Rozman v. Vidal (Fed. Cir. 24-1063) — Malware Protection Patent Appeal Dismissed
Megan Rozman and co-inventors appealed a USPTO patentability ruling over USRE043528E, a reissue patent covering systems and methods for protecting computers from malicious software. The Federal Circuit dismissed the case by agreement under Fed. R. App. P. 42(b) just 83 days after filing, with each side bearing its own costs.
Swift agreed dismissal in a malware-patent reissue validity appeal
Filed on 18 October 2023 at the Court of Appeals for the Federal Circuit, Case No. 24-1063 pitted inventors Megan Rozman, Alfonso Cioffi, Melanie Rozman, and Morgan Rozman against Katherine K. Vidal in her capacity as Director of the United States Patent and Trademark Office. The central dispute concerned the patentability of USRE043528E — a reissue patent derived from application US12/720147 covering a system and method for protecting a computer system from malicious software. The case was classified as an invalidity/cancellation action, suggesting the USPTO had issued an adverse ruling on the patent’s validity that the inventors sought to overturn on appeal.
The Federal Circuit closed the case on 9 January 2024 — just 83 days after it was filed — following a stipulated dismissal under Federal Rule of Appellate Procedure 42(b). Under that rule, parties may jointly move to dismiss an appeal at any time before a decision is rendered, without requiring court approval beyond the filing of the agreement. The court’s order confirmed that each side would bear its own costs, a neutral cost allocation that neither penalises the appellants nor rewards the USPTO.
The speed of resolution — under three months at the Federal Circuit — is consistent with pre-briefing settlement or a negotiated resolution reached shortly after docketing, though the public record does not disclose the underlying terms, if any, of the parties’ agreement. It remains unknown whether the inventors secured any concession from the USPTO, whether the reissue patent was abandoned, or whether parallel proceedings are ongoing. The voluntary, agreed nature of the dismissal leaves the substantive patentability question officially unresolved on the appellate record.
Filing to dismissal in 83 days
83 days — resolved faster than most Federal Circuit patent appeals
Agreed dismissal under Fed. R. App. P. 42(b) — what this means
Fed. R. App. P. 42(b) — voluntary agreed dismissal on appeal
Rule 42(b) allows parties to jointly stipulate to dismissal of an appeal before any merits decision. No judicial approval of the underlying terms is required — the court simply enters the dismissal order. In this case, both the inventors and the USPTO agreed to end the Federal Circuit proceeding, suggesting the dispute was resolved or abandoned outside formal adjudication. No substantive ruling on USRE043528E’s validity was issued.
Stipulated dismissalWith or without prejudice? The record is silent
The dismissal order references Rule 42(b) but does not specify whether it was with or without prejudice. Under appellate practice, Rule 42(b) dismissals are generally silent on prejudice unless the parties negotiate specific terms. This means the public record does not confirm whether the inventors are barred from future challenges to the patent’s validity, or whether the dismissal forecloses re-appeal on related grounds. Practitioners should treat the prejudice status as undisclosed.
Prejudice status unclearEach side bears own costs — a neutral outcome signal
The court ordered each side to bear its own costs, meaning neither party recovered filing fees, printing costs, or other recoverable appellate expenses from the other. This symmetric cost allocation is common in stipulated dismissals and does not indicate a win or loss for either side. It avoids the adversarial optics of a cost-shifting order and is consistent with a negotiated resolution where neither party wished to press a cost advantage.
No cost-shiftingValidity of USRE043528E remains formally undecided at appeal level
Because the Federal Circuit dismissed before issuing any merits ruling, the appellate record contains no binding pronouncement on the validity of USRE043528E. Any adverse USPTO ruling at the trial level (the basis for the appeal) may still stand if the inventors did not secure a reversal or agreement from the agency. Third parties monitoring this patent for freedom-to-operate purposes should check the USPTO’s inter partes or ex parte record for the underlying determination.
No appellate validity rulingFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Megan Rozman | Company | Inventors and patent holders — asserting validity of reissue patent USRE043528ESearch in Eureka ↗ |
| Defendant | Katherine K. Vidal | Company | Katherine K. Vidal, Director of the USPTO — defending agency patentability rulingSearch in Eureka ↗ |
| Plaintiff counsel | Eric W. Benisek | Attorney | Counsel for Megan RozmanSearch in Eureka ↗ |
| Plaintiff counsel | Robert Mcarthur | Attorney | Counsel for Megan RozmanSearch in Eureka ↗ |
| Defendant counsel | Amy J. Nelson Acting | Attorney | Counsel for Katherine K. VidalSearch in Eureka ↗ |
| Defendant counsel | Farheena Yasmeen Rasheed | Attorney | Counsel for Katherine K. VidalSearch in Eureka ↗ |
| Defendant counsel | Peter John Sawert | Attorney | Counsel for Katherine K. VidalSearch in Eureka ↗ |
| Presiding judge | Judge / | Chief Judge | Court of Appeals for the Federal Circuit — Chief JudgeSearch in Eureka ↗ |
Stipulation of dismissal — official text
The Federal Circuit’s order is purely procedural: it confirms that the parties jointly agreed to dismiss under Fed. R. App. P. 42(b) and that each side bears its own costs. No merits analysis was conducted and no validity determination was made. The order’s phrasing — ‘the parties having so agreed’ — confirms this was fully consensual. For practitioners, the absence of any substantive ruling means the order has no precedential weight on the patentability of USRE043528E or related malware-protection claims.
