Requests for continued examination are climbing again. Applicants filed nearly 150k RCEs in published utility applications over the 12 months ending August 2026, up 13% from the prior 12 months. That reverses a five-year slide as seen in the chart below.
But, as I explain below, most of the increase is not a change in after-final applicant behavior. The choice to file an RCE arises at a final rejection, and the key change is that the USPTO has been mailing more final rejections – that accounts for most of the increase. But, we also have the end of the free After Final Consideration Pilot (AFCP 2.0) in December 2024. At least some of the Applicants who once tried an AFCP amendment now go straight to an RCE.
Professor Paul Gugliuzza (UTexas) argues in this guest post that the Federal Circuit got the jurisdictional question in Insulet v. EOFlow wrong. He has filed an amicus brief supporting Insulet’s pending petition for rehearing en banc, and makes his case below. — Dennis
Since Congress created the Federal Circuit in 1982, the court has repeatedly expanded the class of cases that, in its view, “arise under” patent law and so fall within its exclusive jurisdiction. The court’s recent decision in Insulet Corp. v. EOFlow Co. is another example. Insulet is a trade secret case. Yet the Federal Circuit held that the case arose under patent law based on its prediction about the outcome of a hypothetical future patent infringement dispute.
The court’s decision overlooks a fundamental principle of the law of federal jurisdiction: namely, that the “arising under” analysis looks solely at the plaintiff’s well-pleaded complaint, not to issues that may (or may not) arise in future litigation.
The Federal Circuit recently dismissed the pro se appeal in Heidary v. Amazon.com Inc., No. 2026-2128 (Fed. Cir. Sept. 21, 2026) (nonprecedential, per curiam).
Judge Hurson (D. Md.) dismissed Massoud Heidary's patent infringement complaint on January 8, 2026, and Heidary's notice of appeal did not arrive until July 31. The Federal Circuit's dismissal order was simple: the 30-day deadline of 28 U.S.C. § 2107(a) for filing a notice of appeal is "mandatory and jurisdictional" with no equitable exceptions. Bowles v. Russell, 551 U.S. 205 (2007). The order follows the same pattern as Brown v. United States from earlier this year. Dennis Crouch, Day 61, Patently-O (March 23, 2026).
Notice of appeal timing is a trap for the unwary, and here a pro se plaintiff was caught. But, I think the court skipped a step in its analysis, even though the result is probably right. The appellate order never says when the judgment was entered or when the 30 days ran out, only that the notice "was received outside the deadline."
The trap is set by confusion over calculating a hard deadline. In particular, sometimes the deadline is 30 days from the dismissal, and other times it is 180 days, and some relief can be granted for delay, but that deadline is very tight and can only be offered by the district court, not the appellate court.
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 (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."
The USPTO will close out FY2026 (which ends September 30) with about 320k utility patent grants, down about 3% from FY2025. Although the total is a bit down this year, an interesting shift here is also in the mix of what is being issued. Continuing applications (continuations, divisionals, and CIPs) accounted for about 38% of utility grants in FY2024. In FY2026 the figure is about 26%. Meanwhile, patents whose first-named inventor claims US residence fell to about 39% of grants, the lowest share in history. (With two September issue dates still to come, the FY2026 figures include a small projection.)
The continuation drop is the same shift I discussed in my September 7, 2026 post on terminal disclaimers. Between FY2024 and FY2026, continuing grants fell by about 40k while grants on original applications rose by about 30k. The swing traces to USPTO docket management rather than to applicant behavior. Beginning in 2022, the Office pulled continuations forward in the examination queue, and they accounted for 43% of first actions by late 2022. In 2025 the Office shifted first actions back toward original applications, and the continuation share of first actions fell to 20% by July 2025. Grants follow first actions with a lag, so FY2026 is the year the 2025 shift reached the issued-patent counts.
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).
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.
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.
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.
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."
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:
An APJ who advises on an application will not sit on the Board panel that later decides its appeal.
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.
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).
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.
