed areas of tension and potential weakness in how Yassir applied that construction to the accused devices. The Court explained that DePuy’s questioning elicited testimony about what could constitute a “handle means” that went to the credibility and persuasiveness of Yassir’s opinions, not their admissibility. The Court rejected the district court’s reliance on isolated testimonial snippets divorced from their surrounding explanations, noting that ordinary ambiguities and concessions revealed through adversarial questioning are for the jury to evaluate and do not convert an expert’s application of a claim construction into an impermissible contradiction warranting exclusion under Rule 702.

The Federal Circuit likewise held that the district court abused [...]

Continue Reading



read more

USPTO elevates precedential and informative decisions on discretionary institution in IPR/PGR

by | Jan 22, 2026 |

The United States Patent and Trademark Office (USPTO) designated four decisions as precedential and nine decisions as informative, all highlighting the factors the USPTO will consider in determining whether to deny a petition for inter partes review (IPR) or post-grant review (PGR) based on discretionary considerations.

Although the individual outcomes differ among the four precedential decisions (two granting institution and two denying), the decisions provide insight on how the USPTO will exercise its discretion to institute and deny America Invents Act (AIA) trials based on timing, copycat petitions and joinder, sequential petitions, and policy preference for PGR availability. The USPTO designated the following decisions precedential:

The USPTO designated the following decisions as informative, illustrating the types of factual scenarios that may support either discretionary denial of a petition or, conversely, a decision to consider the petition on the merits.

Together, these informative decisions provide concrete, real‑world examples of how the Director is likely to applies discretion under 35 USC §§ 314(a) and 324(a), ranging from circumstances where institution is disfavored (e.g., parallel litigation dynamics, petition quality, procedural posture) to situations where the USPTO [...]

Continue Reading



read more

Bond order doesn’t qualify for immediate appeal

by | Jan 8, 2026 |

The US Court of Appeals for the Federal Circuit reaffirmed strict limits on interlocutory review, finding that a bond order, even one imposing significant financial obligations, is not directly appealable. Micron Technology, Inc., et al. v. Longhorn IP LLC, Case No. 23-2007; Katana Silicon Technologies LLC v. Micron Technology, Inc., et al., Case No. 23-2095 (Fed. Cir. Dec. 18, 2025) (Lourie, Schall, Stoll, JJ.)

Idaho’s Bad Faith Assertions of Patent Infringement Act allows targets of bad faith patent assertions to seek equitable relief, damages, fees, and punitive damages. It also authorizes courts to require the party asserting patent infringement to post a bond equal to estimated litigation costs and potential recovery.

Micron, a semiconductor manufacturer headquartered in Boise, Idaho, faced infringement claims from Katana Silicon in the Western District of Texas based on three expired patents. Micron counterclaimed under the Idaho act, alleging bad faith. After transfer of the case to the District of Idaho, Idaho intervened to defend the act’s constitutionality. Micron also sued Longhorn IP (alleged to control Katana) in Idaho state court under the act, seeking a $15 million bond. Longhorn removed that case to federal court. Both Katana and Longhorn moved to dismiss on preemption grounds. Both motions to dismiss were denied, and the district court imposed an $8 million bond on Katana and Longhorn pursuant to the act’s bond provision. Katana and Longhorn directly appealed the bond order.

Since there was no final judgment, the threshold question was jurisdiction. Katana and Longhorn raised three theories under which the Federal Circuit had jurisdiction on the direct appeal.

First, Katana and Longhorn argued that jurisdiction existed under 28 U.S.C. § 1292, which provides appellate jurisdiction on interlocutory orders granting, continuing, modifying, refusing, or dissolving injunctions. Katana and Longhorn argued that the bond order was “injunctive in nature” and posed irreparable harm. The Federal Circuit disagreed, concluding that a bond is not an injunction and does not meet the criteria for interlocutory appeal. The Court found that Katana and Longhorn could seek modification or waiver in district court and that no serious hardship or inability to challenge later was shown.

Second, Katana and Longhorn argued that the Federal Circuit had jurisdiction under the collateral order doctrine, which is “a narrow exception whose reach is limited to trial court orders affecting rights that will be irretrievably lost in the absence of an immediate appeal.” To fall under this exception, an order must satisfy at least the following conditions:

  • Conclusively determine the disputed question.
  • Resolve an important issue completely separate from the merits of the action.
  • Be effectively unreviewable on appeal from a final judgment.

The Court concluded that, at a minimum, the second and third conditions were not met. The Court explained that the bond issue was intertwined with the ultimate merits question of the bad faith claims because the same factors that can demonstrate bad faith in the motion to dismiss analysis implicate whether to impose a bond. The Court also explained that nothing prevented Katana [...]

Continue Reading



read more

BLOG EDITORS

Paul Devinsky

Amol Parikh

Jodi Benassi

STAY CONNECTED

Subscribe

TOPICS

ARCHIVES