Bonum Certa Men Certa

The Federal Circuit Has Become the Go-To Place For Patent Appeals Arising From USPTO Errors

Knit US flagSummary: Patent appeals that come to CAFC as a result of bad Patent Office decisions now outnumber the appeals coming from district courts (an extraordinary situation)

THE Court of Appeals for the Federal Circuit (CAFC) is the court which deals with many patent lawsuits and is one level below the Supreme Court. It's the court which brought software patents to the US, but it's also the court which now (after Alice at Supreme Court level) invalidates many of these, more so than district (lower) courts do, pro rata.



CAFC is essential to our understanding of US patent law. Litigation is down sharply in the US, at least when it comes to patent litigation, and trolls too are a dying (albeit not dead) breed.

In our efforts to keep abreast of CAFC, this past week we learned about its decision on patents pertaining to chemicals [1, 2] and found this article from James P. Cleary and Paul Brockland of Mintz Levin Cohn Ferris Glovsky and Popeo PC. This new reports confirms to us that the USPTO process is being further restricted/limited by courts:

Though the Federal Circuit’s decision extended waiver to post-merger communications in this case, waiver may not apply in many post-merger discussions. For instance, the Federal Circuit emphasized limiting the scope of waiver based on subject matter and fairness. Accordingly, although attorney submissions during patent prosecution may result in waiver, such waiver is less likely to extend to subsequent patent owners or later discussions with trial counsel. However, waiver may extend if a court finds the application and patent prosecution disclosures were made with an eye toward litigation.


Put in simple terms, submissions to the US patent office regarding legal waivers would be fewer. This might be applicable if, for example, a company like Red Hat gets sold with its patents.

In another new post, this one about Prism (mentioned here a few days ago), it says that the "Federal Circuit has denied Prism Tech‘s petition for en banc rehearing on the question of deference to district court factual-findings that underlay a decision on patent eligibility."

Jason Rantanen, a Professor at the University of Iowa College of Law, took stock of CAFC decisions and said: "Given the increase in appeals from the PTO over the past few years, this graph is not all that surprising–but it’s still quite dramatic. As of mid-2017, the number of decisions in appeals arising from the PTO has exceeded the number of decisions from the district courts for the first time in the history of the Federal Circuit to my knowledge."

Yes, and hence the importance of the CAFC's pattern of decisions. As CAFC is a lot more likely to invalidate software patents (than district courts), this is good news too.

As patents and misconduct go hand in hand sometimes (we covered some examples of that), worth noting is the following report also:

Inequitable conduct in failing to disclose a reference is a defence to patent infringement that requires a showing of the materiality of a withheld reference and specific intent to deceive the US Patent and Trademark Office (USPTO) by withholding the reference during prosecution of the patent application. If proven, inequitable conduct renders the entire patent unenforceable.

In Regeneron Pharmaceuticals, Inc v Merus NV the Federal Circuit surprisingly affirmed that specific intent to deceive the USPTO can be inferred as a result of misconduct during a patent infringement lawsuit, even if such misconduct occurs several years after prosecution of the patent.


The basis for dismissing patent lawsuits seems to have become broader. CAFC in particular seems intolerant of anything that deems patents questionable.

There are exceptions, however, and one of these was covered a few days ago in relation to “programmable operational characteristic” in hardware. In this case, CAFC actually overturned a district court's judgment in favour of patents, so Patently-O was quick to (cherry-) pick it:

In a split opinion, the Federal Circuit has sided with the patentee and reversed a the [sic] district court judgment that Visual Memory’s patent claims improperly encompass an abstract idea. The opinion filed by Judge Stoll was joined by Judge O’Malley. Judge Hughes wrote in dissent.

Claim 1 of asserted U.S. Patent No. 5,953,740 is directed to a “computer memory system” that includes a “main memory” and also a “cache” both connected to a bus that can then be connected to a processor. The inventive element, is that the cache’s operation is programmable – allowing it to work efficiently with different processors. The claim particularly requires “a programmable operational characteristic of said system determines a type of data stored by said cache.” In the words of the court, “the memory system is configured by a computer to store a type of data in the cache memory based on the type of processor connected to the memory system.”


We remind readers that CAFC was historically very problematic when it comes to patent because it facilitated an explosion in the number of patents. However, the Supreme Court overturned CAFC almost every time in recent years. We hope that CAFC is learning its lessons and correcting its ways to avoid any further embarrassments, namely the Justices calling CAFC out.

It's time to help the patent bubble implode. It does nobody (except the patent 'industry') any favours.

