by Dennis Crouch

The Justices return for their long conference on Monday, September 28, and the patent side of the docket is as full as it has been in some time. By my count, thirteen docketed cert petitions arise from patent disputes, two more were filed on September 18 and are awaiting docket numbers, and five open extension applications signal more petitions coming this fall. Only four of the thirteen are on the long conference list. Most of the rest are waiting on responses, and the federal government is a respondent in seven of them. This comes after a year in which the Court denied 36 patent petitions and granted one (Hikma).

The biggest change since my June docket update is the Solicitor General's brief opposing certiorari in Google LLC v. VirtaMove, Corp., No. 25-1230, the lead case among five petitions testing 35 U.S.C. § 314(d), which makes the Director's institution decision "final and nonappealable." The government originally waived its response. The Court called for one in June, and after two extensions the SG filed on September 11. The brief recasts the question as whether the Federal Circuit "abused its discretion in declining to grant a writ of mandamus," and faults Google for never engaging with the three-part mandamus test of Cheney v. United States District Court, 542 U.S. 367 (2004). But the government also argues the merits here: Because no provision of the America Invents Act ever compels institution, "it is unclear how any statutory challenge to an institution denial could satisfy the mandamus standard." Its example of a denial that might still be reviewable is one "explicitly based on the race or religion of the petitioner."

by Dennis Crouch

Fortress Iron has asked the Supreme Court to review the Federal Circuit's decision invalidating two of its cable-railing patents because an omitted coinventor could not be found. Fortress Iron, LP v. Digger Specialties, Inc., No. 26-362 (petition filed Sept. 3, 2026). Judge Lourie wrote the opinion below for a unanimous panel, 171 F.4th 1310 (Fed. Cir. 2026), and the full court denied rehearing in June. I previously wrote about the holding, and then followed up with a second post asking where the invalidity rule comes from now that the AIA has repealed Section 102(f). This post centers on the cert petition, and I also pull in the Supreme Court's 1868 inventorship decision in Agawam v. Jordan.

The invention is a vertical cable rail barrier, a railing whose infill is a set of tensioned vertical cables, of the kind used on a deck, balcony, or stairway. Fortress's owner had the idea and an employee sketched the design, adding some detailed features. But prototypes built in China had a problem: the cables rotated as they were being tensioned. Hua-Ping Huang suggested square openings and square swage fittings to stop the rotation, and a coworker, Shih-Te Lin, suggested changes to strengthen the rail. Both ideas went into the final product, but the patents named only the two Fortress employees. During litigation, the parties discovered that Huang and Lin should be added as inventors. Lin was located and added by the USPTO. But there was difficulty finding Huang.

So the basic setup here is that everyone agrees that Hua-Ping Huang contributed to the invention and should be named on the patents. Fortress wanted to add him. But Huang left the contractor in 2016 without leaving contact information, and Fortress could not locate him. Fortress argued that it owned rights regardless because the contribution was a "service invention-creation" immediately owned by the contractor who assigned rights to Fortress. No assignment from Huang appears in the USPTO records. The recorded chain runs from Quan Zhou Yoddex to Fortress Iron, and even after finding him Fortress took his consent to be named, not an assignment.

In the litigation, Fortress conceded that Huang and Lin were coinventors and turned to 35 U.S.C. § 256 to fix the patents. The statute offers two routes. Under subsection (a), the USPTO Director may issue a certificate of correction "on application of all the parties and assignees." Fortress used that route for Lin, but admitted it was unavailable for Huang, who could not be found to sign.

Section 256(b) is the courtroom route. It provides that the error of omitting an inventor can be corrected by the court "on notice and hearing of all parties concerned." Fortress argued that Huang is not a party concerned because he holds no ownership interest, would lack standing to bring his own Section 256 claim, and could only benefit from being named. The district court disagreed, and the Federal Circuit affirmed.

Judge Lourie wrote that inventors remain central to the patent system even after they assign their rights, and that a coinventor is a party concerned whether or not he owns anything. Limiting the phrase to those whose economic interests might be harmed would rewrite the statute, and in any event nobody knows whether Huang would be helped or hurt by being named. Notice and a hearing are "a prerequisite to relief, not a mere formality." Because Fortress could not give notice, the error could not be corrected, and the court ultimately concluded that an inventorship error that cannot be corrected invalidates the patent.