USRE043528E — System and Method for Protecting Against Malicious Software
USRE043528E is a United States reissue patent, derived from application US12/720147, covering a system and method for protecting a computer system from malicious software. Reissue patents are granted when the original patent is deemed wholly or partly inoperative or invalid — typically due to a defective specification or claims that were too narrow or too broad. The ‘RE’ designation signals that the USPTO examined and reissued the patent with corrected or amended claims. The underlying technology sits squarely in the cybersecurity domain, addressing detection or prevention of malware threats at the system level.
Malware protection patents occupy a contested space in cybersecurity IP. As threat vectors have evolved and software-implemented security claims have faced § 101 eligibility scrutiny post-Alice, reissue patents in this domain attract both validity challenges and licensing interest. USRE043528E’s involvement in a Federal Circuit patentability appeal — even one that ended by agreement — signals that the patent’s validity was sufficiently in question to warrant formal challenge. Competitors and product teams in endpoint security, network protection, and anti-malware software should assess whether this patent or its family members intersect with their own implementations.
Should your team run an FTO analysis against USRE043528E?
Any company developing or commercialising systems or methods for detecting and blocking malicious software — including endpoint detection and response (EDR) platforms, antivirus engines, network security appliances, and cloud-based threat intelligence services — should consider whether USRE043528E’s claims read on their products. The fact that the patent survived to a Federal Circuit appeal, even one ultimately dismissed, suggests the inventors regarded it as commercially significant. Reissue patents with amended claims warrant particularly careful claim-mapping because the amended scope may differ materially from the original grant.
PatSnap Eureka’s FTO Search Agent can pull the full claim set for USRE043528E, map it against your product’s technical features, and flag related family members in the US12/720147 prosecution history. Eureka’s claim monitoring tools can alert your team if continuation applications in this family publish new claims that could affect your FTO clearance — critical in a technology area where claim scope can shift through reissue and continuation practice.
Run a freedom-to-operate analysis on USRE043528E to assess your product’s exposure
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What this case signals for the cybersecurity patent validity landscape
A fast, agreed Federal Circuit exit in a reissue patent validity dispute has specific implications for how patent holders and challengers manage USPTO appeal risk.
Pre-briefing resolution is common in reissue patent appeals — plan for it
The 83-day timeline suggests the parties reached their agreement before full briefing was due. In USPTO-director appeals arising from patentability rulings, inventors often reassess litigation economics early. IP teams monitoring USRE043528E or related malware-protection patents should note that agreed exits at the Federal Circuit do not create binding validity precedent — the patent’s status requires direct USPTO record review.
Neutral cost orders signal parity — neither side had clear leverage
A symmetric ‘each side bears own costs’ order in a government-vs-inventor appeal is worth noting. It suggests the USPTO did not seek, or could not obtain, an exceptional-case finding, and the inventors lacked the leverage to extract a cost award. For practitioners advising inventors challenging USPTO validity rulings, this pattern is consistent with cases where the merits were genuinely uncertain and early exit was commercially rational.
Megan v Katherine — key questions answered
The inventors of reissue patent USRE043528E appealed a USPTO patentability ruling to the Federal Circuit. The case was dismissed by agreement under Fed. R. App. P. 42(b) on 9 January 2024, 83 days after filing. Each side bore its own costs. No merits ruling on the patent’s validity was issued.
USRE043528E is a US reissue patent covering a system and method for protecting a computer system from malicious software, derived from application US12/720147. It was in dispute because the USPTO issued an adverse patentability ruling — classified as an invalidity/cancellation action — which the inventors appealed to the Federal Circuit before the case was voluntarily dismissed.
A dismissal under Fed. R. App. P. 42(b) is a procedural exit agreed by both parties. It results in no appellate merits ruling, meaning the Federal Circuit made no determination on whether USRE043528E is valid or invalid. Any underlying USPTO determination may remain in effect. The patent’s validity status requires review of the USPTO’s own administrative record.
The plaintiffs/appellants were inventors Megan Rozman, Alfonso Cioffi, Melanie Rozman, and Morgan Rozman, represented by Vasquez Benisek & Lindgren LLP. The defendant/appellee was Katherine K. Vidal, then-Director of the USPTO, represented by the USPTO’s own legal team including Amy J. Nelson Acting, Farheena Yasmeen Rasheed, and Peter John Sawert.
Because the Federal Circuit dismissed without ruling on validity, USRE043528E’s enforceability depends on its USPTO prosecution record. Companies in the malware protection, endpoint security, or anti-malware space should conduct a claim-mapping FTO analysis against the amended reissue claims. Monitoring for related continuations or divisionals filed by the inventors is also advisable, as inventors in similar situations often pursue alternative claim strategies post-appeal.
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