by Dennis Crouch This is a follow-up on my recent discussion of Ingenico v. IOENGINE, a potentially groundbreaking decision that appears to have unintentionally upended fundamental principles of IPR estoppel. The Federal Circuit’s ruling threatens to undermine Congressional intent and, as a consequence, dramatically shift the AIA balance in favor of IPR challengers and against patent owners. Yet the opinion shows no signs that the panel recognized the far-reaching implications of their interpretation. Given the sweeping nature of this change to settled patent law practice and the apparent lack of conscious intent to revolutionize IPR estoppel doctrine, this case presents compelling grounds for sua sponte panel or en banc rehearing before the precedent takes root. See, Dennis Crouch, Estoppel Gutted: A Pelican’s Guide to Patent Litigation, Patently-O (May 8, 2025), https://patentlyo.com/patent/2025/05/estoppel-pelicans-litigation.html. As I examine the case, and underlying materials, I’m becoming convinced that the appellate panel did not intend the far-reaching potential consequences of the decision. Certainly, the court’s opinion did not expressly recognize or contend with the sweeping change it was making.  This approach reflects a particular judicial philosophy that prioritizes strict textual interpretation. Continue reading this post on Patently-O.

by Dennis Crouch The Federal Circuit recently affirmed a decision from the Trademark Trial and Appeal Board (TTAB) that refused registration of the mark “US SPACE FORCE” based on false suggestion of a connection with the United States. In re Thomas D. Foster, APC, No. 2023-1527, slip op. at 1 (Fed. Cir. May 7, 2025).  The precedential outcome of the case is important — I believe this is the first CAFC case affirming the four-part test for false connection that had been developed by the Board — although the holding indicates that the test is more flexible than previously suggested. During his first term, President Trump started the United States Space Force — 20 December 2019.  Trump had actually proposed the agency that he simply called the “Space Force” in a March 13, 2018 speech.   Within the week, IP attorney Thomas D. Foster filed an intent-to-use registration application Section 1(b) of the Lanham Act to register “US SPACE FORCE” for various goods and services on behalf of his eponymous law firm.  It was not until later that the U.S. government formally announced the US Space Force. To continue reading, become a Patently-O member. Continue reading this post on Patently-O.

by Dennis Crouch The Supreme Court recently received a petition for certiorari from NexStep, Inc., challenging a Federal Circuit decision that epitomizes a four-decades-long trend of restricting the doctrine of equivalents (DOE). The petition in NexStep, Inc. v. Comcast Cable Communications, LLC (No. 24-1137), presents a fundamental question: Has the Federal Circuit improperly shackled the doctrine of equivalents with rigid, formulaic requirements contrary to Supreme Court precedent?  More particularly, the petition asks: “Whether a patentee must in every case present ‘particularized testimony and linking argument’ to establish infringement under the doctrine of equivalents.” Dennis Crouch, Doctrine of Equivalents: Expert Testimony Must Include Particularized Links, Patently-O (Oct. 22, 2024) (discussion of the original CAFC decision). The case also has a nice baseball analogy.  The patent requires a “single action” performed by a user, and the accused device needs three button pushes.  The patentee’s expert, when presenting the DOE case to the jury, used a baseball pitcher analogy – recognizing that throwing a ball includes numerous small steps to accomplish the single action of throwing.  The argument here, which the jury agreed was meritorious, is that the three button pushes – while not literally the same as a single action – was the equivalent and thus infringing.  Continue reading this post on Patently-O.

by Dennis Crouch In a significant decision narrowing the scope of Inter Partes Review (IPR) estoppel, the Federal Circuit has held that a patent challenger who previously pursued an IPR can still rely on system prior art in district court litigation, even when that system was fully documented in publications that could have been raised during the IPR.  A key implication from this case is that despite the estoppel provision, a printed publication from an IPR can be later used in the litigation as part of the same combination of references used in the IPR, so long as the publications are categorized by the patent challenger in the litigation as proving that the invention was known/used/on-sale. Ingenico Inc. v. IOENGINE, LLC, No. 23-1367 (Fed. Cir. May 7, 2025). Writing for a unanimous panel, Judge Hughes explained: IPR estoppel does not preclude a petitioner from relying on the same patents and printed publications as evidence in asserting a ground that could not be raised during the IPR, such as that the claimed invention was known or used by others, on sale, or in public use. The decision resolves a long-standing split among district courts regarding the proper interpretation of the term “ground” in 35 U.S.C. Continue reading this post on Patently-O.

