Patently-O

How the Federal Circuit Is Rebuilding Inventorship Law After the AIA

Dennis Crouch — Mon, 06 Apr 2026 15:15:48 +0000

by Dennis Crouch

In yesterday's post on Fortress Iron v. Digger Specialties, No. 24-2313 (Fed. Cir. Apr. 2, 2026), I discussed the Federal Circuit's holding that two patents were invalid because a missing coinventor could not be located and added under 35 U.S.C. § 256(b). The court read § 256(b)'s savings clause by its "necessary and opposite implication:" if an inventorship error cannot be corrected, the patent is invalid. But the opinion did not identify where in the Patent Act that invalidity rule comes from. The court cited Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998), which grounded inventorship invalidity in former Section 102(f) and collected circuit court cases from the 1920s through the 1940s that predated § 102(f) entirely. The Fortress Iron court itself invoked the AIA-era definition of "inventor" in § 100(f). What it did not do is explain how these pieces fit together into a coherent theory of inventorship invalidity in 2026.

That absence matters because the statutory landscape has shifted dramatically. Before the America Invents Act, the doctrinal path was straightforward: Section 102(f) made correct inventorship a "condition of patentability," Section 282(b) made conditions of patentability available as defenses, and Section 256 operated as a savings clause that could rescue patents with correctable errors. The AIA repealed § 102(f) and did not replace it. At the same time, the AIA removed the longstanding requirement that inventorship errors arise "without any deceptive intention" before correction could be granted. Almost fifteen years later, the Federal Circuit still has not articulated a unified approach to inventorship invalidity under the post-AIA statute. In Fortress Iron and the recent Implicit, LLC v. Sonos, Inc., No. 2020-1173 (Fed. Cir. Mar. 9, 2026), the court has been content to cobble together fragments of old case law and new statutory text without confronting the structural question head-on. What I try to do in this post is to trace the full doctrinal arc, from the nation's first patent statute through the 1952 Patent Act and the AIA, to show what the Federal Circuit is building on and what remains unresolved.

I. The Inventorship Defense from the Founding

The principle that a patent must name the correct inventor is as old as American patent law. The very first Patent Act, enacted on April 10, 1790, included a mechanism for challenging a patent on the ground that the patentee "was not the first and true inventor or discoverer." Under that provision, a district court could order "the repeal of such patent" upon such a finding. The Patent Act of 1793 continued the requirement, demanding that every inventor "swear or affirm that he does verily believe, that he is the true inventor or discoverer." And the Patent Act of 1836, which created the modern Patent Office and examination system, formalized the procedural structure.

The 1836 Act's defense provisions were consolidated in 1874 as Revised Statutes Section 4920 and enumerated several defenses going directly to inventorship. The fourth defense permitted proof that the patentee "was not the original and first inventor or discoverer of any material and substantial part" of the claimed invention. All of these defenses were available to any defendant in an infringement action, regardless of whether the defendant had any ownership interest in the patent or any relationship to the true inventor.

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Missing Coinventors and the Death of a Patent

Dennis Crouch — Mon, 06 Apr 2026 02:39:34 +0000

by Dennis Crouch

The Patent Act requires that patents correctly name their inventors. 35 U.S.C. §§ 115(a), 116(a). Before 2011, the statute also made incorrect inventorship an explicit ground for invalidity. Former Section 102(f) provided that "[a] person shall be entitled to a patent unless . . . he did not himself invent the subject matter sought to be patented." A defendant in an infringement action could raise § 102(f) as a straightforward invalidity defense under § 282(b). The America Invents Act repealed § 102(f) and did not replace it with any equivalent provision. That repeal left an open question that the patent bar has been debating for more than a decade: can incorrect inventorship still be raised as a defense in patent litigation? See Dennis Crouch, With 102(f) Eliminated, Is Inventorship Now Codified in 35 U.S.C. 101?, Patently-O (Oct. 4, 2012); Dennis Crouch, The Removal of Section 102(f)'s Inventorship Requirement; the Narrowness of Derivation Proceedings; and the Rise of 101's Invention Requirement, Patently-O (Oct. 5, 2012).

The structural problem is real. Section 282(b) enumerates the defenses available in infringement actions, and none of the inventorship grounds are expressly listed. In other contexts, the Federal Circuit has been strict about confining defenses to those the statute identifies. Yet the requirement that inventors be correctly named remains in the Patent Act, and Section 256 still states that inventorship errors "shall not invalidate the patent . . . if it can be corrected as provided in this section." The negative implication of that language is that if the error cannot be corrected, the patent is invalid.