This is the second post on Versata Software, LLC v. Ford Motor Co. On September 10, 2026, the Federal Circuit issued a modified version of its May 22 opinion, changing a single substantive sentence. The holdings of the panel (Judge Hughes, joined by Chief Judge Moore and Judge Taranto) are unchanged: Versata may pursue unjust enrichment damages under the Defend Trade Secrets Act and the Michigan Uniform Trade Secrets Act despite a decade of licensing its software to Ford; the jury's $82 million breach-of-contract award is reinstated; and Ford's challenge to trade secret liability fails. My first post covered the unjust enrichment holding.
The changed sentence concerns the costs of performance built into the $10.95 million base-license figure. The May opinion said that Ford never "claim[ed]" such costs, which was (apparently) an overstatement, since the district court had rejected the figure on exactly that ground. The new version says Ford never "demonstrate[d] that it was beyond dispute" that the costs existed, a Rule 50 framing.
This post takes up two follow-on questions: (1) how much broader trade secret damages are than patent damages, and (2) whether a licensee like Ford could have capped its exposure at a royalty in the original contract (contractually excluding unjust enrichment damages).
A new NBER working paper reports results of a controlled trial of AI assistance among practicing patent attorneys. Findings:
Lawyers using the AI tool (Google's internal InFlow tool) drafted better applications; and the applications improved over time (10 days vs 90 days of use). (Blinded patent attorneys at an outside firm scored submissions on enforceability, technical accuracy, strategic ambiguity, completeness, and clarity).
Most of the improvement was in avoiding awful work, rather than achieving the highest quality. Along with this, the work of junior attorneys saw more improvement with AI than did experienced attorneys (who were already operating at a higher level).
After using AI, experienced attorneys were also better at certain tasks (editing a draft) without AI.
After using AI, junior attorneys (on average) saw no improvement in their skills without AI. But some saw significant skill gain and others saw significant skill reduction.
The outcome here is clear that AI has an important role in the patent business and the question I keep thinking about is how to use AI while still building skill as an attorney (and human).
Time to make January plans. The IP CLE Conference returns to the Grand Hyatt Vail on January 6-9, 2027, and I will again be handling the patent case law review on Saturday morning. David Bernstein (Debevoise & Plimpton) and Scott Alter (Michael Best) co-chair the program, which is co-sponsored by the ABA Section of Intellectual Property Law. This is the ski CLE, so the schedule is built around the mountain: morning sessions run 7:00 to 9:15, the middle of the day is a “Ski Break,” and the program picks back up from 4:00 to 7:00 in the late afternoon.
I have been coming to this one for years, and what keeps me returning is the mix of people in the room and wintery mix on the mountain. Federal Circuit Judge Kara Stoll and Judge J. Campbell Barker (E.D. Tex., Tyler) close the conference Saturday afternoon in a bench-and-bar dialogue with Willy Jay, who moved his Supreme Court and appellate practice to Paul Weiss last month. Two in-house panels bookend the final days: CoorsTek, Sandisk, and Medtronic on Friday, then Dolby, Samsung, Microsoft, Pure Storage, and Intel on Saturday.
Analogy is a key feature of judicial reasoning. Today’s decision uses The Big Lebowski to make the point that discovery cannot be used as an open-ended search for a claim that a plaintiff does not yet have. Affirming an exceptional-case finding under § 285, the Federal Circuit compared Viavi’s proposed search through PTOT’s business records to the film’s hapless intruders repeatedly dunking the Dude in a toilet while looking for money that was not there, prompting the Dude’s sarcastic response: “It’s down there somewhere, let me take another look.”
Viavi sued PTOT in the N.D. Cal. over optical filters used for 3D sensing in mobile phones, accusing a single sample filter in its possession, the "11246 Filter," "or a filter that is not materially different than that." Five months in, PTOT moved for summary judgment with a declaration stating that the 11246 Filter had not been designed for the accused devices and had not been manufactured or sold since May 2020. Viavi never contested that declaration, never deposed the declarant, and never sought discovery aimed at testing it. It also never dropped the filter from its infringement contentions, keeping it in place, as its counsel put it, as "belt and suspenders" while pursuing discovery aimed at finding some other PTOT filter to accuse instead. Viavi ultimately dismissed its case with prejudice, which mooted the summary judgment motion before it was ever decided. Judge Davila then found the case exceptional and started the fee clock on the day that declaration was filed. The Federal Circuit has now affirmed.
