Technology Information Law Blog by Charles Gideon Korrell

Tag: CAFC

  • In re Gesture Technology: IPR Estoppel Stops at the PTAB Door, Not Ex Parte Reexamination

    In re Gesture Technology: IPR Estoppel Stops at the PTAB Door, Not Ex Parte Reexamination

    The Federal Circuit’s December 1, 2025 decision in In re Gesture Technology Partners, LLC, Appeal No. 2025-1075, delivers a clean and consequential message on two recurring pressure points in post-grant practice: the reach of inter partes review (IPR) estoppel under 35 U.S.C. § 315(e)(1), and the Patent Office’s authority to continue adjudicating validity in ex parte reexamination even after parallel IPRs have run their course and even after a patent has expired. The panel, led by Judge Lourie, affirmed the Board’s anticipation findings as to the last two surviving claims and dismissed the remainder as precluded by prior Federal Circuit affirmances. The opinion reinforces a formal distinction that practitioners sometimes blur in practice: who “maintains” a proceeding before the Office matters, and in ex parte reexamination that actor is the agency, not the requester.

    What follows unpacks the court’s reasoning, situates it within the broader estoppel and preclusion landscape, and offers a few practical takeaways for anyone navigating parallel PTAB proceedings.

    Background and Procedural Posture

    Gesture Technology Partners owned U.S. Patent No. 7,933,431, directed to camera-based sensing of objects and human gestures for use in devices ranging from handheld electronics to vehicles and video games. The patent issued with 31 claims. Samsung requested ex parte reexamination, which the Patent Office granted. While that reexamination was pending, two IPRs moved forward in parallel: one filed by Unified Patents (of which Samsung was a member) challenging claims 7–13, and another filed by Apple challenging nearly the entire claim set.

    Those IPRs culminated in final written decisions invalidating most claims. After Gesture appealed those outcomes, the Federal Circuit affirmed the invalidations, leaving only claims 11 and 13 still standing. Meanwhile, the ex parte reexamination continued, and the examiner, later affirmed by the Board, rejected all claims, including claims 11 and 13, as anticipated or obvious. Gesture appealed again, this time from the reexamination decision.

    Gesture advanced two principal arguments. First, it contended that § 315(e)(1) estoppel should have compelled the Patent Office to terminate the ex parte reexamination once the Unified Patents IPR reached a final written decision, because Samsung, as a privy or real party in interest, was estopped from “maintain[ing] a proceeding before the Office.” Second, it challenged the merits of the anticipation finding based on U.S. Patent No. 5,982,853 to Liebermann and argued that the Board lacked jurisdiction because the ’431 patent had expired.

    The Federal Circuit rejected each argument and affirmed as to claims 11 and 13, while dismissing the remainder on issue-preclusion grounds.

    IPR Estoppel Does Not Reach Ongoing Ex Parte Reexamination

    The headline holding concerns § 315(e)(1). Gesture’s position had intuitive appeal: ex parte reexamination is unquestionably a “proceeding before the Office,” and Samsung (or its privy) had already litigated validity in an IPR to final judgment. Why should the Office allow another bite at the apple?

    The answer, according to the court, lies in the verb Congress chose. Section 315(e)(1) bars a petitioner from requesting or maintaining a proceeding. In the ex parte reexamination context, a requester may initiate the process, but after that limited role, the statute assigns control to the Patent Office. As the panel emphasized, once the patent owner files (or declines to file) a statement, the requester’s involvement largely ends. The Office conducts the examination, issues office actions, and decides whether to confirm or cancel claims.

    Relying on precedent explaining the non-adversarial nature of ex parte reexamination, the court held that the requester does not “maintain” the proceeding within the meaning of § 315(e)(1). Because estoppel applies to the petitioner and its privies, not to the agency itself, there was no statutory basis to force termination of a reexamination already underway. In short, estoppel is personal; it does not shackle the Office’s independent authority to reexamine patents.