In Fortress Iron v. Digger Specialties, No. 24-2313 (Fed. Cir. Apr. 2, 2026), the Federal Circuit confirmed that negative implication, holding two patents invalid because a missing coinventor could not be located and added. But the opinion leaves other question untouched.

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Most Common First Names of inventors on US Patents

Dennis Crouch — Fri, 03 Apr 2026 16:59:07 +0000

I thought this was going to be more interesting, but it basically is a list of most prevalent male names of middle class US men aged 30-50. We know that in the US women have a lower rate of patenting. In addition though, parents are much more conservative in terms of male names.

https://patentlyo.com/media/2026/04/inventor_names_race-1.mp4

I have a data gap 1973-1974. I also note no “Dennis” on the list.

I also grabbed the last-names of inventors, and it tells a different story with English-origin names (Smith, Johnson, Miller, Brown) dominating the list for the entire 20th century. During the late 1980s, a number of Japan origin names began to make the list. Then in the 2000s through to today, the list began to be dominated by China and Korea origin names.

https://patentlyo.com/media/2026/04/inventor_lastnames_race-1.mp4

Words That Stick: Prosecution Disclaimer Survives the Examiner’s Rejection

Dennis Crouch — Thu, 02 Apr 2026 10:40:25 +0000

by Dennis Crouch

Puradigm, LLC v. DBG Group Investments LLC, No. 24-2299 (Fed. Cir. Apr. 1, 2026) (Prost, J.) (non-precedential)

For patent holders, seeing Judge Prost's name on the opinion is rarely a good sign.

This new decision reinforces the rule that an applicant’s statement during prosecution can permanently narrow patent scope even when the examiner disagreed with the statement and rejected it. The applicant argued; the examiner said no; the applicant moved on. Yet the statement sticks. At that point, a careful prosecutor may have considered whether to withdraw the statement explicitly.

The case involves U.S. Patent No. 8,585,979, which covers photo-catalytic air purification cells that use UV light striking catalyst-coated targets to produce ions that eliminate airborne contaminants. That general idea was already known, but the claimed enhancement is a pair of “specular UV reflectors” that bounce UV light "directly" onto those targets rather than scattering it diffusely. The specification describes the reflectors as "mirror-like reflection" but the broadest claims only require a "reflector" serving the "direct" targeting function.

Puradigm sued DBG Group Investments and affiliated entities in the Northern District of Texas for infringement. DBG’s accused products used unpolished aluminum reflectors rather than mirrors. The district court granted summary judgment of noninfringement, finding that the applicant had disclaimed polished aluminum during prosecution and that the disclaimer logically extended to unpolished aluminum as well. The Federal Circuit affirmed.

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USPTO’s April Fool’s Prank Says the Quiet Part Out Loud

Dennis Crouch — Wed, 01 Apr 2026 18:58:58 +0000

by Dennis Crouch

The USPTO used its official GovDelivery email system this morning to announce a new AI tool for patent eligibility determinations: the "McConaughey Agentic Tasking Technology Helping Examiner Workload," or "MATTHEW." The tool, Director John Squires explained, will resolve the thorniest eligibility questions by rendering a simple verdict: if MATTHEW says your invention is "Alright, Alright, Alright," then it's "Alright, Alright, Alright" with the USPTO. Squires also casually mentioned that he was suspending "all applicable precedent, including Desjardins, Alice, and Mayo." Happy April Fool's Day.

The reference to McConaughey fits -- The actor's legal team registered a series of trademark over the past several months, including a "sensory mark" on his delivery of "Alright, alright, alright" from Dazed and Confused (1993). [YouTube][Specimen]

The press release is a genuine work of comedic craft, and it arrived through the same official channels the agency uses to announce rulemakings and pilot programs. It deserves to be read in full. Here it is:

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Guest Post: Improving PERA’s Eligibility Exclusions

Dennis Crouch — Wed, 01 Apr 2026 11:13:43 +0000

Guest Post by Professors Jeffrey A. Lefstin, UC College of the Law, San Francisco & Peter S. Menell, UC Berkeley Law

As Dennis reported last year, Senators Thom Tillis and Chris Coons re-introduced the Patent Eligibility Reform Act (PERA) in the Senate in May 2025, accompanied by a parallel bill in the House. Despite significant pushback on earlier versions of the bill, PERA 2025 changes only one aspect of the proposed new text for § 101: human genes that are merely “isolated,” but neither purified, enriched, altered by human activity, nor employed in a useful invention or discovery, will remain ineligible. That revision is essentially illusory, since vanishingly few useful claims will fail to meet the latter criteria.