The Federal Circuit will hear oral arguments in four patent appeals on Tuesday morning (Sept 8).
McGinley v. Luv n' care (Nos. 24-2244, 25-1087, 25-1109) (a jury verdict on "generally flat," plus whether a technical advisor's fees are taxable as costs);
Traxcell Technologies v. Cellco Partnership (Nos. 25-1496, 25-1683) (whether a Section 285 fee award entered after the merits mandate issued is void);
Edge Systems v. Cartessa Aesthetics (Nos. 25-1119, 25-1190) (whether the district court could grant summary judgment of noninfringement without construing "manifold"); and
University of Massachusetts v. Forte Biosciences (No. 25-1342) (whether the Board could credit declarants who did not satisfy its own definition of the skilled artisan).
Terminal disclaimers now appear on about 10% of issued utility patents, the lowest annual rate since 2008 and down from almost 22% in 2023. Obviousness-type double patenting (OTDP) may be the nerdiest of our patent doctrines - but I was surprised by the transformation in terminal disclaimer practice.
The Federal Circuit meanwhile is set to decide how much of the doctrine survives. In re Ablynx N.V., No. 26-1333 (Fed. Cir.), asks whether an OTDP rejection can rest solely on the risk of harassment by multiple assignees, with no extension of patent term to justify it. Last month I wrote about the USPTO's answer to that question in Ex parte Baurin (Aug. 9, 2026), and then the appeal itself (Aug. 16, 2026). Further briefing in the case is due later this month (September 2026).
I first looked for a doctrinal explanation for the shift because there has been a lot of action with regard to OTDP and terminal disclaimers the past few years. See, for example, In re Cellect, 81 F.4th 1216 (Fed. Cir. 2023); and Allergan USA, Inc. v. MSN Laboratories Private Ltd., 111 F.4th 1358 (Fed. Cir. 2024).
But, my data point to a different cause. The biggest single driver is a change in patent family size. From 2023-2025, we saw a large bolus of continuations, divisionals and CIPs -- making up 40% of issued utility patents in mid-2023, but represent only 25% today. Follow-on applications (such as continuations) receive OTDP rejections about 10x the rate of original filings.
This sent me on a search for the cause of the swing in continuations. It turns out that the rise (and fall) is not about applicants -- it all traces back to shifts in USPTO examination policy about which applications the examiner should pick up next.
Professor John Duffy (UVA) appears to be in line to take over as USPTO General Counsel. GC is the Director's principal legal advisor and runs an office of about 130 lawyers that include the Office of the Solicitor (which defends PTAB and TTAB decisions at the Federal Circuit and represents the Director in APA suits), the Office of General Law, and the Office of Enrollment and Discipline.
The Office is currently defending a substantial volume of litigation over the Director's discretionary control of IPR institution -- and Duffy's academic work focusing on the interplay between constitutional, administrative, and patent law will likely serve the agency well. Duffy teaches administrative law alongside patent law, clerked for Judge Stephen Williams and Justice Scalia, and spent time in the Office of Legal Counsel at DOJ. His work has triggered substantial changes in the patent system, including as counsel in both the KSR and TC Heartland. His 2007 Patently-O essay triggered a rewriting of appointment statutes for PTAB (then BPAI) judges; and eventually to Arthrex. John F. Duffy, Are Administrative Patent Judges Unconstitutional?, 2007 Patently-O Patent L.J. 21 (2007).
Duffy was my professor at the University of Chicago, where I took his international intellectual property course and we have spoken a number of times over the years. I wrote about him when the Director position was open for appointment by President Trump, see Dennis Crouch, The Next USPTO Director: Duffy's Four Factor Test, Patently-O (Nov. 30, 2024). What I said then is still true. Duffy has a deep respect for the patent system as an institution and a historian's instinct for how it got the way it is. He is conservative in the older sense of that word, a careful student of history who tends to distrust judicial innovations that lack statutory or historical footing. This approach is visible in his role as co-counsel for KSR in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), which pushed the Federal Circuit's obviousness test back toward the statute and the Court's own precedents, and in his 2008 warning that the PTO's position in Bilski and its companion cases would sweep in most software patents. John F. Duffy, The Death of Google's Patents?, Patently-O (July 21, 2008).