Huang has now been found. He signed a Statement of Inventor under 37 C.F.R. § 1.324(b)(1) on April 10, 2026, eight days after the panel opinion issued, and Fortress filed the papers on April 16. On July 20 a supervisory patent examiner granted the petitions and sent the files to the Certificates of Correction Branch. Nothing has issued since. But a certificate of correction does not undo a judgment of invalidity. The district court has already held the two patents invalid and the Federal Circuit has affirmed. Unless the Supreme Court intervenes or Fortress wins relief from the judgment under Rule 60(b), the corrected patents seemingly remain unenforceable against DSI. Other accused infringers could also invoke the invalidity ruling under Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313 (1971) (non-mutual issue preclusion applies to invalidated patents).

by Dennis Crouch

The Federal Circuit has affirmed a $3.2 million fee-and-expense award against the Carnegie Institution of Washington and its now-bankrupt licensee M7D (the company behind WD Lab Grown Diamonds) following their failed infringement suit against Fenix Diamonds. Carnegie Inst. of Wash. v. Fenix Diamonds LLC, Nos. 2024-1804, -1824 (Fed. Cir. Sept. 17, 2026) (nonprecedential).  The panel held that District Judge Rakoff did not abuse his discretion in finding the case exceptional under 35 U.S.C. § 285, because plaintiffs' infringement positions became objectively baseless in July 2020, about a month after Fenix produced its Indian supplier's manufacturing evidence. The court also affirmed an inherent-power award of expert fees and other non-taxable expenses, and it held Carnegie, the patent owner, jointly and severally liable with M7D for the full amount.

If you have been following fee-awards in patent cases, you might ask something like: Why is a 2026 fee decision still talking about objective baselessness?  The Supreme Court eliminated it as a requirement for § 285 fees in 2014.

Although fees can still be awarded even if the case was not objectively baseless, the standard survives because it is a clear standard that is easy to review and is certainly enough to support a fee award. In this case, the panel expressly declined to reach Judge Rakoff's alternative finding that plaintiffs litigated unreasonably -- a question that involves much more nuance -- since it was able to affirm on objectively baseless.

An interesting footnote in the case suggests that the patentee might have actually had a good argument to raise - but failed to do so.  The court goes on to conclude that the baselessness inquiry is limited to arguments the patentee actually made, not those that could have been pursued.

by Dennis Crouch

The Federal Circuit has vacated a PTAB obviousness rejection of a catheter claim, holding that the Board's reading of the claim term "flow barrier" was unreasonably broad. In re Incept LLC, No. 2025-1900 (Fed. Cir. Sept. 17, 2026) (nonprecedential). The per curiam panel construed the term itself and sent the case back for the Board to redo its obviousness analysis under a new, narrower construction.

During patent prosecution, the pending patent claims are given their broadest reasonable interpretation.  The idea behind this policy is that an applicant who can still amend the claims should be pushed to fix potential ambiguity now, during prosecution, rather than leaving unclear language to be sorted out later in litigation. But the standard requires a reasonable interpretation and here the appellate panel concluded that the PTO had gone too far by finding the broadest interpretation the words could linguistically bear.

Incept's Application No. 16/886,099 claims a medical catheter with an "anchoring strain relief member" joined to the shaft's outer surface.  The basic idea here is that the junction where the flexible catheter meets the rigid hub tends to concentrate bending stress that can lead to kinking or cracking. The strain relief member has a sealing portion made up of ridges and the claims require that each ridge "forms a flow barrier between the catheter outer surface . . . and the top of that ridge."  The basic idea here is that the ridges close off any path beneath the ridges, so that fluid cannot slip between the catheter shaft and the strain relief member and around the seal formed where the valve presses against the ridge tops.

The Board read "between" as purely locational, so any solid structure sitting somewhere in that zone would count as a barrier to flow. On appeal, though, the court read the phrase to require a barrier that actually spans from the shaft surface to the ridge top.

by Dennis Crouch

The America Invents Act of 2011 (AIA) substantially narrowed the 1-year grace period that US patent applicants had relied upon for more than a century. Under the new law, the grace period only applies to protect against the inventor's own disclosure (or those derived from the inventor) or in situations where the inventor had already publicly disclosed the invention.

The Federal Circuit's decision in NCS Multistage Inc. v. Nine Energy Service, Inc., No. 2025-1000 (Fed. Cir. Sept. 14, 2026), focuses on what pre-filing actions are sufficient for a patentee to trigger the "publicly disclosed" grace period of 35 U.S.C. § 102(b)(1)(B). The holding is straightforward: a private sale does not constitute a public disclosure, even where the goods are actually delivered to the buyer without any confidentiality restriction.

