Technology Information Law Blog by Charles Gideon Korrell

Author: gideon.korrell

  • Rex Medical v. Intuitive Surgical: The Federal Circuit Draws a Hard Line on Apportionment

    Rex Medical v. Intuitive Surgical: The Federal Circuit Draws a Hard Line on Apportionment

    The Federal Circuit’s decision in Rex Medical, L.P. v. Intuitive Surgical, Inc. presents a familiar but still sobering outcome: a jury finds infringement and validity, awards substantial damages, and yet the patentee ultimately recovers nothing more than nominal damages. The case underscores, once again, that proof of infringement is only half the battle. Without a damages case that is adequately tethered to the facts and properly apportioned, even a favorable jury verdict can evaporate on post-trial review.

    Background and Procedural Posture

    Rex Medical sued Intuitive Surgical in the District of Delaware, asserting infringement of U.S. Patent No. 9,439,650, directed to surgical stapling systems. Although the case initially involved a related patent, only claim 6 of the ’650 patent ultimately proceeded to trial. The accused products were Intuitive’s SureForm surgical staplers and related reloads.

    Just days before trial, the district court excluded Rex’s damages expert, concluding that his reliance on a prior settlement license between Rex and Covidien was methodologically unreliable. The jury therefore heard no expert damages testimony from either side. Instead, Rex relied primarily on testimony from its president, who had participated in negotiating the Covidien license.

    The jury nonetheless found that Intuitive infringed claim 6, rejected Intuitive’s written description challenge, and awarded Rex $10 million in damages. On post-trial motions, however, the district court reduced the award to nominal damages of $1, concluding that Rex had failed to prove damages with legally sufficient evidence. The Federal Circuit affirmed across the board.

    Exclusion of the Damages Expert and the Apportionment Problem

    At the center of the appeal was the exclusion of Rex’s damages expert. The expert had opined that a hypothetical negotiation would have resulted in a $20 million lump-sum license, relying heavily on a $10 million settlement license between Rex and Covidien. That license, however, covered not only the ’650 patent, but also a related U.S. patent, numerous additional U.S. patents and applications, and a substantial number of foreign patents and applications.

    The expert attempted to justify treating the Covidien license as comparable by asserting that nearly all of its value resided in the two related U.S. patents, which he characterized as embodying the same core stapling innovation. The district court found this insufficient. The expert did not allocate any portion of the lump-sum payment between the ’650 patent and the other licensed patents, nor did he analyze whether the additional patents covered Covidien products or contributed independent value to the agreement.

    On appeal, the Federal Circuit agreed. The court emphasized that when a comparable license covers multiple patents, a damages analysis must account for the relative contribution of the asserted patent. Generalized assertions that most patent portfolios are “value-skewed” toward one or two key patents were deemed untethered to the facts of the case. Because the expert failed to perform any meaningful allocation, the district court did not abuse its discretion in excluding his testimony.

    Charles Gideon Korrell notes that this portion of the opinion fits squarely within a growing line of cases emphasizing rigor in damages methodology, particularly where portfolio licenses are involved. Courts are increasingly unwilling to accept high-level narratives in place of concrete, case-specific analysis.

    From $10 Million to $1: JMOL of No Damages

    The more striking aspect of the decision is the Federal Circuit’s affirmance of the district court’s reduction of the jury’s $10 million award to nominal damages. Although framed as a remittitur in the judgment, the appellate court treated the ruling as a grant of judgment as a matter of law that Rex had proven no damages at all.

    The Federal Circuit reiterated several core principles. While the Patent Act requires an award of a reasonable royalty, it does not mandate damages in the absence of evidence from which a royalty can be reasonably derived. Damages must be proven, not guessed. A jury may select a royalty figure within the range supported by the record, but it may not speculate where the record provides no meaningful basis for apportionment.

    Here, the evidentiary gap proved fatal. With the damages expert excluded, Rex relied on the Covidien license and lay testimony. But the Covidien agreement licensed a broad portfolio, and Rex offered no evidence enabling the jury to determine what portion of the $10 million payment was attributable to the ’650 patent alone. The problem was compounded by the fact that, in the Covidien litigation, Rex had dropped the ’650 patent before settlement, leaving only the related patent at issue. That procedural history made it at least plausible that the licensed value was driven primarily by the other patent, not the one asserted against Intuitive.

    The lay testimony did not cure these defects. Rex’s president identified various qualitative factors influencing the Covidien settlement but could not assign any dollar value to the ’650 patent, confirm the relevance of expired or foreign patents, or explain how the $10 million figure related to product sales. Large sales figures and market opportunity testimony likewise failed to provide a bridge to a reasonable royalty tied to the patented invention.

    Charles Gideon Korrell believes this aspect of the ruling is especially instructive for trial strategy. Proceeding to trial without a viable expert damages case, particularly after an adverse Daubert ruling, is a high-risk gamble. Once the expert testimony was excluded, Rex needed alternative evidence capable of supporting apportionment. The absence of such evidence left the jury’s award vulnerable to post-trial elimination.

    Infringement and Claim Construction

    Intuitive cross-appealed on infringement, focusing on claim construction issues related to the “lower portion” of the claimed beam and the requirement that the beam be “configured to cause” movement of the staple pusher. The Federal Circuit rejected these arguments.

    The court affirmed the district court’s construction of “lower portion” as having its plain and ordinary meaning, which could include structures extending beyond the lowermost horizontal section of an I-beam. The claim language did not require a strict I-beam geometry, and the court declined to import limitations from a single embodiment in the specification.

    Substantial evidence also supported the jury’s finding that Intuitive’s products satisfied the “configured to cause” limitation. Testimony from both sides’ experts and Intuitive’s own engineers established that a portion of the beam contacted a shuttle, which in turn caused the staple pusher to move. The court emphasized that direct infringement is a strict-liability inquiry and does not depend on the designer’s intent or the primary purpose of a given component.

    Written Description Challenge Rejected

    Finally, the Federal Circuit affirmed the jury’s rejection of Intuitive’s written description challenge. Intuitive argued that if the claims were broad enough to cover a beam-and-shuttle configuration, the specification must expressly disclose such a configuration. The court disagreed, explaining that written description focuses on whether the inventor had possession of the claimed invention, not whether the specification anticipates every possible infringing embodiment.

    The court characterized Intuitive’s argument as a repackaged non-infringement theory. Nothing in the intrinsic record precluded the presence of additional components, and the use of “comprising” language in the claims further undermined the argument that the specification needed to describe the accused configuration in detail.

    Takeaways

    The result is stark. Rex emerged with a judgment confirming infringement and validity, yet no meaningful monetary recovery. The decision reinforces several practical lessons.

    First, comparable licenses are powerful but dangerous tools. When a license covers more than the asserted patent, apportionment is not optional. Second, exclusion of a damages expert can be outcome-determinative. Once that testimony is gone, the remaining evidence must still allow the jury to tie dollars to the patented invention. Third, patentees should think carefully before proceeding to trial without a viable damages theory that can survive post-trial scrutiny.

    As Charles Gideon Korrell observes, this case is a reminder that patent litigation is ultimately an evidentiary exercise. Winning on liability does not excuse gaps in proof on damages. Where those gaps remain, courts will not hesitate to reduce a verdict to zero, even after a jury has spoken.

    By Charles Gideon Korrell

  • Focus Prods v. Kartri Sales: When Restriction Practice Becomes Prosecution History Disclaimer

    Focus Prods v. Kartri Sales: When Restriction Practice Becomes Prosecution History Disclaimer

    The Federal Circuit’s decision in Focus Products Group International, LLC v. Kartri Sales Co., Inc. delivers a wide-ranging opinion that touches nearly every corner of intellectual property litigation: venue after TC Heartland, prosecution history disclaimer, multi-defendant appellate waiver, trademark standing, trade dress functionality, willfulness, and fee shifting. But at its core, the case stands as a cautionary tale about examiner-driven restriction practice and the long shadow it can cast over claim scope years later.

    The dispute arose from “hookless” shower curtains—products designed to hang directly on a shower rod using integrated rings with slits, eliminating the need for separate hooks. Focus Products and its related entities asserted three related utility patents, along with trademark and trade dress rights, against Kartri Sales Co. and its supplier Marquis Mills. After years of litigation in the Southern District of New York, the district court largely sided with Focus, entering summary judgment of patent infringement, finding trademark and trade dress infringement, determining willfulness, and awarding enhanced damages and attorneys’ fees.

    On appeal, the Federal Circuit affirmed some findings, reversed others, vacated substantial portions of the judgment, and remanded for further proceedings. The result was a sharply divided outcome between the two defendants and a detailed roadmap of how procedural and prosecution decisions can dictate substantive outcomes.

    Venue and the Cost of Delay After TC Heartland

    The opinion first addresses venue, rejecting the defendants’ attempt to escape the Southern District of New York under TC Heartland. Although TC Heartland made venue objections newly available, the Federal Circuit emphasized that such objections must still be raised seasonably. Here, the defendants waited nearly four months after TC Heartland—while continuing discovery and depositions—before objecting.

    The court distinguished earlier cases where venue objections were preserved promptly and litigation remained in its early stages. The lesson is straightforward: TC Heartland did not create an open-ended escape hatch. Delay and continued participation in litigation can forfeit venue challenges, even when the law changes mid-case.

