Zerify Inc (EM) (ZRFY)

I did a periodic check in on Zerify.

The on-line store where you could purchase such illustrious "industry leading" solutions such as Zerify Meet no longer works.

Similarly, the "Help Desk" software that Zerify had used no longer works because the subscription wasn't renewed.

One of the 3 amigos should allow Zerify to draw its final breath and shut down the web entirely. That's the least the can do in return for the millions of $ that they sucked out of the company over the years.

Good morning all! How's everyone doing? Been quite some time since I came on here.
I see they got evicted. Is anything else going on? How have they not been delisted yet?

Not going to waste my time, but you are probably right.

One day when you are bored you should go back through 20 years of 10-K reports and tally up the money that Mark, George and Raj siphoned off SFOR/ZRFY shareholders. It's gotta be close to $ 10 million...maybe much more.

Compare that to the total company revenue during the same 20 year period. Excluding the settlement money received from Microsoft I'll bet it's less than $2 million total.

I have to thank Mark for getting me on track to DD these OTC scams by even gping to visit the companies within a days drive!

School Alarm company using cell phones



Thriving business (Empty lot)



Huge Scrap Metal Yard



Rail Line Leading to yard


Mark Kay Visit 2/5/2014


Dividends & Splits
DividendsSplits
Split Date Split Type Split Ratio Rec Date Pay Date
06/25/2020 Reverse 1:500 — 06/25/2020
shs decreased by 1 for 500 split
08/04/2015 Reverse 1:1000 — —
02/13/2015 Reverse 1:650 — —
03/18/2014 Reverse 1:1500

Smart.

SFOR (at the time) was one of the stocks that tempted me. I mean, this company was going to hit it big...so said Mark Kay. Fortunately I stood on the sidelines and noticed that none of his "deals" ever came to fruition. And yet the company always found found the cash to cover his huge paycheck.

I learned that OTC CEOs pretty much lie constantly and nothing they say should be taken as the truth.

Saved me lots of money over the years.

Once he scammed me, I basically stopped playing pennies.

Well the lie he told you to your face was just one of the many lies that Mark Kay told shareholders over the years.

It was always amusing to hear him talk about the upcoming multi-million dollar deals that were just on the verge of closing. He made those announcements every spring and every fall just like clockwork.

And not a single deal ended up producing revenue. Not one.

Remember the big partnership deal with the guy in Chicago who Photoshoppped his company's name onto a big office building? That was a hoot. Mark also announced that a small IT company in my area (whose owner I happen to know) was going to bring in lots of revenue. He's a nice guy, but his business is on par with a roadside lemonade stand.

And all the Zerify Meet deals that were going to propel the company past Zoom, Microsoft, Google and many others in the on-line meeting space.

Meanwhile, believers lost many millions while the three amigos stuffed their pockets.

Sadly things happened 10 years too late! I remember sitting Mark Kay's conference room and he stated, "No reverse split!." I had $10,000 worth of shares.Then the MF did three splits in less than two years.

08/04/2015 Reverse 1:1000 — —
02/13/2015 Reverse 1:650 — —
03/18/2014 Reverse 1:1500

I was reading on another board about revocation of a ticker because that company failed to file financial reports since the period ending September 30, 2023.

Guess what other company also last filed a financial report for the period ending September 30, 2023?

You guessed it. ZRFY.

That caused me to search for an 8k that was filed in early July of 2025. The company that was going to be the savior of ZRFY by putting in close to $1 million in cash in return for receiving Series A preferred shares that gave them voting control...breached their agreement by not putting in the cash.

So, CEO Mark Kay is back!

Fuck that guy.

http://pdf.secdatabase.com/218/0001477932-25-004938.pdf

Examining Eligibility Case Law Since the Supreme Court’s ‘Original Sin’: Failure to Define ‘Abstract Ideas’ in Alice
Stephen Schreiner image
Stephen Schreiner & Brad Close
21 hours ago 2

Share

“The unworkable Alice abstract ideas framework divined by the Supreme Court has led to the Federal Circuit developing some corollary doctrines that don’t make sense.”

