Technology Information Law Blog by Charles Gideon Korrell

Author: gideon.korrell

  • Dollar Financial v. Brittex: Trademark Cancellation on Priority, Likelihood of Confusion, and the Zone of Natural Expansion

    Dollar Financial v. Brittex: Trademark Cancellation on Priority, Likelihood of Confusion, and the Zone of Natural Expansion

    In Dollar Financial Group, Inc. v. Brittex Financial, Inc., the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB) partial cancellation of two MONEY MART trademark registrations, addressing critical issues in trademark law, including priority of use, the likelihood of confusion, and the limitations of the zone of natural expansion doctrine. This case highlights key legal principles that businesses should consider when expanding the scope of their trademarks.

    Background of the Case

    Dollar Financial Group, Inc. (DFG) has operated loan financing and check cashing services under the MONEY MART mark since the 1980s. In 2013, DFG registered two trademarks covering pawn brokerage and pawn shop services. Brittex Financial, Inc., which had used MONEY MART PAWN and MONEY MART PAWN & JEWELRY since 1993 for pawn services, petitioned to cancel DFG’s registrations, arguing that they created a likelihood of confusion under the Lanham Act § 2(d).

    The TTAB initially ruled in favor of DFG, holding that its longstanding use of MONEY MART for loan financing encompassed pawn services. However, the Federal Circuit reversed and remanded, leading the TTAB to ultimately rule that Brittex had priority. DFG appealed the TTAB’s decision, arguing that it was entitled to priority based on the zone of natural expansion and that the Board improperly found a likelihood of confusion.

    Key Legal Issues and the Court’s Analysis

    1. Priority of Use in Trademark Law

    Trademark rights are fundamentally based on first use in commerce. While DFG argued that its use of MONEY MART for loan financing should establish priority over Brittex’s pawn shop services, the Federal Circuit disagreed.

    The court reaffirmed that priority is determined based on the specific goods or services for which the mark was first used. Since Brittex had been using MONEY MART PAWN for pawn services since 1993, while DFG only expanded into pawn services in 2012, Brittex’s common law rights took precedence.

    2. The Zone of Natural Expansion Doctrine: A Defensive, Not Offensive, Shield

    One of DFG’s key arguments was that pawn brokerage and pawn shop services were a natural expansion of its existing loan financing services. However, the Federal Circuit rejected this argument, emphasizing that the zone of natural expansion is a purely defensive doctrine that cannot be used offensively to retroactively establish priority.

    To support its ruling, the CAFC cited several key cases:

    • Jackes-Evans Manufacturing Co. v. Jaybee Manufacturing Corp., 481 F.2d 1342 (C.C.P.A. 1973)
      • This landmark case established that the zone of natural expansion doctrine is defensive only. It prevents a junior user from claiming a mark in a related field but does not allow a senior user to retroactively claim priority over an intervening user.
      • Applying Jackes-Evans, the CAFC ruled that DFG could not override Brittex’s prior use of MONEY MART PAWN simply by claiming pawn services were a natural extension of its loan financing business.
    • Orange Bang, Inc. v. Ole Mexican Foods, Inc., 116 U.S.P.Q.2d 1102 (T.T.A.B. 2015)
      • This TTAB decision reinforced that the first user of a mark has superior rights over later users expanding into related areas. However, if an intervening user has already established rights in the new area, the original owner cannot retroactively claim priority.
      • The CAFC applied this principle to reject DFG’s argument that its long-standing MONEY MART registration for loan financing should allow it to later claim priority for pawn services.
    • American Hygienic Laboratories, Inc. v. Tiffany & Co., 12 U.S.P.Q.2d 1979 (T.T.A.B. 1989)
      • In this case, Tiffany & Co.’s trademark for jewelry did not give it priority over another company’s use of “TIFFANY” for cosmetics.
      • The Federal Circuit used this precedent to reject DFG’s claim that its existing MONEY MART registrations automatically extended to pawn services.

    3. Likelihood of Confusion Under the DuPont Factors

    The CAFC upheld the TTAB’s finding that DFG’s trademarks posed a likelihood of confusion with Brittex’s common law marks. The court applied the DuPont factors, emphasizing:

    • Similarity of the Marks: The court found that MONEY MART and MONEY MART PAWN were highly similar, especially since the term “pawn” was descriptive.
    • Overlap in Services and Trade Channels: Both parties offered pawn-related financial services, targeting similar consumers.
    • Brittex’s Prior Use: Since Brittex had been using its mark for pawn services since 1993, DFG’s later use in 2012 did not override Brittex’s priority.

    DFG also argued that its prior incontestable registrations for loan financing should have been considered. However, the CAFC distinguished the case from In re Strategic Partners, Inc., explaining that DFG’s earlier registrations did not cover pawn services and were therefore irrelevant.

    Final Takeaways

    The Federal Circuit’s decision in this case provides critical lessons for businesses navigating trademark expansion:

    1. First Use in Commerce Controls – Priority is based on actual use for specific goods/services, not potential expansion.
    2. The Zone of Natural Expansion is Defensive – This doctrine cannot be used offensively to claim priority over an intervening user.
    3. Likelihood of Confusion is Key – Even long-standing brands can face cancellation if they expand into areas where others have prior rights.
    4. Proactive Trademark Registration is Essential – To avoid legal disputes, businesses should register trademarks for all anticipated services early.