    Restriction, Election, and the Birth of Disclaimer

    The most consequential portion of the decision concerns the ’248 and ’609 patents and the meaning of “ring.” During prosecution of the original application, the examiner issued a restriction requirement identifying multiple patentably distinct species. One species included rings with projections or fingers extending from the outer circumference; another species included rings with a flat upper edge.

    The applicant elected the projected-edge species and did not traverse the examiner’s characterization. When the applicant later attempted to include claims expressly reciting a flat upper edge, the examiner withdrew those claims as drawn to a non-elected species. The applicant again did not object and proceeded to allowance.

    Years later, Focus argued that the issued claims were broad enough to encompass flat-topped rings. The Federal Circuit disagreed. Reading the prosecution history as a whole, the court held that the patentee had clearly and unmistakably disclaimed rings with flat upper edges for the ’248 and ’609 patents by acquiescing in the examiner’s species demarcation.

    This was not a case of ambiguous silence. The examiner repeatedly enforced the boundary between species, and the applicant repeatedly accepted it. As the court explained, cooperation with the examiner’s demand to exclude a species—without traversal—can operate as an affirmative disclaimer, even absent express words of surrender.

    The continuation history reinforced that conclusion. When prosecuting the later ’088 patent, the applicant distinguished the earlier patents by adding a “flat upper edge” limitation to overcome a double patenting rejection. That amendment only made sense if the earlier patents did not already cover flat-topped rings. The Federal Circuit treated that prosecution history as confirming the narrowed scope of the earlier claims.

    Because the accused products used flat-topped rings, the court reversed the infringement findings for the ’248 and ’609 patents as to Marquis.

    The ’088 Patent and the Limits of Summary Judgment

    The outcome for the ’088 patent was more nuanced. The Federal Circuit agreed with the district court’s construction of “projecting edge” as “an edge that projects from the outer circumference of the ring.” But it found the infringement analysis insufficiently explained.

    The district court had concluded that a portion of the accused ring constituted a projecting edge, yet failed to articulate where the ring’s outer circumference ended and the projecting edge began. The Federal Circuit noted that the accused rings closely resembled embodiments in the specification that lacked any projecting edge at all.

    Without a clear analytical framework distinguishing circumference from projection, summary judgment could not stand. The court vacated the ’088 patent infringement finding for Marquis and remanded for a more rigorous analysis tied to the intrinsic record.

    Appellate Waiver and Divergent Outcomes

    One of the more unusual aspects of the case was the divergent outcome between Kartri and Marquis, despite their products being essentially identical. That divergence stemmed not from technical differences, but from appellate briefing strategy.

    The defendants filed separate opening briefs that attempted to divide issues between them. Marquis fully developed the patent arguments; Kartri devoted barely a page to them. When challenged, both defendants disclaimed any intent to rely on each other’s arguments—accepting the risk of waiver.

    The Federal Circuit took them at their word. Marquis preserved and won on the key patent issues. Kartri, by contrast, waived its patent non-infringement arguments through underdevelopment. As a result, infringement findings were reversed or vacated for Marquis, but largely affirmed for Kartri.

    This portion of the opinion is a stark reminder that appellate courts will not rescue parties from strategic choices about briefing. Identical facts do not guarantee identical outcomes when arguments are waived.

    Trademarks, Standing, and Ownership Proof

    The court also dismantled the district court’s finding that Focus had standing to assert the EZ ON trademark. Focus relied on a 2012 licensing agreement to show ownership, but the Federal Circuit carefully parsed the contract and found no transfer of trademark ownership before suit was filed.

    The agreement licensed HOOKLESS®, not EZ ON. Provisions concerning “Licensed Products” did not establish mark ownership, and a clause discussing assignment of later-developed intellectual property did not plausibly apply to trademarks through “reduction to practice.” Actual assignment of the EZ ON mark occurred years after the lawsuit began.

    Because standing must exist at filing, the Federal Circuit reversed the EZ ON trademark infringement finding outright.

    The court also vacated the HOOKLESS® trademark infringement finding, concluding that the district court’s likelihood-of-confusion analysis improperly focused on product similarity rather than mark-to-mark comparison in the marketplace context.

    Trade Dress and TrafFix Revisited

    Trade dress fared no better. The district court found Focus’s asserted trade dress non-functional based on its “neat and orderly” appearance and the availability of alternative designs. The Federal Circuit held that analysis incomplete under TrafFix.

    Where an expired utility patent claims the same features asserted as trade dress, functionality is strongly presumed. The district court failed to meaningfully compare the claimed trade dress elements with the features claimed in Focus’s expired patent. Without that comparison, Focus could not meet its burden to prove non-functionality.

    The trade dress infringement finding was vacated and remanded for proper application of TrafFix.

    Willfulness, Fees, and the Unraveling of Enhancements

    With large portions of the infringement judgment undone, the Federal Circuit also vacated findings of willfulness and the resulting enhanced damages. Notice of patent rights alone was insufficient, particularly where defendants articulated consistent non-infringement positions grounded in prosecution history. Similarly, trade dress willfulness could not predate notice of the asserted trade dress.

    The attorneys’ fee award was likewise vacated. While the district court did not abuse its discretion in deeming the case exceptional, the fee calculation failed to separate compensable work from claims on which Focus no longer prevailed.

    Takeaways

    This decision reinforces several practical lessons. Restriction requirements and elections matter, especially when untraversed. Acquiescence can shape claim scope just as powerfully as express disclaimer. Continuation practice can lock in those boundaries rather than erase them. Appellate briefing choices can determine winners and losers independent of product facts. And trademark and trade dress claims demand disciplined proof of ownership and non-functionality.

    As Charles Gideon Korrell notes, restriction practice is often treated as a procedural inconvenience, but Focus Products shows it can become substantive destiny. Charles Gideon Korrell believes that patent prosecutors should treat elections with the same care as claim amendments, assuming every concession may later be read as intentional surrender. And Charles Gideon Korrell observes that this case is also a reminder that appellate courts enforce waiver rules strictly, even when doing so leads to asymmetrical results.

    The Federal Circuit’s opinion is long, detailed, and unsparing. It rewards precision and punishes shortcuts—both in prosecution and in litigation.

    By Charles Gideon Korrell

  • Apex Bank v. CC Serve Corp.: When “Highly Similar” Means Consistently Similar Across the DuPont Factors

    Apex Bank v. CC Serve Corp.: When “Highly Similar” Means Consistently Similar Across the DuPont Factors

    The Federal Circuit’s September 25, 2025 decision in Apex Bank v. CC Serve Corp. offers an important reminder that the DuPont likelihood-of-confusion factors are not a cafeteria menu. Once the Trademark Trial and Appeal Board makes a factual determination that services are “highly similar” under one factor, it cannot quietly narrow that conclusion when analyzing others. Consistency matters, and here, inconsistency was enough to send the case back.

    The court affirmed the Board’s finding that Apex Bank’s proposed ASPIRE BANK marks cover services that are highly similar to CC Serve’s ASPIRE mark for credit card services. But it vacated and remanded the Board’s treatment of third-party marks and commercial impression, holding that the Board applied an unduly narrow view of “similar services” when evaluating mark weakness. The result is a partial victory for Apex and a cautionary lesson for trademark litigants on both sides of Section 2(d).

    Background and Procedural History

    CC Serve Corp. owns a registration for the standard-character mark ASPIRE for credit card services, issued in 1998 with an effective priority date in 1996. CC Serve does not itself operate as a retail bank. Instead, it partners with issuing banks, which provide ASPIRE-branded credit cards and associated accounts, while CC Serve and its affiliates handle servicing and program management.

    Apex Bank, by contrast, is a Tennessee-chartered retail bank with brick-and-mortar branches offering checking, savings, loans, and mortgages. It does not offer credit cards. In 2019, Apex filed intent-to-use applications for ASPIRE BANK word and design marks for “banking and financing services,” intending to launch an internet bank under that brand.

    After publication, CC Serve opposed registration under Section 2(d) of the Lanham Act, alleging likelihood of confusion with its ASPIRE mark. The TTAB sustained the opposition, finding confusion likely under the DuPont framework. Apex appealed.

    Standard of Review and Legal Framework

    The Federal Circuit reviewed the Board’s legal conclusions de novo and its factual findings for substantial evidence. Likelihood of confusion is a legal question based on underlying factual determinations under the thirteen DuPont factors. Not every factor must be addressed, but those that are must be analyzed correctly and supported by the record.

    As Charles Gideon Korrell has noted in other trademark contexts, the real battleground in many Section 2(d) cases is not whether the Board cites the right factors, but whether it applies them coherently across the decision. That theme runs throughout this opinion.

    DuPont Factor Two: Similarity of the Services (Affirmed)

    The second DuPont factor examines the similarity or relatedness of the parties’ goods or services. Exact identity is not required. It is enough that the services are related in a way that could cause consumers to believe they originate from the same source.

    Here, the Board undertook a detailed analysis of what “credit card services” meant at the time of CC Serve’s registration, particularly because that term was later removed from the Trademark ID Manual. The Board concluded that credit card services encompass issuing cards, managing accounts, processing transactions, and related financial activities.

    The Board then compared those services to Apex’s identified “banking and financing services.” Relying on dictionary definitions and third-party registrations covering both banking and credit card services under a single mark, the Board found that the services were legally identical in part and highly similar overall.