Supreme CourtSubject matter eligibility has been the most confounding and unpredictable issue in patent law since the Alice decision issued in 2014, especially for inventions involving the computer arts. Of course, computers are now ubiquitous and are involved in the implementation of not just electronics, but also mechanical devices, drug administration, and so on. The Alice decision touches many different types of inventions.

Experienced patent attorneys—who are supposed to be able to counsel their clients— are unable to predict with any certainty whether a patent will satisfy Section 101 in district court. Even if a patent survives a challenge in district court, the patent faces another roll of the dice at the Federal Circuit. The Federal Circuit gives district courts little to no deference on patent eligibility and is all over the map with its decisions.

The root of the problem is the failure of the Supreme Court to define “abstract ideas” in the first instance. That is the “original sin,” and it continues to plague the patent eligibility inquiry.

Justice Thomas could have defined “abstract ideas” in Alice, but he casually demurred: “In any event, we need not labor to delimit the precise contours of the ‘abstract ideas’ category.” Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208, 221 (2014). Maybe the Court didn’t labor itself—but the patent community and the lower courts have labored mightily ever since in trying to figure out the doctrine and how to apply the Alice framework.

Sadly, the Supreme Court has repeatedly refused to take up cases to provide a definition for “abstract ideas” and provide some much-needed guidance on the problematic Alice two-step inquiry. In recent years, the Supreme Court has declined to grant cert in the following cases:

drive shafts for pick-up trucks (American Axle v. Neapco) are patent-ineligible.
airline luggage using a dual-access lock (Troop v. Travel Sentry) is patent-ineligible.
wearable media players (Interactive Wearables v. Polar Electro) are patent-ineligible.
garage door openers (Chamberlain Group v. Techtronic) are patent-ineligible.
Consider American Axle v. Neapco. In dissenting from the holding that drive shafts for autos were not eligible for patenting, Judge Moore warned that “the majority’s holding that these claims to manufacturing an automotive drive shaft are ineligible has sent shock waves through the patent community.” American Axle & Mfg. v. Neapco Holdings LLC, 967 F.3d 1285, 1306 (Fed. Cir. 2020).

Judge Moore was right—it did send shock waves through the patent community, and it heightened the already existing crisis in the patent bar and in the courts. Yet, the Supreme Court has done nothing to address the problem.

The consequence is that U.S. patents are significantly encumbered compared to patents issued in other countries. It makes the U.S. Patent System less competitive than other countries that issue and adjudicate patents without subjecting them to such restrictive and unpredictable patent-eligibility criteria. This includes Europe and China.

The Alice decision is not just bad law academically speaking. It devalues U.S. patents and undermines the innovation ecosystem that the U.S. patent system is designed to drive.

Bad Law Produces Bad Outcomes and More Bad Law
The unworkable Alice abstract ideas framework divined by the Supreme Court has led to the Federal Circuit developing various corollary doctrines that don’t make sense.

1. The Problematic Conflation of Section 101 with Section 102/103
Long ago, the Supreme Court warned that the statutory subject matter inquiry under Section 101, which defines the types of invention that can be patented, was distinct from and not to be confused with the prior art inquiry under Section 102/103, which set the conditions for patentability. Diamond v. Diehr, 450 U.S. 175, 188-189 (1981) (“The “novelty” of any element or steps … is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”).

That distinction has been left by the wayside. Assuredly, performing routine tasks on a computer was indeed, at one time, novel and patentable. So, the Section 101 Alice analysis has become totally conflated with Section 102/103.

For example, the Federal Circuit’s Step One inquiry asks what is the “focus of the claimed advance over the prior art.” TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1292 (Fed. Cir. 2020). See, e.g., Recentive Analytics Inc. v. Fox Corp., 134 F.4th 1205, 1211-12 (Fed. Cir. 2025); Hawk Tech. Sys. LLC v. Castle Retail LLC, 60 F.4th 1349, 1356, (Fed. Cir. 2023); Simio, LLC v. FlexSim Software Products, 983 F.3d 1353, 1359 (Fed. Cir. 2020); Koninklijke KPN N.V. v. Gemalto M2M GMBH, 942 F.3d 1143, 1149 (Fed. Cir. 2019).