    For businesses looking to expand their trademarks into new markets, this case underscores the importance of conducting thorough clearance searches and filing trademark applications early.

    By Charles Gideon Korrell

  • Realtek v. ITC: CAFC Dismisses Sanctions Case

    Realtek v. ITC: CAFC Dismisses Sanctions Case

    In a decision that highlights the limits of judicial review over agency discretion, the Federal Circuit dismissed Realtek Semiconductor Corporation’s appeal against the International Trade Commission (ITC). The case, Realtek Semiconductor Corporation v. International Trade Commission, centered on the ITC’s refusal to issue a show-cause order against DivX, LLC in an investigation concerning patent infringement under 19 U.S.C. § 1337.

    Background: Patent Infringement and ITC Proceedings

    The dispute began when DivX, LLC filed a complaint with the ITC alleging that Realtek and other companies had violated Section 337 of the Tariff Act of 1930, which prohibits the importation of infringing products into the United States. After the administrative law judge (ALJ) approved DivX’s motion to withdraw its complaint against Realtek, the ITC terminated the investigation as to Realtek.

    Realtek later sought sanctions against DivX, alleging that the company had engaged in misconduct during the investigation. Specifically, Realtek claimed that DivX had filed frivolous claims and engaged in abusive litigation tactics. However, the ALJ denied the motion on procedural grounds, determining that it was untimely and lacked specificity regarding the alleged misconduct. The ITC declined to review the decision, effectively upholding the denial of sanctions.

    Key Legal Issues in the Case

    The Federal Circuit’s opinion, authored by Judge Reyna, primarily addressed three significant legal issues:

    1. Judicial Review of Agency Discretion Under the Administrative Procedure Act (APA)

    Realtek argued that the ITC violated the APA by failing to issue a show-cause order sua sponte (on its own initiative). However, the court ruled that the ITC’s decision not to act was an exercise of discretion that was unreviewable under the APA. Citing 5 U.S.C. § 701(a)(2), the court emphasized that when agency actions are committed to agency discretion by law, they are not subject to judicial review.

    The decision reinforces the principle that courts generally cannot force agencies to take discretionary actions unless the law explicitly requires them to do so.

    2. Procedural Grounds for Denying Sanctions

    A critical factor in the ruling was the procedural posture of Realtek’s motion. The ALJ found that:

    • The allegations of misconduct related to actions that had taken place seven to twelve months before Realtek filed for sanctions.
    • The motion was untimely under ITC procedural rules.
    • The allegations lacked the specificity necessary to justify issuing sanctions.

    Because the ITC chose not to review the ALJ’s decision, the denial of sanctions stood without further scrutiny.

    3. The ITC’s Discretionary Authority Over Sanctions

    Realtek relied on 19 C.F.R. § 210.4(d)(1)(ii), which allows (but does not require) the ITC to issue a show-cause order if misconduct is suspected. The court found that this regulation grants the ITC full discretion over whether to take such action, meaning Realtek had no legal basis to challenge the agency’s inaction.

    The decision aligns with past cases where courts have upheld agencies’ discretionary authority to manage their own proceedings, particularly in complex intellectual property and trade disputes.

    Implications for Future Section 337 Investigations

    This ruling clarifies that respondents in ITC investigations cannot compel the agency to issue sanctions against complainants. The ITC has wide latitude to decide when, or if, it will take action against potential misconduct. This precedent may discourage companies from seeking aggressive procedural tactics in ITC cases, as it underscores the agency’s autonomy in conducting its investigations.

    Conclusion

    The Federal Circuit’s dismissal of Realtek’s appeal serves as a reminder that courts will not second-guess discretionary decisions made by administrative agencies unless there is a clear statutory or constitutional violation. For technology companies engaged in patent disputes at the ITC, the decision underscores the importance of understanding the limits of procedural challenges and focusing on substantive legal strategies.

    What are your thoughts on this decision? Should courts have more authority to review agency discretion in trade-related cases? Let me know in the comments.

  • Regeneron v. Amgen: Patent Infringement and Biologic Formulations

    Regeneron v. Amgen: Patent Infringement and Biologic Formulations

    On March 14, 2025, the United States Court of Appeals for the Federal Circuit issued a decision in Regeneron Pharmaceuticals, Inc. v. Amgen Inc., affirming the district court’s denial of a preliminary injunction sought by Regeneron. This ruling is significant in the realm of the biologic pharmaceutical industry, as it centers on claim construction and the principles governing patent infringement.

    Background of the Case

    Regeneron sued Amgen, alleging that Amgen’s biosimilar product, ABP 938 (Pavblu), infringed its U.S. Patent 11,084,865 (the ’865 patent). This patent claims a pharmaceutical formulation for an ophthalmic drug, Eylea, which contains a vascular endothelial growth factor (VEGF) antagonist, a buffer, an organic co-solvent, and a stabilizing agent.

    Amgen developed ABP 938 as a biosimilar to Eylea but with a key difference: it eliminated the need for a separate buffer component by utilizing a self-buffering VEGF antagonist. Regeneron argued that Amgen’s formulation still fell within the scope of its patent, while Amgen maintained that its approach did not infringe because it lacked a distinct buffer component.