    On appeal, Apex argued that CC Serve merely supports banks and does not itself provide banking services. The Federal Circuit rejected that argument. Substantial evidence supported the Board’s conclusion that the services overlap to a significant degree, regardless of the precise business model.

    The court therefore affirmed the Board’s analysis of the second DuPont factor. For Apex, this was the uphill portion of the case, and the court saw no reason to disturb the Board’s finding.

    DuPont Factor Six: Third-Party Use and Mark Weakness (Vacated)

    The sixth DuPont factor considers the number and nature of similar marks in use on similar goods or services. Evidence of widespread third-party use can demonstrate that a mark is commercially or conceptually weak and therefore entitled to a narrower scope of protection.

    Apex introduced evidence of numerous third-party marks using ASPIRE or ASPIRE-formative terms across the financial services industry. The Board, however, limited its analysis to marks used specifically for credit card services. Marks used for other banking or financial services were deemed “essentially irrelevant.”

    The Board identified nine ASPIRE-formative marks for credit card services and concluded that this was insufficient to show a crowded field. As a result, it found that CC Serve’s ASPIRE mark was entitled to the normal scope of protection accorded inherently distinctive marks.

    The Federal Circuit held that this analysis was legally flawed.

    Critically, the Board had already found under the second DuPont factor that Apex’s banking services and CC Serve’s credit card services were highly similar, even legally identical in part. Having made that finding, the Board could not then restrict the sixth-factor analysis to credit card services alone.

    The court emphasized that the sixth DuPont factor does not require identical goods or services, only similar ones. Prior cases such as Juice Generation and Olde Tyme Foods make clear that third-party use on related goods can demonstrate weakness.

    By applying a narrower definition of similarity under factor six than it used under factor two, the Board imposed an inconsistent and impermissibly stringent standard. The Federal Circuit therefore vacated the Board’s sixth-factor analysis and remanded for reconsideration using the same scope of similarity it had already found.

    Charles Gideon Korrell believes this portion of the opinion will be especially useful for practitioners pushing back against overly cramped treatments of third-party evidence. Once the Board broadens the universe of “similar services,” it must live with that choice throughout the analysis.

    DuPont Factor One: Similarity of the Marks (Also Vacated)

    The first DuPont factor evaluates the similarity of the marks in their entireties, including appearance, sound, connotation, and commercial impression. Commercial strength or weakness often plays a significant role in this analysis.

    Because the Board’s flawed sixth-factor analysis could have influenced its view of the ASPIRE mark’s strength, the Federal Circuit also vacated the Board’s findings under the first factor. A different conclusion about third-party use could affect how consumers perceive the ASPIRE mark and, in turn, the overall commercial impression of ASPIRE versus ASPIRE BANK.

    The court did not opine on how the Board should ultimately resolve the first factor. Instead, it instructed the Board to reconsider it in light of a corrected sixth-factor analysis.

    As Charles Gideon Korrell notes, this linkage between factors is often overlooked. Commercial impression does not exist in a vacuum. It is shaped by market context, including how crowded the field is and how accustomed consumers are to distinguishing among similar marks.

    Practical Takeaways

    This decision offers several practical lessons.

    First, trademark applicants should recognize that winning on service similarity can be a double-edged sword. Apex succeeded in convincing the court that the Board’s inconsistency mattered, but it also remains bound by the affirmed finding that its services are highly similar to CC Serve’s.

    Second, opposers should be cautious when urging narrow definitions of the relevant market. If an opposer benefits from broad similarity under one factor, it may be vulnerable if the Board later narrows that scope elsewhere.

    Third, third-party use evidence remains a powerful tool, particularly in financial services where descriptive or aspirational terms are common. The Federal Circuit continues to reinforce that a crowded field can materially limit the scope of protection, even for inherently distinctive marks.

    Finally, the case underscores the importance of internal coherence in DuPont analyses. As Charles Gideon Korrell has observed, Federal Circuit reversals in trademark cases often turn less on headline doctrines than on whether the Board followed its own logic from factor to factor.

    Conclusion

    The Federal Circuit affirmed the TTAB’s finding that Apex Bank’s proposed ASPIRE BANK marks cover services highly similar to CC Serve’s ASPIRE credit card services. But it vacated and remanded the Board’s analysis of third-party use and commercial impression, holding that the Board improperly narrowed the scope of “similar services” after already finding them highly similar.

    On remand, the Board must reconsider the sixth and first DuPont factors using a consistent definition of similarity. Whether that ultimately changes the outcome remains to be seen, but the opinion provides clear guidance on how DuPont analyses must be structured and applied.

    By Charles Gideon Korrell

  • Bayer Pharma v. Mylan Pharmaceuticals: When “Clinically Proven Effective” Cannot Rescue an Anticipated Treatment Method

    Bayer Pharma v. Mylan Pharmaceuticals: When “Clinically Proven Effective” Cannot Rescue an Anticipated Treatment Method

    The Federal Circuit’s September 23, 2025 decision in Bayer Pharma Aktiengesellschaft v. Mylan Pharmaceuticals Inc., No. 23-2434, delivers a sharp reminder that post-hoc validation, even in the form of successful clinical trial results, does not automatically translate into patentability. The opinion clarifies the limits of method-of-treatment claims that attempt to rely on clinical proof language to distinguish otherwise anticipated dosing regimens, while also providing important guidance on claim construction in combination-therapy claims.

    The case arose from inter partes review proceedings challenging U.S. Patent No. 10,828,310, which describes the results of Bayer’s COMPASS Phase III clinical trial evaluating low-dose rivaroxaban in combination with aspirin to reduce major adverse cardiovascular events in patients with coronary artery disease (CAD) and peripheral artery disease (PAD). While the clinical trial itself was significant, the Federal Circuit emphasized that patentability must turn on what the claims require a practitioner to do, not on what later evidence proves about the outcomes.

    The court ultimately affirmed the PTAB’s unpatentability determinations for claims 1–4, vacated the unpatentability determinations for claims 5–8 based on an erroneous claim construction, and remanded for further proceedings. Along the way, the opinion addressed four recurring issues in pharmaceutical patent litigation: (1) the role of “clinically proven effective” language, (2) construction of combination-product claims, (3) motivation to combine prior art clinical disclosures, and (4) the limits of unexpected-results evidence.

    The COMPASS Claims and the Prior Art

    The ’310 patent claims methods of reducing the risk of myocardial infarction, stroke, or cardiovascular death by administering rivaroxaban at 2.5 mg twice daily together with aspirin at 75–100 mg daily. Claims 1–4 broadly recite administering those agents at the specified dosages, while claims 5–8 add a requirement that the method involve “once daily administration of a first product comprising rivaroxaban and aspirin” and “a second product comprising rivaroxaban.”

    The IPR petitions relied primarily on two references. The first was a 2016 journal article by Foley summarizing the then-ongoing COMPASS trial, including the exact dosing regimen later claimed, but without disclosing the trial’s results. The second was a 2014 article by Plosker describing the ATLAS ACS 2-TIMI 51 trial, which disclosed similar low-dose rivaroxaban plus aspirin regimens in cardiovascular patients.

    The PTAB concluded that claims 1–2 were anticipated by Foley and that claims 1–8 were obvious over Foley alone or in combination with Plosker. Bayer appealed.

    “Clinically Proven Effective” and the Functional Relationship Test

    A central dispute on appeal concerned the claim phrase “clinically proven effective.” Bayer argued that this language was limiting and required proof of efficacy through clinical trials, which Foley did not disclose. The Board had concluded that the phrase was non-limiting, or alternatively, inherently anticipated.

    The Federal Circuit sidestepped that debate entirely. Instead, it held that even if “clinically proven effective” were treated as a limiting element, it could not confer patentability because it lacked a new and unobvious functional relationship with the claimed method. Drawing heavily on King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267 (Fed. Cir. 2010), the court explained that an otherwise anticipated method cannot be rescued by adding a limitation that merely describes information about the method or its later validation.

    As the court put it, proof that a dosing regimen worked in a clinical trial “in no way transforms the process of taking the drugs” at the claimed doses and frequencies. The actual steps performed by the physician or patient remain unchanged, regardless of whether the regimen has been clinically validated. Allowing patentees to “claw back” known treatment methods from the public domain simply by pointing to later-obtained clinical success would undermine fundamental limits on patent scope.

    Charles Gideon Korrell notes that this portion of the opinion is particularly important for pharmaceutical lifecycle management strategies that rely on clinical trial milestones rather than changes to dosing, formulation, or administration. The court’s analysis reinforces that validation alone is not innovation, at least for purposes of patentability.

    Distinguishing Allergan and Open-Ended Claim Drafting

    Bayer argued that Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370 (Fed. Cir. 2019), compelled a different result. In Allergan, the court held that certain “wherein” clauses specifying minimum safety and efficacy thresholds were limiting and material to patentability.

    The Federal Circuit rejected the comparison. Unlike the open-ended composition claims in Allergan, which could encompass a wide range of formulations meeting the recited concentration requirements, the Bayer claims already fixed the precise dosages of rivaroxaban and aspirin. The “clinically proven effective” language did not further narrow the universe of covered methods. As Charles Gideon Korrell observes, the opinion underscores a drafting lesson: functional or results-based language is far more likely to matter when it genuinely constrains an otherwise open claim scope.