    This interpretation preserves a bright line between adversarial AIA trials and examiner-driven reexamination. It also underscores that Congress, had it wished to foreclose reexamination following IPR, could have said so explicitly. As written, the statute does not.

    Anticipation by Liebermann: A Broad View of “Controlling a Function”

    On the merits, the court affirmed the Board’s finding that Liebermann anticipates claims 11 and 13, which depend from claim 7. Claim 7 recites a handheld computer apparatus with a camera, computing means to analyze images for positional information, and “means for controlling a function of said apparatus using said information.” Claim 11 adds a transmission function; claim 13 specifies that the apparatus is a cellular phone.

    The Board construed the “means for controlling” limitation as requiring the apparatus to receive position information, correlate that information with a function, and cause the apparatus to perform the function. Gesture argued that Liebermann merely transmitted data in a fixed way and did not “correlate” image information with any functional control.

    The Federal Circuit disagreed. Substantial evidence supported the Board’s view that Liebermann’s system captured images of gestures, processed those images into identifiers, and transmitted the resulting data. The key was that the transmitted information varied based on the content of the captured images. Even if the “sending” function was always enabled, its operation was dynamically controlled by the analyzed gesture data. That was enough to satisfy the correlation requirement.

    For practitioners, the lesson is familiar but worth repeating: anticipation does not demand elegance or explicit labeling in the prior art. Functional limitations, especially in means-plus-function form, can be met by fairly straightforward data-processing pipelines if the evidence supports a linkage between input information and system behavior.

    Expired Patents Remain Fair Game

    Gesture’s final argument—that the Board lacked jurisdiction because the ’431 patent had expired—fared no better. The court had already addressed and rejected the same contention in the context of IPRs involving the same patent, holding that expiration does not moot validity challenges because patentees retain the ability to seek damages for past infringement.

    The panel saw no reason to treat ex parte reexamination differently. As long as enforceable rights, such as claims for past damages, remain in play, there is a live controversy suitable for administrative adjudication. Ex parte reexamination, like IPR, can therefore proceed to final resolution even after expiration.

    Issue Preclusion Cleans Up the Rest

    Because the Federal Circuit had already affirmed invalidity of claims 1–10, 12, and 14–30 in the earlier IPR appeals, the panel dismissed Gesture’s appeal as to those claims. Citing established precedent, the court reiterated that its affirmance in a prior case has immediate issue-preclusive effect on pending actions involving the same claims. That procedural housekeeping matters in complex, multi-track PTAB litigation: once the Federal Circuit speaks definitively on a claim, parallel proceedings will not keep it alive.

    Why This Decision Matters

    This case reinforces several structural features of post-grant practice that are easy to overlook when managing parallel proceedings. First, IPR estoppel is potent but not omnipotent. It binds parties, not the Patent Office, and it does not retroactively invalidate agency actions that Congress assigned to the Office itself. Second, ex parte reexamination remains a viable, independent mechanism for testing patent validity, even when IPRs have addressed overlapping claims and even when a patent’s term has ended.

    As Charles Gideon Korrell has noted in other contexts, understanding the procedural posture of each USPTO mechanism is often as important as mastering the substantive patent law. The Federal Circuit’s insistence on reading § 315(e)(1) according to its text provides predictability, even if it frustrates patentees hoping for a single, consolidated battlefield. Charles Gideon Korrell believes this clarity ultimately benefits the system by allowing practitioners to advise clients with confidence about the likely trajectory of parallel challenges.

    There is also a strategic takeaway. Requesters considering ex parte reexamination alongside IPR should recognize that the two tracks are not mutually exclusive and may reach different endpoints at different times. Patent owners, conversely, should plan for the possibility that surviving IPR claims may still face scrutiny in reexamination. Charles Gideon Korrell notes that coordinating arguments across forums, while preserving distinctions required by statute, is now a baseline expectation rather than an advanced tactic.

    Finally, the decision confirms that expiration is not a safe harbor from administrative review. For portfolios with older patents still being asserted for past damages, validity challenges can remain very much alive.