Evaluating the “claimed advance over the prior art” is a Section 102/103 prior art inquiry, not a Section 101 subject matter inquiry. Identifying the claimed advance over the prior art does not answer the Alice Step One test of “whether the claims at issue are directed to an [abstract idea].” Alice, 573 U.S. at 217.

It’s not just Alice Step One that has become conflated with Section 102/103.

The Step Two test is whether the claim limitations are “well-understood, routine, [or] conventional.” Alice, 573 U.S. at 225. Whether a limitation is well-understood, routine, or conventional is a Section 102/103 inquiry.

Prior to Alice, former Chief Judge Rader long ago wisely counseled that Section 101 was intended to be a threshold test to the hard work of determining whether an invention is anticipated or obvious under Section 102/103. Research Corp. Tech., Inc. v. Microsoft Corp, 627 F.3d 859, 868-869 (Fed. Cir. 2010) (Section 101 is a “course eligibility filter” in a statutory framework that “directs primary attention on the patentability criteria of the rest of the Patent Act”). Judge Rader was right, and the confusion between patent-eligibility and patentability in the case law since Alice proves it.

2. The Conflation of Section 101 with Section 112: The Claims Must Explain “How To” Practice the Invention
Judge Moore warned in the American Axle case that the majority was creating an “enablement on steroids” requirement that the claims must enable the invention, instead of the specification enabling what is claimed. American Axle, 967 F.3d at 1305, 1316 (criticizing the majority’s “new blended 101/112 analysis” where “even if the claims are enabled, they are still ineligible because the claims themselves didn’t teach how” to make and use the invention).

Judge Moore was right.

It has long been the case that the claims define the invention, and the role of the specification is to enable a POSITA to make and use what is claimed.

Now—because the Alice test articulated by the Supreme Court is nearly impossible to apply—the Federal Circuit’s Section 101 jurisprudence has devolved into an inquiry into whether the claim itself explains “how to” make the invention. More specifically, the claim must state the “specific means or method” that achieves the claimed result. No such requirement is found in Section 101.

The Federal Circuit imposes this new claims-enablement requirement in stating that the Step One test focuses on whether the claim state a “specific means or method” to carry out the invention or instead states a “result or effect.” See, e.g., PowerBlock Holdings, Inc. v. iFit, Inc., 146 F.4th 1366, 1371 (Fed. Cir. 2025); Yu v. Apple Inc., 1 F.4th 1040, 1043 (Fed. Cir. 2021); EcoServices, LLC v Certified Aviation Services, LLC, 830 F.Appx. 634, 642 (Fed. Cir. 2020); Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1150 (Fed. Cir. 2019); Smart Sys. Innovations, LLC v. Chi. Transit Authority, 873 F.3d 1364, 1371 (Fed. Cir. 2017).

There has never been a requirement in the Patent Statute that the claims must enable themselves or that they must specify “how to” carry out the invention. This “how to” test for patent eligibility is just another example that demonstrates the unworkability of the Alice framework and how it results in the development of corollary doctrines that do not make sense.

3. Using a Common Law “Sounds Like” Methodology Is No Substitute For a Workable Test based on a Definition.
Because Alice did not define “abstract ideas” and did not set forth a workable test, the Federal Circuit has been forced to follow a “common law approach” where subject matter eligibility is decided based on finding cases with similar facts, instead of applying a legal test.

As stated by the Court in Amdocs:

“However, a search for a single test or definition [of “abstract ideas”] in the decided cases concerning § 101 from this court, and indeed from the Supreme Court, reveals that at present there is no such single, succinct, usable definition or test. … Instead of [applying] a definition, then, the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen—what prior cases were about, and which way they were decided. [cite omitted] That is the classic common law methodology for creating law when a single governing definitional context is not available.”

Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841,F.3d 1288, 1294 (Fed. Cir. 2016).

The result of this common law approach to Section 101 is that we have an ever-expanding hodgepodge of “categories” deemed to be abstract ideas that are not tied to an objective test and that become harder to reconcile over time.

