Technology Information Law Blog by Charles Gideon Korrell

Tag: CAFC

  • Barry v. DePuy Synthes: The Federal Circuit Draws a Line Between Daubert Gatekeeping and Jury Factfinding

    Barry v. DePuy Synthes: The Federal Circuit Draws a Line Between Daubert Gatekeeping and Jury Factfinding

    On January 20, 2026, the Federal Circuit issued a significant decision clarifying the boundary between judicial gatekeeping under Daubert and the jury’s role as factfinder in patent infringement trials. In Barry v. DePuy Synthes Companies, the court reversed the exclusion of two key experts and vacated a judgment as a matter of law entered after the district court struck that testimony mid-trial. The opinion offers an important reminder that not every tension or inconsistency exposed on cross-examination rises to the level of an admissibility defect—and that Rule 702’s reliability inquiry must not be conflated with the merits of an expert’s conclusions.

    Background and Procedural Posture

    Dr. Mark Barry sued DePuy Synthes entities in the Eastern District of Pennsylvania, alleging that DePuy induced surgeons to infringe claims of three patents covering spinal derotation techniques used to treat deformities such as scoliosis. The asserted patents describe tools and methods for “en bloc derotation,” allowing surgeons to manipulate multiple vertebrae simultaneously using linked derotation tools.

    Two categories of claims were at issue. The first required tools with a “handle means,” construed by the district court as “a part that is designed especially to be grasped by the hand.” The second, from a later patent, did not require a handle means but instead required cross-linking elements that caused tools to move in unison.

    Barry relied on two experts. His technical expert, Dr. Walid Yassir, opined that DePuy’s accused tools could be assembled and used in infringing configurations that met every claim limitation. His survey expert, Dr. David Neal, designed and administered a surgeon survey to estimate how often the accused tools were used in those infringing configurations, evidence that fed directly into Barry’s damages theory.

    Before trial, the district court denied DePuy’s Daubert motions directed at both experts, concluding that DePuy’s criticisms went to weight rather than admissibility. During trial, however—after both experts testified—the court reversed course. It excluded Dr. Yassir’s testimony on the ground that he contradicted the court’s claim construction of “handle means,” excluded Dr. Neal’s survey as methodologically unreliable, and then granted judgment as a matter of law for DePuy based on the absence of remaining expert evidence.

    Barry appealed.

    The Federal Circuit’s Majority Opinion

    Writing for the majority, Judge Stark reversed across the board. Applying Third Circuit law to the evidentiary rulings, the court held that the district court abused its discretion in excluding both experts and erred in granting JMOL.

    1. Expert Testimony and Claim Construction

    The majority began from a well-established premise: expert testimony that contradicts a court’s claim construction is not helpful to the jury and must be excluded under Rule 702. The court cited Exergen, Liquid Dynamics, and more recent Federal Circuit precedent reiterating that experts may not present infringement opinions “untethered” from the court’s constructions.

    But the key question, according to the majority, was whether Dr. Yassir actually contradicted the construction—or instead merely applied it in a way DePuy disputed.

    The court emphasized that on direct examination, Dr. Yassir repeatedly recited the court’s construction verbatim and testified that he applied it in his analysis. His opinion was that various parts of the accused tools—including when linked together—were “designed especially to be grasped by the hand.”

    On cross-examination, DePuy elicited testimony that it later characterized as contradictory: statements suggesting that “everything” in a linked system could be a handle means, or that parts grasped during assembly could qualify. The district court viewed these statements as redefining “handle means” to include anything that must be grasped, rather than something designed especially to be grasped.

    The Federal Circuit disagreed. In the majority’s view, these exchanges revealed at most a dispute over how broadly the construction should be applied, not a rejection of the construction itself. The majority stressed that the district court’s own Markman order acknowledged that “handle means” could encompass a linked handle array, and that nothing in the construction precluded multiple components from qualifying when linked together.

    Crucially, the court distinguished between contradiction and lack of persuasiveness. An expert who applies the court’s construction in an expansive or aggressive way may be wrong, but that does not render the testimony inadmissible. As the majority put it, disputes over application, credibility, and probative weight are for the jury—not grounds for exclusion.

    Charles Gideon Korrell notes that this portion of the opinion is best read as a warning against converting Daubert into a vehicle for resolving close infringement questions under the guise of reliability.

    2. Survey Evidence and Rule 702

    The court reached a similar conclusion regarding Dr. Neal’s survey. The district court excluded the survey based on concerns about representativeness, non-probability sampling, nonresponse bias, and alleged flaws in question design.

    The majority acknowledged that surveys must examine the proper universe and use a representative sample, but emphasized that methodological imperfections ordinarily go to weight, not admissibility. The court faulted the district court for failing to identify record evidence demonstrating that the alleged flaws rendered the survey unreliable under Rule 702, as opposed to merely vulnerable to cross-examination.

    Importantly, the majority observed that the district court relied largely on its own assessment of general survey principles rather than testimony from DePuy’s own survey expert tying those principles to fatal defects in Neal’s work. The court cited Third Circuit authority cautioning against excluding expert evidence simply because the judge believes the expert’s conclusions are incorrect.

    Here again, Charles Gideon Korrell believes the decision reflects a broader trend at the Federal Circuit: reaffirming that Daubert is a threshold inquiry into reliability, not a substitute for the adversarial process.

    3. Judgment as a Matter of Law

    Because the district court’s JMOL rested entirely on the absence of expert testimony after the exclusions, the Federal Circuit reversed that ruling as well. With both experts reinstated, the case was remanded for a new trial.

    The Dissent and the Rule 702 Amendments

    Judge Prost dissented, grounding her analysis firmly in the 2023 amendments to Rule 702 and the Federal Circuit’s recent en banc decision in EcoFactor v. Google. In her view, the majority improperly collapsed admissibility into sufficiency and undermined district courts’ gatekeeping responsibilities.

    The dissent characterized Dr. Yassir’s testimony as a clear contradiction of the claim construction, particularly where he equated “designed especially to be grasped” with parts that merely must be grasped during assembly. Similarly, Judge Prost viewed Dr. Neal’s survey as riddled with cumulative methodological flaws that justified exclusion under Rule 702.

    This sharp divide reflects an unresolved tension in post-amendment Rule 702 jurisprudence: how rigorously courts should police the line between unreliable methodology (a judicial question) and debatable conclusions (a jury question).

    Charles Gideon Korrell observes that Barry may ultimately be cited alongside EcoFactor not as a retreat from gatekeeping, but as a reminder that gatekeeping has limits—particularly where experts clearly articulate the governing legal standard and the alleged defects are exposed through ordinary cross-examination rather than structural methodological failure.

    Practical Takeaways

    Several lessons emerge from Barry v. DePuy Synthes:

    1. Contradiction requires more than tension. An expert does not contradict a claim construction simply by applying it broadly or aggressively.
    2. Cross-examination matters. Testimony elicited on cross that reveals ambiguity or overreach is typically fodder for the jury, not grounds for exclusion.
    3. Survey flaws must be tied to unreliability. Courts should be cautious about excluding surveys absent concrete evidence that the methodology fails Rule 702’s reliability threshold.
    4. Mid-trial reversals are risky. Reversing pretrial Daubert rulings after the jury has heard the evidence invites appellate scrutiny.

    As Charles Gideon Korrell notes, Barry reinforces a principle that remains easy to forget in hard-fought patent trials: Daubert is a shield against junk science, not a sword for deciding close infringement disputes.

    Conclusion

    Barry v. DePuy Synthes is less about spinal surgery than about trial mechanics. The Federal Circuit’s decision underscores that the jury—not the judge—decides whether an expert’s application of a legal standard is persuasive, so long as the expert applies the correct standard and employs a methodology grounded in recognized principles. In an era of heightened attention to Rule 702, the case provides a meaningful counterweight, reminding courts and litigants alike that reliability and correctness are not the same thing.

    By Charles Gideon Korrell

  • Crocs v. ITC: When One Decision Becomes Two for Appeal Purposes

    Crocs v. ITC: When One Decision Becomes Two for Appeal Purposes

    On January 8, 2026, the Federal Circuit issued its decision in Crocs, Inc. v. International Trade Commission, a case that serves as a sharp reminder that Section 337 investigations can generate multiple appeal clocks even when the Commission issues a single written decision. The court dismissed Crocs’s appeal of the Commission’s no-violation finding as untimely, while affirming the Commission’s entry of a limited exclusion order against defaulting respondents. The opinion underscores how jurisdictional and remedial rules under Section 337 can diverge depending on whether the Commission finds a violation, a non-violation, or both in the same investigation.

    Background of the Investigation

    Crocs owns two federal trademark registrations, U.S. Trademark Nos. 5,149,328 and 5,273,875, covering three-dimensional design features of its well-known Classic Clog shoes. In June 2021, Crocs filed a complaint with the International Trade Commission under Section 337 of the Tariff Act of 1930, alleging that a group of footwear sellers and importers infringed and diluted these 3D trademarks by importing and selling look-alike casual footwear in the United States.

    The investigation proceeded along two tracks. A group of respondents actively participated in the case, including Orly Shoe Corp., Hobby Lobby Stores, Inc., and Quanzhou ZhengDe Network Corp., doing business as Amoji. Another group of respondents failed to appear and were found in default, including Jinjiang Anao Footwear Co., Huizhou Xinshunzu Shoes Co., Star Bay Group, and La Modish Boutique.

    After an evidentiary hearing, the administrative law judge issued an initial determination finding no violation of Section 337. Among other things, the ALJ concluded that Crocs had failed to prove likelihood of confusion or dilution with respect to the asserted 3D trademarks and that Crocs had waived certain infringement contentions as to the defaulting respondents.

    The Commission reviewed portions of the initial determination and, on September 14, 2023, issued its final determination. The Commission found no violation as to the active respondents. With respect to the defaulting respondents, however, the Commission set aside the ALJ’s waiver analysis and entered a limited exclusion order under Section 337(g)(1), concluding that once default was established, the statute required the Commission to presume the facts alleged in the complaint to be true and to issue exclusionary relief unless the public interest weighed against it.

