Technology Information Law Blog by Charles Gideon Korrell

Category: Patent Law

  • Federal Circuit Weighs in on Gesture-Based Patent Dispute: Key Takeaways for IP Law

    The Federal Circuit’s recent decision in Apple Inc. v. Gesture Technology Partners, LLC (March 2025) provides important insights into patent law, particularly in the context of inter partes review (IPR) proceedings and obviousness determinations. This ruling builds on the court’s earlier January 2025 decision in another dispute involving Gesture Technology Partners, reinforcing key legal principles regarding patent validity and the scope of IPR challenges.

    Below, we explore the major legal issues addressed in this case, how they connect to the January ruling, and what they mean for the future of intellectual property law in the tech industry.

    Background of the Case

    The dispute centers around U.S. Patent No. 7,933,431 (the ’431 patent), which relates to gesture-based input methods using cameras and optical sensors. Gesture Technology Partners, LLC (Gesture) sued Apple, LG Electronics, and Google for alleged infringement of the ’431 patent. Apple and its co-appellees petitioned for inter partes review (IPR), challenging the patent’s validity based on prior art.

    The Patent Trial and Appeal Board (PTAB) ruled that most claims were unpatentable but upheld claims 11 and 13. Apple appealed this decision, while Gesture cross-appealed, arguing that additional claims should remain valid.

    The Federal Circuit ultimately affirmed the PTAB’s findings, ruling that claims 1–10, 12, and 14–31 were unpatentable, while upholding claims 11 and 13.

    Connection to the January 2025 CAFC Decision

    This decision follows and reinforces the January 2025 ruling in Gesture Technology Partners, LLC v. Unified Patents LLC, another Federal Circuit case involving Gesture’s ’431 patent. In that case:

    • The Federal Circuit affirmed the PTAB’s finding that claims 7–9 and 12 were unpatentable, relying heavily on prior art disclosures in the Numazaki reference.
    • However, the court also upheld the PTAB’s ruling that claims 10, 11, and 13 were not unpatentable, which became a key point of contention in Apple’s subsequent appeal.

    The March 2025 ruling effectively follows the logic of the January 2025 decision, particularly in two major ways:

    1. Reaffirming PTAB’s Findings on Patent Validity:
      • Both cases emphasized that Numazaki disclosed fundamental aspects of gesture-based control, making most of Gesture’s claims obvious under 35 U.S.C. § 103.
      • The Federal Circuit consistently deferred to the PTAB’s factual findings regarding how Numazaki rendered certain claims unpatentable.
    2. Consistently Upholding Claims 11 and 13:
      • The January 2025 case upheld claims 10, 11, and 13, creating a foundation for Apple’s subsequent challenge.
      • In the March 2025 decision, Apple sought to overturn the PTAB’s finding on claims 11 and 13, arguing that the Board misapplied the obviousness standard—but the Federal Circuit again upheld these claims, reinforcing its prior stance.

    Together, these two decisions establish a strong precedent for how courts evaluate IPR outcomes, particularly in disputes involving expired patents and prior art analysis.

    Key Legal Issues Addressed by the Court

    1. Obviousness and Prior Art

    The primary legal issue in both cases was whether the patent claims were invalid due to obviousness under 35 U.S.C. § 103. The court ruled that most of the patent’s claims were obvious in light of prior art—particularly U.S. Patent No. 6,144,366 (Numazaki).

    • Apple argued that Numazaki disclosed similar technology and that a person of ordinary skill in the art would have found the claimed invention obvious.
    • Gesture countered that Numazaki did not sufficiently teach key elements of the ’431 patent, particularly its sensing and image-processing functionalities.

    In both cases, the court upheld the PTAB’s determinations, reaffirming that Numazaki was sufficient prior art to invalidate most claims.

    2. Inter Partes Review (IPR) Estoppel and Standing

    Apple faced a procedural challenge regarding IPR estoppel under 35 U.S.C. § 315(e)(1), which bars petitioners from re-litigating arguments that were (or could have been) raised in an earlier IPR.

    • Gesture argued that Apple should be estopped from challenging claims 11 and 13 because it was allegedly a real party in interest or privy of Unified Patents, the petitioner in the earlier January 2025 case.
    • The court rejected this argument, holding that Gesture had forfeited this claim by not raising it before the PTAB.

    This ruling aligns with the January 2025 decision, where the court emphasized that procedural challenges must be properly raised at the PTAB stage, not on appeal.

    3. Means-Plus-Function Claims and Claim Construction

    Another major issue was the interpretation of means-plus-function claims under 35 U.S.C. § 112, ¶ 6.

    • The March 2025 decision reaffirmed that Numazaki adequately disclosed structures corresponding to the claimed “sensing means” and “computer means” in the ’431 patent.
    • Gesture’s arguments that the Numazaki reference did not sufficiently disclose tracking and image analysis were rejected—just as they were in the January 2025 case.

    4. PTAB’s Jurisdiction Over Expired Patents

    Gesture made a broader challenge, arguing that the PTAB lacks jurisdiction over expired patents—a claim it also raised unsuccessfully in the January case.

    • The March 2025 ruling definitively rejected this argument, reaffirming the Federal Circuit’s prior holding that expired patents remain subject to IPR challenges.
    • This decision aligns with the court’s reasoning in January 2025, reinforcing that patent expiration does not shield invalid claims from IPR proceedings.

