Patently-O

The En Banc Queue for July-2026

Dennis Crouch — Thu, 02 Jul 2026 10:50:15 +0000

by Dennis Crouch

The Federal Circuit has twelve en banc petitions pending in patent cases right now, an unusually high number. The largest share comes from IPR proceedings; but we have a variety of issues, including Hatch-Waxman litigation, damages, design patent infringement, written description and enablement, the doctrine of equivalents, and the domestic industry requirement at the USITC. The petitions drawing the most outside attention are Range of Motion Products, LLC v. Armaid Co., No. 23-2427 (Fed. Cir. Feb. 2, 2026), and Exafer Ltd. v. Microsoft Corp., No. 24-2296 (Fed. Cir. Mar. 6, 2026).

En banc grants are rare, and most petitions are denied without any further remarks from a court. But even when denied, I see a petition as providing some value by showing doctrinal pressure points.

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Supreme Court Takes Up Whether Trademark Strength Belongs to Judge or Jury

Dennis Crouch — Wed, 01 Jul 2026 12:05:05 +0000

by Dennis Crouch

As the 2025-2026 term ends, the Supreme Court has agreed to decide whether the strength of a trademark is a question of fact or a question of law. The Court granted certiorari in RiseandShine Corp. v. PepsiCo, Inc., No. 24-1016, a Lanham Act trademark dispute between the maker of RISE canned cold brew coffee and the seller of MTN DEW RISE ENERGY.

The question presented is procedural: whether trademark strength is a question of fact in the likelihood-of-confusion analysis under 15 U.S.C. § 1114. Twelve circuits treat a mark's placement on the spectrum of distinctiveness as factual, typically decided by a jury and reviewed with substantial deference on appeal. The Second Circuit stands alone in calling inherent mark strength a legal question for the court, and in this case it held the RISE mark weak as a matter of law and cleared the way for summary judgment in PepsiCo's favor. See RiseandShine Corp. v. PepsiCo, Inc., 41 F.4th 112 (2d Cir. 2022).

The Solicitor General, responding to the Court's invitation, had agreed that the Second Circuit had mischaracterized the inquiry, but urged the Court to deny review on vehicle grounds. The Court took the case anyway.

Treating strength as factual sends it to the jury for trial, makes summary judgment harder to win, and secures deferential clear-error review on appeal. Treating it as legal hands the question to the judge, opens the door to summary judgment, and invites de novo review on appeal.

The case also fits into an internal conservative divide on the court: a devotion to historic constitutional protections (including the Seventh Amendment's civil jury guarantee) against a concern that civil juries need stronger judicial supervision and control.

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Locked In at the Lectern: How the Federal Circuit Uses Oral Argument

Dennis Crouch — Tue, 30 Jun 2026 17:08:59 +0000

by Dennis Crouch

In 2007, Federal Circuit judges almost never quoted oral argument in their precedential opinions. That has changed. Today, more than 40% of precedential opinions include a direct reference to oral argument. I expect that most attorneys would rather not be cited -- because that citation is most often a record of a concession made at the lectern that is then applied to their detriment in the opinion.

In the sample of precedential cases I examined, 48% of the oral argument citations could be classified as a "concession" -- counsel admitting against interest, narrowing scope, or agreeing with the court's adverse framing. Most of the remaining citations are what I classified as "neutral" -- referencing counsel's position for context without using that position against them. This insight is parallel to that of the late Justice Ruth Bader Ginsburg who talked about oral arguments as "a hold-the-line operation."

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Provisional Typo Spoils Priority Date

Dennis Crouch — Wed, 24 Jun 2026 06:23:07 +0000

by Dennis Crouch

A seeming typo in Enanta's provisional application left the resulting patent invalid. In Enanta Pharmaceuticals, Inc. v. Pfizer, Inc., No. 2025-1427 (Fed. Cir. June 23, 2026), the Federal Circuit affirmed summary judgment that the claims of its US11358953 are anticipated by intervening prior art because the priority filing did not sufficiently describe the claimed invention. Enanta's provisional application listed a substituent as NHC(O)-C2-C12-alkyl (showing a two to twelve carbon range). The issued patent listed that same substituent as NHC(O)-C1-C12-alkyl, adding the one-carbon member. That one-carbon version described nirmatrelvir, the protease inhibitor Pfizer disclosed first in April 2021 and later began selling as Paxlovid. Because the provisional never disclosed the one-carbon species, the patent could not claim the provisional's July 2020 priority date, and Pfizer's intervening disclosure anticipated the claims.

Enanta argued that the "C2" in its provisional was an obvious typographical error that should have read "C1," so correcting it added no new matter. The Federal Circuit focused on the question of written description and priority: did the provisional's two-to-twelve carbon range support, under 35 U.S.C. 112, the one-carbon species the patent later claimed? Does "2" describe "1"? The court answered no, and it applied the written description standard de novo even though the district court had treated the case as one about its power to correct an error.