by Dennis Crouch The Federal Circuit’s May 6, 2025 decision in Jazz Pharmaceuticals v. Avadel focuses on the scope of injunctive relief for infringement under 271(e).  The appellate court held that a district court may not enjoin a pharmaceutical company from initiating new clinical trials or offering open-label extensions where such activities are protected by the Hatch-Waxman Act’s safe harbor provision, even when the company’s commercial product has been found to infringe a valid patent. The court reversed the portions of the injunction that would have prohibited these activities, and vacated and remanded the portion that barred seeking FDA approval for new indications. Jazz Pharmaceuticals, Inc. v. Avadel CNS Pharmaceuticals, LLC, No. 24-2274, slip op. (Fed. Cir. May 6, 2025). To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post. Continue reading this post on Patently-O.

by Dennis Crouch Purdue Pharma has filed a petition for certiorari asking the Supreme Court to review what it characterizes as the Federal Circuit’s overly rigid application of the “nexus” requirement for objective indicia of non-obviousness. I agree with the petition that the Federal Circuit’s approach contradicts the Supreme Court’s longstanding precedent requiring a flexible and expansive analysis of obviousness factors, exemplified both by the court’s 2007 KSR decision as well as older cases, such as Minerals Separation v. Hyde, 242 U.S. 261 (1916). Purdue Pharma L.P., et al. v. Accord Healthcare, Inc., Docket No. 24-1132; Dennis Crouch, The OxyContin Conundrum: Can a Creator of Crisis Patent a Solution?, Patently-O (Mar. 25, 2025); Dennis Crouch, Federal Circuit Affirms Invalidity of Purdue’s OxyContin Patents, Patently-O (Dec. 30, 2024). To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post. Continue reading this post on Patently-O.

by Dennis Crouch The Federal Circuit’s 1993 decision in In re Rijckaert, 9 F.3d 1531 (Fed. Cir. 1993), set an important boundary on the use of inherency in obviousness determinations. I recently reread the case and wanted to reintroduce the case that continues to be regularly cited in both patent prosecution and litigation. Rijckaert involved a patent application for a magnetic recording apparatus that established a precise mathematical relationship between time expansion/compression and three variables: α (the wrapping angle of tape around the drum), n (the number of head pairs), and M (non-recording intervals). This relationship—expressed as α*n/(180*(M+1))—allowed for optimal track filling on the magnetic tape.  The approach was designed to allow reduction of acoustic noise by positioning heads close together with rigid mechanical coupling, while maintaining proper signal timing and track alignment regardless of drum wobble or other mechanical imperfections.  The PTO rejected the application as obvious two prior art references, despite neither reference teaching the claimed relationship or even discussing all three variables in combination. The Board of Patent Appeals upheld the rejection by assuming that the relationship would be inherently satisfied if one assumed specific values for the variables. Continue reading this post on Patently-O.

by Dennis Crouch I enjoyed reading Professor S.I. Strong’s new article on AI-lawyering and her proposed solution that inspired by the English legal profession’s structure. Although I think this is all still early stage, emerging empirical research is showing how generative AI usage often triggers “metacognitive laziness” and “cognitive offloading” in users. Studies particularly with law students show reduced motivation to learn, diminished ability to self-regulate, and less deep engagement with material—gaining only improved short-term performance on individual tasks.  Routine reliance on AI usage is also showing an atrophy of other critical skills. Namely, when professionals have confidence in GenAI’s ability to perform a task, those folks spend much less effort thinking critically about the issues. Artificial Intelligence in Civil Justice Systems: An Empirical and Interdisciplinary Analysis and Proposal for Moving Forward by S.I. Strong :: SSRN One solution in the article is derived from Strong’s experience as both a U.S. attorney and a U.K. solicitor.  She proposes dividing the legal profession into two groups: “post-AI solicitors,” who would provide legal services with robust AI assistance handling standardized, routine matters; and “post-AI barristers,” who would work without reliance on generative AI, focusing on novel or complex questions of law.  Continue reading this post on Patently-O.

by Dennis Crouch In a case highlighting the ongoing challenge of claim construction in software patents, the Federal Circuit has affirmed the district court’s determination that Fintiv’s asserted claims are invalid as indefinite. Fintiv, Inc. v. PayPal Holdings, Inc., No. 2023-2312 (Fed. Cir. Apr. 30, 2025).  In the software-element two-step, the court first held that the claim terms “payment handler” and “payment handler service” should be treated as “mean-plus-function” limitations under 35 U.S.C. § 112(f) because the claim terms used lacked inherent structural meaning; and then as a result found the claims invalid as indefinite because the specification lacked sufficient structural support.   U.S. Patent Nos. 9,892,386, 11,120,413, 9,208,488, and 10,438,196. The Statutes at Issues: 35 U.S.C. 112(b) Conclusion. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. 35 U.S.C. 112(f) Element in Claim for a Combination. An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Continue reading this post on Patently-O.