    Implications for Patent Holders and Tech Companies

    The two 2025 Federal Circuit rulings offer several key lessons for companies engaged in patent litigation, particularly in the tech sector:

    1. Strengthen Patent Drafting & Prosecution – Ensure patents are clearly distinct from prior art to withstand obviousness challenges.
    2. Raise Procedural Challenges Early – Issues like IPR estoppel and standing must be raised at the PTAB stage, not for the first time on appeal.
    3. Be Strategic About IPRs – Defendants should carefully assess prior art before filing an IPR to maximize their chances of invalidation.

    With the continued expansion of gesture-based and optical-sensing technology, these cases serve as important precedents in software and hardware patent disputes.

    Final Thoughts: A Consistent Approach to Patent Challenges

    The January and March 2025 decisions together paint a clear picture:

    • The Federal Circuit remains deferential to PTAB findings, particularly in IPR proceedings.
    • Courts continue to take a rigorous approach to obviousness analysis, ensuring that patents covering well-known technologies do not survive merely due to clever claim drafting.
    • Expired patents remain vulnerable to challenges under IPR, reinforcing the importance of early and thorough patent prosecution strategies.

    As the tech industry continues to develop new gesture-based and camera-driven input systems, these rulings may have far-reaching consequences for how such patents are drafted, enforced, and challenged in the future.

    By Charles Gideon Korrell

  • Federal Circuit Overturns ITC’s Patent Ineligibility Ruling in US Synthetic v. ITC

    On February 13, 2025, the United States Court of Appeals for the Federal Circuit issued its opinion in US Synthetic Corp. v. International Trade Commission, a case involving key issues in intellectual property law, particularly the eligibility of patent claims under 35 U.S.C. § 101 and the requirements for enablement under § 112. The Federal Circuit reversed the ITC’s conclusion that certain patent claims were directed to an abstract idea and, therefore, ineligible for patent protection, marking a significant decision for patent law concerning material compositions.

    Case Background

    US Synthetic Corp. (USS) filed a complaint with the International Trade Commission (ITC) alleging that several companies had violated Section 337 of the Tariff Act (19 U.S.C. § 1337) by importing and selling products that infringed its U.S. Patent No. 10,508,502 (the ’502 patent). The patent in question covers a polycrystalline diamond compact (PDC), a material used in drilling and machining applications.

    After an investigation, the ITC determined that the asserted claims of the ’502 patent were directed to an abstract idea and were thus patent-ineligible under § 101. The ITC’s ruling was based on its conclusion that the patent claims were primarily focused on certain magnetic properties of the PDCs, which it considered to be merely the result of the manufacturing process rather than structural limitations of the claimed composition.

    USS appealed this determination, arguing that the ITC had misapplied the Supreme Court’s Alice test and that the patent claims were not abstract but instead directed to a specific, novel composition of matter.

    Federal Circuit’s Analysis and Ruling

    The Federal Circuit reversed the ITC’s finding of patent ineligibility and ruled in favor of USS. The court applied the Alice two-step test for determining patent eligibility:

    1. Step One: Are the Claims Directed to an Abstract Idea? The Federal Circuit found that the claims were not directed to an abstract idea but rather to a specific composition of matter. The court emphasized that the patent defines the PDC by its material composition, including diamond grains, catalyst properties, grain size, and certain magnetic properties. Because these characteristics inform a skilled artisan about the structure and physical properties of the PDC, the claims were not abstract.
    2. Step Two: Do the Claims Contain an Inventive Concept? Since the claims were not abstract under step one, the court did not need to proceed to step two. However, it noted that even if step two had been necessary, the claimed composition involved specific manufacturing parameters that resulted in improved material properties, which could qualify as an inventive concept.

    Enablement Under § 112

    In addition to patent eligibility, the intervenors argued that the claims were not enabled under § 112 because the patent did not adequately describe how to achieve the claimed properties without undue experimentation. However, the Federal Circuit upheld the ITC’s conclusion that the claims were enabled. The court found that the patent specification contained sufficient details on the manufacturing process and provided working examples that a skilled artisan could follow without undue experimentation.

    Key Takeaways for Intellectual Property Law

    1. Clarification on Patent Eligibility for Material Compositions
      • The ruling reinforces that claims defining specific material compositions—especially when tied to measurable properties—are not abstract ideas under § 101.
      • The decision pushes back against an overly restrictive view of patent eligibility that might otherwise exclude innovations in material science.
    2. Reaffirmation of the Enablement Standard
      • The Federal Circuit reiterated that the burden of proving non-enablement is on the party challenging the patent.
      • The court emphasized that some level of experimentation is permissible as long as it is not unduly extensive.

    Conclusion

    The US Synthetic v. ITC decision is a significant win for patent holders in the field of material science. It demonstrates that courts are willing to take a nuanced approach when assessing whether a patent is directed to an abstract idea, particularly in cases involving compositions of matter. Moreover, the ruling affirms that patents must provide enough information to enable a skilled artisan to practice the invention without undue experimentation, but they do not need to be exhaustive in their disclosures. This decision is likely to influence future litigation involving patent eligibility and enablement in the chemical and material sciences industries.