Recent Techrights' Posts

Microsoft's Attack Dogs Have Failed. Now What?
It would be utterly foolish to assume that Microsoft has any intention of changing
All Your "Github Projects" Will be Gone One Day (Just Like Skype)
If you have code you wish to share and keep, then start learning how to do so on your own
Fedora Already Lost Its Soul Under IBM
Fedora used to be very strict compared to many other distros and it had attracted very bright volunteers
Links 17/04/2025: Calling Whistleblowers at Microsoft, Slop Doing More Harm Everywhere
Links for the day
 
"Sayonara" (さよなら), Microsoft
Windows had fallen below iOS in some countries
Links 18/04/2025: Layoffs at Microsoft Infosys and Qt Becoming Increasingly Proprietary (Plus Slop)
Links for the day
Google News is Dying
treating MElon's algorithmic/biased site as a source of verified news
To Understand Who's Truly Controlling You Follow the Trail of Censorship (or Self-Censorship)
Do not let media steal and steer the narrative; CoCs are not about "social justice", they're about corporate domination
Microsoft is Still Attacking GNU/Linux and the Net
Microsoft bribed the government using money that did not even exist
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Thursday, April 17, 2025
IRC logs for Thursday, April 17, 2025
Gemini Links 18/04/2025: Pinephone Pro and Linux is too Easy
Links for the day
Links 17/04/2025: Russian Bot Farms Infect TikTok (Which US Government and SCOTUS Decided to Block January 19), US Hardware Stocks Crash Due to Tariffs
Links for the day
Gemini Links 17/04/2025: Sticking to Free Software, Smolnet, and Counting the Reals
Links for the day
Open Source Initiative (OSI) Privacy Fiasco in Detail: In Conclusion and Enforcement Action Proceeds Against OSI at the California Privacy Protection Agency (CPPA)
There's too much to cover in one single part
When You Fail to Filter Your Clients You End Up SLAPPing Reporters on Behalf of Bad People From Microsoft in Another Continent
“American Psycho”
Links 17/04/2025: LayoffBot and Tesla Cheats Buyers
Links for the day
Gemnini Links 17/04/2025: Role of Language and Back to Mutt for E-mail
Links for the day
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Wednesday, April 16, 2025
IRC logs for Wednesday, April 16, 2025
Trump Authority (CA) With a Trump NSA is All About Security, But Whose?
A "turnkey tyranny", as the NSA whistleblower Thomas Drake loved to call it
Confirming IBM Shutdowns and Layoffs Today
It's not over yet
Gemini Links 16/04/2025: The 2010s Are Calling and Why "Tools Will Not Liberate Us"
Links for the day
You Should Probably Self-Host Your E-mail and Never Use a Web Browser for Mail
Does anyone still believe Gmail is "free"?
Links 16/04/2025: Cliff Lynch RIP, More Attacks on Science (NASA)
Links for the day
StatCounter Shows the Market Share of Vista 11 is Decreasing in Ukraine This Year
Microsoft abandoning Vista 10 users would be a victory for Vladimir Putin
Google Promotes Fake Articles (LLM Slop) Instead of Originals, Relaying Microsoft's Linux FUD Emanating From Microsoft LLMs
Shame on Google for participating in the slopfest
In Some Countries the Largest OEMs Already Dump Microsoft Windows
Windows at 18.9%, Android 60.2%
The "Gold" Rule: Taking Money for Reputation Laundering and Openwashing Under the "Linux" Banner
Seller of expensive toilet paper, Jim Zemlin
LLM Slop Says Slop is "coming for white-collar jobs. Microsoft’s layoffs are just the start"
Look what the Web has become
Microsoft Down From 100% to 10% in Myanmar/Burma
only about 4% of Web requests in Myanmar/Burma come from Vista 11, soon to be the only "supported" version of Windows
Reporting Facts About Violence Against Women Deserves Awards, Not Frivolous Lawsuits and Threats
What is Microsoft's stance on women's safety?
Linux.com as Spamfarm of the Linux Foundation, Partner of the Gates Foundation
They no longer publish articles
When Fedora Said It Was Looking to Integrate "AI" It Meant Promoting Microsoft's Proprietary Spyware and GPL-Violating Slop
When they say "AI" they mean Microsoft
Slopwatch: The Typical Slopfarms and the 'Brian Fagioli Dilemma'
To the Web and to society (exposed to the Web) LLMs are a net negative
It Used to be IBM, Now It's Microsoft (Why You Need to Fire Microsofters or CIOs Working for Microsoft)
Typically the only effective solution is to identity and remove Microsofters from one's project/organisation (before they can bring more Microsofters in)
IBM Closes Offices and Labs in the United States to Open New Ones in India
It's not layoffs per se; they're substituting/swapping veteran employees for lesser-paid ones
Over at Tux Machines...
GNU/Linux news for the past day
IRC Proceedings: Tuesday, April 15, 2025
IRC logs for Tuesday, April 15, 2025
Gemini Links 16/04/2025: IndieWeb Carnival, Tinylog RFC, "Focus, the Web and Gemini"
Links for the day