by Dennis Crouch Although the Supreme Court permits color itself to serve as a trademark, the cases have generally not been strongly supportive. The Federal Circuit’s recent decision on green medical examination gloves fits this standard like a … glove. In re PT Medisafe Technologies (Fed. Cir. April 29, 2025). The decision particularly focuses on color mark genericness, holding that the dark green color for chloroprene medical examination gloves was “so common in the industry that it cannot identify a single source.” To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post. Continue reading this post on Patently-O.

On January 30, 2024, the Delaware Chancery Court voided Elon Musk’s $55.8 billion compensation package as CEO of Tesla, ruling it unfair to shareholders. In response, Musk criticized Delaware and announced plans to transfer SpaceX’s incorporation to Texas, with Tesla potentially following. This decision has sparked debate among business owners about incorporating in Delaware. Despite the controversy, Delaware remains a popular state for incorporation due to its established legal framework, specialized courts, and favorable regulations. The post explores the implications of Musk’s actions and the ongoing relevance of Delaware for business incorporations.

Earnouts can bridge valuation gaps in M&A deals, but careful drafting is crucial. Sellers should negotiate clear calculation methodologies, specific covenants for the buyer’s post-closing operation of the business, and robust dispute resolution procedures. Proper structuring of earnout provisions can help manage seller expectations and reduce the likelihood of future disputes.

On January 1, 2024, previously enacted federal legislation called the Corporate Transparency Act (the “CTA”) went into effect. The CTA aims to assist law enforcement in tackling money laundering, tax fraud, terrorism financing, and various other illicit activities facilitated by anonymous shell companies. Here we briefly discuss the basics of the CTA and how certain

The purchase agreement is key in M&A transactions, detailing conditions for closure, business terms, asset delineation, due diligence, post-closing recovery, and transition covenants. Styled based on the transaction (asset, stock, merger), it’s drafted post-due diligence, varying in length. It includes parties involved, assets, liabilities, purchase price details, closing process, representations, warranties, tax matters, other covenants, indemnification, and miscellaneous provisions. Structure is driven by buyer and seller preferences, affecting asset or stock purchase decisions and tax implications.

Selling your business is not just about finding a buyer and agreeing on a price. Once the basic terms of the deal are agreed upon in a letter of intent, the buyer will want to sift through your business and legal records with a fine-tooth comb. This meticulous review of your business from contracts to customer lists is called due diligence. Due diligence allows the buyer to uncover risks when buying a business.

Due diligence is the buyer’s process of discovering and evaluating information about a seller’s business to confirm that acquiring the seller’s equity or assets is a sound investment. However, the process of conducting due diligence differs between transactions for a variety of reasons. Factors such as the deal structure (equity purchase versus asset purchase), cost, the unique qualities of the seller, and time constraints affect how the buyer’s deal team approaches due diligence.

This article discusses the memorialization of purchase offers in a letter of intent (LOI) in M&A transactions. An LOI outlines key terms of the deal but is non-binding. It includes provisions like exclusivity, confidentiality, expenses, and non-solicitation that may be binding. Careful drafting is essential to avoid potential risks. Properly considered, an LOI is a valuable tool for M&A deals, guiding parties through negotiations with caution.

This blog post discusses the importance, elements, and exceptions of non-disclosure agreements (NDAs) when selling a business. Key points include the priority for sellers to sign an NDA before disclosing sensitive information, the necessity for clear definitions of what the NDA covers, guidelines for sharing information, the term length of NDAs, and remedies in case of a breach. Despite its protection, enforcing NDAs can be challenging, advising selective information sharing.

For high-growth startups, these tax benefits are often well worth the time and brainpower spent planning and structuring for the requirements imposed by Section 1202 of the Internal Revenue Code. However, to fully take advantage of these benefits, understanding and navigating the 5-year holding period requirement under Section 1202 is essential. In this article, we’ll explore one common scenario that illustrates a key consideration with respect to the holding period from the founder’s and advisor’s perspective.

Founders and startups need to consider Qualified Small Business Stock (QSBS), which offers extensive tax advantages, for their corporate structure. QSBS awards tax benefits to shareholders of companies that meet specific eligibility requirements, including the company being a C-corporation and having assets below $50 million. These benefits mainly include partial or complete exclusions of capital gains from federal income tax. Early planning and knowledgeable advice are crucial for optimization.