    Key Legal Issues

    The central legal question in this case revolved around claim construction—specifically, whether the language of the ’865 patent required the VEGF antagonist and the buffer to be separate components. The court’s analysis focused on the following issues:

    1. Claim Construction and the Becton Doctrine

    The court applied the principle established in Becton, Dickinson & Co. v. Tyco Healthcare Grp., which states that where a patent claim lists components separately, there is a presumption that they are distinct. Since the ’865 patent separately lists the VEGF antagonist and the buffer, the Federal Circuit found that the presumption of distinctness applied.

    Regeneron argued that the buffer requirement could be satisfied by the VEGF antagonist itself, given its buffering capacity. However, the court rejected this argument, emphasizing that the claim structure and specification reinforced the requirement that the buffer must be a separate component.

    2. The Role of Intrinsic and Extrinsic Evidence

    The court reviewed both intrinsic evidence (the patent claims and specification) and extrinsic evidence (expert testimony and scientific literature) to determine the meaning of the disputed claim terms. The specification described formulations where a VEGF antagonist was always accompanied by a separate buffer. Moreover, the examples and embodiments consistently treated the buffer as a distinct component.

    While Regeneron presented extrinsic evidence suggesting that proteins like aflibercept could function as buffers, the court found this insufficient to override the intrinsic evidence. The ruling underscored the principle that claim construction must align with the patent’s written description rather than rely on broad interpretations supported by external sources.

    3. Implications for Biosimilar Litigation

    A key takeaway from this case is how courts interpret claims involving biosimilars. The ruling reinforces that companies developing biosimilars can avoid infringement if they modify formulations in a way that eliminates explicitly claimed components. Amgen’s strategy of using a self-buffering formulation proved successful in distinguishing ABP 938 from Eylea in a legally meaningful way.

    Conclusion

    The Federal Circuit’s decision in Regeneron v. Amgen sets an important precedent for biologic patent disputes. It highlights the significance of precise claim drafting and underscores the challenges in asserting broad interpretations of patent scope. For companies engaged in biosimilar development, this ruling provides a roadmap for designing around existing patents by focusing on structural distinctions in formulation components.

    This case serves as a reminder that in patent litigation, the wording of claims and the clarity of specifications are critical. While Regeneron’s patent remains valid, its enforceability against biosimilars like Amgen’s ABP 938 has been significantly weakened. As the biosimilar market continues to grow, expect more litigation focused on claim construction and the interpretation of formulation patents.

    By Charles Gideon Korrell

  • In re Xencor: Written Description and Preamble Limitations

    In re Xencor: Written Description and Preamble Limitations

    On March 13, 2025, the United States Court of Appeals for the Federal Circuit issued a decision in In re Xencor, Inc., affirming the rejection of Xencor’s patent application for failing to meet the written description requirement under 35 U.S.C. § 112. This case raises important considerations regarding patent claim construction, particularly the treatment of Jepson claims and the role of preamble language in determining the scope of an invention.

    Background of the Case

    Xencor, Inc. filed U.S. Patent Application No. 16/803,690, seeking protection for modified anti-C5 antibodies with increased in vivo half-life, which could potentially improve treatments for autoimmune diseases. The Patent Trial and Appeal Board (PTAB) rejected Xencor’s claims on the grounds that they lacked sufficient written description. Xencor appealed the decision, leading to a review by the Appeals Review Panel (ARP) and ultimately by the Federal Circuit.

    Key Legal Issues

    1. Written Description Requirement

    Under 35 U.S.C. § 112, a patent’s specification must provide a clear and precise written description of the claimed invention. The court found that Xencor’s application failed to demonstrate that the company had possession of the full scope of its claimed invention at the time of filing. Specifically:

    • The application disclosed only one anti-C5 antibody (5G1.1), which the court found insufficient to support a broad genus claim covering all anti-C5 antibodies.
    • The specification lacked data or examples demonstrating the treatment of any disease using an anti-C5 antibody with the claimed modifications.

    The court emphasized that for claims involving biological inventions, written description sufficiency depends on the predictability of the field. Since antibodies have varying specificities and epitopes, a broader disclosure was necessary.

    2. Role of Preamble Language in Claim Construction

    A major point of contention was whether the preamble in Xencor’s method claim was limiting. The claim preamble recited, “A method of treating a patient by administering an anti-C5 antibody…” Xencor argued that “treating a patient” was merely a statement of purpose and should not require written description. However, the court held that:

    • The preamble was necessary to give meaning to the claim, particularly in relation to the claimed “increased in vivo half-life.”
    • The phrase “treating a patient” could not be separated from “administering an anti-C5 antibody,” making it an essential part of the invention.
    • Since the specification failed to provide examples or data supporting the therapeutic effect of the modified antibodies, the claim lacked sufficient written description.

    This ruling underscores that patentees cannot rely on preamble language to define the scope of an invention while avoiding corresponding disclosure requirements.