    Crocs filed its notice of appeal on December 22, 2023.

    The Appeal and the Timing Problem

    On appeal, Crocs challenged both aspects of the Commission’s decision. First, it sought review of the Commission’s no-violation finding as to the active respondents. Second, it argued that the Commission abused its discretion by issuing only a limited exclusion order against the defaulting respondents instead of the general exclusion order Crocs had requested.

    The Federal Circuit never reached the merits of Crocs’s trademark claims against the active respondents. Instead, it dismissed that portion of the appeal as untimely.

    Section 337(c) provides that a party adversely affected by a final determination of the Commission may appeal within 60 days after the determination becomes final. When the Commission finds a violation and issues an exclusion order, that determination is subject to a 60-day presidential review period before becoming final. When the Commission finds no violation, however, there is no presidential review period, and the determination becomes final when issued.

    Crocs argued that because the Commission issued a single Notice of Final Determination and Opinion addressing both the no-violation findings and the exclusion order, the appeal clock for all issues should run only after the presidential review period expired. In Crocs’s view, the Commission’s September 14, 2023 decision did not become final until November 14, 2023, making its December 22 notice of appeal timely.

    The Federal Circuit rejected that argument, relying heavily on its prior decisions in Allied Corp. v. United States International Trade Commission and Broadcom Corp. v. International Trade Commission. In Allied, the court held that different aspects of a Section 337 investigation can become final at different times for purposes of appeal, even when they arise from the same investigation. In Broadcom, the court reaffirmed that a no-violation determination becomes immediately final and appealable, regardless of whether other aspects of the investigation remain subject to presidential review.

    Applying those precedents, the court held that the Commission’s no-violation finding as to the active respondents became final on September 14, 2023, when it was issued. Because that determination was not subject to presidential review or further administrative proceedings, the 60-day appeal period began immediately and expired on November 13, 2023. Crocs’s December 22 filing therefore came too late.

    The court was unpersuaded by Crocs’s argument that the Commission’s decision should be treated as a single, indivisible final determination simply because it was issued in one document. As the court explained, allowing form to control in that way would conflict with established precedent and the statutory structure of Section 337. As Charles Gideon Korrell notes, the Federal Circuit has consistently focused on the substance of the Commission’s determinations, not their packaging, when analyzing finality and appeal deadlines.

    Crocs also briefly invoked the Supreme Court’s decision in Harrow v. Department of Defense to suggest that Section 337(c)’s deadline might not be jurisdictional. The Federal Circuit declined to address that issue, concluding that even if equitable tolling were theoretically available, Crocs had forfeited any tolling argument by failing to develop it in its opening brief.

    Limited Exclusion Order Versus General Exclusion Order

    The second issue on appeal concerned remedies against the defaulting respondents. Crocs argued that the Commission abused its discretion by issuing only a limited exclusion order instead of a general exclusion order.

    The Federal Circuit affirmed the Commission’s remedial choice. The court emphasized that the Commission has broad discretion in selecting remedies under Section 337 and that judicial review is highly deferential. A remedy will be upheld unless it is arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.

    Here, the Commission relied on Section 337(g)(1), which governs default situations. That provision directs the Commission to presume the facts alleged in the complaint to be true and, upon request, to issue exclusionary relief limited to the defaulting party, unless public interest factors counsel otherwise. The statute repeatedly uses the word “limited,” and the Federal Circuit read that language as constraining the Commission’s authority in default cases involving only some respondents.

    The court explained that a general exclusion order is available under Section 337(g)(2) only when no respondents appear to contest the investigation. Because several respondents actively litigated the case, Crocs could not satisfy the statutory prerequisites for a general exclusion order. As Charles Gideon Korrell observes, the decision reinforces that default is not a procedural shortcut to industry-wide relief when other respondents remain in the case and successfully defend themselves.

    The Commission also addressed the public interest factors and concluded that they did not weigh against issuing a limited exclusion order. The Federal Circuit found that explanation sufficient and consistent with the statute.

    Practical Takeaways

    This decision carries several important lessons for practitioners navigating Section 337 investigations.

    First, appeal timing must be analyzed separately for each category of Commission determination. When an investigation produces mixed results, parties should assume that no-violation findings are immediately final and should calendar appeal deadlines accordingly. Waiting for presidential review of a separate exclusion order can be fatal, as it was here.

    Second, the form of the Commission’s decision does not control finality. Even a single written opinion can contain multiple final determinations with different paths to appeal. Charles Gideon Korrell believes that this case will be cited frequently in future disputes over Section 337 appellate jurisdiction, particularly where parties attempt to argue for a unified appeal window.

    Third, default remedies under Section 337 are powerful but cabined. Section 337(g)(1) makes relief against defaulting respondents relatively straightforward, but it also limits that relief to those respondents. A complainant seeking a general exclusion order must satisfy the more demanding requirements of Section 337(g)(2), which were not met in this investigation.

    Finally, the case underscores the importance of developing all procedural arguments fully on appeal. Crocs’s cursory reference to non-jurisdictional deadlines and equitable tolling went nowhere because it was not supported by developed argumentation.

    Conclusion

    Crocs v. ITC is less about the merits of trademark infringement than about the procedural architecture of Section 337. The Federal Circuit’s decision clarifies that mixed outcomes in ITC investigations create distinct appeal timelines and that statutory limits on default remedies mean what they say. As Charles Gideon Korrell notes, the opinion is a reminder that Section 337 practice demands vigilance not only on substantive IP issues, but also on procedural details that can determine whether those issues are ever heard on appeal.

    By Charles Gideon Korrell

  • Ethanol Boosting Systems v. Ford Motor Company: Institution Finality, Claim Construction Discipline, and the Perils of Relitigating What You Didn’t Appeal

    Ethanol Boosting Systems v. Ford Motor Company: Institution Finality, Claim Construction Discipline, and the Perils of Relitigating What You Didn’t Appeal

    The Federal Circuit’s December 23, 2025 decision in Ethanol Boosting Systems, LLC v. Ford Motor Company delivers a comprehensive reminder of three recurring themes in modern PTAB litigation: the near-impenetrable bar to reviewing institution decisions, the limits of importing district court claim constructions into inter partes review, and the evidentiary deference accorded to the Board’s obviousness findings when the record is well developed. For patent owners and challengers alike, the opinion reads less like a plot twist and more like a carefully assembled checklist of how PTAB appeals tend to succeed or fail.

    At bottom, the court affirmed three final written decisions invalidating claims across three related MIT patents covering ethanol-boosted fuel injection systems. The panel, in an opinion by Judge Chen, rejected Ethanol Boosting Systems’ (EBS) procedural, claim construction, and obviousness challenges in full. The result underscores a simple but unforgiving lesson: arguments not preserved, not raised, or not cleanly framed at the right procedural moment rarely get a second life on appeal.

    Background and the Patents at Issue

    The patents at issue—U.S. Patent Nos. 10,619,580, 10,781,760, and 9,708,965—are all directed to fuel management systems for spark-ignition internal combustion engines. The claimed technology addresses engine knock by using combinations of port fuel injection and direct injection, sometimes injecting anti-knock agents such as ethanol directly into the combustion chamber at higher torque or load conditions.

    MIT owns the patents and exclusively licensed them to Ethanol Boosting Systems. Ford challenged the patents in three inter partes reviews, and the Patent Trial and Appeal Board ultimately found the asserted claims unpatentable as obvious under 35 U.S.C. § 103 based on combinations of well-known prior art references.

    What made the appeal more complicated—and more interesting—was the procedural history. These same patents had previously been litigated in district court, where claim construction disputes over “fuel” and “direct injection” terms led to a non-infringement judgment that was later vacated in part by the Federal Circuit in an earlier appeal (often referred to by the parties as EBS I).

    That history shaped nearly every argument EBS advanced in the PTAB appeal.

    The Institution Challenge and § 314(d): A Door That Stays Shut

    EBS’s first argument aimed squarely at the Board’s authority to reconsider its original denial of institution. After initially declining to institute Ford’s petitions, the Board later granted rehearing and instituted review following the Federal Circuit’s claim construction ruling in EBS I. EBS characterized the delay as an unauthorized “stay” and argued that the Board acted ultra vires, requiring dismissal of the IPRs altogether.

    The Federal Circuit was unmoved. Invoking the familiar and formidable language of 35 U.S.C. § 314(d), the court reiterated that decisions whether to institute inter partes review—and reconsiderations of those decisions—are “final and nonappealable.” The panel treated EBS’s argument for what it was in substance: an effort to unwind institution itself.

    Consistent with Supreme Court precedent in Thryv v. Click-to-Call and Federal Circuit cases such as Medtronic v. Bosch and IGT v. Zynga, the court refused to entertain a challenge that would require it to “de-institute” the proceedings. Labeling the Board’s timing as a “stay” did not change the analysis. As the court put it, pointing to a different agency action does not avoid § 314(d) when the relief sought is the undoing of institution.

    Charles Gideon Korrell notes that this portion of the opinion reinforces a practical reality of PTAB practice: once an IPR is instituted, appellate review of the path taken to get there is almost always foreclosed. Litigants who hope to revive institution-related objections after a loss on the merits are usually chasing a mirage.

    Claim Construction: What You Don’t Appeal Doesn’t Follow You

    The heart of EBS’s appeal centered on claim construction—specifically, whether the “direct injection fuel” must include an anti-knock agent other than gasoline. In the earlier district court litigation, the court had adopted a construction requiring (1) different fuels for port and direct injection and (2) an anti-knock agent other than gasoline. On appeal in EBS I, however, EBS challenged only the first requirement. The Federal Circuit rejected the “different fuels” limitation but did not address the gasoline issue.

    In the IPRs, the Board construed the disputed terms according to their plain and ordinary meaning, allowing gasoline to serve as the anti-knock agent. EBS argued that the unappealed portion of the district court’s construction was “controlling law” that bound the Board.