    By Charles Gideon Korrell

  • Patent Litigation and Expert Testimony: Lessons from Trudell v. D R Burton

    The recent decision in Trudell Medical International Inc. v. D R Burton Healthcare, LLC by the United States Court of Appeals for the Federal Circuit highlights significant issues in intellectual property law, particularly in the realm of patent litigation. This case, which revolves around the infringement of U.S. Patent No. 9,808,588, serves as a critical reminder of the procedural and evidentiary requirements in patent disputes.

    Background of the Case

    Trudell Medical International Inc. (“Trudell”) sued D R Burton Healthcare, LLC (“D R Burton”) for infringement of its patent covering oscillatory positive expiratory pressure (OPEP) therapy devices. Trudell alleged that D R Burton’s vPEP®, iPEP®, PocketPEP®, and related products infringed claims 1–7, 9, and 18 of its patent. After a three-day trial, the jury found the asserted claims valid but not infringed.

    Trudell appealed on multiple grounds, including the improper admission of expert testimony by Dr. John Collins, an expert retained by D R Burton. The Federal Circuit ultimately reversed the district court’s decision allowing Dr. Collins’ testimony, granted a new trial on infringement, and ordered the case to be reassigned to a different judge.

    Key Legal Issues in the Case

    1. Expert Testimony and Compliance with Federal Rules

    One of the most significant issues in the case was the admission of expert testimony. Under Federal Rule of Civil Procedure 26(a)(2), expert reports must include a complete statement of opinions, the basis and reasons for those opinions, supporting data, and a list of prior cases where the expert has testified. Additionally, under Rule 37(c)(1), failure to disclose expert information as required by Rule 26 results in automatic exclusion unless the failure is substantially justified or harmless.

    The court found that D R Burton failed to comply with these disclosure requirements, as Dr. Collins did not submit a timely expert report on noninfringement. His testimony was introduced at trial despite not being disclosed during discovery, depriving Trudell of an opportunity to challenge or cross-examine his findings adequately. The court held that this failure was neither substantially justified nor harmless, leading to the exclusion of his testimony and the ordering of a new trial.

    2. Claim Construction and Expert Reliability

    The Federal Circuit also addressed issues with the methodology of Dr. Collins’ testimony. The district court had construed specific claim terms, including the definition of “a vane” and “rotate relative to the opening.” Despite this, Dr. Collins provided testimony that contradicted the court’s construction, effectively redefining key claim terms. His approach was deemed unreliable under Federal Rule of Evidence 702, which requires that expert opinions be based on reliable principles and methodologies.

    This aspect of the decision underscores the importance of ensuring that expert witnesses adhere to judicial claim constructions rather than reinterpreting patent terms in a manner inconsistent with the court’s ruling.

    3. The Impact of Procedural Missteps on Patent Trials

    Another crucial takeaway from this case is the procedural mismanagement at the district court level. The judge overseeing the case made multiple contradictory rulings regarding Dr. Collins’ testimony, initially excluding it, then allowing it, then reversing again. Additionally, comments made by the judge suggested a predisposition toward resolving the case quickly, rather than ensuring a fair trial. These concerns led the Federal Circuit to order a reassignment of the case to a different judge on remand—a rare but important corrective measure to preserve judicial impartiality.

    Implications for Patent Law and Litigation Strategy

    This decision has several important takeaways for patent litigants:

    • Strict Compliance with Expert Disclosure Rules: Failure to provide timely and complete expert reports can lead to exclusion of testimony, which can be case-dispositive in patent disputes.
    • Adherence to Claim Construction: Experts must base their testimony on the court’s claim construction and avoid introducing conflicting interpretations.
    • The Role of Judicial Conduct in Patent Trials: The reassignment of this case underscores the importance of judicial impartiality and procedural fairness in complex intellectual property disputes.

    Conclusion

    The Trudell v. D R Burton case highlights the complexities of patent litigation, particularly in the areas of expert testimony and claim construction. For attorneys and companies engaged in intellectual property disputes, this ruling reinforces the necessity of procedural diligence, expert reliability, and fair trial practices. As the case moves forward on remand, it will be interesting to see how the new trial unfolds without the tainted expert testimony that influenced the first jury’s verdict.

    By Charles Gideon Korrell

  • Federal Circuit Weighs in on Gesture-Controlled Camera Patent Dispute

    In a significant ruling on patent validity and inter partes review (IPR) jurisdiction, the Federal Circuit recently decided Apple Inc. v. Gesture Technology Partners, LLC, a case addressing the patentability of gesture-based camera control technology. The decision clarifies key issues surrounding the obviousness of patents, the scope of IPR proceedings, and the ability of the Patent Trial and Appeal Board (PTAB) to review expired patents.

    Background of the Case

    Gesture Technology Partners, LLC (“Gesture”) owns U.S. Patent No. 8,878,949 (“the ’949 patent”), which describes a portable device incorporating an electro-optical sensor that detects gestures and controls a digital camera accordingly. Apple, alongside LG Electronics and Google, challenged the patent through an IPR, arguing that multiple claims were unpatentable due to obviousness over prior art references.

    The PTAB ruled that claims 1–3, 5–10, and 12–17 were unpatentable but upheld the validity of claims 4, 11, and 18. Both parties appealed: Apple contested the decision upholding claim 4, while Gesture cross-appealed the unpatentability findings against claims 1–3 and 5–7.

    Key Legal Issues Addressed

    1. PTAB’s Authority to Review Expired Patents

    One of the central issues in Gesture’s cross-appeal was whether the PTAB had jurisdiction over the IPR, given that the ’949 patent had expired before Apple filed its petition. Gesture argued that an expired patent ceases to be a public franchise and is thus outside the PTAB’s purview.