Rather than being defined, “abstract ideas” has become a nonce word for any variety of categories determined to be undeserving of patent protection using the Federal Circuit’s common law approach.

For example, it is now well-established in Federal Circuit case law that collecting, analyzing, and outputting data is an abstract idea. See, e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016).

But is the use of computers, algorithms, and displays to collect, analyze, and output data really an “abstract idea”? Doesn’t seem like it. In Content Extraction, the panel held that data collection, analysis, and output is an abstract idea because it is “indisputably well-known.” Content Extraction & Transmission v. Wells Fargo Bank, 776 F.3d 1345, 1347 (Fed. Cir. 2014). But that makes little sense. How does a practice being well-known transform it into an abstract idea? It doesn’t. Something being well-known is a prior art construct, not a test for whether something is an abstract idea.

Moreover, using a computer and algorithm to collect, analyze, and output data is quite concrete and tangible—it’s not an abstraction. Yet, it is now defined as a common law category of “abstract idea” that can be used to deconstruct a claim into one or more abstract ideas.

Similarly, the Federal Circuit has held that “encoding and decoding image data and … converting formats, including when data is received from one medium and sent along through another, are by themselves abstract ideas.” Hawk Tech. Sys. LLC v. Castle Retail LLC, 60 F.4th 1349, 1357 (Fed. Cir. 2023) (citing Adaptive Streaming Inc. v. Netflix, Inc., 836 F. App’x 900, 903 (Fed. Cir. 2020)).

Why is encoding/decoding image data an abstract idea? There are a number of incredibly innovative and groundbreaking technologies that involve encoding/decoding data—JPEG and MPEG being just a couple. Innovative coding technologies developed in the future will likely be found to be patent-ineligible because of the coding/decoding subcategory of abstract ideas created by the Federal Circuit.

There are a number of other categories of subject matter identified as abstract ideas under the common law approach to Section 101 that the Federal Circuit has been forced to adopt because of the absence of a definition of “abstract ideas” and the vagaries of the unworkable Alice two-step framework.

Closing Thoughts
The absence of a definition for “abstract ideas” is the root problem. The two-step Alice test is unworkable on its face, and this has been proven out by the inability of district courts and the Federal Circuit to decide subject matter eligibility with any predictability.

The Supreme Court needs to step in to clarify Alice. Alternatively, a legislative fix like the PERA legislation should fix the problem. If neither occurs, Section 101 jurisprudence just might evolve into Gene Quinn’s “drop it on your foot” test: If you can drop it on your foot, it passes Section 101. The recent PowerBlock case finding that an invention for selecting dumbbells for weightlifting is patent-eligible aligns with that. Let’s hope that reform is delivered by the Supreme Court or the Hill soon.

I'd love to see their Zerify Meet subscriber numbers. I'd bet they never hit 100 paid subscriptions.

For all intents and purposes it is shut down.

Is this scam still trading?

Mark Kay is a liar and a scammer.

Glad to hear they got evicted.

Regulators should shut this scam (that's been running for years) down.

The Judge ordered a "judgement of possession" in the landlord's favor on March 11, 2025. In other words: Zerify was EVICTED for non payment of rent.

I found a lawsuit against Zerify by the owner of the Edison, NJ office building. In January 2025 the landlord filed a complaint alleging that rent was due for September 2024 and every month thereafter. As of the time of the filing, the amount due including late fees and common area maintenance was over $ 30k

The Judge ordered a "judgement of possession" in the landlord's favor on March 11, 2025. In other words: Zerify was EVICTED for non payment of rent.

I don't expect the company will ever file any of the past due quarterly reports or the 10-K for 2024 but if they do, the EVICTION should be an interesting entry in the "Subsequent Events" section.

Zerify still lists the Edison, NJ street address on their contact page.

There are including a suspensions. But since they are already on the Expert Market they need to file to revoked. The SEC had a mass cleaning a few years ago but now they are slow.

I thought there was disciplinary action available to SEC for not filing 10Ks or 10Qs after so much time.