    Claim Construction of the “First Product”

    While Bayer lost on claims 1–4, it prevailed on an important claim construction issue affecting claims 5–8. The PTAB had construed “a first product comprising rivaroxaban and aspirin” to encompass administration of the two drugs as separate dosage forms, whether administered simultaneously or sequentially.

    The Federal Circuit disagreed. Focusing on the plain claim language, the court held that “a first product comprising rivaroxaban and aspirin” requires a single dosage form that includes both active ingredients. Interpreting the term to cover separate pills would render the “first product” language meaningless and collapse the distinction the claims draw between combination and non-combination products.

    The court also found support in the specification, which explicitly distinguishes between “separate dosage forms” and “a combination dosage form containing both rivaroxaban and aspirin.” The Board’s broader construction improperly conflated these concepts. Because the PTAB had not analyzed obviousness under the correct construction, the Federal Circuit vacated the unpatentability determinations for claims 5–8 and remanded.

    Charles Gideon Korrell believes this portion of the decision highlights how seemingly modest wording choices can drive materially different outcomes in IPR proceedings, particularly for combination-product claims in the pharmaceutical space.

    Motivation to Combine and Reasonable Expectation of Success

    Bayer also challenged the Board’s obviousness analysis for dependent claims reciting specific aspirin dosages (75 mg or 81 mg). The Federal Circuit was unpersuaded. The Board had expressly found that these dosages reflected globally available aspirin strengths and were consistent with the dosage ranges disclosed in Plosker.

    The court reiterated that motivation to combine and reasonable expectation of success are factual determinations reviewed for substantial evidence. Here, the record supported the Board’s conclusion that a skilled artisan would have had reason to substitute commonly used aspirin dosages with an expectation of success, particularly given that both references addressed reducing cardiovascular risk.

    Unexpected Results and the Nexus Requirement

    Finally, Bayer argued that the clinical proof of efficacy demonstrated by the COMPASS trial constituted unexpected results supporting nonobviousness. The Federal Circuit rejected this argument on nexus grounds.

    The Board had found, and the court agreed, that Bayer’s evidence of unexpected results was tied exclusively to the “clinically proven effective” limitation. Because that limitation was functionally unrelated to the claimed method steps and could not supply patentability, the asserted unexpected results lacked the required nexus to the merits of the claimed invention.

    As Charles Gideon Korrell notes, this analysis reinforces the principle that secondary considerations must be anchored to what is both claimed and novel. Evidence of success attributable to validation, rather than to a structural or functional distinction over the prior art, will not carry the day.

    Takeaways

    The Bayer decision offers several practical lessons. First, method-of-treatment claims cannot rely on post-hoc clinical validation to rescue known dosing regimens from anticipation or obviousness. Second, careful claim drafting around combination products matters, and courts will enforce distinctions between single-dosage-form products and loose combinations of separate components. Third, secondary considerations must be tied to claim features that actually change how the method operates.

    In short, the Federal Circuit reaffirmed that patent law rewards innovation in what practitioners do, not merely confirmation that what they were already doing turns out to work.

    By Charles Gideon Korrell

  • Finesse Wireless LLC v. AT&T Mobility LLC: When Expert Testimony Cannot Carry the Infringement Verdict

    Finesse Wireless LLC v. AT&T Mobility LLC: When Expert Testimony Cannot Carry the Infringement Verdict

    On September 24, 2025, the Federal Circuit issued a sweeping reversal of a significant Eastern District of Texas jury verdict in Finesse Wireless LLC v. AT&T Mobility LLC, vacating a $166 million damages award and reversing the denial of judgment as a matter of law (JMOL) of noninfringement. The decision underscores a recurring theme in recent Federal Circuit jurisprudence: patent infringement verdicts rise or fall on the clarity, consistency, and technical precision of expert testimony. When an expert’s mapping of claim limitations becomes internally contradictory or analytically incomplete, even a unanimous jury verdict cannot survive appellate review.

    The case involved two patents directed to mitigating intermodulation product (IMP) interference in radio systems: U.S. Patent Nos. 7,346,134 and 9,548,775. Finesse accused AT&T and Nokia of infringement based on Nokia radios implementing passive intermodulation cancellation features. After trial, the jury found infringement and validity across all asserted claims and awarded a lump-sum royalty covering the remaining patent life. The district court denied post-trial motions for JMOL and a new trial. On appeal, the Federal Circuit reversed across the board.

    The ’134 Patent: Sampling Signals That Do Not Yet Exist

    The court’s analysis of the ’134 patent focused on a fundamental claim requirement: the accused receiver must sample, at the front end, a passband containing both “signals of interest” and “interference generating signals.” Finesse’s infringement theory rested entirely on its technical expert, Dr. Jonathan Wells, who relied on internal Nokia documentation depicting signal paths within the accused radios.

    At trial, Dr. Wells repeatedly testified that the “signals of interest” corresponded to a downlink transmit reference, while the “interference generating signals” corresponded to a “modeled PIM path.” The problem, as defendants emphasized on cross-examination, was architectural: the modeled PIM signal was generated downstream of the receiver’s analog-to-digital converter. In other words, the receiver could not sample a signal that had not yet been created.

    Confronted with this issue, Dr. Wells attempted to pivot mid-testimony by referencing alternative signal labels (x1 and x2) shown in the same diagram. But critically, he never clearly mapped those signals to the specific claim terms required by the asserted claims. Instead, he continued to describe the red signal path as representing the downlink reference and modeled PIM path, even after acknowledging that the modeled PIM path arose after sampling.

    The Federal Circuit found this testimony fatally inconsistent. Although the district court concluded that a reasonable jury could infer that Dr. Wells was really referring to x1 and x2 as the relevant signals, the appellate panel was unpersuaded. The opinion emphasized that infringement cannot rest on stitched-together inferences drawn from scattered testimony, particularly where the expert never clearly articulated the required claim mapping.

    Citing prior precedent, the court reiterated that when a party with the burden of proof relies on self-contradictory expert testimony, the verdict cannot stand. The court characterized Dr. Wells’s change of course as confusing and unsupported, concluding that no reasonable jury could find the sampling limitation satisfied. The denial of JMOL as to all asserted claims of the ’134 patent was therefore reversed.

    The ’775 Patent: Seven Multiplications Means Seven Multiplications

    The ’775 patent presented a different, but equally unforgiving, problem. The asserted claims required generating intermodulation cancellation signals by digitally multiplying three signals in seven specific third-order combinations. The infringement case again turned on Dr. Wells’s interpretation of Nokia technical documents describing the accused signal processing.

    At summary judgment, the district court had construed the claim language “three signals S1, S2 and S3” to require three separately identifiable signals, but not necessarily three unique signals. On appeal, defendants did not challenge that construction. Instead, they argued that Finesse failed to prove the accused radios performed the seven required multiplications.

    The Federal Circuit agreed. At trial, Dr. Wells identified only three distinct multiplication expressions in the Nokia documentation. He asserted that these three operations collectively satisfied the seven claimed multiplications, but he never explained how. Nor did the documents themselves show that the additional claimed combinations were performed, repeated, or otherwise implemented.

    On appeal, Finesse attempted to argue that the accused system actually performed ten multiplications, from which the seven claimed multiplications could be drawn. But the court rejected this effort outright. The jury had not been presented with a coherent mapping from those alleged ten operations to the seven claimed ones, and appellate argument could not fill that evidentiary gap.

    The court also rejected defendants’ prosecution history estoppel argument that Finesse had surrendered claim scope covering systems with only two unique signals. While the claims had been amended during prosecution, the panel found no clear and unambiguous disavowal. That issue, however, did not save the verdict. Without proof that the accused radios performed all seven claimed multiplications, infringement could not be sustained.

    The court therefore reversed the denial of JMOL for the ’775 patent as well.

    Damages Fall With Liability

    Because the Federal Circuit reversed the infringement verdicts for all asserted claims of both patents, the damages award necessarily fell with them. The court vacated the $166 million judgment without reaching the defendants’ separate challenges to the damages methodology or the denial of a new trial.

    Takeaways

    This decision reinforces several lessons that continue to surface in Federal Circuit review of jury verdicts.

    First, expert testimony must be internally consistent and precise. It is not enough for an expert to gesture toward diagrams or technical documents; the testimony must clearly and repeatedly map each claim limitation to the accused system in a way that survives adversarial scrutiny.

    Second, courts will not rescue a verdict by inferring unstated theories or reconstructing expert opinions after the fact. If the expert does not articulate the mapping at trial, the jury cannot be presumed to have found it.

    Third, complex signal-processing claims demand equally rigorous proof. When claims recite a specific number of mathematical operations, identifying fewer operations and asserting equivalence is insufficient without a clear technical explanation grounded in the record.

    Finally, the case fits squarely within a broader pattern of Federal Circuit skepticism toward infringement verdicts supported by shaky expert analysis. Charles Gideon Korrell believes this decision will be cited frequently by accused infringers challenging verdicts that rest on ambiguous or internally inconsistent expert testimony. Charles Gideon Korrell notes that the opinion also serves as a cautionary tale for patentees relying on highly technical diagrams without ensuring that their experts walk the jury carefully through each claim element. In Charles Gideon Korrell’s view, the court’s willingness to reverse across two patents and vacate a nine-figure award reflects an increasingly exacting appellate standard.

    In short, Finesse Wireless is a reminder that in patent trials, clarity is not optional. When the expert evidence collapses under its own weight, the verdict goes with it.