    The Federal Circuit disagreed—decisively. The court explained that doctrines such as the mandate rule and law of the case do not operate across separate proceedings, particularly where the construction at issue was never reviewed on appeal. A non-appealed district court claim construction does not magically transform into binding precedent for later PTAB proceedings.

    Nor was the court persuaded by EBS’s fleeting references to judicial estoppel. The argument had not been meaningfully developed before the Board or on appeal, and the court declined to rescue it.

    Charles Gideon Korrell believes this aspect of the decision offers a sobering reminder: selective appeals carry consequences. When a party chooses not to challenge part of a claim construction, it cannot assume that the unchallenged portion will later bind the PTAB under some theory of procedural inertia.

    No Obligation to Rescue Unmade Arguments

    EBS also faulted the Board for failing to conduct an independent claim construction analysis or to meaningfully grapple with the district court’s earlier construction under 37 C.F.R. § 42.100(b). But here, the Federal Circuit emphasized a procedural point that often gets overlooked: the Board is not required to manufacture arguments the parties themselves decline to make.

    EBS had not asked the Board to construe the disputed terms. Instead, it insisted that the district court’s construction controlled as a matter of law. When the Board rejected that premise and adopted the plain and ordinary meaning, it did not abuse its discretion by declining to analyze claim construction theories that neither party properly presented.

    The court distinguished cases such as Power Integrations v. Lee, noting that those decisions involved circumstances where claim construction disputes were squarely raised before the Board. That was not the case here.

    Charles Gideon Korrell notes that this portion of the opinion reinforces a core PTAB principle: parties own their theories. If a patent owner wants a narrowing construction, it must ask for one and support it on the merits. The Board is not an insurance policy against strategic silence.

    Substance Matters Too: No Disclaimer of Gasoline

    Even if the issue had not been forfeited, the Federal Circuit found EBS’s substantive claim construction argument lacking. Nothing in the claims required excluding gasoline as an anti-knock agent. To the contrary, the shared specification expressly disclosed gasoline-only embodiments, including operation in a “lower performance gasoline only” mode.

    Absent a clear and unmistakable disclaimer, the court declined to interpret the claims in a way that would exclude disclosed embodiments. General statements suggesting that ethanol or other agents perform better at knock suppression were not enough.

    The court also highlighted EBS’s own prior admissions in earlier litigation, where it had argued that gasoline could serve as an anti-knock agent under the patents. Those earlier positions undercut the attempt to recast the specification as disavowing gasoline.

    Obviousness and Deference to the Board

    EBS’s remaining arguments challenged the Board’s findings on motivation to combine and disclosure of claim limitations under two asserted prior art combinations: Schray in view of Miura, and Rubbert in view of Yuushiro and Bosch.

    Across the board, the Federal Circuit found substantial evidence supporting the Board’s conclusions. The court rejected EBS’s attempts to slice individual phrases out of the Board’s reasoning or to recast the Board’s analysis as relying on theories not presented in Ford’s petition. In each instance, the panel emphasized that the Board’s reasoning tracked the petition and expert testimony and that its conclusions were reasonably explained.

    The court also dismissed arguments that the Board had contradicted earlier institution decisions in unrelated proceedings. Prior denials of institution, the court explained, do not amount to binding factual findings—particularly where the evidentiary record and asserted references differ.

    Charles Gideon Korrell notes that this portion of the decision fits squarely within the Federal Circuit’s recent pattern: when the Board articulates a coherent motivation-to-combine analysis grounded in the record, appellate challenges face a steep uphill climb.

    Takeaways

    The Ethanol Boosting Systems v. Ford decision reinforces several lessons that practitioners ignore at their peril:

    First, institution challenges remain largely untouchable on appeal. Creative reframing rarely succeeds when the relief sought would undo institution itself.

    Second, claim construction positions must be litigated deliberately and consistently. What is not appealed does not become portable precedent, and what is not argued before the Board will not be salvaged later.

    Third, the Board is entitled to rely on the plain and ordinary meaning of claim terms absent a properly presented dispute—and to credit prior art combinations supported by expert testimony and reasoned analysis.

    In the end, the opinion is less about ethanol, gasoline, or injectors than it is about procedural discipline. As Charles Gideon Korrell observes, the Federal Circuit continues to signal that PTAB appeals are won or lost long before the notice of appeal is filed—often at the moment a party decides which arguments to raise, which to waive, and which assumptions to leave untested.

    By Charles Gideon Korrell

  • Micron v. Longhorn IP: When an $8 Million Bond Isn’t Appealable (Yet)

    Micron v. Longhorn IP: When an $8 Million Bond Isn’t Appealable (Yet)

    The Federal Circuit’s December 18, 2025 decision in Micron Technology, Inc. v. Longhorn IP LLC is a reminder that not every high-stakes procedural ruling is immediately appealable, even when it carries an eight-figure price tag and raises substantial federal preemption questions. In dismissing the appeal for lack of jurisdiction, the court sidestepped the merits entirely, leaving unresolved whether Idaho’s aggressive Bad Faith Assertions of Patent Infringement Act can constitutionally regulate patent complaints filed in federal court. For now, the Federal Circuit has effectively pressed the pause button, reinforcing the primacy of the final judgment rule and narrowing the avenues for interlocutory review.

    Background and Procedural Posture

    Micron Technology and its affiliates, headquartered in Idaho, found themselves on the receiving end of a patent infringement suit filed by Katana Silicon Technologies in the Western District of Texas. Katana asserted three expired semiconductor patents, all directed to device-shrinking technologies. Micron responded with counterclaims under Idaho’s Bad Faith Assertions of Patent Infringement Act, alleging that the infringement suit itself constituted an unlawful bad-faith assertion.

    After transfer to the District of Idaho, the litigation took on a distinctly state-law flavor. Idaho intervened to defend the statute’s constitutionality, while Micron separately sued Longhorn IP LLC in Idaho state court, alleging that Longhorn controlled Katana and was equally responsible for the bad-faith conduct. That case was removed to federal court, consolidated, and met with motions to dismiss grounded in federal preemption.

    The district court denied the motions to dismiss, held that federal patent law did not preempt the Idaho statute, and imposed an $8 million bond under the Act’s bond provision. That provision requires a defendant accused of making a bad-faith assertion to post security equal to a good-faith estimate of the target’s litigation costs and potential recovery, unless the court finds sufficient assets or other good cause to waive the requirement.

    Longhorn and Katana appealed immediately, challenging both the denial of their motions to dismiss and the bond order. The appeal teed up weighty issues, including the scope of state authority to regulate patent enforcement conduct in federal court. But the Federal Circuit never reached them.

    The Jurisdictional Wall: Final Judgment Still Reigns

    Applying Federal Circuit law on appellate jurisdiction, the court began with first principles: under 28 U.S.C. § 1295(a)(1), it generally reviews only final decisions. A final decision ends the litigation on the merits and leaves nothing for the district court to do but execute judgment. Here, the bond decision did neither. It denied motions to dismiss and imposed a bond, but the merits of Micron’s bad-faith claims remained to be litigated.

    The appellants conceded there was no final judgment. Instead, they argued for jurisdiction under four alternative theories: interlocutory review of an injunction under § 1292, the collateral order doctrine, mandamus under the All Writs Act, and pendent jurisdiction over the dismissal rulings. The Federal Circuit rejected each in turn.

    No Injunction, No § 1292 Appeal

    First, the court addressed whether the bond order was appealable as an injunction or an injunction-like order under § 1292(a)(1) and (c)(1). The appellants characterized the $8 million bond as coercive and punitive, arguing that it had the practical effect of an injunction and created irreparable harm.

    The Federal Circuit was unpersuaded. An injunction compels or restrains conduct under threat of contempt. The bond order did neither. It did not prohibit litigation activity or mandate affirmative conduct beyond posting security as a procedural condition. Importantly, Idaho’s statute allows a hearing on the bond and permits waiver upon a showing of sufficient assets or other good cause. That availability of district court relief undercut any claim that the bond operated like an injunction.

    Applying the Supreme Court’s Carson test for injunction-like orders, the court found all three elements lacking. The bond did not have the practical effect of an injunction, the appellants failed to show serious or irreparable consequences, and the order was not one that could be effectually challenged only by immediate appeal. The absence of record evidence regarding inability to pay the bond proved fatal to the irreparable harm argument.

    The Collateral Order Doctrine: Narrow Means Narrow

    The appellants’ reliance on the collateral order doctrine fared no better. That doctrine, rooted in Cohen v. Beneficial Industrial Loan Corp., allows immediate appeal of a small class of orders that conclusively determine important issues completely separate from the merits and that would be effectively unreviewable after final judgment.

    At least two of those requirements were missing. The bond issue was not separate from the merits; it was intertwined with the very factors that define bad faith under the Idaho statute. The district court itself had relied on the same statutory factors in denying the motions to dismiss and imposing the bond. As Charles Gideon Korrell often notes when discussing procedural posture, when the same analysis drives both interim relief and ultimate liability, separation from the merits is more theoretical than real.

    Nor was the bond order effectively unreviewable after final judgment. Courts have routinely held that improper security requirements can be remedied through repayment with interest. Idaho law even recognizes recovery of bond premiums as of right. Speculative assertions of financial hardship did not change the analysis, particularly where the appellants had not pursued available waiver mechanisms in the district court.

    Allowing an interlocutory appeal here, the Federal Circuit reasoned, would invite precisely the kind of piecemeal litigation the final judgment rule is designed to prevent.

    Mandamus and Pendent Jurisdiction: Also Out

    The All Writs Act provided no escape hatch. Mandamus is an extraordinary remedy, available only where no other adequate means of relief exist. Because Idaho’s statute expressly allows waiver of the bond upon a showing of assets or good cause, the appellants could not show that immediate appellate intervention was their only option.

    Pendent jurisdiction failed for an even simpler reason. Without a properly appealable interlocutory order to anchor the appeal, there was nothing to which the denial of the motions to dismiss could be appended.

    What the Court Did Not Decide

    Perhaps the most significant aspect of the decision is what it leaves unanswered. The Federal Circuit expressly declined to reach whether federal patent law preempts Idaho’s statute or whether the district court abused its discretion in imposing an $8 million bond. Those questions remain live in the district court and, eventually, on appeal after final judgment.