The SEC would have to provide Kay a notice and if they don't comply the SEC would have to file Revocation proceedings under Section 12(j) of the Securities Exchange Act of 1934
.

When will they be de-listed?

No servers isn't terribly surprising. A company of 3 executives plus 6 relatives on the payroll doesn't justify an on prem server. Everything can be cloud based.

Then again, what kind of work are any of them doing?

Narrator: They are doing no work at all.

Virtual office with no servers? LOL

Well, Zerify has given up its executive offices in Edison. Their current address is a shared office space (aka mail drop) in Matawan, NJ.

Check out the comments under this announcement, which appears on the Nazi web site: Zerify is Now Fully Remote!

Zerify has transitioned to a fully remote work environment, embracing flexibility and innovation. While our team is now working remotely, you can still reach us at our new mailing address:100 Matawan Rd, Suite 325, #1145, Matawan, NJ 07747— Zerify (@ZerifyOfficial) March 7, 2025

All da money is in da pockets of Kay and his co-conspirators.

I've checked the Middlesex County, NJ Court filings a few times looking for a lawsuit from the Edison NJ landlord against ZRFY. So far I haven't found anything. There is zero reason for the company to have an office because there is no business being conducted.

Glad I came back to see if there was any new news!!!!

Like you said... just a slap in the face.
Plaintiff won't see much of anything or their counsel.

PACER shows that the November, 2024 proposed settlement was approved by the Judge on March 21, 2025.

$ 377k of counsel fees and expenses are to be paid by the defendants with $ 25k of that to be paid by the three scoundrels (aka the Individual Defendants). It's not entirely clear is that means $25k from each scoundrel or $ 25k collectively from the three scoundrels.

The named plaintiff is to receive $ 5k from the scoundrels. Again, it might be $ 5k from each scoundrel or $ 5k collectively.

Essentially a slap on the wrist considering how the scoundrels took shareholders for a 20+ year old ride that did nothing other than to enrich Kay, Waller and Pemmaraju.

As was pointed out during the proceedings, the Company has no insurance to cover the damage award. The Judge retains jurisdiction over the case until the payments are made. My bet is that none of it will be paid. The company has no money and has no prospect for bring in any money. The new CEO got played by Mark, just like Mark played the shareholders.

When they dieshareholders should find each scoundrel's grave and give themselves the relief they deserve.

https://www.zerify.com/zerify-accounces-settlement-of-derivative-lawsuit/

Thank you for reconsidering.

Okay, okay... you convinced me to stay! LOL!!!

You're leaving us? It's almost time for Mark's annual letter to shareholders where he talks about the multi-million dollar deals that will be sign vewwy vewwy soon.

Stick around for that!

Guess it's time to take this link off of my Favorites. Enjoyed the time here folks and hope you have a great 2025!
Stay away from anything looking like another Kay & Co.

Last year I asked this question of someone who is more knowledgeable than I. As best I can recall, he said that once the company is more than a year delinquent in its filings de-listing can come at any time and without warning.

The good news is that as things stand, it's unlikely that there will be any new victims of Mark Kay's deceit.

How long until they are de-listed?

Entirely possible. And why did they need an office, really? They aren't conducting any business. Mark and his amigos probably haven't set foot in the office in years. Given that they can't pay their auditors it seems unlikely that they have money to pay rent or utilities.

Wonder if they have simply closed the doors

Wonder if they have simply closed the doors. Probably got evicted for not being able to pay the rent.

Been a long time with no posts so I'll add something. Zerify made a big deal about its product being available at TDSynnex, one of the super large IT product distributors.

Zerify products are no longer listed in the TDSynnex system.

No 8k from Mark on that? Surprising.

Such a shame, because Mark was just about to release a PR announcing that big deals are finally coming to fruition in the Spring of 2025.

He's such a scumbag.

That seems to be the only way out.

So now we know that Mark, George and Raj sucked every last dollar out of the company's bank account to the point where they couldn't even maintain insurance that covers the officers and directors against lawsuits. Very on brand for them.