    The Federal Circuit rejected this argument, reaffirming that expired patents can still be subject to IPR because they retain enforceable rights, such as claims for past damages. The court emphasized that IPR proceedings serve as a “second look” at the initial patent grant, aligning with the Supreme Court’s reasoning in Oil States Energy Services v. Greene’s Energy Group (2018).

    2. Obviousness and Prior Art Considerations

    The Federal Circuit upheld the PTAB’s finding that claims 1–3 and 5–7 were unpatentable as obvious in light of prior art, particularly U.S. Patent No. 6,144,366 (Numazaki) and Japanese Patent Application No. H4-73631 (Nonaka). The court found that:

    • Numazaki’s light extraction unit, which detects user interactions, corresponds to the electro-optical sensor claimed in the ’949 patent.
    • A skilled person would have been motivated to combine Numazaki’s different embodiments and Nonaka’s remote-control functionality to create a device that captures images based on gesture recognition.
    • Gesture’s expert failed to provide sufficient technical reasoning to dispute the Board’s obviousness findings.

    3. Reversal of PTAB’s Decision on Claim 4

    Apple successfully challenged the PTAB’s ruling on claim 4, which required the electro-optical sensor to be “fixed” in relation to the digital camera. The Federal Circuit found that the PTAB improperly disregarded Apple’s expert testimony, which demonstrated that fixing these components was an obvious design choice for maintaining overlapping fields of view. As a result, the court reversed the PTAB’s finding, declaring claim 4 unpatentable.

    Implications for Intellectual Property Law

    This ruling underscores the Federal Circuit’s approach to obviousness analyses and reinforces the PTAB’s authority over expired patents. The decision also highlights the importance of expert testimony in IPR proceedings—both in establishing obviousness and in defending against it.

    For patent holders, the case serves as a cautionary tale about the vulnerabilities of broad, technology-based claims in the face of prior art. For challengers, it confirms that IPR remains a powerful tool for invalidating weak patents, even post-expiration.

    Conclusion

    The Apple v. Gesture decision provides important clarity on the role of IPR in expired patents and the standards for proving obviousness in technology-related patents. With the court’s ruling, Apple, LG, and Google have successfully invalidated additional claims of the ’949 patent, reinforcing the competitive landscape in the field of gesture-based camera technology.

    By Charles Gideon Korrell

  • Federal Circuit Reverses JMOL in Steuben Foods Patent Case: Key Takeaways for IP Law

    In Steuben Foods, Inc. v. Shibuya Hoppmann Corporation, the Federal Circuit issued a major decision addressing key intellectual property issues related to patent infringement, claim construction, and the reverse doctrine of equivalents (RDOE). The case centered on aseptic food packaging technology, with the court analyzing whether Shibuya’s P7 aseptic bottling line infringed Steuben’s patents.

    This ruling highlights several crucial aspects of IP law, including the viability of RDOE as a defense, the interpretation of means-plus-function claims, and the application of the doctrine of equivalents. Below, we break down the major legal takeaways from this case.

    1. The Reverse Doctrine of Equivalents is Questioned but Not Eliminated

    One of the most significant aspects of the ruling was the court’s discussion of RDOE, an uncommon defense to literal infringement. Shibuya argued that even if its product fell within the literal scope of Steuben’s patent claims, it operated under a different principle and should not be found infringing.

    Steuben countered that RDOE was effectively eliminated by the 1952 Patent Act, which codified infringement rules in 35 U.S.C. § 271(a) and included limitations on overly broad claims under § 112. The Federal Circuit acknowledged that RDOE has been rarely applied and that there is an argument that it may no longer be viable. However, rather than making a definitive ruling on whether RDOE survived the 1952 Patent Act, the court found that the jury had substantial evidence to reject Shibuya’s RDOE argument. As a result, the court reversed the district court’s judgment as a matter of law (JMOL) and reinstated the jury’s infringement verdict for the ‘591 patent.

    2. Means-Plus-Function Claims and the Equivalence Test

    Another key issue involved the construction of means-plus-function claims in the ‘188 patent. The claims at issue used functional language to describe components of the aseptic filling system, such as a “means for filling” bottles at a specified rate. Under § 112, ¶ 6, such claims must be construed to cover the specific structures disclosed in the patent and their equivalents.

    The district court had found that Shibuya’s accused products, which used rotary wheels and neck grippers, did not infringe the means-plus-function claims because they operated differently from the patented conveyor and conveyor plate. However, the Federal Circuit reversed, emphasizing that the equivalence test must consider whether the accused structure performs the same function in substantially the same way to achieve the same result. The court found that Steuben presented substantial evidence that Shibuya’s rotary wheels and neck grippers were equivalent to the claimed structures, leading to a reinstatement of the jury’s verdict on the ‘188 patent.

    3. Limits on the Doctrine of Equivalents

    The court upheld JMOL of noninfringement for claims in the ‘985 patent, highlighting an important limitation on the doctrine of equivalents. The issue in this case was whether a sterilization system that added sterilant “continuously” could be deemed equivalent to a claim that required it to be added “intermittently.”

    The parties had stipulated that “intermittently added” meant “[a]dded in a non-continuous manner.” Given this definition, the court held that allowing a “continuous” system to be considered equivalent would vitiate the claim limitation entirely. This ruling reinforces the principle that the doctrine of equivalents cannot be used to erase clear claim limitations.