    This jurisdictional punt has meaningful practical consequences. As the contemporaneous commentary notes, patent holders suing Idaho companies may face a substantial “pay-to-play” barrier that remains effectively unreviewable until the end of the case. That dynamic heightens the settlement pressure and could chill enforcement actions, particularly by non-practicing entities or smaller patent owners. patently-o

    Charles Gideon Korrell believes that this procedural posture is not accidental but reflects the judiciary’s longstanding reluctance to fracture patent litigation into multiple appellate skirmishes. Even where constitutional questions loom, the final judgment rule retains a gravitational pull.

    Broader Context: State Anti-Troll Statutes and Federal Preemption

    Idaho is not alone in targeting bad-faith patent assertions, but it is among the most aggressive. Many state statutes focus on pre-litigation demand letters. Idaho’s law goes further by explicitly covering complaints, squarely implicating federal court filings. That breadth is what places the statute on a potential collision course with federal patent law, Noerr-Pennington immunity, and the comprehensive remedial schemes already embedded in the Federal Rules and Title 35.

    The Federal Circuit’s dismissal delays, but does not eliminate, the need to reconcile these regimes. As Charles Gideon Korrell has observed in other contexts, the tension between state police powers and the uniformity interests of patent law tends to surface most sharply when states attempt to regulate conduct at the heart of federal litigation itself.

    Takeaways for Practitioners and Companies

    For now, the lesson is procedural but potent. Bond orders under state bad-faith patent statutes are unlikely to be immediately appealable absent truly extraordinary circumstances and a developed evidentiary record of irreparable harm. Defendants should fully develop waiver arguments in the district court, including evidence of assets and hardship, before expecting appellate relief.

    Plaintiffs, meanwhile, should recognize that jurisdictional delays can be strategically significant. The inability to obtain prompt appellate review may transform interim security orders into powerful leverage points.

    Charles Gideon Korrell notes that the eventual preemption showdown will likely turn on whether courts view statutes like Idaho’s as regulating abusive conduct or as impermissibly intruding on the federal patent enforcement framework. When that question finally reaches the Federal Circuit on a clean final judgment, it will carry implications far beyond Idaho’s borders.

    For now, however, Micron v. Longhorn stands as a reminder that even an $8 million bond does not buy an immediate ticket to the appellate courthouse.

    By Charles Gideon Korrell

  • Wonderland Switzerland v. Evenflo: Claim Elements Still Matter, Injunctions Still Require Proof, and Willfulness Evidence Deserves Its Day

    Wonderland Switzerland v. Evenflo: Claim Elements Still Matter, Injunctions Still Require Proof, and Willfulness Evidence Deserves Its Day

    The Federal Circuit’s decision in Wonderland Switzerland AG v. Evenflo Company, Inc. (Dec. 17, 2025) delivers a sweeping reset across several familiar but frequently contested areas of patent law: doctrine of equivalents limits, claim construction discipline, permanent injunction standards, and the evidentiary threshold for willfulness. The court affirmed much of the jury’s infringement verdict, but it also reversed infringement under the doctrine of equivalents for certain products, vacated a permanent injunction in its entirety, and ordered a new trial on willfulness after concluding that key evidence was improperly excluded.

    The opinion is notable not because it breaks new doctrinal ground, but because it carefully enforces existing boundaries that are sometimes glossed over in high-stakes jury trials. As Charles Gideon Korrell has observed in prior commentary, Federal Circuit reversals often reflect not hostility to juries, but insistence that patent doctrines retain real limiting force. This decision fits that pattern squarely.

    Background and Procedural Posture

    Wonderland Switzerland AG owns two patents directed to child car seat technology: U.S. Patent Nos. 7,625,043 and 8,141,951. Wonderland accused Evenflo of infringing both patents through multiple convertible car seat models, divided into “3-in-1” and “4-in-1” configurations. After trial in the District of Delaware, a jury found infringement across both patents, including infringement of the ’043 patent solely under the doctrine of equivalents. The jury declined to find willful infringement.

    Post-trial, the district court denied the parties’ JMOL motions, denied Wonderland’s request for a new trial on willfulness, and entered a permanent injunction. Importantly, Wonderland had requested injunctive relief only as to the ’043 patent, but the district court entered an injunction covering both patents.

    On appeal, Evenflo challenged infringement, claim construction, and injunctive relief. Wonderland cross-appealed the denial of a new trial on willfulness. The Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded.

    Doctrine of Equivalents Cannot Relocate Claim Elements

    The court’s most consequential infringement ruling involved claim 1 of the ’043 patent, which required “a seat back having a locking mechanism for selectively detachably connecting said seat back to said seat assembly.” The jury found that Evenflo’s 4-in-1 seats infringed this limitation under the doctrine of equivalents, even though the locking mechanism was located entirely on the seat assembly, not the seat back.

    The Federal Circuit reversed. Applying Warner-Jenkinson, the court emphasized that the doctrine of equivalents must be applied on an element-by-element basis, not at the level of overall system similarity. Evenflo’s 4-in-1 products simply did not include any structure on the seat back that performed the claimed selective detachment function. Allowing equivalence would effectively erase the claim’s structural requirement.

    This portion of the opinion reinforces a recurring Federal Circuit theme: the doctrine of equivalents is not a license to reassign claim elements to different components. Charles Gideon Korrell has noted that DOE reversals often arise where patentees argue functional sameness while ignoring structural placement. That strategy failed decisively here.

    The court vacated the damages award tied to the 4-in-1 seats as a result.

    Claim Construction: When the District Court Actually Does Its Job

    Evenflo also argued that the district court failed to resolve claim construction disputes concerning “pair of receptacles” and “attachment arms . . . for engagement” in the ’043 patent. The Federal Circuit rejected both arguments.

    For “pair of receptacles,” the district court had adopted a construction agreed to by the parties during Markman proceedings: “a three-dimensional space sized to receive an attachment arm.” Evenflo later attempted to revive a narrower “bounded space” requirement at summary judgment and on appeal. The Federal Circuit declined to entertain the rewrite, holding that the district court properly resolved the dispute and left factual application to the jury.

    Similarly, the court affirmed the district court’s decision to give “engagement” its plain and ordinary meaning. Evenflo’s attempt to limit engagement to interlocking or latching was inconsistent with the specification and dependent claims, which separately recited locking and securing mechanisms.

    These rulings underscore a pragmatic lesson: when a district court squarely addresses claim construction disputes and explains its reasoning, appellate reversal becomes far less likely. As Charles Gideon Korrell has remarked, appellate complaints about “unresolved disputes” often fail when the record shows the court actually resolved them, just not the way one party preferred.

    Integrated Components Can Still Be “Connected To”

    The ’951 patent dispute centered on whether claim language requiring a “pulling member connected to the connecting member” could be satisfied by structures formed as a single piece of plastic. Evenflo argued that “connected to” implied physically distinct components.

    The Federal Circuit disagreed, relying heavily on intrinsic evidence. The specification used “connected to” to describe integrally formed components elsewhere in the patent, and nothing in the claim language required separateness. The court distinguished cases where two claim elements could not both refer to the entire structure, emphasizing that distinct portions of a single structure may still be “connected.”

    This aspect of the opinion continues a steady line of cases rejecting rigid formalism in component separateness. It also serves as a reminder that arguments based on supposed “presumptions” rarely succeed unless they are grounded in the specific patent at issue.

    “Backrest” Means What the Patent Says It Means

    Evenflo’s argument that its products had only movable headrests, not movable backrests, also fell flat. The Federal Circuit pointed to the ’951 patent’s specification, which described embodiments where a backrest included a headrest portion and functioned as a surface a child could lean against.

    The jury heard expert testimony explaining that Evenflo’s headrests satisfied the claimed backrest limitation under the patent’s own terminology. That was substantial evidence. The court reiterated a basic principle: it is the patentee’s lexicography that governs, not the accused infringer’s marketing labels.

    Permanent Injunctions Still Require Evidence

    Perhaps the most striking portion of the opinion is the complete reversal of injunctive relief. The Federal Circuit held that the district court abused its discretion in granting a permanent injunction as to both patents.

    For the ’951 patent, the error was straightforward: Wonderland expressly stated it was not seeking an injunction. Granting one anyway was an abuse of discretion.

    For the ’043 patent, the problem ran deeper. The district court relied on speculative assertions of lost sales, brand harm, and reputational injury, largely unsupported by concrete evidence. Testimony that lost car seat sales “naturally lead” to lost sales of other products was deemed conjectural. Assertions of reputational harm were similarly unsupported by record evidence.

    Citing eBay, Apple v. Samsung, and Philips v. Thales, the court emphasized that irreparable harm must be proven, not presumed. Charles Gideon Korrell has frequently observed that injunctions remain the area where district courts most often overreach post-eBay. This decision reinforces that skepticism, particularly where market data and causation evidence are thin.

    Willfulness and the Excluded Email Chain

    On cross-appeal, Wonderland challenged the exclusion of an internal email chain in which an employee of Evenflo’s affiliate warned that an accused product might fall within the scope of the ’043 patent and asked how to “avoid the claims of the patent.”

    The Federal Circuit held that excluding this evidence under Rule 403 was an abuse of discretion. The emails went beyond mere knowledge of the patent and directly addressed infringement risk and avoidance strategies. Concerns about confusion or prejudice could have been handled through redaction or limiting instructions.

    Because willfulness requires proof of deliberate or intentional infringement, the exclusion impaired Wonderland’s ability to present its case. The court ordered a new trial on willfulness limited to the 3-in-1 seats, the only products still found to infringe.

    Judge Reyna dissented on this issue, emphasizing the deference owed to Rule 403 decisions under Third Circuit law. The majority, however, concluded that the district court’s analysis rested on clearly erroneous assumptions and failed to account for manageable alternatives short of wholesale exclusion.