Let me set up the key timeline of events

• July 2012: NCS (the patentee) sells its first AirLock device to Tundra that incorporates major aspects of the invention.
• August 2012: TCO (an unrelated third party to this case) sells a TDP-PO tool to Apache. This is the potential intervening third-party sale, with further uses during the year.
• February 5, 2013: NCS files its provisional application.
• June 28, 2013: NCS files its non-provisional application that eventually led to the patent at issue here. Note that both the provisional and non-provisional are within one-year of that original sale.

The patentee's first problem here is that the Feb 2013 provisional application was inadequate to support the eventual claims. That is a big deal because the AIA became effective for applications filed in March 2013. This means that the new, narrower grace period applies in this case.

Any claim that has to rely on the June 28, 2013 filing is a post-AIA claim, and under AIA § 3(n)(1) a single post-AIA claim is enough to put the whole patent under the new § 102. The Board found the provisional gap in a post grant review, TCO AS v. NCS Multistage Inc., PGR2020-00077 (P.T.A.B. Feb. 18, 2021), and the Federal Circuit accepted the point in a footnote without dispute from either side. (I looked up the provisional application. It is about 5k words compared with 12k in the issued patent, and the issued claims include specific elements not found in the provisional.)

Is it Prior Art? I want to walk through the prior art question in the two step way that I teach it: first, does the third-party activity count as prior art under § 102(a) at all; and second, if so, does an exception under § 102(b) take it back out.

by Dennis Crouch

The Federal Circuit today reversed the dismissal of a patent and copyright case that had been thrown out for failure to join the patent owner (Texas A&M University) who had asserted sovereign immunity to stay out of the litigation. TexasLDPC Inc. v. Broadcom Inc., No. 2025-1074 (Fed. Cir. Sept. 14, 2026). I think the court got this right, though it reached the result without confronting what makes these cases hard: a state university can license its patents, take a share of any recovery, and still invoke immunity to keep its own files out of the case.

The judges here are a bit interesting because the panel included Judge Chen (who wrote the opinion) along with Chief Judge Moore and W.D. Pa. Chief District Judge Bissoon. The decision they reversed was by Judge Stephanos Bibas, a Third Circuit judge sitting by designation in Delaware.

TexasLDPC is the exclusive licensee of five LDPC error-correction patents and three software copyrights owned by Texas A&M. LDPC coding is widely used in hard drive and flash controllers and in Wi-Fi and 5G modems: the setup lets a receiver find and fix bit errors on its own, and the asserted patents claim decoder improvements in throughput and message storage memory.  Kiran Gunnam developed the technology as a doctoral candidate at A&M, and after graduating he went to work for LSI, where he tried without success to persuade the company to take a license from the university. He left, and in late 2014 his wife co-founded TexasLDPC to develop and sublicense the portfolio. LSI is now one of the defendants.

The case on appeal started when TexasLDPC sued Broadcom in 2018 without joining A&M as a co-plaintiff. When Broadcom subpoenaed the university for its licensing files in 2022, A&M asserted Eleventh Amendment sovereign immunity and a Texas district court quashed the subpoena. Broadcom then converted that discovery frustration into a joinder motion, arguing that the district court could not "accord complete relief" under Rule 19(a)(1)(A) without A&M in the case. The basic argument was that Georgia-Pacific damages analysis requires consideration of the licensor's own practices. The district court ultimately agreed with the defendant and dismissed the case. On appeal, the Federal Circuit has reversed holding that "Rule 19 is not a discovery tool."

by Dennis Crouch

On September 10, 2026, the USPTO released a notice allowing a PTAB Administrative Patent Judge to sit on the examiner panels that decide pre-appeal brief requests, and to fill the third seat, normally held by a second examiner, at the appeal conference that follows an appeal brief. USPTO, Update to Panels for Pre-Appeal and Appeal Conferences (Sept. 10, 2026).

The APJ acts "only in an advisory role" to the examiner who holds signatory authority, and the statement includes a couple of key limitations:

1. An APJ who advises on an application will not sit on the Board panel that later decides its appeal.
2. APJ's participation "is not appellate review by the PTAB," so an examiner's withdrawal of a rejection after an APJ-attended conference does not become a Board decision for patent term adjustment (or any other) purposes.