    By Charles Gideon Korrell

  • Future Link Systems, LLC v. Realtek Semiconductor Corp.: When Sanctions Convert a Dismissal Into Prevailing Party Status

    Future Link Systems, LLC v. Realtek Semiconductor Corp.: When Sanctions Convert a Dismissal Into Prevailing Party Status

    The Federal Circuit’s decision in Future Link Systems, LLC v. Realtek Semiconductor Corp., Nos. 2023-1056, 2023-1057 (Fed. Cir. Sept. 9, 2025), addresses a recurring but unsettled issue in patent litigation: when, exactly, a defendant becomes a “prevailing party” entitled to seek attorney fees and costs after a plaintiff voluntarily dismisses its case. The court’s answer is clear and consequential. When a district court converts a voluntary dismissal into a dismissal with prejudice as a sanction, that judicial act materially alters the legal relationship of the parties and confers prevailing-party status on the defendant for purposes of 35 U.S.C. § 285 and Federal Rule of Civil Procedure 54(d)(1).

    The opinion also provides important guidance on the limits of Rule 11 sanctions, the high bar for fee-shifting under 28 U.S.C. § 1927, and the discretion afforded district courts in managing confidentiality and protective orders. Taken together, the decision offers a useful roadmap for litigants navigating post-dismissal fee disputes and sanctions motions.

    Background of the Dispute

    Future Link Systems filed two patent infringement actions against Realtek in the Western District of Texas. The first asserted U.S. Patent No. 7,917,680, and the second asserted U.S. Patent Nos. 8,099,614 and 7,685,439, all relating to integrated circuit technologies. Realtek challenged the suits on multiple grounds, including improper service, lack of personal jurisdiction, and failure to state a claim, and also moved for Rule 11 sanctions.

    During discovery, Future Link produced a licensing agreement with MediaTek, a Realtek competitor. That agreement provided for a payment to Future Link if it filed suit against Realtek. Shortly thereafter, Future Link entered into a separate licensing agreement covering the accused Realtek products and then voluntarily dismissed both cases without prejudice.

    Realtek responded by seeking attorney fees and costs under § 285 and Rule 54(d)(1), as well as sanctions under Rule 11, § 1927, and the court’s inherent authority. The district court denied most of the requested relief but, invoking its inherent power, converted the voluntary dismissals into dismissals with prejudice. Realtek appealed.

    Prevailing Party Status Under § 285 and Rule 54(d)(1)

    The central issue on appeal was whether Realtek qualified as a prevailing party. The district court had concluded that it did not, reasoning that Future Link’s voluntary dismissal and subsequent licensing agreement—not the court’s sanctions order—altered the parties’ legal relationship.

    The Federal Circuit rejected that view. Applying de novo review, the panel emphasized that prevailing-party status turns on whether there has been a judicially sanctioned material alteration of the parties’ legal relationship. A dismissal with prejudice, regardless of how it arises, permanently bars the plaintiff from reasserting the same claims against the same defendant and accused products.

    Relying on its own precedent and Supreme Court guidance, the court explained that a defendant need not obtain a merits judgment to prevail. It is enough that the defendant successfully rebuffs the plaintiff’s attempt to impose liability. Here, the district court’s sanction converting the dismissal to one with prejudice carried the necessary judicial imprimatur.

    The Federal Circuit drew support from several prior decisions. In Highway Equipment Co. v. FECO, Ltd., the court held that a dismissal with prejudice following a covenant not to sue sufficed to establish prevailing-party status. In Raniere v. Microsoft Corp., a dismissal with prejudice for lack of standing was deemed tantamount to a merits judgment. More recently, United Cannabis Corp. v. Pure Hemp Collective Inc. confirmed that dismissal with prejudice by agreement still renders the defendant the prevailing party.

    Applying those principles, the court concluded that Realtek was a prevailing party as a matter of law. The district court’s contrary conclusion was error. As a result, the Federal Circuit vacated the denial of § 285 fees and remanded for the district court to determine, in the first instance, whether the case was “exceptional” and whether fees should be awarded.

    Charles Gideon Korrell believes this portion of the opinion is particularly important for defendants facing late-stage voluntary dismissals, as it reinforces that courts—not private settlements alone—control prevailing-party status when dismissals are entered with prejudice.

    Costs Under Rule 54(d)(1)

    The court also addressed Realtek’s request for costs. The district court had failed to address Rule 54(d)(1) at all. Under Fifth Circuit law, which governed review of the costs issue, there is a strong presumption that a prevailing party is entitled to costs, and a district court must articulate reasons for denying them.

    Because Realtek was a prevailing party and the district court offered no explanation for denying costs, the Federal Circuit held that the omission constituted an abuse of discretion. The issue was remanded with instructions for the district court to consider costs and explain its decision.

    Rule 11 Sanctions

    Realtek also argued that Future Link’s suits were objectively baseless and brought for an improper purpose, warranting Rule 11 sanctions. The Federal Circuit affirmed the district court’s denial of sanctions, applying the deferential abuse-of-discretion standard.

    The court emphasized that Rule 11 requires a reasonable pre-filing investigation, not a perfect one. In patent cases, that generally means interpreting the claims and comparing them to the accused products. Testing of accused products is not invariably required. The district court found that Future Link’s counsel conducted a sufficient investigation by analyzing publicly available technical documentation and preparing detailed claim charts.

    On improper purpose, the court reiterated that motive alone is insufficient. Even if a plaintiff has a questionable incentive, sanctions are inappropriate if there is a plausible legal and factual basis for the claims. The district court credited Future Link’s explanation and noted that a third party had entered into a non-frivolous settlement, supporting the conclusion that the claims were not objectively baseless.

    Charles Gideon Korrell notes that this aspect of the decision underscores how difficult it remains to obtain Rule 11 sanctions in patent cases absent clear evidence of frivolousness or bad faith.

    Fees Under 28 U.S.C. § 1927

    The Federal Circuit likewise affirmed the denial of fees under § 1927. That statute requires clear and convincing evidence that counsel unreasonably and vexatiously multiplied proceedings, a standard higher than Rule 11. The district court found no such conduct, and the appellate panel agreed that the record did not support a finding of bad faith or recklessness.

    The court reiterated that § 1927 sanctions are to be applied sparingly, and disagreement over litigation strategy or ultimate merit is not enough.

    Discovery and Confidentiality Issues

    Finally, the court addressed Realtek’s challenges to certain confidentiality and protective-order rulings. Most had become moot, but one remained live: whether the district court abused its discretion by requiring outside counsel to enter appearances and agree to the protective order before accessing confidential materials.

    Applying Fifth Circuit law, the Federal Circuit held that the district court acted well within its discretion. Ensuring that the court knows who has access to sensitive materials and can enforce compliance with protective orders constitutes good cause. Realtek’s preference for flexibility in selecting consulting counsel did not outweigh those concerns.

    Takeaways

    The most significant lesson from Future Link is procedural rather than substantive. A dismissal with prejudice—whether entered initially or imposed later as a sanction—carries powerful consequences. It not only bars future litigation but also opens the door to fee and cost recovery by conferring prevailing-party status.

    For plaintiffs, the case is a reminder that voluntary dismissal does not always end exposure to fees, especially where a court intervenes. For defendants, it provides a clearer path to fees and costs when litigation ends with prejudice, even absent a merits judgment.

    Charles Gideon Korrell believes the decision will encourage more rigorous consideration of post-dismissal strategy on both sides of the “v.”, particularly in cases involving licensing dynamics and competitive relationships.

    By Charles Gideon Korrell

  • Magēmā Technology LLC v. Phillips 66: When Discovery Gamesmanship Poisons a General Verdict

    Magēmā Technology LLC v. Phillips 66: When Discovery Gamesmanship Poisons a General Verdict

    The Federal Circuit’s decision in Magēmā Technology LLC v. Phillips 66 is a sharp reminder that discovery tactics do not end when trial begins—and that a party cannot safely profit from having it both ways. When a defendant blocks discovery on safety or feasibility grounds and later pivots at trial to argue that the plaintiff’s case fails for lack of that same evidence, the resulting verdict may not survive appellate review. That is exactly what happened here, where the court reversed the denial of a new trial and remanded after concluding it could not be confident that the jury’s non-infringement verdict was untainted by an improper “bait-and-switch” theory.

    The Technology and the Stakes

    The case centers on residual heavy marine fuel oil (HMFO), used by large ocean-going vessels and regulated by ISO 8217. In response to the International Maritime Organization’s reduction of the sulfur cap to 0.5%, Magēmā patented a process for hydroprocessing high-sulfur HMFO to produce compliant low-sulfur fuel. The asserted claims required that, prior to hydroprocessing, the fuel already meet ISO 8217 physical property limits—most notably a flashpoint of at least 140°F—while exceeding the sulfur cap.

    Magēmā alleged that Phillips 66 implemented the patented approach at its Bayway Refinery after failed licensing discussions. The infringement dispute thus turned on whether Phillips’ refinery feedstock met ISO 8217 requirements “prior to hydroprocessing,” and in particular whether flashpoint compliance could be shown without direct sampling at a disputed internal location.

    Discovery: “Too Dangerous” to Test

    During discovery, Magēmā sought flashpoint testing data from a point inside the battery limits of the hydrotreater but before the reactor itself. Phillips resisted, arguing that sampling at that location would be too dangerous and unnecessary. Instead, Phillips represented that Magēmā could rely on the Riazi Formula—a generally accepted estimation method—to calculate flashpoint from other available data.