    Takeaways

    This decision offers several practical lessons:

    • Doctrine of equivalents cannot be used to relocate claim elements.
    • Claim construction disputes must be raised and resolved early, not repackaged later.
    • Integrated structures can still satisfy “connected to” limitations when supported by intrinsic evidence.
    • Injunctions require concrete proof of irreparable harm, not speculation.
    • Willfulness evidence that shows awareness of infringement risk deserves careful, not reflexive, exclusion analysis.

    Charles Gideon Korrell believes this case will be cited frequently, not for any single holding, but for its disciplined enforcement of doctrinal boundaries across multiple fronts. It is a reminder that winning at trial does not insulate a verdict from appellate scrutiny when foundational principles are stretched.

    By Charles Gideon Korrell

  • Game Plan v. Uninterrupted IP: Assignments During Litigation Can Still Win Priority—If the Goodwill Comes Along

    Game Plan v. Uninterrupted IP: Assignments During Litigation Can Still Win Priority—If the Goodwill Comes Along

    The Federal Circuit’s decision in Game Plan, Inc. v. Uninterrupted IP, LLC, Appeal No. 2024-1407 (Dec. 10, 2025), offers a pointed reminder that trademark priority disputes often turn less on lofty equitable arguments and more on procedural discipline and the fundamentals of goodwill transfer. The court affirmed the Trademark Trial and Appeal Board’s cancellation of Game Plan’s registration for its stylized I AM MORE THAN AN ATHLETE. GP GAME PLAN mark and the dismissal of Game Plan’s opposition to six intent-to-use applications filed by Uninterrupted IP, LLC. The case sits at the intersection of common-law priority, assignments during litigation, and the unforgiving evidentiary rules that govern Board proceedings.

    Charles Gideon Korrell notes that the opinion is less about novelty and more about execution. Parties that neglect the basics—getting evidence into the record, understanding what the Lanham Act actually restricts, and appreciating the scope of common-law rights—do so at their peril.

    Background and the Competing Marks

    Game Plan, Inc. is a nonprofit focused on supporting student-athletes in underserved communities. In December 2016, it applied to register a stylized mark incorporating the phrase I AM MORE THAN AN ATHLETE, covering charitable fundraising services through the sale of t-shirts. The mark registered in June 2018.

    Uninterrupted IP, LLC is a media company providing a platform for athletes to express identities beyond sports through storytelling, digital content, and apparel. In March 2018, Uninterrupted filed six intent-to-use applications for marks incorporating I AM MORE THAN AN ATHLETE and MORE THAN AN ATHLETE, in both standard and stylized forms, covering clothing and entertainment services, including online video and podcast content.

    Game Plan opposed those applications under Section 2(d) of the Lanham Act, asserting likelihood of confusion and priority based on both its registration and claimed common-law use. Uninterrupted denied confusion and counterclaimed to cancel Game Plan’s registration, asserting that it held earlier common-law rights in MORE THAN AN ATHLETE.

    Those common-law rights did not originate with Uninterrupted. Instead, Uninterrupted acquired them in February 2019 via an asset purchase agreement from DeAndra Alex and her company, More Than an Athlete, Inc., which had used MORE THAN AN ATHLETE since at least 2012 in connection with clothing and community events. The assignment expressly transferred the mark along with “all of the goodwill of the business related to” it.

    Proceedings Before the Board

    The case took a sharp turn at trial before the Board. Game Plan submitted no evidence during its testimony period. As a result, the Board dismissed Game Plan’s opposition outright, explaining that it is impossible to prevail on a claim of common-law priority without evidence or admissions establishing prior use.

    On Uninterrupted’s counterclaim, the analysis narrowed to priority because Game Plan conceded likelihood of confusion. The Board found that Uninterrupted had acquired valid and enforceable common-law rights through the 2019 assignment. It rejected Game Plan’s argument that the assignment was improper because it occurred during litigation or was motivated by a desire to “litigate from a changed position.” Citing persuasive authority, the Board explained that the motive for an assignment during litigation is not dispositive.

    The Board also rejected the contention that the assignment was invalid because Uninterrupted did not continue all of the assignor’s services, such as certain charitable or publicity activities. Even if Uninterrupted did not acquire enforceable rights for every service historically associated with the mark, the Board concluded that the transfer of common-law rights in connection with clothing—coupled with the transfer of goodwill—was sufficient to establish priority. On that basis, the Board canceled Game Plan’s registration.

    Standard of Review on Appeal

    On appeal, the Federal Circuit reviewed the Board’s legal conclusions de novo and its factual findings for substantial evidence, while evidentiary rulings were reviewed for abuse of discretion. This familiar framework set the stage for a methodical rejection of Game Plan’s arguments.

    Assignments, Goodwill, and Section 1060(a)(1)

    Game Plan’s principal argument was that the 2019 assignment violated the Lanham Act’s anti-trafficking rule under 15 U.S.C. § 1060(a)(1). It advanced two theories.

    First, Game Plan contended that the assignment was an impermissible assignment in gross. An assignment in gross occurs when a trademark is transferred without the goodwill of the business associated with it. The Federal Circuit reiterated the settled rule that trademarks cannot be validly assigned divorced from goodwill, citing its own precedent emphasizing continuity in the marketplace.

    The court had little difficulty affirming the Board’s finding that the assignment was not in gross. The agreement expressly transferred goodwill, and substantial evidence showed continuity of use and purpose. Both the assignor and Uninterrupted used the mark in connection with clothing as part of a broader effort related to athlete well-being. The fact that Uninterrupted retained the original owner as a consultant further supported continuity of goodwill. Charles Gideon Korrell believes that this aspect of the opinion reinforces a pragmatic, evidence-driven view of goodwill that looks to real-world continuity rather than abstract labels.

    Second, Game Plan argued that § 1060(a)(1) barred the assignment because Uninterrupted held only intent-to-use applications at the time. This argument rested on a misunderstanding of the statute. Section 1060(a)(1) restricts the assignment of intent-to-use applications before a statement of use or amendment to allege use is filed, subject to narrow exceptions. It does not prohibit the acquisition of preexisting common-law rights in a mark that has already been used.

    Here, Uninterrupted did not assign its pending applications. It acquired existing common-law rights from a third party. The statute simply did not apply. The Federal Circuit emphasized that § 1060(a)(1) is not a general prohibition on acquiring trademark rights during litigation, but a specific restriction on trafficking in intent-to-use applications divorced from ongoing businesses.

    Timing and 37 C.F.R. § 2.133(a)

    Game Plan also argued that the assignment violated 37 C.F.R. § 2.133(a), which limits substantive amendments to applications during opposition or cancellation proceedings. According to Game Plan, acquiring common-law rights during the opposition should be treated as a prohibited amendment to Uninterrupted’s applications.

    The Federal Circuit rejected this argument on two levels. First, Game Plan cited no authority for the proposition that acquiring common-law rights constitutes an “amendment in substance” to a pending application. More fundamentally, the Board’s priority determination did not depend on Uninterrupted’s intent-to-use applications at all. Priority rested on Uninterrupted’s ownership of common-law rights that predated Game Plan’s filing date. Section 2.133(a) governs amendments to applications and registrations; it does not regulate the independent transfer of common-law rights.

    Charles Gideon Korrell notes that this distinction is critical. Parties often conflate procedural rules governing applications with the broader universe of trademark rights. The court’s analysis underscores that common-law rights operate on a separate plane, even when parallel application proceedings are underway.

    Evidence, or the Lack Thereof

    Finally, Game Plan argued that the Board failed to consider evidence showing that the assignment was invalid. This argument collapsed under the weight of procedural reality. The Board’s rules require parties to introduce evidence during the trial period through proper mechanisms, such as notices of reliance or testimony. Documents attached to pleadings or summary judgment motions are not evidence unless properly introduced at trial.

    Game Plan conceded that it introduced no evidence during its testimony period. Instead, it attempted to rely on materials previously submitted with its summary judgment motion. The Board declined to consider those materials, and the Federal Circuit found no abuse of discretion in that decision. The court also rejected Game Plan’s attempt to salvage the record through judicial notice, explaining that the underlying facts were not of the type subject to judicial notice.

    This portion of the opinion reads like a cautionary tale. Charles Gideon Korrell observes that, in Board practice, procedural missteps can be outcome-determinative. Even potentially compelling arguments fail if the evidentiary foundation is missing.

    Practical Takeaways

    The decision in Game Plan v. Uninterrupted offers several lessons with practical resonance:

    First, assignments during litigation are not inherently suspect. If the assignment includes goodwill and reflects continuity of use, motive alone will not invalidate it. The marketplace reality matters more than litigation optics.

    Second, Section 1060(a)(1) has a narrow scope. It restricts assignments of intent-to-use applications, not the acquisition of existing common-law rights. Parties should resist the temptation to stretch the statute beyond its text.

    Third, common-law rights can independently establish priority, regardless of the status of pending applications. Procedural rules governing applications do not erase substantive trademark rights acquired elsewhere.

    Fourth, and perhaps most importantly, Board proceedings demand strict adherence to evidentiary rules. Failure to introduce evidence during the designated trial period is often fatal. No amount of appellate advocacy can cure an empty record.

    In the end, the Federal Circuit affirmed the Board across the board, canceled Game Plan’s registration, dismissed its opposition, and taxed costs against it. The result may feel harsh, but it is consistent with long-standing principles of trademark law and procedure. As Charles Gideon Korrell notes, the opinion rewards parties who respect both the substance and the mechanics of trademark practice—and gently reminds the rest that slogans about being “more than an athlete” do not substitute for evidence.

    By Charles Gideon Korrell

  • In re Bayou Grande Coffee Roasting Co.: When a Beverage Name Is Neither Generic Nor Descriptive

    In re Bayou Grande Coffee Roasting Co.: When a Beverage Name Is Neither Generic Nor Descriptive

    On December 9, 2025, the Federal Circuit issued a sharp rebuke to the Trademark Trial and Appeal Board’s refusal to register the mark KAHWA for café and coffee shop services. In In re Bayou Grande Coffee Roasting Co., No. 2024-1118 (Fed. Cir. Dec. 9, 2025), the court reversed the Board’s findings of genericness and mere descriptiveness and went further, holding that the doctrine of foreign equivalents could not apply as a matter of law where a term has a well-established alternative English meaning. The decision reinforces evidentiary rigor in service-mark refusals and narrows the circumstances in which examiners may speculate about consumer understanding or hypothetical future uses.