    4. Reinstating the Jury’s Verdict and Addressing New Trial Issues

    In addition to reversing JMOL on certain infringement claims, the Federal Circuit also vacated the district court’s conditional grant of a new trial on infringement and damages. Because the district court’s reasoning for ordering a new trial was tied to its JMOL findings—many of which were overturned—the Federal Circuit found no independent basis for a new trial.

    However, the court vacated and remanded the district court’s ruling on a new trial for invalidity and damages, as the lower court had provided no clear rationale for those decisions. This signals the importance of district courts articulating their reasoning clearly when granting new trials, especially in complex patent litigation.

    Key Takeaways for Patent Holders and Defendants

    This decision offers several key lessons for patent holders and defendants in intellectual property disputes:

    1. RDOE Remains a Questionable Defense – While the court did not rule on whether RDOE survived the 1952 Patent Act, it reinforced the principle that substantial evidence from a jury trial should not be overturned lightly.
    2. Means-Plus-Function Claims Require Proper Equivalence Analysis – When dealing with § 112, ¶ 6 claims, courts must carefully compare the structure and function of the accused product to the patent’s disclosed embodiments.
    3. Doctrine of Equivalents Has Limits – The decision confirms that the doctrine of equivalents cannot be used to override explicit claim limitations, particularly when the alleged equivalent is the opposite of the claim language.
    4. District Courts Must Provide Clear Justifications for New Trials – The Federal Circuit vacated a new trial ruling because the district court failed to articulate an independent basis for it.

    Conclusion

    The Steuben Foods decision provides important guidance on several areas of intellectual property law, particularly for companies engaged in patent disputes over manufacturing processes. While the Federal Circuit did not eliminate RDOE outright, it cast doubt on its viability, reinforcing that patentees should focus on claim construction and infringement theories rather than relying on outdated doctrines. The ruling also strengthens the application of means-plus-function claims and the doctrine of equivalents while ensuring that district courts justify their decisions with clear reasoning.

    As patent litigation continues to evolve, this case serves as a reminder of the complexities of IP law and the need for strategic approaches in patent enforcement and defense.

    By Charles Gideon Korrell

  • Lynk Labs v. Samsung: Federal Circuit Clarifies Prior Art Status of Published Patent Applications in IPRs

    On January 14, 2025, the United States Court of Appeals for the Federal Circuit issued a pivotal decision in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., affirming the invalidation of certain claims in Lynk Labs’ U.S. Patent No. 10,687,400 (the ’400 patent) through inter partes review (IPR). The case primarily addressed a critical question in patent law: when does a published patent application qualify as prior art in an IPR? The Federal Circuit confirmed that a published patent application can be deemed prior art as of its filing date, significantly impacting how prior art is evaluated in IPR proceedings.

    Background of the Case

    The ’400 patent, held by Lynk Labs, pertains to alternating current (AC) driven LED technology. Samsung challenged the validity of claims 7–13 and 15–17 of the patent under 35 U.S.C. § 103 (obviousness), relying in part on U.S. Patent Application Publication No. 2004/0206970 (referred to as “Martin”). While the Martin application was filed before the priority date of the ’400 patent (February 25, 2004), it was not published until October 21, 2004. Lynk Labs contended that because Martin was not publicly available before the priority date, it should not be considered prior art in the IPR proceeding.

    Key Legal Issue: Prior Art Status of Published Patent Applications

    Lynk Labs argued that under the traditional understanding of prior art printed publications under 35 U.S.C. § 102(a) and (b), a reference must be publicly accessible before the relevant priority date to be considered prior art. In contrast, Samsung maintained that under § 102(e)(1), a U.S.-filed patent application published under 35 U.S.C. § 122(b) can be treated as prior art as of its filing date, regardless of when it became publicly accessible.

    The Federal Circuit sided with Samsung, holding that under § 102(e)(1), a published patent application serves as prior art as of its filing date, provided it was filed before the claimed invention. This interpretation aligns with prior cases recognizing that patents granted on such applications are also considered prior art as of their filing date under § 102(e)(2). The ruling underscores that Congress intended a different treatment for published patent applications compared to other printed publications such as journal articles and technical papers.

    Implications for Intellectual Property Law

    The Federal Circuit’s decision has significant implications for patent owners and IPR petitioners:

    1. Expanded Scope of Prior Art in IPRs: This ruling solidifies that a published patent application can be used as prior art in an IPR based on its filing date, even if it was not publicly available before the challenged patent’s priority date. This expands the range of prior art that can be leveraged in patent challenges.
    2. Greater Risk for Patent Holders: Patent applicants must be aware that even unpublished applications filed before their invention can be cited against them in an IPR, potentially increasing the risk of invalidation.
    3. Strategic Considerations for Patent Drafting: Innovators should carefully evaluate their filing strategies, including provisional applications and continuation practices, to ensure that their own filings are structured to avoid unintended prior art issues.

    Other Legal Issues Addressed

    Beyond the prior art issue, the court also reviewed claim construction disputes:

    • Series Connection of LEDs: The court upheld the Board’s broad interpretation of “a plurality of LEDs connected in series” to include both individual LEDs and LED circuits. This reinforced the principle that claim terms should be interpreted based on intrinsic evidence from the specification.
    • Matching Forward Voltage to Rectified Input AC Voltage: The court also agreed with the Board’s interpretation that “matches” does not require an exact equivalence but can include cases where the input voltage is less than or equal to the LED circuit’s forward voltage.