    3. Jepson Claims and Their Written Description Requirement

    The case also addressed whether Jepson claims—which define an invention as an improvement over prior art—require written description for both the improvement and the prior art elements. The court ruled that:

    • A Jepson claim’s preamble is part of the invention and, therefore, requires written description support.
    • Xencor failed to establish that anti-C5 antibodies were well-known in the prior art, meaning additional written description was needed.
    • Simply asserting that something is conventional does not relieve the applicant of the obligation to provide sufficient disclosure.

    This clarification is significant for applicants using Jepson claims, as it reinforces that both the improvement and the prior art must be supported by adequate written description.

    Implications for Patent Applicants

    The In re Xencor decision serves as a cautionary tale for patent applicants in the biotechnology and pharmaceutical fields:

    1. Broad Genus Claims Require Broad Support – Disclosing a single species within a broad genus may not be sufficient if the field is unpredictable.
    2. Preambles Can Be Limiting – If preamble language gives life and meaning to a claim, it will be treated as a limitation requiring written description support.
    3. Jepson Claims Require Complete Written Description – If using a Jepson claim, applicants must provide written support for both the claimed improvement and the elements stated to be prior art.

    Conclusion

    The Federal Circuit’s decision in In re Xencor, Inc. reaffirms the importance of the written description requirement, particularly for complex biological inventions. Patent applicants should ensure that their specifications provide sufficient disclosure to support the full scope of their claims, especially when using Jepson claim structures or asserting broad genus claims in unpredictable fields. This case highlights the necessity of careful patent drafting to avoid claim rejections based on insufficient written description.

    By Charles Gideon Korrell

  • Merck v. Aurobindo: Patent Term Extensions and Reissued Patents

    Merck v. Aurobindo: Patent Term Extensions and Reissued Patents

    Introduction

    The Federal Circuit recently issued a significant ruling in Merck Sharp & Dohme B.V. v. Aurobindo Pharma USA, Inc., clarifying how patent term extensions (PTEs) apply to reissued patents under the Hatch-Waxman Act. The court upheld the U.S. Patent and Trademark Office’s (PTO) decision to calculate the PTE for a reissued patent based on the original patent’s issue date, rather than the reissued patent’s date. This decision has major implications for pharmaceutical patents, regulatory review, and generic drug market entry.

    Background of the Case

    The case involved Merck’s reissued U.S. Patent No. RE44,733 (the “RE’733 patent”), which originated from U.S. Patent No. 6,670,340 (the “’340 patent”). The ’340 patent covered the active ingredient sugammadex, used in Merck’s BRIDION® drug. Due to the lengthy FDA approval process, Merck applied for a five-year PTE to compensate for the regulatory delay. The PTO granted the extension based on the ’340 patent’s original issue date, allowing the RE’733 patent to extend its exclusivity until 2026.

    Aurobindo and other generic manufacturers challenged this extension, arguing that the PTE should be calculated based on the reissued patent’s issue date, which would result in a significantly shorter extension. This dispute centered on the interpretation of 35 U.S.C. § 156(c) and whether “the patent” in the statute referred to the original or reissued patent.

    Key Legal Issues

    1. Interpretation of Patent Term Extensions for Reissued Patents
      • The primary legal issue was whether the term “the patent” in 35 U.S.C. § 156(c) refers to the original patent or the reissued patent when calculating a PTE.
      • The court affirmed that, for PTE purposes, the original patent’s issue date should be used, aligning with the intent of the Hatch-Waxman Act to compensate patent holders for lost market exclusivity during regulatory review.
    2. Statutory Construction and the Hatch-Waxman Act
      • The court emphasized that statutory interpretation should consider the broader context and purpose of the law, not just a plain-text reading.
      • It ruled that denying a PTE based on a reissued patent’s later issue date would undermine the Hatch-Waxman Act’s goal of incentivizing pharmaceutical innovation.
    3. Impact on Generic Drug Approvals and Litigation
      • The ruling affects how generic manufacturers time their Abbreviated New Drug Applications (ANDAs) and plan for Paragraph IV certifications.
      • By affirming the PTO’s method of calculating PTEs, the decision reinforces the stability of patent rights and regulatory protections for brand-name drug manufacturers.

    Court’s Conclusion

    The Federal Circuit affirmed the district court’s decision, holding that Merck’s RE’733 patent was entitled to a PTE based on the original ’340 patent’s issue date. This ruling ensures that reissued patents inheriting the original patent’s claims can benefit from the full term extension granted under the Hatch-Waxman Act.

    Implications for Patent Holders and Generic Drug Makers

    • For patent holders: This decision reinforces the strength of reissued patents and provides a clear precedent for how PTEs will be calculated moving forward.
    • For generic manufacturers: The ruling underscores the importance of carefully analyzing PTEs in litigation strategies, as challenges based on reissue dates are unlikely to succeed.

    The decision in Merck v. Aurobindo highlights the ongoing complexities in pharmaceutical patent law and the delicate balance between encouraging innovation and promoting generic drug competition. It sets a clear precedent for future PTE disputes and offers critical guidance to both patent holders and the generic drug industry.