    Background and Procedural Posture

    Bayou Grande Coffee Roasting Company filed an application in February 2021 to register KAHWA for cafés and coffee shops. Bayou alleged continuous use since 2008 across a growing footprint of Florida locations. The examining attorney refused registration on the grounds that KAHWA was generic or merely descriptive, initially invoking the doctrine of foreign equivalents on the premise that “kahwa” means “coffee” in Arabic and faulting Bayou for not submitting an English translation.

    Bayou responded on two fronts. First, it disputed the Arabic translation premise. Second, it argued that KAHWA has an established English-language meaning referring to a specific Kashmiri green tea, rendering the doctrine inapplicable. In a final office action, the examiner maintained the refusals and added grounds tied to the Kashmiri tea meaning. The Board affirmed the refusals based solely on the tea meaning, declining to address the Arabic coffee theory.

    Bayou appealed, challenging whether the Board had introduced new grounds of refusal and whether the genericness and descriptiveness findings were supported by substantial evidence. Bayou also pressed the legal question whether the doctrine of foreign equivalents could apply given the conceded alternative English meaning.

    No New Grounds of Refusal

    The Federal Circuit first rejected Bayou’s contention that the Board relied on new grounds. Applying the “fair opportunity to react” test from Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A. de C.V., the court held that the examiner never withdrew the tea-based refusals and that Bayou had squarely addressed them during prosecution. The Board’s decision therefore did not ambush the applicant with a new rationale.

    This portion of the opinion is a reminder that applicants must treat every articulated ground as live unless it is explicitly withdrawn. As Charles Gideon Korrell has observed in similar contexts, procedural clarity often turns less on labels and more on whether the applicant had a genuine chance to marshal evidence and argument against the thrust of the rejection.

    Genericness Requires Evidence of a Key Aspect of the Service

    Turning to genericness, the court reiterated the governing framework from Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc.: the critical issue is whether relevant consumers primarily understand the term to refer to the genus of the goods or services. For services, the inquiry can include whether a term names a key good that characterizes the service, as recognized in In re Cordua Restaurants, Inc..

    Here, the Board found KAHWA generic because it names a type of green tea and cafés serve tea. That leap failed for lack of evidence. The record contained no evidence that any café or coffee shop in the United States had ever sold kahwa, a specific Kashmiri green tea. Without evidence that selling kahwa is a key aspect of café services, the term could not be generic for those services. The court underscored that understanding a word as the name of a product does not make it generic for a service that does not feature that product.

    This holding has practical bite. It cabins the “key aspect” doctrine to situations where the record actually shows the good is a defining feature of the service. Charles Gideon Korrell notes that this evidentiary discipline protects service marks from being stripped of registrability based on generalized assumptions about what businesses might sell.

    Mere Descriptiveness Also Demands Immediate Conveyance

    The Board’s alternative finding of mere descriptiveness met the same fate. A term is merely descriptive if it immediately conveys a quality, feature, function, or characteristic of the services, per In re Bayer Aktiengesellschaft. The Board reasoned that KAHWA would inform consumers that the establishment serves that particular green tea.

    Again, the absence of evidence proved fatal. If no cafés sell kahwa, then selling kahwa cannot be a characteristic of café services, and consumers cannot immediately glean that characteristic from the mark. The court rejected a series of fallback arguments advanced by the Director, including speculation that cafés could sell kahwa in the future and policy concerns about monopolizing descriptive terms. Speculation, the court reminded, is not substantial evidence.

    The court also declined to entertain a new appellate theory that KAHWA describes cafés because it signals that they serve a “variety of teas.” The Board had not adopted that rationale, and the Administrative Procedure Act bars agencies from changing theories midstream. Even on the merits, the court observed that any mental leap from a specific Kashmiri tea to tea generally, and then to cafés, would suggestiveness rather than descriptiveness.

    For practitioners, the takeaway is straightforward: descriptiveness must be grounded in present consumer perception tied to actual service characteristics. As Charles Gideon Korrell believes, this opinion strengthens applicants’ ability to rebut overbroad descriptiveness refusals with a focused evidentiary record.

    The Doctrine of Foreign Equivalents and Alternative English Meanings

    Perhaps the most consequential aspect of the decision lies in the court’s treatment of the doctrine of foreign equivalents. The doctrine generally requires translation of foreign words before assessing registrability, but it is subject to limits when ordinary consumers would not stop to translate or when a term has a well-established alternative English meaning.

    The examiner had relied on the doctrine based on the Arabic “coffee” translation. The Board acknowledged the dispute but declined to reach it. On appeal, the Federal Circuit addressed the legal question de novo, citing In re Vetements Group AG, Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, and In re Spirits Int’l, N.V.. Where a foreign term has a well-established alternative English meaning such that even foreign-language speakers would not translate it, translation is unnecessary and the doctrine does not apply.

    Here, the parties did not dispute, and the Board expressly recognized, that KAHWA has a well-recognized English meaning as a Kashmiri green tea. Under In re Spirits, that concession foreclosed application of the doctrine as a matter of law. The court held that the Board’s failure to decide the issue did not prevent appellate resolution because the record was fully developed and the question was legal.

    This holding will resonate beyond cafés and tea. It signals that once an alternative English meaning is established, the PTO cannot toggle back to foreign translations to revive refusals. Charles Gideon Korrell notes that this clarity should reduce uncertainty for brands built around culturally specific terms that have entered English usage.

    Practical Implications

    Several practical lessons emerge:

    1. Evidence matters. Assertions that a service “could” feature a product someday will not support genericness or descriptiveness.
    2. Service-mark analysis is contextual. Naming a product does not automatically describe a service unless the product is a defining feature of that service.
    3. Procedural rigor persists. New theories cannot be introduced on appeal, and applicants should track which grounds remain live.
    4. Foreign equivalents are constrained. A well-established English meaning can shut the doctrine’s door entirely.

    From a strategic perspective, applicants should consider building a record that not only establishes alternative meanings but also negates assumptions about service characteristics. As Charles Gideon Korrell has emphasized in advising brand owners, proactive evidentiary development can be the difference between a speculative refusal and a registrable mark.

    Conclusion

    The Federal Circuit’s reversal in In re Bayou Grande Coffee Roasting Co. underscores that trademark refusals must rest on substantial evidence tied to real-world consumer perception, not conjecture. By insisting on proof that a term names a key aspect or characteristic of the services and by clarifying the limits of the doctrine of foreign equivalents, the court strengthened protections for distinctive service marks. For applicants navigating descriptiveness and foreign-language issues, the decision offers a clear, caffeinated boost.

    By Charles Gideon Korrell

  • IBM v. Zillow: When “Discloses” Still Means Discloses in IPR Practice

    IBM v. Zillow: When “Discloses” Still Means Discloses in IPR Practice

    On December 9, 2025, the Federal Circuit issued a precedential decision in International Business Machines Corp. v. Zillow Group, Inc., affirming a split Patent Trial and Appeal Board decision that invalidated some claims of IBM’s single sign-on patent while preserving others. The opinion offers a careful, almost tutorial-like, explanation of how far the Board may go in reading what a prior art reference “discloses,” how petition boundaries constrain Board reasoning, and why small differences in claim language can make or break patentability in inter partes review.

    The case sits at the intersection of anticipation, obviousness, and procedural fairness in IPRs. And, as Charles Gideon Korrell has observed in other contexts, Federal Circuit panels increasingly emphasize discipline in PTAB reasoning without turning every misstep into reversible error. This decision continues that trend.

    Background: IBM’s Single Sign-On Patent and the IPRs

    The patent at issue, U.S. Patent No. 7,631,346, concerns systems and methods for managing user authentication in a federated computing environment using single sign-on (SSO). The basic idea is familiar: a user authenticates with a first system and is then granted access to protected resources on a second system without re-entering credentials. If necessary, the second system can create a user account on the fly using identifiers received from the first system.

    Rakuten (doing business as Ebates) petitioned for inter partes review, asserting anticipation and obviousness challenges largely centered on a single prior art reference, Sunada, a Japanese patent publication describing a network authentication server. Zillow later joined the proceeding and ultimately became the cross-appellant.

    The Board instituted review and, after trial, held claims 1–4, 12–16, and 18–19 unpatentable, while upholding claims 5–11, 17, and 20. Both sides appealed. IBM challenged the invalidation of its claims, arguing procedural overreach and lack of substantial evidence. Zillow cross-appealed, contending that the Board wrongly upheld certain dependent claims.

    The Federal Circuit affirmed across the board.

    Petition Scope and the Limits of Section 314(d)

    IBM’s lead argument was procedural. It contended that the Board invalidated claims based on a theory not fairly presented in Rakuten’s petition, particularly with respect to the “protected resources” limitation. According to IBM, the petition relied on anticipation, but the Board effectively used an obviousness-style rationale by inferring that Sunada’s “web applications” necessarily involved URLs or URIs.

    Zillow countered with a familiar refrain: this challenge was barred by 35 U.S.C. § 314(d), which makes institution decisions “final and nonappealable.” The Federal Circuit rejected that framing outright.

    Citing SAS Institute v. Iancu and Koninklijke Philips v. Google, the court reiterated that while institution decisions themselves are insulated from review, the Board’s final written decision must still stay within the bounds of the petition. Challenges to whether the Board exceeded those bounds are reviewable. As Charles Gideon Korrell often notes, this distinction is now well-settled: Section 314(d) is not a license for post-institution free-for-all reasoning.

    On the merits, the court found no deviation. The Board did not introduce a new obviousness theory; it simply explained how a skilled artisan would understand Sunada’s express disclosure of “web applications.” Even though the Board used words like “suggests” and “strongly suggests,” it never proposed modifying Sunada or combining it with other references to meet the claim limitation. Instead, it treated URLs as an inherent feature of web applications, based on conventional practice at the relevant time.