    Conclusion

    The Federal Circuit’s ruling in Lynk Labs v. Samsung provides crucial clarity on how published patent applications function as prior art in IPRs. By affirming that such applications can serve as prior art as of their filing date, the decision strengthens the ability of IPR petitioners to challenge patents using prior-filed but later-published applications. For patent holders, this ruling serves as a reminder to carefully consider prior filings when assessing patentability and preparing for potential IPR challenges. As the landscape of patent litigation continues to evolve, this case stands as a key precedent in the interpretation of prior art rules under U.S. patent law.

    By Charles Gideon Korrell

  • BEARBOX LLC v. LANCIUM LLC: A Legal Examination of Inventorship and State Law Preemption in Patent Law

    In the recent case of BearBox LLC v. Lancium LLC, the United States Court of Appeals for the Federal Circuit addressed pivotal issues concerning inventorship claims and the preemption of state law by federal patent statutes. This case underscores the intricate balance between state and federal jurisdictions in intellectual property disputes.

    Case Background

    Austin Storms, founder of BearBox LLC, engaged in discussions with Lancium LLC’s co-founders, Michael T. McNamara and Dr. Raymond E. Cline, Jr., during a Bitcoin mining conference. Subsequently, Storms sent an email containing technical information about BearBox’s technology. Lancium later secured U.S. Patent No. 10,608,433 (“the ‘433 patent”), leading Storms to assert that he should be recognized as an inventor. BearBox pursued legal action, alleging conversion under Louisiana state law and seeking correction of inventorship on the ‘433 patent.

    Key Legal Issues Addressed

    1. Preemption of State Law Conversion Claim
      • BearBox’s conversion claim centered on Lancium’s alleged unauthorized use of its unpatented technology. The district court dismissed this claim, determining it was preempted by federal patent law. The court reasoned that allowing such a state law claim would conflict with the objectives of federal patent statutes, which aim to promote public disclosure and free use of unpatented ideas. The Federal Circuit affirmed this decision, emphasizing that state laws cannot offer patent-like protection to intellectual creations unprotected under federal law.
    2. Exclusion of Supplemental Expert Report
      • BearBox submitted a supplemental expert report after the close of discovery without seeking the court’s permission. The district court excluded this report, citing procedural rules and the untimely nature of its submission. The Federal Circuit upheld this exclusion, noting that BearBox had ample opportunity to address claim construction issues earlier in the proceedings and failed to justify the delayed submission.
    3. Inventorship Claims
      • At the heart of the dispute was whether Storms should be recognized as a sole or joint inventor of the ‘433 patent. The district court, after a thorough bench trial, found that BearBox did not provide clear and convincing evidence to support Storms’ inventorship claims. The court highlighted that the information shared by Storms did not establish his conception of the claimed invention, nor did it precede Lancium’s independent development. The Federal Circuit affirmed this finding, underscoring the necessity for corroborated evidence in inventorship disputes.

    Implications for Intellectual Property Law

    This case reinforces the principle that federal patent law preempts state laws that attempt to grant patent-like protections to unpatented ideas. It also highlights the critical importance of timely and procedurally correct submissions in litigation, especially concerning expert reports. For inventors and companies, the decision underscores the necessity of maintaining thorough documentation and clear communication when collaborating or sharing technical information, as these records are vital in establishing claims of inventorship.

    In conclusion, the BearBox LLC v. Lancium LLC decision provides valuable insights into the complexities of patent law, particularly regarding the boundaries of state and federal jurisdictions and the stringent requirements for proving inventorship.

    By Charles Gideon Korrell

  • Federal Circuit Reverses Invalidity Finding for Novartis’ Entresto Patent

    On January 10, 2025, the Federal Circuit issued a significant decision in In re Entresto (Sacubitril/Valsartan) Patent Litigation, reversing a district court ruling that had found claims of Novartis’ U.S. Patent 8,101,659 (“the ’659 patent”) invalid for lack of written description. The appellate court affirmed the district court’s rulings that the patent was not invalid for obviousness or lack of enablement, solidifying Novartis’ ability to protect its blockbuster drug, Entresto®.

    This decision highlights several key patent law principles, particularly in the areas of written description, enablement, and obviousness. Here’s a breakdown of the major issues addressed by the court.

    1. Written Description – The Core Issue on Appeal

    The Federal Circuit reversed the district court’s finding that the ’659 patent lacked an adequate written description. The lower court had ruled that because the patent did not describe a valsartan-sacubitril complex, it failed the written description requirement. However, the Federal Circuit clarified that the claims did not specifically require such a complex—they covered valsartan and sacubitril administered in combination, not in a bound form.

    Key Takeaway:

    A patent’s written description must support what is actually claimed, not an unclaimed feature of the accused product. The court found that the patent sufficiently described the claimed combination therapy, even though it did not describe the later-developed valsartan-sacubitril complex.

    2. Enablement – The Patent Need Only Enable the Claimed Invention

    The district court had found that the ’659 patent enabled the claimed invention, and the Federal Circuit affirmed this conclusion. The court held that because valsartan-sacubitril complexes were unknown at the time of filing, Novartis was not required to enable them in its patent.