    By Charles Gideon Korrell

  • Trademark Showdown: Bullshine Distillery v. Sazerac Brands and the FIREBALL Controversy

    Trademark Showdown: Bullshine Distillery v. Sazerac Brands and the FIREBALL Controversy

    On March 12, 2025, the Federal Circuit handed down its decision in Bullshine Distillery LLC v. Sazerac Brands, LLC, a case that highlights fundamental principles in trademark law, particularly the concepts of genericness and likelihood of confusion under the Lanham Act. The court affirmed the Trademark Trial and Appeal Board’s (TTAB) ruling that Sazerac’s FIREBALL trademark is not generic and that there is no likelihood of confusion between FIREBALL and Bullshine’s proposed BULLSHINE FIREBULL mark.

    Background of the Case

    The dispute arose when Bullshine Distillery applied to register the mark BULLSHINE FIREBULL for alcoholic beverages. Sazerac, the owner of the well-known FIREBALL mark for whiskey and liqueurs, opposed the registration, claiming that the mark would likely cause confusion among consumers. Bullshine responded with a counterclaim, arguing that “fireball” was a generic term for whiskey or liqueur-based drinks and, as such, should not have been registered as a trademark.

    Key Legal Issues and the Court’s Analysis

    1. Genericness – When Is a Trademark Too Common to Register?

    Bullshine’s primary argument on appeal was that “fireball” had been used generically before Sazerac registered its mark. Under trademark law, a generic term cannot function as a trademark because it refers to the general category of goods rather than a specific brand.

    However, the Federal Circuit rejected Bullshine’s argument, clarifying that the proper time to assess genericness is at the time of trademark registration, not based on historical usage.

    The Weiss Noodle Argument: “Once Generic, Always Generic”

    To support its case, Bullshine relied on the 1961 decision in Weiss Noodle Co. v. Golden Cracknell & Specialty Co., which had denied trademark registration for “haluska”, the Hungarian word for noodles. The court in Weiss Noodle held that a common name for a product can never gain trademark protection, no matter how strongly it becomes associated with a specific brand.

    Bullshine argued that if “fireball” had ever been used generically for an alcoholic drink, it should be forever barred from trademark protection under this principle.

    However, the Federal Circuit rejected this rigid approach, explaining that:

    • Genericness must be assessed at the time of registration, not based on historical use. Even if a word had once been generic, it could later acquire distinctiveness as a brand name.
    • Consumer perception controls – A term’s meaning can evolve, and what matters is how consumers understood the term when Sazerac registered it in 2001 and 2008.
    • The Lanham Act allows for cancellation of trademarks that later become generic (15 U.S.C. § 1064(3)), but it does not impose a “once generic, always generic” rule.

    Thus, because there was no strong evidence that “fireball” was understood as generic in 2001 or 2008, the court upheld Sazerac’s trademark rights. This aligns with recent Supreme Court precedent in Booking.com v. USPTO, which rejected rigid rules in favor of evaluating actual consumer perception.

    2. Likelihood of Confusion – Can FIREBALL and FIREBULL Coexist?

    Sazerac also cross-appealed, arguing that the TTAB erred in finding that BULLSHINE FIREBULL was not likely to cause confusion with FIREBALL.

    The likelihood of confusion analysis is based on the DuPont factors, which consider various elements such as the similarity of the marks, the strength of the senior mark, and the nature of the goods.

    The court found:

    • FIREBALL is commercially strong but conceptually weak – While FIREBALL is widely recognized, the term is suggestive of a product’s cinnamon flavor, making it less distinctive.
    • The marks are dissimilar in overall impression – The addition of “BULLSHINE” and the reversal of word order made BULLSHINE FIREBULL visually and phonetically distinct from FIREBALL.
    • No evidence of actual confusion – There was no significant evidence that consumers would confuse the two brands in the marketplace.

    Thus, the court affirmed the TTAB’s ruling that there was no likelihood of confusion.

    Key Takeaways from the Decision

    1. Genericness is assessed at the time of registration – A term’s prior usage does not automatically make it generic for all time.
    2. The “once generic, always generic” rule was rejected – The court refused to apply the rigid approach from Weiss Noodle and instead focused on consumer perception at the time of registration.
    3. Strength of a trademark depends on commercial and conceptual distinctiveness – Even a well-known mark like FIREBALL can be conceptually weak if it is descriptive of a product’s attributes.
    4. Trademark disputes require a careful likelihood of confusion analysis – Minor differences in a mark’s wording, order, and overall impression can be enough to distinguish it from an established brand.

    Final Thoughts

    This case serves as a reminder that trademark law is about consumer perception, not just historical technicalities. The decision ensures that while brand owners can enforce their rights, competitors still have room to create new branding without unnecessary restrictions. It also reinforces a modern, flexible approach to trademark law, ensuring that consumer understanding at the time of registration—not outdated historical use—controls the validity of a trademark.ictions.

    By Charles Gideon Korrell

  • Sierra Wireless v. Sisvel: (Dis)Qualification of Expert Witnesses in the PTAB

    Sierra Wireless v. Sisvel: (Dis)Qualification of Expert Witnesses in the PTAB

    In its March 10, 2025 decision in Sierra Wireless, ULC v. Sisvel S.p.A., the Federal Circuit vacated a Patent Trial and Appeal Board (PTAB) decision due, in part, to the improper reliance on an expert witness who was not shown to possess the qualifications of a person of ordinary skill in the art (POSITA). For patent litigators and practitioners navigating IPR proceedings, the court’s analysis serves as a reminder of the evidentiary standards governing expert testimony.