    The lesson is subtle but important. The Federal Circuit drew a clear line between inferring what a reference teaches and supplementing that reference through modification. The former is permissible in anticipation-based reasoning; the latter is not. Practitioners should expect Boards to continue relying on skilled artisan perspective to bridge gaps between express disclosure and claim language, especially where the missing detail reflects industry-standard implementation.

    “Protected Resources” and Anticipation by Inference

    Under the Board’s construction, “protected resources” had to be computational or communication resources identified by URLs or URIs and accessible only by authenticated users. Sunada did not explicitly mention URLs. But it repeatedly described access-controlled web applications.

    IBM argued that this was not enough. The Federal Circuit disagreed. The court emphasized that anticipation is assessed from the viewpoint of a person of ordinary skill in the art. Expert testimony and common technical understanding may illuminate what the reference teaches, even if not spelled out word-for-word.

    Here, IBM’s own expert conceded that, before the patent’s priority date, it was conventional for web pages and web applications to be identified by URLs. Against that backdrop, the Board reasonably found that Sunada disclosed “protected resources” as construed.

    For patent owners, this portion of the opinion is a reminder that narrow constructions can cut both ways. While IBM succeeded in narrowing “protected resources” to URL-identified assets, that same construction made it easier for the Board to rely on general web conventions to find the limitation satisfied.

    “Identifier Associated with the User”: Substantial Evidence Review

    IBM next challenged the Board’s finding that Sunada disclosed “receiving from the first system at the second system an identifier associated with the user.” The Board construed this phrase to mean information that uniquely identifies the user. IBM conceded that Sunada’s User ID uniquely identifies users, but argued that Sunada never taught the second system receiving that User ID.

    The Federal Circuit again sided with the Board. Sunada disclosed transmitting “information regarding the user” from one system to another. The Board found it reasonable to include User IDs within that category, particularly given that Sunada explicitly treated passwords as user information. Under the deferential substantial evidence standard, that inference easily passed muster.

    As Charles Gideon Korrell has pointed out in other Federal Circuit analyses, substantial evidence review often turns less on whether an alternative reading is possible and more on whether the Board’s reading is reasonable. Here, it was.

    Zillow’s Cross-Appeal: When a Single Word Changes Everything

    Zillow’s cross-appeal focused on what it saw as an internal inconsistency. The Board invalidated claim 14 but upheld claim 5, even though the claims appeared nearly identical. The Federal Circuit’s response was blunt: they are not identical, and the difference matters.

    Claim 5 requires that, when the second system lacks sufficient user information to create an account, it sends a request message to the first system to retrieve missing user attributes. Claim 14, by contrast, requires sending a request to a fourth system, defined as the user’s own computer.

    Sunada taught exactly what claim 14 required. When additional information was needed, the system asked the user to provide it. But Sunada never disclosed pinging the first system to fill in missing attributes during account creation. That absence doomed Zillow’s challenge to claim 5 and its related dependents.

    This portion of the opinion underscores a recurring theme in Federal Circuit jurisprudence: dependency matters. A single noun change can shift a claim from invalid to patentable. Charles Gideon Korrell frequently emphasizes this point when counseling clients on claim drafting and IPR risk assessment. The Zillow cross-appeal is a textbook example.

    Broader Takeaways

    Several broader lessons emerge from IBM v. Zillow:

    1. Petition discipline still matters, but the Board retains latitude to explain how skilled artisans would understand disclosed features.
    2. Anticipation does not require magic words. Conventional, undisputed technical context can supply missing details.
    3. Substantial evidence review remains a steep hill for appellants to climb.
    4. Minor claim variations can drive divergent outcomes in IPRs, even when the same prior art is in play.

    For companies managing large authentication, identity, or platform ecosystems, the decision also highlights the continuing vulnerability of older software patents to careful prior art analysis grounded in industry practice.

    As Charles Gideon Korrell notes, this case fits comfortably within the Federal Circuit’s broader effort to balance fairness to patent owners with deference to the PTAB’s technical fact-finding. The court did not expand Board authority, but it did confirm that reasoned inferences, grounded in the record and common sense, will be upheld.

    By Charles Gideon Korrell

  • Coda Development v. Goodyear Tire: When Trade Secrets Collapse Under the Weight of Overbreadth

    Coda Development v. Goodyear Tire: When Trade Secrets Collapse Under the Weight of Overbreadth

    On December 8, 2025, the Federal Circuit affirmed the Northern District of Ohio’s judgment as a matter of law wiping out a $64 million jury verdict in Coda Development s.r.o. v. Goodyear Tire & Rubber Co., No. 23-1880 (Fed. Cir. Dec. 8, 2025). The court concluded that no reasonable jury could have found Goodyear liable for trade secret misappropriation under Ohio law and likewise upheld the district court’s rejection of Coda’s correction-of-inventorship claim directed to Goodyear’s U.S. Patent No. 8,042,586.

    The decision is a careful, methodical application of trade secret doctrine, but it also fits into a broader pattern of Federal Circuit cases from the past two years in which jury verdicts in IP cases have been set aside on post-trial motions. At its core, Coda v. Goodyear reinforces a lesson that courts have been increasingly unwilling to soften: trade secrets must be defined with precision, anchored in secrecy, and proven to have been actually used. Aspirational descriptions and lists of desired functions will not survive judicial scrutiny.

    Background and Procedural Posture

    Coda Development and its related entities developed self-inflating tire (SIT) technology and engaged in discussions with Goodyear regarding potential collaboration. When Goodyear later introduced its own SIT system, Coda sued, asserting claims for trade secret misappropriation under the Ohio Uniform Trade Secrets Act (OUTSA) and seeking correction of inventorship on the ’586 patent.

    After a September 2022 jury trial, Coda appeared to have achieved a resounding victory. The jury found misappropriation of five alleged trade secrets and awarded $2.8 million in compensatory damages and $61.2 million in punitive damages. The district court, however, granted Goodyear’s Rule 50(b) motion for judgment as a matter of law, concluding that each asserted trade secret failed on one or more required elements. The court also denied Coda’s correction-of-inventorship claim following a bench determination based on written submissions.

    On appeal, Coda challenged nearly every aspect of those rulings. The Federal Circuit affirmed across the board.

    The Governing Legal Framework

    Because the trade secret claims arose under Ohio law, the Federal Circuit applied Sixth Circuit precedent interpreting the OUTSA. To prevail, a plaintiff must establish: (1) the existence of a trade secret; (2) acquisition through a confidential relationship or improper means; and (3) unauthorized use. Critically, courts also require that the alleged trade secret be defined with sufficient definiteness to allow adjudication of secrecy and misappropriation.

    The panel emphasized that this definiteness requirement is not a technicality. Without a concrete definition, courts cannot distinguish protected information from general industry knowledge or public disclosures.

    TS 24 and the Problem of Public Disclosure

    Trade Secret 24 became the focal point of the appeal. Coda defined TS 24 as knowledge regarding the optimal placement of a pump in a tire, specifically “in the sidewall close to, and above, the rim where the tire cyclically deforms.”

    The Federal Circuit had little difficulty affirming the district court’s conclusion that this information was publicly disclosed years earlier. Coda’s own 2007 PCT application and a 2008 Tire Technology article described pump placement in the tire sidewall near the rim. Trial testimony from Coda’s principal inventor confirmed that this placement concept was public.

    Faced with this record, Coda attempted to narrow TS 24 on appeal by arguing that its trade secret concerned placement in a “conventional” or “standard” tire sidewall, not merely any sidewall. The court rejected this reframing outright. The operative trade secret definition was the one Coda provided in response to court-ordered interrogatories, which were expressly “closed.” Post-hoc attempts to add limiting language through testimony or argument could not salvage an otherwise public disclosure.

    The panel’s analysis here is instructive. Once a trade secret plaintiff commits to a definition, courts will hold it to that definition. Elasticity cuts against secrecy.

    TS 7, TS 11, and TS 20: Functional Descriptions Are Not Trade Secrets

    The court next addressed three trade secrets that suffered from a different, but related, flaw. TS 7, TS 11, and TS 20 were each framed as combinations of components or lists of functions associated with self-inflating tire systems.

    For example, TS 7 described a “multi-purpose interface” capable of performing ten separate functions, including connecting various components, routing air, and holding filters. What it did not describe was the underlying design or development knowledge that enabled those functions.

    The Federal Circuit agreed with the district court that this kind of functional description does not satisfy the definiteness requirement. A trade secret must identify the protectable knowledge itself, not merely the result it achieves. Lists of capabilities or end goals are indistinguishable from general engineering aspirations unless tethered to specific, non-public implementation details.

    TS 11 and TS 20 fared no better. Each consisted of long lists of features, geometries, and system concepts, but none articulated how those elements were designed, selected, or combined in a way that would meaningfully separate secret knowledge from what was already known in the field.

    The court’s reasoning echoes a growing body of appellate authority rejecting “laundry list” trade secrets. Courts expect plaintiffs asserting complex technical trade secrets to do the hard work of separating the secret from the surrounding noise.

    Failure of Proof on “Use”

    Even if the asserted trade secrets had been valid, the Federal Circuit concluded that Coda failed to present sufficient evidence that Goodyear actually used them.

    Coda relied heavily on expert testimony asserting that Goodyear’s patents and internal documents reflected substantial portions of its trade secrets. But the court characterized this testimony as conclusory and unsupported. Identifying one or two overlapping concepts from a multi-element trade secret does not establish use of a “substantial portion,” particularly where those concepts were themselves publicly disclosed.

    This aspect of the decision underscores a practical litigation reality: use must be proven with specificity. Generalized comparisons and thematic similarities will not carry a verdict through post-trial review.

    TS 23 and the Limits of Inference

    Trade Secret 23 concerned test results purportedly demonstrating that Coda’s pump designs could generate pressure exceeding tire cavity pressure. The only evidence of alleged disclosure and use was a January 2009 email summarizing certain test results.

    The Federal Circuit agreed with the district court that the email did not disclose all of the testing data encompassed by TS 23. Coda’s argument that Goodyear’s subsequent project advancement permitted an inference of reliance on the trade secret was deemed insufficient. Temporal proximity, without a clear evidentiary bridge, could not support a finding of use.