    Key Takeaway:

    Later-developed technologies cannot be used to argue that an earlier patent lacks enablement. If the claimed invention was enabled based on the state of the art at the time of filing, the patent remains valid.

    3. Obviousness – No Clear Motivation to Combine

    The court also upheld the district court’s ruling that the asserted claims were not obvious. The defendants (generic pharmaceutical manufacturers) argued that a person of ordinary skill in the art would have been motivated to combine an ARB (valsartan) and an NEP inhibitor (sacubitril) based on prior studies of similar drug combinations.

    However, the court found:

    • The prior art did not directly suggest combining valsartan with sacubitril.
    • Sacubitril was one of over 100 known NEP inhibitors in 2002, and it had never been tested in humans or animals for hypertension or heart failure.
    • The available studies on other NEP inhibitors showed discouraging results.

    Key Takeaway:

    Obviousness cannot be based on hindsight—just because an invention later proves effective does not mean it was obvious at the time of the patent filing.

    Conclusion: A Win for Novartis and Strong Patent Protection

    This decision strengthens Novartis’ patent protection for Entresto®, a drug with annual U.S. sales exceeding $3 billion. It reinforces the principle that:

    1. The written description requirement applies to what is actually claimed, not later-developed variants of the product.
    2. Enablement is judged based on what was known at the time of filing, not what was developed later.
    3. Obviousness must be based on clear motivation and reasonable expectation of success from the prior art.

    For pharmaceutical innovators, this case underscores the importance of careful patent drafting and robust litigation strategies. Meanwhile, for generic manufacturers, it highlights the challenges of proving invalidity when prior art does not clearly suggest the patented invention.

    By Charles Gideon Korrell

  • Functionality and Trademark Law: The Federal Circuit’s Decision in CeramTec GmbH v. CoorsTek Bioceramics LLC

    In a significant ruling on the intersection of patent and trademark law, the U.S. Court of Appeals for the Federal Circuit recently upheld the cancellation of CeramTec GmbH’s trademarks for the pink color of ceramic hip components. The court affirmed the decision of the Trademark Trial and Appeal Board (TTAB), finding that the color pink was functional and therefore ineligible for trademark protection. This decision reinforces long-standing principles regarding the limits of trademark rights when applied to functional product features.

    Background of the Case

    CeramTec, a manufacturer of ceramic hip implants, had obtained trademarks for the pink color of its zirconia-toughened alumina (ZTA) ceramic hip components, marketed as Biolox Delta. The pink coloration resulted from the addition of chromium oxide (chromia) to the ceramic, a practice that CeramTec had also covered in prior patents. However, once its patent on the composition expired, CeramTec sought to use trademark law to prevent competitors from producing similarly colored ceramic implants.

    CoorsTek, a competitor in the medical implant market, challenged these trademarks, arguing that the pink coloration was functional and not protectable under trademark law. The TTAB agreed, ruling that the pink color was functional and canceling CeramTec’s marks. CeramTec appealed this decision to the Federal Circuit.

    Key Legal Issues Addressed

    The Federal Circuit’s opinion primarily addressed two major intellectual property law issues: trademark functionality and the interaction between patents and trademarks in determining the protectability of product features.

    1. The Functionality Doctrine in Trademark Law

    The court emphasized the functionality doctrine, which prevents a manufacturer from using trademark law to claim exclusive rights over functional features of a product. The doctrine is based on the idea that trademark law should not inhibit competition by allowing a company to monopolize useful product features.

    The court applied the four-factor test established in In re Morton-Norwich Products, Inc. to determine functionality:

    • Existence of a Utility Patent: CeramTec’s expired patent explicitly disclosed that the addition of chromia provided material benefits, including increased hardness and durability.
    • Advertising that Promotes a Functional Advantage: CeramTec’s promotional and technical materials, as well as regulatory filings, repeatedly stated that chromia improved the physical properties of its ceramics.
    • Availability of Alternative Designs: The court found no compelling evidence that other ceramic hip implant colors would work equally well.
    • Impact on Manufacturing Cost and Simplicity: Conflicting evidence on whether chromia made manufacturing cheaper led the court to treat this factor as neutral.

    Given the strong evidence under the first two factors, the court concluded that the pink coloration was functional and not eligible for trademark protection.

    2. The Role of Patents in Trademark Functionality Analysis

    One of the most critical aspects of this decision was the role of CeramTec’s expired patent in proving functionality. Under the Supreme Court’s ruling in TrafFix Devices, Inc. v. Marketing Displays, Inc., a utility patent that claims a particular product feature is strong evidence that the feature is functional and cannot be protected as a trademark.

    The court dismissed CeramTec’s argument that the TrafFix standard did not apply because the patent did not explicitly claim the color pink. The Federal Circuit held that because CeramTec’s patent claimed the addition of chromia—directly responsible for the pink coloration—it was clear that the pink color was a byproduct of a functional process. The ruling reinforces that patent disclosures about functional advantages can be fatal to later trademark claims on those same features.

    Unclean Hands and Equitable Defenses

    CeramTec also attempted to raise an unclean hands defense, arguing that CoorsTek had previously asserted that chromia provided no functional benefits and should be barred from now arguing the opposite. The court rejected this defense, emphasizing that public interest in eliminating functional marks outweighed any concerns about inconsistencies in CoorsTek’s prior statements.