    Conclusion

    In re Gesture Technology Partners may not break new doctrinal ground, but it sharpens the contours of IPR estoppel and underscores the autonomy of ex parte reexamination. The Federal Circuit drew a clear line: § 315(e)(1) stops petitioners from relitigating, not the Patent Office from doing its job. For anyone steering through overlapping PTAB proceedings, that line is worth keeping firmly in view. Charles Gideon Korrell observes that, while the outcome may feel formalistic, it reflects a careful balance struck by Congress and consistently enforced by the courts.

    By Charles Gideon Korrell

  • Akamai v. MediaPointe: “Best” and “Optimal” Still Demand Objective Boundaries

    Akamai v. MediaPointe: “Best” and “Optimal” Still Demand Objective Boundaries

    The Federal Circuit’s decision in Akamai Technologies, Inc. v. MediaPointe, Inc., No. 2024-1571 (Fed. Cir. Nov. 25, 2025), reinforces a familiar but still unforgiving rule of patent law: terms of degree such as “best” and “optimal” require objective boundaries anchored in the intrinsic record, not intuition, common sense, or counsel’s assurances that “it all tends to line up.” In affirming both indefiniteness and non-infringement, the court delivered a reminder that even sophisticated networking patents must articulate how competing metrics are weighed if those metrics define claim scope.

    This opinion fits squarely within the post-Nautilus indefiniteness framework and provides useful guidance on two recurring issues. First, it clarifies when objective metrics fail to rescue qualitative claim language. Second, it underscores that infringement theories cannot stretch ordinary claim language to cover system behavior that the accused components never actually perform.

    The Patents and the Claimed “Intelligent Distribution Network”

    The asserted patents, U.S. Patent Nos. 8,559,426 and 9,426,195, describe systems for routing streaming media across the internet using what the patents call an “intelligent distribution network.” The basic architecture includes a management center, multiple geographically dispersed nodes, and a mapping engine that evaluates trace-route data to determine how content should flow from a content provider to end users.

    Trace-route results include objective data such as hop counts, latency, and inferred reliability. The patents repeatedly emphasize that selecting the “best,” “best situated,” or “optimal” nodes and routes improves performance and reduces packet loss. But the specification also makes clear that trace-route data is not necessarily dispositive. Operators may consider other factors such as time of day, bandwidth, historical performance, cost, and other “quality of service” attributes.

    As Charles Gideon Korrell has observed in other post-Nautilus contexts, this combination of quantitative metrics and open-ended operational discretion often sets the stage for indefiniteness disputes when claims elevate the result (“best”) without fixing the method.

    Indefiniteness and the Limits of Objective Metrics

    The district court invalidated all claims containing “best” or “optimal” language, and the Federal Circuit affirmed. Applying Nautilus and its own precedent, the court emphasized that terms of degree are not inherently indefinite, but they must provide objective boundaries when read in light of the specification.

    MediaPointe argued that the claims were sufficiently definite because they required the use of trace-route data, which includes objective measurements. The Federal Circuit rejected that argument for two related reasons.

    First, the trace-route requirement was not exclusive. The claims did not say that trace-route metrics were the only factors that could be considered in determining what was “best” or “optimal.” To the contrary, the specification explicitly disclosed that other considerations could influence node selection. That openness, standing alone, defeated any argument that the claims imposed a fixed standard.

    Second, even within the trace-route metrics themselves, the patents failed to explain how conflicts should be resolved. Latency, hop count, and reliability might point in different directions, and the specification offered no rule for prioritization when they diverge. The court noted that while the patents contained examples where latency and hop count aligned, they also acknowledged circumstances where the shortest path might not be the fastest, or where device load affected responsiveness.

    The court leaned heavily on its prior decisions holding that claims are indefinite when multiple measurement methods can yield different results and the patent provides no guidance as to which method controls. Lawyer argument that the metrics “tend to run together” was insufficient, particularly where the specification itself contemplated divergence.

    As Charles Gideon Korrell notes, this aspect of the decision is a reminder that patents cannot outsource claim definiteness to engineering intuition or real-world tendencies. If a patent relies on multiple metrics, it must explain how they are weighed, not merely list them.