    Background

    Sisvel’s U.S. Patent No. 7,869,396 covers an ARQ method in wireless communications. The appellants—Sierra Wireless, Honeywell, and Telit Cinterion—challenged all claims in IPR, asserting anticipation and obviousness based on a prior international application (“Sachs”).

    The PTAB held the independent claims (1, 2, and 6–8) unpatentable but upheld the dependent claims (3–5, 9, 10). Both parties appealed. On appeal, the Federal Circuit took particular issue with how the Board assessed expert testimony from Sisvel’s declarant, Regis Bates.

    Expert Qualifications: The Core of the Dispute

    Appellants argued the PTAB improperly relied on Bates’ declarations despite his failure to meet the Board’s own definition of a POSITA. Specifically, the Board had defined a POSITA as someone with:

    • A degree in electrical engineering or a similar discipline, and
    • At least three years of relevant industry or research experience in wireless radio systems for data transmission and retransmission.

    Bates lacked a technical degree and had no clear experience designing transmission/retransmission methods in cellular networks. Nonetheless, his testimony was repeatedly cited by the Board in support of its obviousness and anticipation findings.

    The Federal Circuit agreed with the appellants, citing Kyocera Senco Indus. Tools Inc. v. ITC, 22 F.4th 1369 (Fed. Cir. 2022), to reaffirm that a witness must possess at least the ordinary skill in the art to opine on claim construction, anticipation, and obviousness. The Board’s reliance on Bates, without addressing whether his decades of telecommunications experience could substitute for formal qualifications, was deemed an abuse of discretion.

    Practical Takeaways

    • POSITA matters: A witness’s qualifications must align with the Board’s (or court’s) definition of a skilled artisan. Practitioners should be prepared to establish this alignment explicitly—especially in PTAB proceedings, where the evidentiary record is often limited to declarations and cross-examination.
    • Challenge early and clearly: Raise challenges to expert qualifications as early as possible. In this case, the issue was preserved and ultimately reversed a PTAB finding.
    • Substance over longevity: Even decades of experience in a general field may not suffice if it doesn’t map to the specific technical area required under the POSITA standard.

    Final Thoughts

    As patent practitioners continue to leverage expert declarations in IPRs and litigation, Sierra Wireless underscores the importance of tightly linking an expert’s credentials to the POSITA definition. Courts will not hesitate to vacate Board decisions that rest on testimony from unqualified experts—regardless of the expert’s experience or the PTAB’s apparent confidence.

    By Charles Gideon Korrell

  • Federal Circuit Vacates PTAB Decision in CQV Co. v. Merck Patent GmbH, Raising Key Issues in Patent Infringement and Prior Art Analysis

    The United States Court of Appeals for the Federal Circuit recently issued an opinion in CQV Co., Ltd. v. Merck Patent GmbH, vacating and remanding the Patent Trial and Appeal Board (PTAB) decision regarding U.S. Patent No. 10,647,861. The ruling focuses on key legal issues related to patent infringement, prior art determination, and procedural fairness in PTAB proceedings.

    Background of the Case

    Merck Patent GmbH owns U.S. Patent No. 10,647,861, which claims α-Al2O3 (“alpha-alumina”) flakes used in industrial coatings, automotive coatings, printing inks, and cosmetic formulations. The patent purports that these flakes provide improved optical properties compared to prior art.

    CQV Co., Ltd. petitioned the PTAB for post-grant review, arguing that claims 1–22 of the ’861 patent were unpatentable as obvious in light of prior art, including the commercial product Xirallic®. The PTAB, however, found that CQV failed to prove by a preponderance of the evidence that the cited prior art (Xirallic®) was publicly available before the patent’s critical date and rejected CQV’s invalidity challenge. CQV appealed to the Federal Circuit.

    Key Legal Issues Addressed by the Court

    1. Prior Art and the Burden of Proof

    A central issue in the appeal was whether CQV sufficiently established that Xirallic® was prior art before the patent’s critical date. Under patent law, a reference must be publicly available before the critical date to qualify as prior art. The court scrutinized the PTAB’s analysis and found that the Board improperly disregarded unrebutted evidence from CQV indicating that the product was available to the public.

    The Federal Circuit emphasized that, while petitioners bear the burden of proving prior art status, they need only meet the preponderance of the evidence standard. The Board, in rejecting CQV’s argument, failed to fully consider critical evidence that supported Xirallic®’s availability, including testimony on quality control procedures and sales records.

    2. Standing in Post-Grant Review Appeals

    Merck challenged CQV’s standing to appeal the PTAB decision, arguing that CQV had not suffered a concrete injury. The Federal Circuit rejected this argument, holding that CQV had demonstrated a sufficient injury-in-fact based on Merck’s communications with CQV’s customers alleging infringement of the ’861 patent. Because CQV was contractually obligated to indemnify one of its customers against infringement claims, the court found that CQV had standing under Arris Grp., Inc. v. British Telecomms. PLC, which recognizes standing for suppliers who face indirect threats of litigation.