The criticisms of our current patent eligibility regime are familiar. Jurisprudentially, the Mayo/Alice regime was founded on serious misunderstandings of both the historical record and of the intent behind the 1952 Patent Act. The Supreme Court’s reshaping of patent eligibility was based largely on its economic hunches, rather than the careful study such a foundational doctrine deserves. The Federal Circuit’s ‘abstract idea’ jurisprudence denies patentability to specific and inventive advances in data processing without ever justifying why it should do so, and often depends on distinctions so fine they are unintelligible to most observers. In biomedicine, between the decisions of the Supreme Court and the Federal Circuit, the United States has almost unintentionally backed into a regime where nearly all methods of diagnosis are ineligible, but nearly all methods of treatment are eligible — again with no economic justification for why that should be the case.

We agree with PERA’s ambition to write on a clean slate, and to separate patent eligibility under § 101 from questions such as claim scope and inventiveness that the drafters of the 1952 Act intended to be resolved under §§ 102, 103, and 112. But PERA’s approach to subject matter exclusions has serious flaws, as we and many others have pointed out. PERA excludes from patentability “[a] process that is substantially economic, financial, business, social, cultural, or artistic,” without suggesting how to determine whether a process is within those categories. More seriously, PERA then neuters that exclusion by exempting any process that “cannot practically be performed without the use of a machine or manufacture.” Under this language, any invention that requires the use of any human artifact — such as pencil or paper — is patent eligible. PERA would meaningfully exclude from the patent system only mental processes, and pure motions of the human body such as dance or sport moves. When it comes to the biomedical space, PERA’s exclusion of human genes and natural materials is redundant — but the real issue is that PERA makes no attempt to address concerns that patents on genes and other natural materials could encumber research.

In the hope of advancing the path to patent eligibility reform, we propose the following revision to PERA’s subject matter exclusions:

(a) Eligibility Exclusions.—

(1) In general.—Subject to paragraph (2), a person may not obtain a patent for any of the following:

(A) A mathematical formula that is not part of a claimed invention in subsection (a).

(B) Nontechnological Utility.—

(i) A process whose primary utility is economic, financial, business, social, cultural, entertainment, artistic, or otherwise nontechnological.

(ii) A computer, computer program, computer system, or computer-readable medium configured to carry out a process defined in clause (i), or any other computerized implementation of a process defined in clause (i).

(C) An unmodified natural material claimed as such, including any genetic material, as that material exists in nature.

(2) Conditions.—For the purposes of subparagraph (1)(C), a natural material shall not be considered to be unmodified if the material is—

(A) isolated, purified, enriched, or otherwise altered by human activity; or

(B) otherwise employed in a useful invention or discovery.

(b) Research Exemption for Natural Materials.—

(1) In general.— It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention, whose utility derives primarily from the structure or sequence of a natural material, for the purpose of scientific, medical, or industrial research.

(2) Applicability.—The exemption described in paragraph (1) may be claimed by any person or entity regardless of whether an alleged act of infringement is in furtherance of the business of that person or entity.

Our approach is to adopt PERA’s categorical exclusions, but to express them in terms of the utility of the process rather than the nature of the process itself. In our view, a test addressed to the utility of the process — an inquiry rooted in existing law — is a more specific and manageable test than one focused on the more metaphysical question of the essential nature of the claim. This focus on utility resembles the approach formerly taken by the courts of the United Kingdom, which prior to 2025 asked whether the claimed invention’s result or contribution lay in a technological field. It differs from the approach now taken by the UK and by the European Patent Office Boards of Appeal, in which any use of a machine or manufacture confers patent eligibility.

We also make clear that the unifying theme of the categorical exclusions is that they are non-technological. As compared to PERA, which ultimately conditions eligibility of a process on whether a machine or manufacture is required to carry out the process, our proposal more directly targets what we think is the proper role of § 101: to exclude patents from fields where the incentives of the patent system are unlikely to be important for innovation, and fields where intrusion of the patent system is undesirable, even if patents might provide some incentives for advances.

We also exclude any computer implementation of a non-technological process. Although we considered several variations excluding more generally machines or manufactures related to non-technological processes, we believe that a more conservative exclusion poses less risk of excluding meritorious inventions that we currently cannot foresee.