    Why “Best” Cannot Be Read Out of the Claims

    In a late-breaking reply argument, MediaPointe suggested that the claims were satisfied as long as trace-route data was mapped and compared, regardless of how “best” or “optimal” was determined. The Federal Circuit found the argument forfeited and unpersuasive.

    Accepting that interpretation would effectively read “best” and “optimal” out of the claims entirely. The court reiterated the principle that claims should be construed to give effect to all terms, not to render meaningful language superfluous. If any comparison of trace routes were enough, then the qualitative terms would impose no constraint at all.

    This portion of the opinion dovetails with earlier Federal Circuit warnings that result-oriented claim language cannot be salvaged by vague references to analysis steps unless the analysis itself is meaningfully defined.

    Non-Infringement and the Meaning of a “Request for Media Content”

    The court also affirmed summary judgment of non-infringement for the surviving claims of the ’195 patent. Those claims did not include “best” or “optimal” language but required, among other things, “receiving an initial request for media content from a first client, the request being received by a management center.”

    MediaPointe’s infringement theory centered on Akamai’s Mapper functionality, which operates within Akamai’s DNS infrastructure. According to MediaPointe, when a user enters a URL into a browser and triggers a DNS query, the Mapper effectively receives a “request for media content.”

    The Federal Circuit rejected that theory, agreeing with the district court that a relevant artisan would understand a “request” in this context to mean a computer message capable of being received by a management center. A user’s attempt to access content, or the act of typing a URL, is not something that can be “received” by a network component.

    The undisputed technical record showed that Akamai’s DNS servers receive only DNS queries, which do not identify the requested media content. The actual HTTP request identifying the content is sent directly to the edge server, not to the Mapper. MediaPointe’s own expert conceded that a DNS query itself is not a request for content.

    The court emphasized that this was not an improper narrowing construction but an application of ordinary meaning in context. Had MediaPointe believed that “request for media content” encompassed user intent or browser activity, it should have raised that issue during claim construction. Its failure to do so underscored the weakness of the argument on summary judgment.

    Charles Gideon Korrell believes this portion of the opinion is particularly instructive for cases involving distributed systems. Courts will look carefully at where specific information actually flows, not at high-level descriptions of user behavior, when determining whether claim elements are met.

    Practical Takeaways

    Several lessons emerge from Akamai v. MediaPointe.

    First, patents that rely on terms like “best,” “optimal,” or “most efficient” must do more than point to objective inputs. They must explain how those inputs are used to reach the claimed result, especially when the inputs can conflict.

    Second, listing additional, non-quantified factors in the specification may undermine definiteness if those factors expand the decision space without providing constraints.

    Third, infringement theories must respect the technical boundaries of the accused system. Courts will not equate user intent with system behavior when claim language requires receipt of a request by a specific component.

    Finally, the case illustrates the continued vitality of the Federal Circuit’s indefiniteness jurisprudence post-Nautilus. Even well-developed technologies and commercially significant systems are not immune when claims fail to define their boundaries with reasonable certainty.

    For those drafting or litigating patents in networking, distributed computing, or similar fields, Akamai v. MediaPointe is a clear signal that precision still matters, and that “best” without rules is, at best, an invitation to invalidity.

    By Charles Gideon Korrell

  • EscapeX IP v. Google: Frivolous Litigation, Fee Shifting, and the Perils of Doubling Down

    EscapeX IP v. Google: Frivolous Litigation, Fee Shifting, and the Perils of Doubling Down

    On November 25, 2025, the Federal Circuit issued a sharp reminder that patent litigation is not a game of attrition and that courts will use fee shifting and sanctions to deter claims that lack a meaningful factual or legal foundation. In EscapeX IP, LLC v. Google LLC, the court affirmed a district court’s award of attorneys’ fees under 35 U.S.C. § 285, additional sanctions under 28 U.S.C. § 1927, and the denial of a Rule 59(e) motion to amend the judgment. The opinion reads less like a close call and more like a checklist of what not to do when asserting a patent.