And how will the company come up with the cash to pay the settlement amount? They couldn't even come up with the money to pay the auditors so the 10-K for 2023 could be released.

Watch for a bankruptcy filing soon.

This is the coffin closing on this scam!

Item 1.01 Entry into Material Agreement.



Effective November 20, 2024 (the “Judgment Date”), in a case styled Constantino Zanfardino, Derivatively on Behalf of Nominal Defendant Zerify, Inc., formerly known as Strikeforce Technologies, Inc. v. Mark L. Kay, Ramarao Pemmaraju and George Waller, Defendants, and Zerify, Inc. formerly known as Strikeforce Technologies, Inc., Nominal Defendant (U.S. District Court, District of New Jersey, Civil Action No. 2:22-cv-07258-MCA-AME) (the “Derivative Action”), Zerify, Inc., a Wyoming corporation (the “Company”), the Company entered into a Stipulation and Agreement of Settlement (the “Settlement Agreement”) with each of the other parties to the Derivative Action, including three of the Company’s directors, Mark L. Kay (“Kay”), Ramarao Pemmaraju (“Pemmaraju”) and George Waller (“Waller”) (the Company, Kay, Pemmaraju and Waller are referred to as the “Defendants”).



The terms of the Settlement Agreement include:





·

The Company shall, within 75 days of the Judgment Date, effectuate and adopt the following relief and reforms:
https://ih.advfn.com/stock-market/USOTC/zerify-ce-ZRFY/stock-news/95087568/form-8-k-current-report

xrp 🤔 goodluck
its funny ipeak here and same people saying samethings as they were 6 years ago 🤔

cant believe you guys arestill here 😂😂

When will this POS get de-listed?

Hmmm. So a PCAOB accounting firm does the financial statements and the required audit knowing full well that the company is insolvent?

I call bullshit.

Mark is a liar.

$ZRFY From Mark:

The 10k is done, as soon as we get the money from our Chairman to pay for it we an release it. Don’t know when that will be, sorry. Mark

I suspect the company is essentially defunct at this point.

Mark's predictions of millions in revenue was a lie the first time he said it and it was a lie every time he repeated it.

The company has no cash and no assets. It has lots of liabilities. It was unable to file the financials for 2023 because it had no money to pay for the required audit.

Shareholders are finally put out of their misery and the bloated executive payroll is finito.

Finally really tanking!

m
Industry Events
Submit An Event
Home
News
Courts
SCOTUS Denies Challenges to Section 101 Test, Trademark Domicile Rules and Obviousness-Type Double-Patenting Analysis
Steve Brachmann image
Steve Brachmann
16 hours ago 1

Share

“Eolas noted the myriad calls on SCOTUS to clarify the Section 101 eligibility test in Federal Circuit rulings… and from the U.S. Solicitor General.”

SCOTUSOn October 7, the U.S. Supreme Court issued an order list that included cert denials for several intellectual property cases that were presented to the nation’s highest court. In rendering those denials, the Supreme Court leaves in place an appellate ruling invalidating patents claiming improvements to computer networking technologies under Section 101’s abstract idea jurisprudence. U.S. Patent and Trademark Office (USPTO) requirements on listing domicile addresses on trademark applications, and the Federal Circuit’s application of obviousness double-type patenting doctrine in the patent term adjustment context, were also allowed to stand due to these denials.

Eolas Technologies v. Amazon.com: Another Call for Section 101 Clarity Goes Unheeded
Web development company Eolas Technologies was formed as a spinoff company from the University of California, San Francisco, to commercialize early web technologies in the mid-1990s. This included improvements to the distribution of hypermedia across the World Wide Web, claimed in patents that Eolas asserted in U.S. district court against Big Tech giants Amazon and Google. Eolas’ patent claims were invalidated by the Northern District of California as directed to a patent-ineligible abstract idea under 35 U.S.C. § 101. On appeal, the Federal Circuit faulted the district court for not recognizing the patent’s claimed improvements to configuration requirements in the nascent web, but still concluded that “interacting with data objects on the World Wide Web is an abstraction,” affirming the Section 101 ruling.