On paper, then, examination and appellate review remain separate. In practice, a member of the reviewing tribunal now helps the examiner decide whether to defend a rejection, before the Board has jurisdiction and in a proceeding the applicant does not attend.

by Dennis Crouch

Apple has asked the Supreme Court to review the Federal Circuit's decision upholding the ITC's import ban on Apple Watches with blood-oxygen sensing. Apple Inc. v. ITC, No. 26-316 (petition filed Sept. 3, 2026). Patently-O has followed this fight since the December 2023 ban. My last post on the case (Mar. 27, 2026) covered Judge Stark's opinion for a unanimous panel (with Judges Lourie and Reyna) affirming the Commission across the board. Apple Inc. v. ITC, 169 F.4th 1363 (Fed. Cir. 2026). This one looks at the new petition, filed by Mark Fleming of WilmerHale with Paul Clement on the brief.

The lead question is narrow and statutory - focusing in on the domestic industry requirements of 19 U.S.C. § 1337(a)(2).

The ITC can exclude infringing imports only if a domestic industry "relating to the articles protected by the patent" exists or is being established. That requirement has two parts: The technical prong asks whether the complainant's own articles practice the asserted claims, which Masimo showed with prototypes rather than a product on the market. The economic prong asks whether those articles support a US industry that can be shown through any of three ways:

• (A) "significant investment in plant and equipment";
• (B) "significant employment of labor or capital"; or
• (C) "substantial investment in its exploitation, including engineering, research and development, or licensing."

Masimo's case rested on R&D spending for a watch that was still in development, and the Commission credited that spending under (B). Apple argues that R&D belongs only in (C), which requires a "substantial" investment in exploiting the patent and, under Commission precedent, a nexus to the asserted claims. Routing the same R&D through (C) would require Masimo to connect it to exploitation of the asserted claims, not just to the prototypes - something that will be harder for Masimo to prove.

As a fallback, Apple asks for summary reversal under SEC v. Chenery Corp., 318 U.S. 80 (1943). That doctrine lets a court sustain agency action only on the grounds the agency itself gave.

The practical stakes for Apple's current watches are fairly modest. The exclusion order still covers the original design until the patents expire in 2028, but the Commission has cleared Apple's redesign, which moves the blood-oxygen calculation to the paired iPhone (Masimo has appealed that separately).

by Dennis Crouch

On September 10, the Federal Circuit heard argument in ABC IP, LLC v. Peak Tactical, LLC, No. 26-1527, Rare Breed Triggers' appeal from the denial of a preliminary injunction against the "Disruptor," a $299 forced-reset trigger (FRT) for AR-15 rifles that Peak Tactical launched under the Partisan Triggers name. (Compare with the patentee's version for $450). Ordinary AR-15 rifles require that the trigger be manually pulled for each shot, but the FRT modification effectively turns the gun into a machinegun. The shooter just maintains pressure on the trigger and the gun will keep firing.

Chief Judge Kelly Rankin (D. Wyo.) found that all four preliminary injunction factors weighed against relief. His likelihood-of-success analysis rested largely on a claim-construction dispute that he identified but did not resolve: what "substantially in-battery position" means. At oral argument, the panel (Judges Lourie, Linn, and Chen) pressed both sides. My read is that the district court erred by first failing to resolve the claim construction and then treating the unresolved construction dispute as a reason to deny relief. But the panel is likely to affirm anyway because Rare Breed offered too little evidence of irreparable harm. Truthfully, though, I didn't explore the details of the evidence presented. And the case raises a question: can we infer irreparable harm based simply upon evidence that the accused device is a copy of the patentee's product?

The appeal is one piece of a much larger campaign. In May 2025, the Department of Justice settled its long fight over whether forced-reset triggers are illegal machineguns. Rare Breed obtained federal non-enforcement for qualifying triggers and agreed to seek injunctions against other sellers who violated its patents; DOJ agreed to consider filing statements supporting those injunctions. Rare Breed and its patent-holding affiliate ABC IP have since filed more than 130 infringement suits, and 95 are now pending in a single multidistrict litigation (MDL) before Chief Judge Amos Mazzant (E.D. Tex.).

The figure above comes from the preliminary injunction briefing and shows a colorized figure from one of the asserted patents (left) and CAD renderings of the patentee's product (the FRT-15L3, center) and the accused Disruptor (right). The minor differences are hand-marked.