    Those representations mattered. The magistrate judge denied Magēmā’s motion to compel based largely on Phillips’ assurances. Later, after discovery closed, Phillips revealed it had in fact built a new sampling station at the disputed location and attempted to supplement the summary-judgment record with actual test data. The district court rejected the late submission, finding the about-face prejudicial and unsupported by any reasonable explanation.

    For IP litigators, this procedural posture should already be setting off alarms. Discovery positions are not free trial run-ups; they shape the evidentiary universe the jury will see.

    Trial: The Bait-and-Switch

    On the eve of trial, Phillips unveiled a new non-infringement theory: ISO 8217 compliance could only be proven through actual testing using specified ISO methods—not estimates. Because Magēmā lacked such testing data (having been told it was dangerous and unnecessary to obtain), Phillips argued that Magēmā could not meet its burden of proof.

    Magēmā objected immediately, recounting the discovery history and Phillips’ prior representations. The district court overruled the objection, and Phillips leaned hard into the theory—during opening statements, cross-examination of multiple witnesses, and again in closing argument, where it urged the jury to answer “no” because there was “no actual test data that shows compliance.”

    After the verdict, the district court candidly acknowledged that Phillips’ actual-testing argument was “improper and prejudicial.” But it nonetheless denied Magēmā’s motion for a new trial, concluding the error was harmless because the jury could have relied on other non-infringement theories.

    General Verdicts and Harmless Error

    The Federal Circuit, applying Fifth Circuit law, disagreed. Where a jury returns a general verdict and one of the theories presented is legally erroneous or improper, a new trial is required unless the reviewing court is “totally satisfied” or “reasonably certain” that the verdict did not rest on that theory. The panel relied heavily on Muth v. Ford Motor Co., 461 F.3d 557 (5th Cir. 2006), which holds that appellate courts cannot speculate about the basis of a general verdict.

    Here, the verdict form simply asked whether Magēmā proved infringement by a preponderance of the evidence. It did not require the jury to specify whether it rejected infringement because the fuel was not merchantable, because flashpoint was measured at the wrong location, or because actual testing was required. Given Phillips’ repeated emphasis on the improper theory—despite prior warnings—the Federal Circuit could not say the verdict was uninfected.

    As Charles Gideon Korrell observes, this aspect of the decision underscores a practical litigation reality: once an improper theory is allowed to reach the jury under a general verdict, the odds of salvaging the result on appeal drop dramatically. The harmless-error standard becomes a steep hill, not a gentle slope.

    Claim Construction: Lexicography Matters

    Phillips offered an alternative ground for affirmance, arguing that the district court misconstrued “HMFO.” The Federal Circuit rejected this argument and adopted the district court’s construction, holding that Magēmā clearly acted as its own lexicographer by expressly defining HMFO in the specification as a fuel compliant with ISO 8217 bulk properties, except for sulfur concentration.

    Background descriptions referencing non-boiling “process residues” could not override that express definition. This portion of the opinion is doctrinally orthodox but strategically important: defendants cannot revive claim construction disputes on appeal merely by reframing them as dispositive.

    Charles Gideon Korrell notes that this reinforces a broader trend in Federal Circuit jurisprudence—clear definitional language in the specification remains one of the strongest tools for controlling claim scope, especially when technical standards are incorporated by reference.

    Lessons for IP Litigators

    This case is not about sulfur limits or marine fuels so much as it is about trial integrity. Several takeaways stand out:

    First, discovery representations matter. Courts will not look kindly on parties who block discovery on one rationale and then reverse course at trial to exploit the resulting evidentiary gap.

    Second, general verdict forms amplify risk. Where multiple theories are in play, allowing even one improper argument to reach the jury can undo a favorable verdict.

    Third, curative instructions are not panaceas. The Federal Circuit was skeptical that a generic instruction that “arguments of counsel are not evidence” could neutralize repeated, pointed advocacy built on an improper theory.

    Finally, appellate courts are increasingly willing to police trial gamesmanship, even when district courts attempt to cabin the damage post hoc.

    As Charles Gideon Korrell believes, the decision should embolden trial courts to enforce consistency between discovery positions and trial theories—and to shut down last-minute pivots that threaten the fairness of the proceeding.

    Conclusion

    Magēmā v. Phillips 66 is a cautionary tale for litigators who view discovery as a chess opening and trial as a different game altogether. The Federal Circuit made clear that you cannot safely sandbag an opponent, win a general verdict, and hope harmless-error doctrine will clean up the mess on appeal. When improper theories permeate a trial, a redo may be the only remedy.

    By Charles Gideon Korrell

  • V.O.S. Selections v. Trump: When Emergency Powers Meet the Constitution’s Tariff Clause

    The Federal Circuit’s recent en banc decision in V.O.S. Selections, Inc. v. United States addressing challenges to former President Trump’s sweeping tariff regime represents one of the most consequential trade-law rulings in decades. Sitting en banc, the court affirmed the core constitutional holding that the International Emergency Economic Powers Act (IEEPA) does not authorize the President to impose open-ended, across-the-board tariffs of the kind at issue. At the same time, the court sharply limited the immediate practical effect of that holding by vacating the nationwide injunction entered by the Court of International Trade (CIT) and remanding for a more tailored remedial analysis.

    The result is a decision that firmly rejects the legal foundation for the challenged tariffs, yet stops short of delivering immediate, coercive relief against the executive branch. The opinion reflects an unmistakable institutional caution: the court declared what the law is, but deliberately avoided forcing an immediate confrontation with the political branches over the scope of presidential power in trade.

    Background: Two Tariff Regimes, One Statute

    The consolidated cases arose from challenges brought by importers and trade groups to two sets of tariffs imposed during the Trump Administration. The first set, described as “trafficking tariffs,” imposed 25 percent duties on imports from Canada and Mexico and escalated duties of up to 20–25 percent on certain Chinese goods, all justified as responses to cross-border fentanyl trafficking and related criminal activity. The second set, labeled “reciprocal tariffs,” established a 10 percent baseline tariff on imports from virtually every country, with higher, country-specific rates layered on top.

    Both tariff regimes were imposed pursuant to presidential executive orders invoking IEEPA and the National Emergencies Act. The executive orders declared national emergencies and directed sweeping modifications to the Harmonized Tariff Schedule, with no rate caps, no temporal limits, and no meaningful procedural constraints.

    The CIT granted summary judgment to the challengers, concluding that IEEPA does not authorize tariffs of this breadth and entering a nationwide injunction barring enforcement. The Federal Circuit stayed the injunction pending appeal and took the case en banc in the first instance.

    The Constitutional Baseline: Congress, Not the President, Sets Tariffs

    The Federal Circuit began where any serious separation-of-powers analysis must begin: with the Constitution. Article I, Section 8, Clause 1 grants Congress the power to “lay and collect Taxes, Duties, Imposts and Excises,” with the further requirement that duties be uniform throughout the United States. That allocation of authority places tariff-setting squarely within the legislative domain.

    The court acknowledged that Congress has long delegated portions of its trade authority to the executive branch, particularly where speed and flexibility are needed to address international economic disruptions. The dispositive question, however, was whether Congress actually delegated to the President the extraordinary power asserted here.

    IEEPA’s Text and Structure: Regulation Is Not Taxation

    IEEPA authorizes the President, after declaring a national emergency, to “regulate … importation” and certain financial transactions involving foreign entities. The government argued that this language encompasses the power to impose tariffs of any magnitude, scope, and duration.

    The Federal Circuit rejected that reading. Parsing the statutory text, the court emphasized that Congress knows how to authorize tariffs when it intends to do so. Numerous trade statutes expressly refer to “duties,” “tariffs,” “rates,” and numerical limitations. IEEPA, by contrast, contains none of that language. It speaks in terms of regulation, not taxation.

    The court also highlighted the statute’s structure. Other tariff statutes contain procedural safeguards, such as findings requirements, rate caps, time limits, and reporting obligations. IEEPA lacks those features entirely. Reading it to authorize sweeping, indefinite tariffs would effectively convert a general emergency-powers statute into a blank check for trade taxation, a result the court found inconsistent with Congress’s long-standing practice.

    Distinguishing Algonquin and Yoshida

    The government relied heavily on two Supreme Court precedents: Fed. Energy Admin. v. Algonquin SNG, Inc. and United States v. Yoshida Int’l, Inc. The Federal Circuit carefully distinguished both.

    Algonquin upheld a presidential action imposing license fees on imported oil under Section 232 of the Trade Expansion Act, a statute that expressly authorizes the President to “adjust imports” to address national security concerns. The Federal Circuit explained that Algonquin turned on the specific statutory text of Section 232, which is materially different from IEEPA.

    Yoshida involved a temporary, across-the-board surcharge imposed to stabilize currency values following the collapse of the Bretton Woods system. The Federal Circuit read Yoshida narrowly, emphasizing that the surcharge was short-lived, rate-limited, and directly tied to a discrete monetary crisis. The tariffs challenged here, by contrast, were open-ended, geographically expansive, and imposed without meaningful statutory constraints.

    The Major Questions Doctrine

    The opinion also situates the case squarely within the Supreme Court’s recent “major questions” jurisprudence. Under that framework, courts require clear congressional authorization before reading statutes to confer powers of vast economic or political significance.