    3. Failure to Consider the Entirety of the Record

    The court criticized the PTAB for failing to consider all relevant evidence regarding the availability of Xirallic® as prior art. Specifically, it noted that the Board omitted testimony from CQV’s expert that contradicted the Board’s conclusion. The Federal Circuit reiterated that the Administrative Procedure Act (APA) requires the Board to fully explain its decisions and consider all material evidence. The failure to do so necessitated vacating and remanding the decision for reconsideration.

    Implications for Patent Litigation and PTAB Proceedings

    This decision highlights several important aspects of patent law:

    • Patent challengers must present compelling evidence to establish prior art status, but the PTAB must also fairly weigh all available evidence when making its determinations.
    • Standing in post-grant review appeals may be established through indemnity obligations, reinforcing the ability of suppliers to challenge patents that may indirectly affect them.
    • The Federal Circuit continues to hold PTAB accountable for failing to properly consider the record, signaling that procedural fairness remains a key concern in administrative patent proceedings.

    Conclusion

    The Federal Circuit’s ruling in CQV Co. v. Merck Patent GmbH serves as a significant reminder of the evidentiary and procedural standards that govern PTAB proceedings. By vacating the PTAB’s decision, the court reinforced the importance of a thorough and fair assessment of prior art claims and set a precedent for future disputes involving commercial products as prior art. As the case returns to the Board for further consideration, patent litigators and stakeholders will be watching closely to see how the PTAB reevaluates the evidence in light of the Federal Circuit’s guidance.

    By Charles Gideon Korrell

  • Federal Circuit Revives Patent Infringement Case Over Quick-Release Tactical Vest System

    In a recent decision, the United States Court of Appeals for the Federal Circuit vacated a district court’s summary judgment ruling of noninfringement in IQRIS Technologies LLC v. Point Blank Enterprises, Inc., and National Molding, Inc. The ruling focuses on a dispute over the proper interpretation of the term “pull cord” in IQRIS Technologies’ patents for quick-release systems used in tactical vests. The decision addresses key issues in patent law, including claim construction, literal infringement, and the doctrine of equivalents.

    Background of the Case

    IQRIS Technologies LLC (“IQRIS”) sued Point Blank Enterprises and National Molding (collectively, “Defendants”) for allegedly infringing U.S. Patent Nos. 7,814,567 and 8,256,020. These patents cover quick-release mechanisms for tactical vests, designed to allow soldiers and first responders to rapidly remove their vests in emergency situations. The accused products, Point Blank’s tactical vests using National Molding’s “Quad Release” and “Evil Twin” quick-release systems, were alleged to infringe on these patents.

    Defendants moved for summary judgment, arguing that their products did not infringe because they lacked a “pull cord” as required by the claims. The district court agreed, construing the term “pull cord” to mean a “cord that can be directly pulled by a user to disengage a releasable fastener or hook.” Because Defendants’ products used Bowden cables—flexible, sheathed cables actuated by a trigger—the district court held they did not meet the patent claim requirements and granted summary judgment of noninfringement.

    Issues of Law Addressed by the Court

    1. Claim Construction – What Constitutes a “Pull Cord”?

    One of the most critical aspects of the case was the interpretation of the term “pull cord.” The district court had narrowly construed “pull cord” as requiring direct pulling by the user, excluding designs incorporating triggers or handles. The Federal Circuit, however, found this construction too restrictive, emphasizing that the patent claims did not explicitly require direct pulling and that nothing in the specification clearly disavowed the inclusion of a handle or intermediary mechanism.

    This ruling aligns with longstanding Federal Circuit precedent cautioning against importing limitations from preferred embodiments into the claims unless the patentee has expressly redefined the term or disavowed broader interpretations. By overturning the district court’s construction, the Federal Circuit ensured that IQRIS could argue that the accused products’ mechanisms fell within the scope of the asserted patent claims.

    2. Literal Infringement and the Doctrine of Equivalents

    Given its narrow construction of “pull cord,” the district court concluded that the accused products did not literally infringe because their Bowden cable system was indirectly actuated by a trigger rather than being directly pulled. It also found no infringement under the doctrine of equivalents, reasoning that the accused system provided a “mechanical advantage” over the claimed invention and that a finding of equivalency would ensnare prior art.

    The Federal Circuit disagreed, ruling that the lower court’s reasoning improperly relied on an overly restrictive claim interpretation. The appellate court emphasized that while prior art considerations are relevant to the doctrine of equivalents, the patent specification did not criticize handles per se, only the tedious reassembly process associated with certain prior art systems. Because the district court’s ruling was based on an erroneous claim construction, the Federal Circuit vacated the summary judgment and remanded the case for further proceedings.

    Implications for Patent Law and Intellectual Property

    This case highlights several important principles in patent law:

    • Claim Scope and Construction: Courts must be careful not to limit claim terms to specific embodiments unless there is a clear disavowal or redefinition in the specification.
    • Doctrine of Equivalents: When determining infringement under the doctrine of equivalents, courts must avoid improperly excluding systems that achieve substantially the same function, in the same way, to achieve the same result.
    • Impact on Future Litigation: The decision underscores the importance of precise claim drafting and the risks associated with overly narrow claim constructions. Patent owners must ensure their claims are drafted broadly enough to cover alternative implementations while avoiding prior art limitations.