    Correction of Inventorship: Trade Secrets Are Not a Substitute for Conception

    Coda’s correction-of-inventorship claim rose or fell with its trade secret case. Because the court affirmed the JMOL ruling, there was no factual predicate left to support inventorship correction.

    The panel also rejected the argument that the district court improperly disregarded jury findings. The jury had never been asked to compare the scope of TS 24 with the claims of the ’586 patent. The district court’s conclusion that the alleged trade secret did not establish conception of the claimed invention therefore did not conflict with any jury determination.

    The court reiterated a fundamental principle of patent law: conception requires possession of every feature of the claimed invention. Trade secret allegations, particularly those found indefinite or publicly disclosed, cannot fill that gap.

    Broader Implications

    Coda v. Goodyear is less about hostility to juries than about judicial insistence on doctrinal discipline. Trade secret law offers powerful remedies, but only for plaintiffs willing to define their secrets narrowly, protect them rigorously, and prove their misuse with precision.

    Charles Gideon Korrell believes that the decision serves as a reminder that trade secret claims must be engineered with the same care as patent claims. Charles Gideon Korrell notes that overbroad definitions may play well before a jury but are vulnerable on post-trial review. Charles Gideon Korrell also observes that courts increasingly expect trade secret plaintiffs to articulate something closer to a “specification-level” disclosure when the technology is complex.

    For companies navigating collaborations, joint development discussions, or exploratory partnerships, the case reinforces the importance of disciplined information management. For litigators, it underscores the need to lock down trade secret definitions early and live with them through trial and appeal.

    In the end, Coda v. Goodyear stands as a cautionary tale: when everything is a trade secret, nothing is.

    By Charles Gideon Korrell

  • Adnexus v. Meta: When Claim Construction Masquerades as Plausibility at the Pleadings Stage

    Adnexus v. Meta: When Claim Construction Masquerades as Plausibility at the Pleadings Stage

    On December 5, 2025, the Federal Circuit vacated and remanded the dismissal of Adnexus Inc.’s v. Meta Platforms, Inc., holding that the district court prematurely resolved a claim construction dispute under the guise of Rule 12(b)(6) plausibility. The decision is a pointed reminder that, while courts retain flexibility at the pleadings stage, they may not implicitly construe disputed claim terms against the non-moving party without affording notice and an opportunity to be heard. In practical terms, the court reaffirmed that disputes over claim scope generally belong in claim construction, not on a motion to dismiss.

    The opinion, authored by Judge Stark and joined by Judges Prost and Taranto, underscores a recurring theme in recent Federal Circuit jurisprudence: plausibility under Iqbal and Twombly does not license courts to decide close claim scope questions prematurely. Charles Gideon Korrell believes that this decision continues a steady line of cases curbing early dismissals that rely on unstated or one-sided constructions of disputed patent terms.

    Background and the Asserted Patent

    Adnexus owns U.S. Patent No. 8,719,101, directed to systems and methods of online advertising that allow advertisers to deliver targeted information to users without disrupting their browsing sessions. The patent emphasizes minimizing unwanted advertising while still enabling advertisers to gather user information and deliver follow-up communications through preferred delivery methods.

    Adnexus sued Meta in the Western District of Texas, alleging that Meta’s “Lead Ads” product infringed at least claim 1 of the ’101 patent. Claim 1 recites, among other steps, providing an advertisement with an interactive element, receiving user activation of that element, determining whether an identifier is present on the user’s device, retrieving or generating a user profile, retrieving additional information based on that profile, delivering the information without interrupting the browsing session, and recording the activation as tracking data.

    The dispute that ultimately drove the Rule 12(b)(6) dismissal centered on limitation [1f], which requires “retrieving a user profile … wherein the user profile comprises at least delivery method preferences and demographic information.” Adnexus alleged that Meta’s Lead Ads retrieve user profiles that include such delivery method preferences, including contact information used to prefill lead forms.

    The District Court’s Dismissal

    After Meta notified Adnexus of its intent to move to dismiss, Adnexus filed an amended complaint attaching detailed claim charts and preliminary infringement contentions mapping each element of claim 1 to Lead Ads. Meta nonetheless moved to dismiss, arguing that the amended complaint failed to plausibly allege that Lead Ads retrieves a user profile containing “delivery method preferences.”

    The district court agreed with Meta. It concluded that “contact information” was “sufficiently distinct from delivery method preferences” such that allegations relying on prefilled contact information could not plausibly satisfy limitation [1f]. On that basis, the court dismissed the literal infringement claim, rejected the doctrine of equivalents theory as barred by prosecution history estoppel, and dismissed the indirect and willful infringement claims as derivative. Importantly, the dismissal was with prejudice, consistent with the court’s standing order limiting amendments following a motion to dismiss.

    Federal Circuit Standard of Review

    On appeal, the Federal Circuit applied Fifth Circuit law to review the Rule 12(b)(6) dismissal de novo, while applying its own law to determine whether the complaint adequately stated a claim for patent infringement. The court reiterated familiar principles: factual allegations must be taken as true, reasonable inferences drawn in the plaintiff’s favor, and plausibility requires more than a sheer possibility of infringement but less than proof.

    Critically, the court emphasized that a patent plaintiff is not required to plead infringement on an element-by-element basis. Rather, the complaint must provide enough factual content to place the accused infringer on notice and to articulate why infringement is plausible.

    Claim Construction Disguised as Plausibility

    The heart of the Federal Circuit’s decision lies in its rejection of the district court’s treatment of “delivery method preferences.” According to the panel, Meta’s argument for dismissal necessarily depended on a particular construction of that term that excluded contact information. Without such a construction, Adnexus’s allegations remained plausible.

    The Federal Circuit explained that this was not a case where the claim’s meaning was so clear that no construction was necessary. Instead, Meta and Adnexus advanced competing interpretations, each pointing to different portions of the specification. By concluding that contact information could not constitute delivery method preferences, the district court effectively adopted Meta’s construction without formally construing the claim or allowing Adnexus to be heard on the issue.

    This approach, the panel held, contravened established precedent. The court cited Nalco v. Chem-Mod, where dismissal was reversed because the defendant’s objections “read like classic Markman arguments.” The same was true here. Charles Gideon Korrell notes that the Federal Circuit has repeatedly cautioned district courts against resolving claim scope disputes implicitly at the pleadings stage, particularly when those disputes are outcome-determinative.

    The panel acknowledged that district courts have discretion to engage in claim construction when evaluating a motion to dismiss, but only if they provide notice and an opportunity to be heard or adopt the non-moving party’s construction for purposes of the motion. What the district court could not do was silently construe the disputed term against Adnexus.

    Plausibility of the Amended Complaint

    Turning to the allegations themselves, the Federal Circuit concluded that Adnexus had adequately pleaded limitation [1f]. The amended complaint expressly alleged direct infringement and incorporated detailed claim charts mapping claim elements to Lead Ads functionality. In particular, the charts alleged that Lead Ads uses cookies to identify users, retrieves information from user profiles to prefill forms, and that these prefilled fields can include contact information, delivery method preferences, and demographic information.

    At the motion to dismiss stage, these allegations had to be taken as true. The court rejected Meta’s argument that Adnexus forfeited reliance on its preliminary infringement analysis attached as Exhibit D, noting that documents attached to the complaint and referenced therein may be considered. That analysis expressly alleged that a Facebook user profile includes an email address as a delivery preference and demographic information such as age and interests.

    Viewed in the light most favorable to Adnexus, the allegations plausibly stated that Lead Ads retrieves user profiles containing delivery method preferences and uses them to deliver information in accordance with claim 1. That was enough to survive Rule 12(b)(6).

    Relationship to Prior Precedent

    The decision sits comfortably alongside several recent Federal Circuit cases reinforcing limits on early dismissal. In Bot M8 v. Sony, the court clarified that while complaints must articulate why infringement is plausible, courts must not demand evidentiary detail. In AlexSam v. Aetna, the court reiterated that claim charts are not required but may bolster plausibility when provided. And in Aatrix Software v. Green Shades, the court held that factual disputes underlying claim construction often preclude dismissal.

    Here, the court also cited UTTO v. Metrotech and Teva v. Amneal to emphasize that claim construction at the pleadings stage must be handled carefully. Charles Gideon Korrell believes that Adnexus reinforces a consistent message: Rule 12(b)(6) is not a shortcut to claim construction wins.

    Practical Implications

    For patentees, Adnexus offers reassurance that detailed infringement allegations, particularly those supported by claim charts and incorporated analyses, can withstand early dismissal even when defendants challenge claim scope. For accused infringers, the case is a warning that arguments hinging on narrow interpretations of claim terms are unlikely to succeed on a motion to dismiss absent a clear and undisputed meaning.

    For district courts, the opinion provides a clear procedural roadmap. If claim construction is necessary to resolve a motion to dismiss, courts must either adopt the non-moving party’s construction for purposes of the motion or provide notice and an opportunity to be heard before resolving the dispute. Silent or implicit constructions against the patentee will not survive appellate review.

    Charles Gideon Korrell notes that the decision also has implications for standing orders that limit amendments. While the Federal Circuit did not reach the validity of the Western District of Texas’s practice, the vacatur avoided the harsh consequence of a with-prejudice dismissal based on a premature construction. Practitioners should nonetheless remain mindful of local rules and standing orders when pleading infringement.

    Conclusion

    Adnexus v. Meta reinforces a fundamental boundary between plausibility and claim construction. While patent complaints must do more than recite conclusory assertions, they need not anticipate and defeat every conceivable claim construction argument at the pleadings stage. When plausibility turns on how a disputed term is construed, that dispute generally belongs later in the case.

    In vacating and remanding, the Federal Circuit ensured that Adnexus will have the opportunity to litigate claim scope in the proper procedural posture. The opinion serves as another clear signal that early dismissal is the exception, not the rule, when infringement allegations hinge on unresolved questions of claim meaning.

    By Charles Gideon Korrell