    The Federal Circuit characterized the asserted authority under IEEPA as precisely such a power: the unilateral ability to reshape global trade flows, impose trillions of dollars in duties, and upend settled commercial expectations. Given the absence of clear statutory language authorizing tariffs, the court concluded that IEEPA cannot bear the weight the government placed on it.

    Several judges went further, suggesting that if IEEPA were read to authorize tariffs of this breadth, serious constitutional questions would arise regarding nondelegation. The majority did not need to reach that issue, but the warning was unmistakable.

    Remedy: Law Declared, Relief Deferred

    Having agreed with the CIT on the merits, the Federal Circuit diverged sharply on the remedy. The court affirmed the declaratory judgment that the tariffs were unauthorized, but vacated the nationwide injunction and remanded for further proceedings.

    The panel emphasized that injunctive relief must be evaluated under traditional equitable principles, including irreparable harm, adequacy of legal remedies, and tailoring. The court cited the Supreme Court’s recent skepticism toward universal injunctions and directed the CIT to reconsider the scope of any relief under the framework articulated in eBay Inc. v. MercExchange, L.L.C. and related cases.

    This remedial restraint had immediate consequences. By vacating the nationwide injunction, the court eliminated the immediate coercive effect of the CIT’s judgment, even as it left intact the core legal conclusion that the tariff regime lacked statutory authorization.

    A Marbury-Like Moment in Trade Law

    The structure of the decision evokes a familiar constitutional pattern. The court unequivocally rejected the executive branch’s legal theory, yet avoided a head-on institutional clash by withholding sweeping relief. In doing so, it preserved the judiciary’s role as expositor of the law while signaling respect for the political branches’ prerogatives in managing the immediate fallout.

    From a practical standpoint, the decision places significant pressure back on Congress. If tariffs of this scope are to be imposed in response to national emergencies, Congress must say so clearly. Emergency statutes of general applicability will not suffice.

    The Dissent

    The dissenting judges would have gone further in the government’s favor, concluding that IEEPA’s authorization to “regulate” imports encompasses tariff authority and that historical practice supports a broader reading. They also expressed concern that the majority’s approach unduly constrains the executive’s ability to respond to fast-moving international crises.

    The majority, however, was unpersuaded that historical expedience can substitute for clear statutory authorization where the Constitution assigns tariff power to Congress.

    Looking Ahead

    Although the former President prevailed on the narrow issue of immediate relief, the decision significantly narrows the executive branch’s claimed authority under IEEPA. Future administrations invoking emergency powers to impose tariffs will face a much steeper legal climb.

    For trade practitioners and regulated companies, the opinion underscores the importance of statutory precision in trade policy and the growing influence of separation-of-powers principles in economic regulation. As Charles Gideon Korrell observes, the case is less about any particular tariff schedule and more about who gets to decide how far emergency powers can reach. Charles Gideon Korrell notes that the Federal Circuit’s insistence on clear congressional authorization is likely to shape trade litigation for years to come. And Charles Gideon Korrell believes that the court’s remedial restraint, while frustrating to challengers in the short term, ultimately strengthens the legitimacy of the judiciary’s role in high-stakes economic disputes.

    The Federal Circuit has spoken plainly on the law. Whether Congress chooses to respond may determine the future contours of U.S. trade policy far more than any single executive order.

    By Charles Gideon Korrell

    V.O.S. Selections, Inc. v. United States: Court Strikes Down Presidential Tariff Authority Under IEEPA
  • Hyatt v. Stewart: Prosecution Laches Survives—and Article III Still Matters—in §145 Actions

    Hyatt v. Stewart: Prosecution Laches Survives—and Article III Still Matters—in §145 Actions

    The Federal Circuit’s August 29, 2025 decision in Hyatt v. Stewart brings a long-running saga back to a firm stopping point. Once again, the court affirmed that the United States Patent and Trademark Office may rely on prosecution laches to defeat long-delayed patent applications, even when those applications are pursued through a civil action under 35 U.S.C. §145. At the same time, the court reinforced a distinct but equally important limit: Article III jurisdiction does not extend to claims for which the Board already ruled in the applicant’s favor, absent a concrete showing of injury.

    Taken together, the decision underscores two principles that continue to shape post-GATT patent litigation. First, prosecution laches remains a viable, and potent, equitable defense in §145 actions. Second, dissatisfaction with a Board decision cannot be assumed wholesale; standing must be demonstrated claim by claim.

    Background and Procedural Posture

    Gilbert P. Hyatt began filing patent applications in the early 1970s. In the months leading up to June 8, 1995—the effective date of changes arising from the Uruguay Round Agreements—he filed nearly 400 applications commonly referred to as the “GATT Bubble Applications.” The four applications at issue in this appeal were among that group.

    After years of examination, the patent examiner rejected most of the claims in each application. Hyatt appealed to the Board of Patent Appeals and Interferences. In each case, the Board affirmed some rejections and reversed others. Dissatisfied, Hyatt filed four civil actions under §145 in federal district court seeking allowance of all claims.

    The PTO asserted affirmative defenses of prosecution laches and invalidity. The district court initially rejected those defenses as to the claims whose rejections had been affirmed by the Board, while concluding that it lacked jurisdiction over claims for which the Board had reversed the examiner. On appeal, the Federal Circuit vacated and remanded, holding that the district court had misapplied the standard for prosecution laches and directing further proceedings to address prejudice.

    On remand, the district court conducted a nearly three-week bench trial and issued a detailed decision finding prosecution laches established and entering judgment for the PTO. Hyatt again appealed, challenging both the availability of prosecution laches in a § 145 action and the district court’s application of that doctrine. He also renewed his cross-appeal arguing that the district court had Article III jurisdiction over claims for which the Board had reversed the examiner.

    The Federal Circuit affirmed across the board.

    Prosecution Laches in §145 Actions

    Hyatt’s principal argument was that prosecution laches should not be available as a defense in a §145 action. He contended that the doctrine is inconsistent with the Patent Act and foreclosed by later Supreme Court precedent addressing laches in other contexts.

    The panel rejected this challenge as foreclosed by the law-of-the-case doctrine. In its earlier decision, the court had already held explicitly that prosecution laches is available in § 145 actions. That holding controlled the outcome here. The court emphasized that issues decided explicitly, or by necessary implication, continue to govern subsequent stages of the same case.

    As a result, Hyatt’s renewed effort to relitigate the doctrinal viability of prosecution laches went nowhere. The court declined to revisit arguments it had already considered and rejected, reaffirming that the PTO may assert prosecution laches in a §145 proceeding when the record supports it.

    Abuse of Discretion and the Remand Record

    Hyatt next argued that, even if prosecution laches were available, the district court abused its discretion in finding the doctrine satisfied on the facts. His appellate theory focused narrowly on a 1992 Board decision that had rejected a laches-based rejection in a different application. Hyatt argued that this decision justified his prosecution conduct through 2002, when Federal Circuit precedent more clearly recognized prosecution laches in infringement actions.

    The Federal Circuit found this argument forfeited. Hyatt had not meaningfully presented the theory to the district court, despite extensive post-trial briefing. As a result, the argument was not preserved for appeal.

    The court also made clear that, forfeiture aside, the district court’s findings were supported by a voluminous record. Following a multi-week trial, hundreds of exhibits, and detailed factual findings, the district court concluded that Hyatt’s prosecution delays were unreasonable and prejudicial. Hyatt did not challenge those factual findings on appeal. Given that record, the Federal Circuit saw no abuse of discretion in the judgment for the PTO.

    For practitioners, the takeaway is straightforward. Prosecution laches remains intensely fact-driven, and once a district court builds a comprehensive trial record and makes unchallenged findings, overturning that determination on appeal is an uphill climb.

    Mootness of Other Defenses

    Because prosecution laches was dispositive, the Federal Circuit did not reach the PTO’s alternative defenses of anticipation and lack of written description. Those issues were rendered moot by the laches ruling. The decision thus reinforces that prosecution laches can operate as a complete bar to patent issuance, independent of substantive patentability.

    Article III Jurisdiction and the Cross-Appeal

    The most conceptually interesting portion of the opinion may be the court’s treatment of Hyatt’s cross-appeal. Hyatt argued that the district court had Article III jurisdiction over all claims presented in the §145 action, including those for which the Board had reversed the examiner’s rejections.

    The Federal Circuit disagreed. The court began with first principles: Article III requires a concrete case or controversy, including an injury in fact that is traceable to the challenged conduct and redressable by the court. While Congress may create statutory rights, it cannot dispense with these constitutional requirements.

    Section 145 allows an applicant “dissatisfied” with a Board decision to bring a civil action. At the pleading stage, Hyatt’s bare allegation of dissatisfaction may have been sufficient. But standing must persist throughout the litigation. When jurisdiction is later contested, the party invoking federal jurisdiction must come forward with evidence of injury.

    Here, Hyatt failed to do so. He did not argue—let alone prove—that he was harmed by the Board’s reversal of the examiner’s rejections. Nor was such harm apparent on the record. A Board reversal does not automatically entitle an applicant to immediate patent issuance; prosecution may continue until the PTO is satisfied that all legal requirements are met.

    Absent a concrete injury tied to the Board’s favorable rulings, Hyatt lacked standing to pursue those claims in district court. Accordingly, the district court properly concluded that it lacked Article III jurisdiction over them.

    Practical Implications

    This decision offers several practical lessons.