    Implications for Trademark and Patent Holders

    This decision serves as a stark reminder that companies cannot use trademark law to extend monopoly rights over expired patents. Once a patent expires, competitors are free to use the disclosed innovation, and trademark law cannot be used as a backdoor method of restricting competition.

    Key Takeaways for IP Practitioners:

    1. Be Cautious with Trademarking Functional Features
      If a product feature serves a functional purpose, securing a trademark may not be a viable long-term strategy for exclusivity.
    2. Prior Patents Can Undermine Trademark Claims
      A company’s own patents can serve as strong evidence that a feature is functional, making it difficult to later argue for trademark protection.
    3. Marketing and Regulatory Filings Matter
      Statements in advertising, promotional materials, and regulatory filings that tout a feature’s functional benefits can be used as evidence against trademark validity.
    4. The Functionality Doctrine Is a Strong Barrier to Color Trademarks
      While colors can sometimes be trademarked (as in Qualitex Co. v. Jacobson), courts will closely scrutinize whether the color serves a functional purpose before granting protection.

    Conclusion

    The Federal Circuit’s decision in CeramTec GmbH v. CoorsTek Bioceramics LLC reinforces core principles of trademark law by preventing the use of trademarks to monopolize functional product features. By reaffirming that expired patents serve as strong evidence of functionality, the ruling ensures that competitors can lawfully use previously patented innovations once patent protection ends. This case serves as a valuable lesson for companies looking to balance patent and trademark strategies in protecting their intellectual property.

    By Charles Gideon Korrell

  • Federal Circuit Overturns PTAB Decision in Honeywell v. 3G Licensing: A Victory for Obviousness Challenges

    On January 2, 2025, the Federal Circuit issued a significant ruling in Honeywell International Inc. v. 3G Licensing, S.A., reversing the Patent Trial and Appeal Board’s (PTAB) decision that upheld the validity of U.S. Patent No. 7,319,718. This ruling underscores the court’s approach to obviousness under 35 U.S.C. § 103 and highlights critical considerations in intellectual property disputes, particularly in standard-essential patents.

    Background: The ‘718 Patent and the CQI Coding Method

    The case centered around the ‘718 patent, which covers a method for encoding Channel Quality Indicator (CQI) data in third-generation (3G) mobile communication systems. CQI is used by mobile devices to inform base stations about network conditions, helping optimize data transmission rates.

    Honeywell and other appellants challenged the ‘718 patent in an inter partes review (IPR), arguing that the claimed method was obvious in light of prior art, particularly a proposal from Koninklijke Philips N.V. (the Philips reference). The PTAB, however, found that Honeywell failed to demonstrate a motivation to modify the Philips reference in the specific way claimed by the ‘718 patent.

    The Federal Circuit’s Analysis: Legal Issues in Patent Obviousness

    The Federal Circuit reversed the PTAB, concluding that its findings were legally flawed and unsupported by substantial evidence. The ruling focused on four major issues of patent law:

    1. Motivation to Modify Prior Art: Must It Match the Patentee’s Objective?

    The PTAB had determined that because the ‘718 patent aimed to maximize system throughput, there was no motivation for a skilled artisan to modify the Philips reference to enhance protection for the most significant bit (MSB). The Federal Circuit rejected this reasoning, reaffirming that obviousness does not require the motivation to match the patentee’s goal. Citing KSR International Co. v. Teleflex Inc., the court emphasized that any recognized need in the field—not just the inventor’s specific motivation—can support a finding of obviousness.

    2. Prior Art and the Role of Technical Modifications

    The court found that the Philips reference itself taught the desirability of protecting the MSB and that swapping two bits in the encoding table (as the ‘718 patent claimed) was a straightforward optimization. Because the modification merely involved a minor technical adjustment, it fell within the realm of routine experimentation and optimization rather than a novel innovation.

    3. Conflation of Obviousness and Anticipation

    The Federal Circuit criticized the PTAB for improperly treating the lack of an explicit proposal to swap the bits in the Philips reference as evidence of non-obviousness. The court clarified that while anticipation requires every element to be disclosed in a single prior art reference, obviousness merely requires that the claimed modification would have been a natural and logical step for a skilled person.

    4. The “Best Approach” Fallacy in Standards Development

    The PTAB had focused on the lack of consensus within the 3G standards-setting process regarding optimal CQI encoding methods. The Federal Circuit held that obviousness does not require a modification to be the “best” or “preferred” approach, only that it be a reasonable and predictable improvement.

    Implications for Patent Law and Standard-Essential Patents

    This decision reinforces the high bar for patentability in the face of well-documented prior art. Some key takeaways include:

    • Obviousness analysis should not be constrained by the inventor’s specific motivations but should consider broader industry knowledge.
    • Technical refinements and optimizations may not be patentable if they represent routine modifications of existing methods.
    • Standard-setting bodies’ debates do not necessarily shield patents from invalidity challenges—if an approach was reasonably suggested by prior art, it may still be deemed obvious.

    Conclusion

    The Federal Circuit’s decision in Honeywell v. 3G Licensing serves as a reminder that minor tweaks to well-known technologies, even when adopted into industry standards, may not be enough to sustain patent validity. As companies continue to litigate standard-essential patents, courts will likely scrutinize whether claimed inventions represent true innovation or merely expected refinements of prior art.

    This ruling is a win for companies challenging weak patents in high-tech industries and signals a continued shift toward a pragmatic and evidence-driven approach to patent law.