We retain PERA’s approach of including isolated, purified, or altered natural substances within the patent system, while symbolically excluding them in their natural state. Product claims will not always be necessary to protect inventions based on a discovery like a natural DNA sequence, and restoring patentability to isolated and purified human genes has been one of the most controversial aspects of PERA — notwithstanding that nearly all patents claiming human genes are expired or anticipated by now. But future advances in medicine, renewable energy, biosynthesis or bioremediation may depend on effective protection for newly isolated natural sequences. And we do not believe that Myriad‘s “markedly different” standard for derivatives of natural products provides a meaningful or intelligible standard for patent eligibility.

To address the concern that patents on natural sequences could impede research and further innovation, we include a broad research exemption for inventions based on natural materials. By permitting use of an invention “whose utility derives primarily from the structure or sequence of a natural material,” we intend to include within the exception not only product claims to natural genes and polypeptides, but also process claims that are based entirely on the discovery of a natural sequence. Thus our proposed research exemption would cover, for example, a claim to the COVID-19 spike protein gene or protein sequence, as well as a method of detecting the coronavirus by conventional DNA amplification techniques. It would not cover a spike protein that has been engineered to increase its immunogenicity. Even though that protein might be altered in only one or two amino acids, its utility would derive primarily from the human-engineered modifications and not the underlying natural sequence. The second clause of our proposed research exemption rejects, for purposes of this exemption, the Federal Circuit’s narrow interpretation of the common-law research exemption in Madey v. Duke University. This exemption would be available regardless of whether the research was in furtherance of an entity’s business.

Finally, we note two further points that are not featured in our proposed PERA revision, but that we think critical for the bills’ sponsors to add to the bill’s existing “Rules of Construction,” and discuss in their committee reports.

First, PERA should state its understanding that the enactment of a statutory research exemption for natural materials makes no statement about the common-law research exemption. Otherwise, the broad reach of the exemption for natural materials might be construed as approving the Federal Circuit’s overly narrow construction of the common-law research exemption.

Second, the language in PERA’s preamble that “all judicial exemptions to patent eligibility are eliminated” could unintentionally wipe out the printed matter exclusion. Prior to the Mayo/Alice regime, the courts generally explained the printed matter doctrine as the principle that printed matter lacking a functional relation to the structure of an invention could not distinguish a claim from the prior art. One could therefore not distinguish a book or other textual medium from the prior art under §§ 102 or 103 by arguing that the content of the text was novel or non-obvious.

Since Mayo and Alice, the Federal Circuit has re-framed the printed matter doctrine as an aspect of patent eligibility. We do not object to how the Federal Circuit has applied the doctrine in the aftermath of Mayo and Alice, but if the doctrine is now an aspect of § 101, then PERA’s statement that all judicial exceptions to patent eligibility are eliminated could be taken to eliminate the printed matter doctrine as well. Since we believe the printed matter doctrine is an important limitation on patentability, the bills’ drafters should state their understanding that the courts will continue to apply the printed matter doctrine as a matter of §§ 102 and 103, as they did prior to the Mayo/Alice regime.

The Nexus Trap: Why Component Patents Struggle with Objective Indicia

Dennis Crouch — Tue, 31 Mar 2026 14:27:30 +0000

by Dennis Crouch

Patent owners frequently turn to objective indicia of nonobviousness - but it has become a last line of defense because of the Federal Circuit's increasingly strict requirements that limit its use.

Evidence of commercial success, copying, industry praise, long-felt need, and licensing can, when properly connected to the claimed invention, overcome even a strong prima facie case of obviousness. In Manufacturing Resources International, Inc. v. Squires, No. 2024-2228 (Fed. Cir. Mar. 31, 2026), the court affirmed the PTAB's decision canceling claims of two MRI patents directed to cooling systems for outdoor electronic displays, finding that MRI failed to establish a nexus between its objective indicia evidence and the claimed invention under either of the two available doctrinal tracks. Samsung had petitioned for IPR of claims from U.S. Patent Nos. 8,854,595 and 9,173,322, both titled "Constricted Convection Cooling System for an Electronic Display." The Board found all challenged claims unpatentable as obvious. Samsung withdrew from the appeal, and Director Squires intervened to defend the Board's decisions.