    Conclusion

    The Federal Circuit’s ruling revives IQRIS’s infringement claims and provides an opportunity for further fact-finding on remand. This case serves as a reminder that claim construction disputes can significantly impact infringement determinations and that patentees should carefully define their terms to avoid unnecessary limitations on claim scope. As the case returns to the district court, the parties will now litigate under a broader interpretation of “pull cord,” which could ultimately affect the outcome on infringement and potential damages.

    Patent litigants should take note of this decision, as it reinforces the importance of claim language and how courts interpret key patent terms in infringement disputes.

    By Charles Gideon Korrell

  • Patent Battles in Wearable Tech: AliveCor v. Apple and the Fight Over Arrhythmia Detection

    Patent Battles in Wearable Tech: AliveCor v. Apple and the Fight Over Arrhythmia Detection

    On March 7, 2025, the Federal Circuit issued its decision in AliveCor, Inc. v. Apple Inc., upholding the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) ruling that invalidated AliveCor’s patents on heart rate monitoring technology. The case has significant implications for the wearable technology industry, particularly in the areas of patentability, obviousness, and the interplay between patent litigation and administrative patent challenges.

    Background of the Case

    AliveCor, a medical technology company, held patents covering systems and methods for detecting cardiac arrhythmias using wearable devices. The key patents in dispute—U.S. Patent Nos. 9,572,499, 10,595,731, and 10,638,941—described a technology involving smartwatches equipped with photoplethysmography (PPG) sensors to monitor heart rate, notify users of irregularities, and prompt them to conduct electrocardiogram (ECG) recordings for further analysis.

    Apple challenged these patents through inter partes review (IPR) at the PTAB, arguing that the claims were obvious in light of prior art references. The Board ruled in Apple’s favor, finding that the claims lacked novelty. AliveCor appealed to the Federal Circuit, arguing that the PTAB’s conclusions on obviousness were incorrect and that Apple had withheld evidence relevant to secondary considerations of non-obviousness.

    Key Legal Issues

    1. Obviousness of Machine Learning-Based Arrhythmia Detection

    AliveCor’s patents included claims requiring the use of machine learning algorithms to detect arrhythmias based on heart rate data. The court affirmed the PTAB’s determination that this approach was obvious in view of prior art references, particularly:

    • Hu 1997: A study describing a patient-adaptable ECG classifier that employed machine learning to detect cardiac conditions.
    • Li 2012: A research paper discussing the use of machine learning to reduce false arrhythmia alarms by integrating multiple physiological signals.
    • Shmueli Patent Application (2012): A prior patent application disclosing a wrist-mounted heart monitoring device that used both PPG and ECG data to detect and confirm irregular heart activity.

    The Federal Circuit concluded that a person of ordinary skill in the art would have been motivated to combine these techniques, reinforcing the Board’s finding that AliveCor’s claimed use of machine learning was not sufficiently novel.

    2. “Confirmation” Step in Arrhythmia Detection

    Another key issue was whether the requirement to confirm an arrhythmia using ECG data was patentable. AliveCor argued that its method—detecting arrhythmia using PPG data and then confirming it using an ECG—was unique. However, Apple successfully argued that Shmueli already disclosed this concept. The PTAB and the Federal Circuit both found that a skilled artisan would have found it obvious to confirm PPG-based arrhythmia detection with ECG, leading to the invalidation of the relevant claims.

    3. Failure to Produce Secondary Consideration Evidence

    AliveCor also contended that Apple failed to disclose evidence from a parallel International Trade Commission (ITC) investigation, which had considered secondary indicators of non-obviousness, such as commercial success and industry praise. AliveCor claimed that Apple’s withholding of this evidence violated discovery obligations.

    However, the Federal Circuit found that AliveCor had forfeited this argument by failing to raise the issue before the PTAB. The court emphasized that procedural diligence is essential in IPR proceedings and that issues must be timely presented to be considered on appeal.

    Implications for Intellectual Property Law

    This decision underscores several critical points in patent law and intellectual property strategy:

    • Obviousness in Emerging Technologies: Courts and the PTAB continue to scrutinize patents in fast-evolving fields like machine learning and wearable tech, often finding that incremental improvements fail to meet the non-obviousness requirement.
    • Interplay Between Patent Litigation and IPRs: The case highlights the increasing role of inter partes reviews in invalidating patents that might otherwise survive district court litigation.
    • Procedural Rigor in Patent Challenges: Parties must be meticulous in raising all relevant issues during PTAB proceedings; failure to do so may result in forfeiture on appeal.

    Conclusion

    The Federal Circuit’s decision in AliveCor v. Apple represents a significant win for Apple and a cautionary tale for patent holders in the medical technology space. As courts and administrative bodies continue to apply strict standards for patent validity, companies seeking to protect their innovations must ensure their patents contain clear, non-obvious advancements over existing technology. Moreover, maintaining procedural diligence in parallel patent litigation and administrative proceedings is crucial to avoiding unfavorable rulings on appeal.

    As wearable health technology continues to advance, the legal battles over patentability will shape the competitive landscape, influencing which companies can dominate the market with their innovations.

    By Charles Gideon Korrell