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Three Is Company: New Data on § 103 Reference Counts

Dennis Crouch — Tue, 23 Jun 2026 21:19:18 +0000

by Dennis Crouch

How many prior art references does an examiner combine in a typical obviousness rejection? Many patent prosecutors have a feel for this -- perhaps colored by their memory of a six-way rejection. To get an actual measurement, I parsed a collection of final action rejections mailed by the USPTO from January 1 through June 5, 2026 that includes at least one obviousness rejection under 35 U.S.C. § 103. This is about 75k office actions containing 200k separate obviousness rejection statements.

The results: Two and three reference combinations together account for 65% of all rejection statements, the mean is 3.08 references, and single-reference § 103 rejections (one document modified by ordinary skill or general knowledge) make up 7%. See Dennis Crouch, Single-Reference Obviousness: Federal Circuit Says Don't Re-Do the Prior Art's Work, Patently-O (Jan. 26, 2026). Examiners usually do not need more than three documents to make their case. (Note, these numbers focus on the single largest combination in an office action).

31% of final office actions contain at least one rejection combining four or more references, and about one in twenty reaches six or more.

Some areas of technology use more references per rejection -- The art units examining artificial intelligence lead the agency at a 3.80 mean, with 11% of their final office actions including a stack of six or more references.

The Supreme Court's most recent pronouncement on obviousness came in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), but that case involved two key references. In my view, multi-reference rejections create a different doctrinal puzzle as office practice builds larger combinations by chaining pairwise steps, each link carrying its own one-sentence motivation. That sequential structure is defensible as far as it goes. But, even where every individual combination might be obvious, a long enough series of obvious steps, with enough alternative branching paths, eventually stops being obvious as a whole. Examination practice has no tool for locating that limit. See, Dennis Crouch, Mind the Gap: The Middle Layer of Obviousness Doctrine, Patently-O (Apr. 14, 2026).

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Found vs. Findable: Judge Stark Maps the Skilled-Searcher Test

Dennis Crouch — Tue, 23 Jun 2026 17:56:54 +0000

by Dennis Crouch

The Federal Circuit has reversed the IPR estoppel rulings in Ironburg Inventions Ltd. v. Valve Corp., No. 2024-2088 (Fed. Cir. June 18, 2026). This case is part of a long-running fight over Ironburg's rear-paddle game controller patent and the $4 million willful-infringement verdict Ironburg won against Valve's Steam Controller. The panel here held that Valve is not estopped from raising two invalidity grounds it left out of its 2016 IPR petition, and returned the case for further proceedings on invalidity. The disposition is a loss for the patentee, but what is most interesting for me is Judge Stark's concurrence, which provides more structure to the "skilled searcher conducting a diligent search" estoppel test.

Section 315(e)(2) creates estoppel prohibiting an IPR petitioner (or RPI) from later asserting in patent litigation "that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review."

This case focuses on the scope of this reasonableness estoppel in a situation where - at the time of the IPR - the patent challenger did not have the key prior art in hand or perhaps had not identified the particular ground for challenging the patent.

Here, the Judge Stark opinion breaks the reasonableness process into two steps:

Were the prior art references findable by a skilled searcher exercising reasonable diligence; and
Having found the references, would petitioner reasonably have been expected to discover the invalidity ground assembled from them?

The two steps here follow from Ingenico Inc. v. IOENGINE, LLC, 136 F.4th 1354 (Fed. Cir. 2025), which held that an estoppel "ground" is not the same thing as the references underlying it. See Dennis Crouch, Reference Recycling and the Case for Sua Sponte Rehearing in Ingenico, Patently-O (May 19, 2025). This result narrows the estoppel. A patentee showing that a reference could be located (or even was actually located) does not by itself prove that the obviousness theory (i.e., ground) built on it was discoverable.

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En Banc Ninth Circuit to Reconsider Copyright’s Total Concept and Feel Test

Dennis Crouch — Mon, 22 Jun 2026 20:41:27 +0000

by Dennis Crouch

The Ninth Circuit has granted rehearing en banc in Sedlik v. Von Drachenberg, No. 24-3367 (9th Cir. 2026), the copyright case pitting photographer Jeffrey Sedlik against celebrity tattoo artist Katherine Von Drachenberg (better known as Kat Von D) over a tattoo based on Sedlik’s 1989 portrait photograph of Miles Davis. Amicus briefs are due at the end of June 2026, and the case now stands as the most direct challenge in fifty years to the Ninth Circuit’s two-part “extrinsic/intrinsic” framework for copyright’s substantial similarity requirement.