The patents describe a method of cooling large electronic displays, particularly those exposed to sunlight, by inducing "constricted convection" immediately behind the display surface. Rather than cooling the entire interior of a display housing with fans (the prior-art approach), the patented system uses a "constricted convection plate" placed behind the display to create a narrow channel through which cool air flows directly across the hot posterior surface. MRI had marshaled extensive objective indicia evidence: long-felt need for effective outdoor display cooling, Samsung's own failed attempts to solve the problem, a Samsung employee's praise of MRI's technology as "impressive and unique," licensing activity, and what MRI characterized as Samsung's copying of its patented design through teardown and reverse engineering of MRI's products. The Board gave all of this evidence "little or no weight." The Federal Circuit affirmed.

MRI's failure illustrates the difficulties patent owners face on both tracks, particularly when the claimed invention is a subcomponent of a larger commercial product.

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GW Law Seeking IP Fellow for Frank H. Marks Visiting Position

Dennis Crouch — Tue, 31 Mar 2026 12:15:59 +0000

George Washington University Law School is accepting applications for its Frank H. Marks Intellectual Property Law Fellow position for the upcoming academic year. The fellowship, which carries the title of Visiting Associate Professor of Law, is one of the better-known entry points into IP legal academia.

I’ve known most of the Marks Fellows over the years, and the position offers a supportive IP faculty combined with excellent students who are genuinely interested in intellectual property and policy. GW Law’s location in Washington, D.C. puts you in close proximity to the USPTO, the Federal Circuit, and the broader IP policy community. If you’re thinking about a move into legal academia with an IP focus, this is one of the key launching pads available. The downside is the salary: $75k. But, that does help drive home a reality that most law professor salaries are less than the starting wage of their graduating students.

The position involves teaching one course per academic year, assisting with administration of GW Law’s IP Program, and pursuing scholarly research. Candidates need a J.D. (or equivalent international degree or U.S. LL.M.), a strong academic record, and a defined research project in intellectual property law.

Applications should be submitted by email to iplaw@law.gwu.edu and must include a resume, references, law school transcript, writing sample, and scholarly proposal. Review of applications begins April 24, 2026. Full details are available at the GW Law fellowship page and on the Patently-O Job Board.

— Dennis

Disclosed but Still Secret? The Federal Circuit Weighs Patent Publications Against Trade Secret Claims

Dennis Crouch — Mon, 30 Mar 2026 19:19:14 +0000

International Medical Devices, Inc. v. Cornell (Fed. Cir., argued Mar. 5, 2026, Nos. 25-1580, 25-1605)

I've been reading about trade secrets lately and came across this recent oral argument before the court - focused on the classic tradeoff between patents and trade secrets. A jury found a group of defendants misappropriated four trade secrets belonging to Dr. James Elist, a Beverly Hills urologist who developed the Penuma cosmetic penile implant. The defendants argue that the three design-concept secrets were all disclosed in prior patents and that the fourth, an instrument list, was never secret at all. The case was argued before Judges Dyk, Taranto, and Reyna, and questioning at oral argument focused primarily on whether the prior patent disclosures foreclosed trade secret protection as a matter of law under the California Uniform Trade Secrets Act (CUTSA).

The technology at issue is a subcutaneous cosmetic penile implant, a silicone sleeve placed between the skin and "Buck's fascia" to enhance girth and length. The Penuma is apparently the only FDA-cleared device of this kind. It differs from therapeutic penile implants (used to treat erectile dysfunction) in both location and function: therapeutic implants are placed inside the corpus cavernosum, the erectile tissue deep within the penis, and substitute for blood flow to produce rigidity. A cosmetic implant sits on top of those structures, closer to the skin, and must accommodate the penis's natural changes in size and shape during erection without migrating or eroding through the skin.

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Two Voices on § 101: Agency Guidance Meets Judicial Skepticism

Dennis Crouch — Sun, 29 Mar 2026 22:37:26 +0000

by Dennis Crouch

In Rideshare Displays, Inc. v. Lyft, Inc., No. 25-1132 (petition filed Mar. 23, 2026), the petitioner asks for clarification on when a court may disregard specific functional claim limitations in conducting the Alice patent eligibility analysis. The petition also raises a procedural question about the Federal Circuit's authority to raise and decide new factual arguments sua sponte on appeal. Something unusual about the case - USPTO Dir. Vidal intervened at the Federal Circuit to defend the PTAB's eligibility holding, and the court reversed anyway. I expect that Dir. Squires will be even more supportive. At the Supreme Court, the USPTO brief will be filed by the DOJ's SG, bringing a wider set of interests - and likely a less pro-patentee tone - than the USPTO’s Federal Circuit presentation.

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