Dennis Crouch - Patently-O

While the arguments made by the PTAB Bar Association make logical sense, they are largely NIMBY arguments along the lines of "When you said drain the swamp, I thought you meant those other people, not us."

OpenEvidence Inc. v. Pathway Medical, Inc. et al (1:25-cv-10471), Massachusetts District Court OpenEvidence Inc. v. Pathway Medical, Inc. et al (1:25-cv-10471), Massachusetts District Court, Filed: 02/26/2025

OpenEvidence alleges Pathway Medical used a prompt injection attack to extract AI system prompt code, violating the Defend Trade Secrets Act & other laws.

Key Qs: Are AI models’ internal mechanics protectable secrets? Is strategic querying improper?

www.pacermonitor.com/public/case/...

New on Patently-O: Prof. Camilla Hrdy @law.rutgers.edu explores the legal battle over AI reverse engineering in OpenEvidence v. Pathway. Can extracting data from a generative AI be legal reverse engineering, or is it trade secret misappropriation?

patentlyo.com/patent/2025/...

Lots of folks have written about Halo and Willfulness; including @tnarecha.bsky.social & @marklemley.bsky.social here on BSKY.

Most concerning: In Affirming, the Federal Circuit speculates that the district court viewed the adjudged reckless disregard as a "close question"—something nowhere in the court's actual opinion. This judicial mind-reading violates FRCP 52 and 7th Amend, IMO.

The jury found willfulness under a "clear & convincing" standard after considering Pulse's invalidity defense. Yet the district court refused enhanced damages based on...the same evidence.

Second-Guessing the Jury: The Federal Circuit’s Flawed Take on Enhanced Damages in Halo v. Pulse by Dennis Crouch After 18 years of litigation, the Federal Circuit has once again ruled in the patent infringement case …

After 18 years & 5 trips to the Federal Circuit (plus 1 SCOTUS detour), Halo v. Pulse continues its saga.

The latest Feb 2025 decision effectively nullifies a jury's willful infringement finding by allowing judges to second-guess without clear standards. #PatentLaw
patentlyo.com/patent/2025/...

Thank you to @meeradeo.bsky.social for joining us in Columbia Mo (Mizzou Law) to talk about law school and belonging: Looking to nurture and support a sense of community in the law school through mentorship, open dialogue, and spaces where everyone feels valued. Grateful for the insights!

When Shakespeare's villain says "First, let's kill all the lawyers," it's not a joke - it's because lawyers are society's key defense against tyranny. (Henry VI, Part 2).

@zvirosen.bsky.social has a great new article looking at AI copyright from a historical perspective - including a list of "six lessons we can take from this history and apply to copyright law today."

papers.ssrn.com/sol3/papers....

For this chart I looked at US patent applications that received a "final rejection" in January 2024 and there status 1-year later in January 2025. About half have issued as patents.

In negotiation frame: There is usually another offer after the final offer.

patentlyo.com/patent/2025/...

Takeaway for practitioners: When claiming compositions by properties, specification should explain property-structure relationships. USS's detailed correlation between magnetic properties and diamond structure proved important for the case.

Burden of proof clarity: Fed Cir explicitly rejects ITC's attempt to separate presumption of validity from presumption of eligibility. Patent challenger must overcome both. Big procedural win for patentees that should apply to courts and USPTO as well

Hidden gem in footnote 7: Court hints that Alice Step 1 might sometimes allow for expert testimony on property-structure relationships. Could transform what's traditionally been pure legal analysis into factual inquiry.

Court creates pragmatic divide in 101 jurisprudence: Software/methods face continued eligibility scrutiny, while composition claims get clearer path. Practical but risks theoretical incoherence in patent doctrine.

Reminds me of C.G.Jung's inviduation: important but can also risk wholeness.

Key insight from the Decision: Material properties (such as conductivity) are "integrally intertwined" with physical structure; but no perfect correlation is needed from functional claims to structure - just enough to "inform skilled artisan what the PDC is."

Prof Lefstin had argued the ITC's abstract idea rejection of PDC claims echoed the CCPA's long-abandoned "functional claiming" doctrine. His warning: American Axle risks unraveling decades of settled law allowing properties to define compositions. @uclawsf.bsky.social

patentlyo.com/patent/2023/...

When Properties Define Structure: Eligibility of Composition Claims by Dennis Crouch The Federal Circuit has reversed a controversial ITC decision that had invalidated composition of matter claims as …

Fed Cir reverses ITC in US Synthetic, holding composition claims can't be "abstract ideas" merely because they're defined by properties. Major win for chemical/pharma patents, creating clear pathway for claiming compositions of matter.

patentlyo.com/patent/2025/...

MacDonald v. Minnesota, 24-862

Is an election law requiring proof that judicial candidates have state law licenses in order to qualify as 'learned in the law' unconstitutional under Marbury v. Madison?

The 9th Cir already petitioner's arguments: concluding that express quid pro quo agreement is not required for bribery convictions, particularly when prosecuting the bribe-giver. Requiring express agreement would make it too easy for corrupt actors to evade prosecution.

We recently saw a number of contributions to President Trump's inauguration event in what appeared to be a pay-to-play scenario. The courts have largely treated this sort of money as similar to campaign contribution that receive broader first amendment protections as a form of political speech.

The timing is particularly striking given President Trump's recent executive order pausing enforcement of the Foreign Corrupt Practices Act - suggesting a broader moment of flux in anti-corruption enforcement as a way to level an "uneven playing field for American firms."

Petitioner was convicted under several federal laws. Now argues that lavish gifts to officials as a way of currying favor should not be considered bribery. The contention is that bribery requires proof of an explicit quid pro quo exchange - a specific agreement to trade gifts for official acts.

The case involved lavish gifts totaling more than $1 million - including gambling chips, private jets, and prostitutes - provided to then-Los Angeles City Councilman Jose Huizar while Billionaire Huang sought approval to build what would have been the tallest skyscraper west of the Mississippi.

Dennis Crouch on LinkedIn: 20250207123511807_SZNW Cert Petition.pdf I read a remarkably bold petition for certiorari filed this month in Shen Zhen v. US, 24-855. A Chinese real estate developer (Huang Wei) is asking the US…

I read a remarkably bold petition for certiorari filed this month in Shen Zhen v. US, 24-855. A Chinese real estate developer (Huang Wei) is asking the US Supreme Court to effectively rewrite decades of federal bribery law -- in favor of allowing more bribery.

www.linkedin.com/feed/update/...

Thompson Reuters v. ROSS

Copying of headnotes for training data was not fair use:

*Westlaw's headnotes aren't code and so disregarded Oracle v. Google
*Copying not necessary (ROSS could have done the work itself);
*Same ultimate purpose (legal research);
&Undermines Westlaw market.

The Key Analogy: Just as a sculptor creates art by choosing what to remove from a block of marble, Westlaw's editors create original work by selecting which parts of court opinions to highlight.

OMG.

I'm surprised by the district court's rejection of fair use defense in Thompson Reuters v. Westlaw - focusing on Ross's use of Westlaw headnotes as inputs into its AI system. patentlyo.com/media/2025/0...

OK - And I also agree that these are poorly done design patents because they are requiring too many design features.