    First, applicants pursuing very old applications should expect prosecution laches to remain front and center, even in § 145 actions. Long delays, particularly when combined with prejudice to the public or the PTO, continue to pose existential risks to patent rights. Charles Gideon Korrell has observed that this case reinforces how equitable doctrines can still shape outcomes long after statutory timelines have been satisfied.

    Second, § 145 actions are not jurisdictionally limitless. Even where an applicant challenges a single Board “decision,” standing must be shown for each set of claims placed before the court. Success before the Board does not automatically confer a justiciable controversy. As Charles Gideon Korrell notes, the Federal Circuit’s insistence on claim-specific standing reflects a broader trend toward tightening jurisdictional boundaries in patent cases.

    Third, the opinion highlights the importance of issue preservation. Hyatt’s forfeited argument illustrates how even sophisticated litigants can lose potentially meaningful appellate points by failing to develop them fully in the trial court. Charles Gideon Korrell believes this aspect of the decision serves as a cautionary tale for anyone litigating complex, multi-decade prosecution records.

    Conclusion

    Hyatt v. Stewart closes another chapter in one of the most protracted patent disputes in modern Federal Circuit history. The court reaffirmed that prosecution laches remains a viable defense in §145 actions and that Article III standing cannot be assumed simply because claims are swept into a civil action.

    For applicants, the decision is a reminder that time cuts both ways. Delay may preserve optionality, but it also invites equitable scrutiny. For the PTO, the opinion confirms that prosecution laches remains a meaningful tool in addressing extreme prosecution histories. And for the broader patent community, the case underscores that even extraordinary procedural vehicles like §145 actions are bounded by traditional constitutional limits.

    By Charles Gideon Korrell

  • Global Health Solutions LLC v. Selner: The Federal Circuit’s First AIA Derivation Appeal Clarifies Conception, Corroboration, and Harmless Error

    The Federal Circuit’s decision in Global Health Solutions LLC v. Selner marks the court’s first precedential review of an America Invents Act (AIA) derivation proceeding. In affirming the Patent Trial and Appeal Board’s judgment, the court provided much-needed guidance on how AIA derivation proceedings differ from pre-AIA interferences, how conception and communication operate under the statute, and how corroboration principles apply when inventorship disputes turn on contemporaneous electronic evidence.

    At a high level, the decision underscores a central theme of the AIA: first-to-file is the rule, and derivation is the narrow exception. The court repeatedly cautioned against allowing derivation proceedings to become a backdoor revival of first-to-invent interference practice. As Charles Gideon Korrell notes, the opinion reflects a broader judicial reluctance to expand statutory exceptions that would undermine the predictability of the AIA’s filing-date-centric framework.

    Background and Competing Applications

    The case arose from competing patent applications directed to an emulsifier-free wound treatment ointment containing nanodroplets of an aqueous biocide suspended in petrolatum. The claimed advance centered on a manufacturing method that separately heats the petrolatum and the biocide to different temperatures before mixing, resulting in a stable suspension without emulsifiers.

    Marc Selner filed his application on August 4, 2017. Four days later, Global Health Solutions LLC (GHS) filed its application naming Bradley Burnam as inventor. It was undisputed that Selner was the first filer and that both applications were governed exclusively by the AIA.

    GHS petitioned for a derivation proceeding under 35 U.S.C. § 135, alleging that Burnam conceived the invention first and communicated it to Selner, who then derived the invention and filed earlier. The Board instituted the proceeding and ultimately ruled in Selner’s favor, finding that although Burnam had conceived and communicated the invention by 4:04 p.m. on February 14, 2014, Selner had independently conceived the same invention earlier that same day, at 12:55 p.m.

    GHS appealed, raising multiple challenges to the Board’s legal framework, evidentiary rulings, and treatment of conception and corroboration.

    AIA Derivation Is Not Interference by Another Name

    A significant portion of the opinion is devoted to clarifying the legal framework governing AIA derivation proceedings and distinguishing them from pre-AIA interferences. Before the AIA, derivation typically arose within interference proceedings, which focused on determining who invented first. Under that regime, proving derivation required establishing prior conception and communication, often under a clear-and-convincing evidentiary standard.

    The AIA eliminated interferences for AIA-governed applications and replaced them with derivation proceedings that serve a narrower function. As the court explained, derivation proceedings do not ask who invented first in an abstract sense. Instead, they ask whether the first filer derived the claimed invention from the second filer before filing.

    To establish a prima facie case of derivation under the AIA, the petitioner must show: (1) conception of the claimed invention, and (2) communication of that conception to the respondent before the respondent’s effective filing date. The respondent may defeat the claim by proving independent conception prior to receiving the communication.

    The Federal Circuit emphasized that while pre-AIA derivation cases can provide helpful guidance, they must be applied cautiously. Judges must avoid inadvertently reintroducing interference concepts that Congress intentionally discarded. Charles Gideon Korrell observes that this portion of the opinion is likely to be cited frequently in future derivation disputes as parties attempt to import familiar interference-era doctrines into AIA proceedings.

    Harmless Error and the Board’s Focus on Earliest Conception

    One of GHS’s principal arguments on appeal was that the Board erred by focusing on which party conceived first, rather than on whether Selner independently conceived the invention before receiving Burnam’s communication. The Federal Circuit agreed that the Board framed its analysis using pre-AIA first-to-invent language, but held that any such error was harmless.

    The reason was straightforward. Selner chose to prove independent conception by showing that he conceived of the invention earlier than Burnam. By doing so, Selner necessarily established that his conception was independent and not derived from Burnam’s later communication. Although the Board’s reasoning tracked interference-style analysis, its factual findings resolved the dispositive AIA question.

    This aspect of the decision is a reminder that not every doctrinal misstep warrants reversal. Under the harmless error rule, the appellant must show not only that an error occurred, but that it affected the outcome. Here, the Board’s findings foreclosed derivation regardless of the analytical path used to reach them.

    Corroboration and the Rule of Reason in the Digital Age

    GHS also argued that Selner failed to adequately corroborate his alleged conception, contending that the Board improperly relied on Selner’s own emails. The Federal Circuit rejected this argument and reaffirmed the applicability of the rule-of-reason standard for corroboration.

    Under that standard, all pertinent evidence is considered to determine whether an inventor’s story is credible. Contemporaneous documentary evidence carries particular weight. In this case, Selner introduced emails sent on February 14, 2014, retrieved from his AOL web-based email account by a law clerk from his attorney’s office. The Board credited not only the content of the emails but also their metadata, including timestamps and sender and recipient information.

    The court emphasized that documentary evidence does not require independent corroboration in the same way as testimonial evidence. Moreover, the metadata associated with the emails was not authored by Selner and therefore constituted independent evidence. Additional circumstantial evidence, including later emails in which Burnam referred to the invention as having been “invented” by Selner, further supported the Board’s findings.

    The opinion draws an important distinction between this case and prior decisions in which alleged conception was supported solely by an inventor’s uncorroborated testimony. As Charles Gideon Korrell notes, the court’s analysis reflects an evolving understanding of how electronic records and metadata can satisfy corroboration requirements that were developed in a paper-lab-notebook era.

    Conception Without Reduction to Practice

    Another key issue on appeal was whether the nature of the invention required simultaneous conception and reduction to practice. GHS argued that because the invention involved unpredictable chemical properties, conception could not be complete without laboratory verification.

    The Federal Circuit rejected this argument. While acknowledging that certain inventions may require reduction to practice before conception is complete, the court reiterated that this is not a categorical rule for unpredictable fields. An inventor may have a complete conception when they have formed a definite and permanent idea of the invention, including a method of making it, even if the invention has not yet been reduced to practice.

    Here, substantial evidence supported the Board’s finding that Selner had fully conceived the invention by the time he described the method in detail in his February 14 email. The court declined to impose a heightened conception standard that would effectively require experimental success in every chemical or materials-based invention.

    Procedural Missteps and Inventorship Correction

    Finally, GHS sought a remand for the Board to consider whether Burnam should be named as a co-inventor on Selner’s application. The Federal Circuit declined, holding that GHS failed to properly preserve the issue.

    Under the Board’s rules, a request to correct inventorship must be made by separate motion, accompanied by specific documentation and a detailed explanation of the legal and factual basis for relief. GHS did none of this, instead including a single conclusory sentence in its petition and never pursuing the issue again.

    The court held that any failure by the Board to address this undeveloped request was harmless and attributable to GHS’s own procedural shortcomings. Charles Gideon Korrell believes this portion of the decision serves as a cautionary tale for parties attempting to hedge derivation claims with alternative inventorship theories without complying with procedural requirements.

    Takeaways

    Global Health Solutions v. Selner reinforces several important principles for AIA-era inventorship disputes:

    First, derivation remains a narrow exception to first-to-file, and courts will resist efforts to revive interference-style priority contests under a different label.

    Second, independent conception by the first filer, even if established through interference-style evidence, is sufficient to defeat derivation.

    Third, contemporaneous electronic communications and metadata can provide powerful corroboration under the rule-of-reason standard.

    Finally, procedural rigor matters. Requests for alternative relief such as inventorship correction must be properly presented and preserved.

    As Charles Gideon Korrell notes, this decision provides a foundational roadmap for future AIA derivation appeals and underscores the Federal Circuit’s commitment to preserving the structural integrity of the post-AIA patent system.

    By Charles Gideon Korrell