Extrinsic vs. Intrinsic: In Ninth Circuit copyright cases, "substantial similarity" requires passing two separate tests. The extrinsic test is objective: a court lists the works' concrete elements, filters out unprotectable material (ideas, facts, stock devices), and compares what remains. Judges can resolve it on summary judgment, and experts may testify. The intrinsic test is subjective: it asks whether an ordinary observer would find the works similar in overall "total concept and feel." No expert testimony is allowed, and the question is reserved for the jury. A plaintiff must win both tests to prove infringement; a defendant needs to win only one.

In some ways the case is about procedure – asking who decides, and by what standard? The panel decision found that a jury’s subjective finding of no “substantial similarity” under the circuit’s intrinsic test was essentially unreviewable, even where the defendant had traced the plaintiff’s photograph to create a stencil and her shop had advertised the result as “100% exactly the same as the reference.” Two members of the three-judge panel, Judges Wardlaw and Johnstone, concurred separately to argue that the intrinsic test and its “total concept and feel” standard should be discarded entirely as inconsistent with the Copyright Act and Supreme Court precedent. Those concurrences supplied the roadmap for the en banc petition, and the full court has now taken the invitation.

The Infringement Framework. Start with the basics. A copyright infringement plaintiff must prove two elements: ownership of a valid copyright and copying of protected expression by the defendant. The second element itself divides into two distinct inquiries that courts often confusingly label with the same “substantial similarity” terminology. The first is factual copying: did the defendant actually copy from the plaintiff’s work rather than create independently? Copying can be proven directly (as here, where Von Drachenberg admitted using the photograph as her reference) or circumstantially through access plus similarity. The second inquiry is unlawful appropriation: did the defendant take enough protected expression to make the copying actionable? Not all copying infringes. Copyright protects only original expression, not ideas, concepts, facts, or stock elements. The unlawful appropriation question is the focus of Sedlik.

Photographs make the protected/unprotected line especially slippery. The photographer does not own Miles Davis’s face. What copyright protects is the photographer’s selection and arrangement of otherwise unprotected elements: the subject’s positioning, the lighting, the camera angle, the timing, all of which result in the composition as a whole. Sedlik’s photograph is a textbook example of authorial control. He arranged Davis’s fingers into the “Shh!” gesture so they would evoke musical notes, styled the hair, selected the wardrobe, directed the facial expression, and made deliberate lighting and lens choices to produce the dimly lit, high-contrast final image.

What Happened at Trial. Sedlik sued Von Drachenberg back in 2021, with claims directed against the tattoo itself, Von Drachenberg’s preparatory sketch, and a series of social media posts documenting the process. Judge Dale Fischer denied Sedlik’s summary judgment motion, finding triable issues under both the extrinsic and intrinsic tests. At the trial, the jury examined the tattoo in person as well as the sketch and ultimately found no substantial similarity.

On appeal, the Ninth Circuit panel refused to review the denial of Sedlik’s summary judgment motion – based upon the general rule that a party cannot appeal a summary judgment denial after a full trial on the merits because the trial record supersedes the summary judgment record. A narrow exception exists for purely legal questions independent of disputed facts, but the panel held the exception inapplicable because the district court’s denial rested on factual disputes about similarity that was then decided at trial.

Second, the panel affirmed the denial of Sedlik’s Rule 50(b) motion for judgment as a matter of law (JMOL). Here the intrinsic test did all the work. Because the jury’s verdict could rest on its subjective finding that the works lacked a similar total concept and feel, and because that subjective determination is “uniquely suited” to the factfinder, the panel declined to disturb it. Sedlik argued that the court should intervene in a case like this where extrinsic similarity is overwhelming. But the panel responded that the procedural posture made all the difference: after a jury verdict, overriding the jury’s subjective comparison would amount to supplanting the jury’s interpretation with the court’s own.

The panel’s procedural-posture reasoning sits uneasily with ordinary civil procedure. The Rule 50(b) standard is supposed to be identical to the Rule 50(a) standard, and both mirror the summary judgment standard of Rule 56, asking whether the evidence permits only one reasonable conclusion. Under that orthodoxy, a verdict does not normally acquire extra insulation simply by having been rendered. Yet the panel treated the verdict itself as changing the question, reasoning that post-trial relief would supplant the jury’s subjective interpretation with the court’s own.

The Concurrences. The lasting importance of the panel decision lies in the two concurrences, which together read as a petition for rehearing drafted from the bench. Judge Johnstone, joined by Judge Wardlaw, traced the doctrinal history. That history, according to his explanation, began with a pro-plaintiff function but ultimately inverted into a standardless veto that operates against copyright holders.