Eolas filed its petition for cert this May challenging the abstract idea determination as conflicting with the Supreme Court’s 2014 ruling in Alice Corp. v. CLS Bank International, which confirmed the patent eligibility of claims “improv[ing] an existing technological process.” While the Federal Circuit issued rulings finding software claims patent-eligible when directed to improvements in computer functionality, Eolas’ brief notes that appellate rulings on Section 101 have strayed from the scope of patent eligibility defined by Alice.

Echoing concerns raised by many commentators on the expansion of abstract idea jurisprudence, Eolas’ petition also contended that the Federal Circuit’s analysis improperly blended other patentability statutes, including the written description requirement under 35 U.S.C. § 112, into the Section 101 patentability analysis. Eolas noted the myriad calls on the Supreme Court to clarify the Section 101 eligibility test in Federal Circuit rulings like American Axle & Manufacturing v. Neapco Holdings, and from the U.S. Solicitor General, which has urged SCOTUS to grant cert on Section 101 issues in five petitions that were later denied certiorari.

Chestek PLLC v. Vidal: Domicile Reporting Requirements for Trademark Owners Survive Challenge
In 2019, the USPTO promulgated a final rule under its general rulemaking authority codified at 35 U.S.C. § 2(b)(2) that required all trademark applicants to disclose their domicile address on their applications. Trademark law firm Chestek PLLC challenged the USPTO’s refusal of its own trademark applications for failure to list a domicile address, arguing that Section 2(b)(2)’s cross-reference to 5 U.S.C. § 553 required the agency to follow notice-and-comment procedures required by the Administrative Procedures Act (APA). Earlier this year, the Federal Circuit affirmed the agency’s refusal after ruling that the reporting requirement does not alter the substantive standards of trademark examination, making it a procedural rule properly promulgated without notice-and-comment rulemaking.

Filing its petition for cert this May, Chestek PLLC cited rulings from several regional circuits finding that statutory cross-references to Section 553 are not simply directed to that statute’s notice-and-comment exceptions. Further, Chestek argued that the Federal Circuit’s ruling improperly vitiated Section 2(b)(2)(B)’s cross-reference to Section 553, “evidently designed to serve [the] concrete function” of applying Section 553’s requirements to agency rulemaking that was historically only procedural. Chestek also noted privacy concerns that would have been easily identified through notice-and-comment rulemaking, while amicus filings highlighted democratic concerns posed by the USPTO Director’s unilateral ability to promulgate rules.

Cellect LLC v. Vidal: Agency Prosecution Delays Do Not Impact ODP Analysis
After Cellect filed a patent infringement suit against Samsung Electronics over image-sensor technology, Samsung requested ex parte reexamination of Cellect’s patents, including three that received patent term adjustments (PTA) under 35 U.S.C. § 154(b) for the USPTO’s delay in prosecuting patent applications. Cellect’s patent claims were invalidated during those proceedings for “obviousness-type double-patenting” (ODP), differentiating PTA from patent term extensions (PTE) under 35 U.S.C. § 156 for delays caused by regulatory approval due to references to terminal disclaimers in the PTA statute. Affirming this ruling, the Federal Circuit found that Cellect could have avoided the ODP invalidations if they had filed terminal disclaimers on the challenged patents.

Also filing its petition for cert in May, Cellect argued that Sections 154 and 156 were textually interlocked for the purposes of ODP analysis, alleging that the perceived difference due to Section 154’s reference to terminal disclaimers was improperly read as an oblique reference to judicially-created ODP doctrine. Cellect also contended that the Federal Circuit’s ruling created unreasonable uncertainty in patent term length that patentees can only overcome by preemptively filing terminal disclaimers even where unnecessary.

Several amicus briefs were filed on Cellect’s petition. Seed engineering firm Inari Agriculture argued that the USPTO’s procedural rules for prosecution give patent applicants several opportunities to maximize PTA improperly. By contrast, the New York Intellectual Property Law Association noted negative impacts ODP has had on medical research, and questioned whether the doctrine was still necessary following changes to the calculation of patent terms in the mid-1990s.

I updated the SEC today!