Judge Wardlaw, joined by Judge Johnstone, went further and argued that the intrinsic test conflicts with both the copyright statute and with Supreme Court precedent. Section 102(b) states that copyright protection does not extend to any idea or concept, yet the intrinsic test instructs juries to compare the works’ total “concept” and feel. Both concurring judges stated plainly that, freed from circuit precedent, they would have held that the tattoo infringed.

The Differential Impact. The most analytically interesting portion of Johnstone’s concurrence describes how the intrinsic test distributes procedural advantages, and the asymmetry runs in one direction. Consider the doctrine’s operation at each stage of litigation. At summary judgment, defendants can win by defeating the extrinsic test, which courts may decide as a matter of law, and the Ninth Circuit regularly affirms such rulings.

At trial, the intrinsic test bars expert testimony, so a plaintiff cannot use an expert to help the jury distinguish protected from unprotected material or to explain how one medium translates into another. That limitation could matter most in cross-media cases like this one. An ordinary observer comparing a photograph to a tattoo may register the differences inherent in skin as a canvas as differences in total concept and feel, even where every protected compositional choice has been carried over. And the differential impact continues on appeal, where the subjective intrinsic verdict shields defense wins from meaningful review while leaving infringement verdicts fully exposed.

Same Direction, Different Engines: FY2026 Utility and Design Grant Projections

Dennis Crouch — Fri, 19 Jun 2026 20:17:35 +0000

by Dennis Crouch

Although patents issue every Tuesday morning, the agency keeps its books on a fiscal year that closes September 30. Measured that way, FY2026 is the first full fiscal year under Director John Squires, who joined the Office just days before FY2025 closed. My projections suggest that the final numbers for the year will be modestly downward both for utility and design patent grants.

Through roughly two-thirds of the year, the USPTO has issued about 218,000 utility patents and 34,000 design patents. Scaling those figures forward, FY2026 is on track for roughly 314,000 utility grants (down from 328,000 in each of FY2024 and FY2025) and roughly 49,000 design grants (down from a record 52,000 in FY2025). A slight drop on each front.

Utility output has flattened over the past decade - with the projected total within the band the Office has occupied for most of the decade. Design grants are a different story, we've seen a steady climb for the past 2o years, with major jumps in FY24 and FY25. A projected 49,000 steps back from the record but still roughly doubles the FY2014 figure. I made the calendar-year version of this point in Dennis Crouch, The Surprising Headline of 2025: USPTO Stability?, Patently-O (Dec. 30, 2025), and the fiscal-year data tells a compatible story.

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Pre-Negotiated: How Continuations and Art Units Shape the First-Action Allowance

Dennis Crouch — Fri, 19 Jun 2026 08:24:21 +0000

by Dennis Crouch

I recently wrote about first actions on the merits, the share that arrive as allowances rather than rejections, and the premium that prioritized-examination (Track 1) cases enjoy. See Dennis Crouch, The First Offer Accepted: First-Action Allowances and the Track 1 Premium, Patently-O (June 17, 2026). This follow-on looks at two confounding factors, both mundane rather than mysterious: (1) whether the filing is a continuation filed where the parent app has issued; and (2) the tech-center and art unit handling the case.

Continuations come pre-negotiated. A continuation claims the benefit of an earlier application's filing date under 35 U.S.C. 120, and it is often filed after the parent application has already received a notice of allowance. The applicant knows what the examiner found allowable and can draft the continuation's claims that include the key limitations that were already allowable. The data bear this out to some extent. Continuations of applications that issue as U.S. patents are more likely to receive a first-action allowance. But, that gap has narrowed in recent years (and I don't really know why).

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The First Offer Accepted: First-Action Allowances and the Track 1 Premium

Dennis Crouch — Wed, 17 Jun 2026 18:49:57 +0000

by Dennis Crouch

A first action allowance comes with both excitement and some fear. For the client it means a faster patent at lower cost, and for the attorney it looks like a clean win. And yet, in my own years of practice, a first action allowance always left me with a feeling that I had somehow underbid. It is that same sensation having your opening bid in a immediately accepted by the other side, before any negotiation has begun. You get the deal, but you also walk away wondering how much more you might have asked for. In that spot I believe I always counseled the client to file a continuation and find out whether the examiner had left something on the table.

For this post I look at first actions over the past couple of decades -- measuring two things: how long applicants waited for the first action, and how often the first action was a Notice of Allowance rather than a rejection. The share of first action allowances fell from about 17% in early 2004 to roughly 7% during 2008 and 2009, then recovered slowly to 15% range by the late 2010s, where it sits today. The pattern I find more interesting involves prioritized examination. Track 1 applications, which pay an extra fee for expedited treatment, draw a first-action allowance 17% to 20% of the time, several points above the ordinary-track rate. The two lines crossed for good around 2014, and Track 1 has stayed higher ever since.

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