    At its core, the decision underscores three interrelated principles that continue to shape post–Octane Fitness fee jurisprudence: the importance of a real pre-suit investigation, the relevance of party conduct after receiving notice of defects, and the limits of “zealous advocacy” when counsel persists with motions that only multiply proceedings.

    Background: From Texas to California, and From Infringement to Fees

    EscapeX sued Google, alleging that Google’s YouTube Music product infringed U.S. Patent No. 9,009,113, titled “System and Method for Generating Artist-Specified Dynamic Albums.” Google responded early with correspondence explaining why the accused features were not present in the identified product and why EscapeX could not have conducted an adequate pre-suit investigation. EscapeX then amended its complaint to accuse a different product feature, “YouTube Video with Auto-Add.”

    That pivot did not improve matters. Google sent further letters explaining that the newly accused feature predated the patent’s priority date, meaning that if it infringed, it would also anticipate and invalidate the asserted claims. Google repeatedly asked EscapeX to voluntarily dismiss the action. EscapeX did not respond.

    Procedurally, the case stumbled along. EscapeX failed to respond to Google’s motion to transfer venue, prompting the court to note EscapeX’s “troublesome” and repeated failures to file timely responses before granting transfer to the Northern District of California.

    Meanwhile, in a separate action involving the same patent, a district court in New York held all claims of the ’113 patent ineligible under § 101. EscapeX did not appeal that ruling. Only after Google again requested dismissal did EscapeX attempt to file what it styled as a “joint stipulation of dismissal” representing that both parties agreed to bear their own fees. That representation was false. EscapeX had not obtained Google’s consent. The stipulation was withdrawn and later replaced with a proper dismissal that was silent on fees.

    Google then moved for attorneys’ fees under § 285. The district court granted the motion, awarding approximately $191,000. EscapeX responded with a Rule 59(e) motion to amend the judgment based on “newly discovered evidence,” consisting of declarations from its president and an engineer describing the steps taken during its pre-suit investigation. The court denied that motion as frivolous and later granted Google additional fees under § 1927, holding EscapeX and its counsel jointly and severally liable for roughly $63,500 incurred in opposing the Rule 59(e) motion.

    EscapeX appealed across the board.

    The Federal Circuit’s Framework

    The Federal Circuit applied its established standards of review: abuse of discretion for § 285 determinations, Rule 59(e) motions, and § 1927 sanctions. Importantly, the court rejected EscapeX’s attempt to argue that less deference was warranted because the transferee court had presided over the case for only a short time. The panel explained that deference does not depend on how long a judge has had a case, and to hold otherwise would perversely incentivize bad behavior early in litigation.

    Section 285: Pre-Suit Investigation and Litigation Conduct

    The heart of the appeal concerned the fee award under § 285. Under Octane Fitness, an exceptional case is one that “stands out” based on the totality of the circumstances, including the substantive strength of a party’s position and the manner in which the case was litigated.

    Here, the Federal Circuit found no abuse of discretion in the district court’s conclusion that EscapeX failed to conduct an adequate pre-suit investigation and advanced frivolous claims. The record supported the finding that EscapeX “cobbled together” features from different Google products and accused functionality that predated the patent. A basic online search would have revealed the timing issue. The court also emphasized that EscapeX was repeatedly placed on notice of these defects through Google’s letters and yet chose to press on.

    In affirming, the panel relied on a line of cases recognizing that inadequate pre-suit diligence can support exceptionality, including Octane Fitness, LLC v. ICON Health & Fitness, Inc. and Federal Circuit decisions such as Bayer CropScience AG v. Dow AgroSciences LLC. The court also reiterated that early, focused notice from the accused infringer can be relevant, citing Thermolife Int’l LLC v. GNC Corp. and Lumen View Tech. LLC v. Findthebest.com, Inc..

    EscapeX argued that the district court improperly relied on correspondence between the parties and punished it for being a non-practicing entity. The Federal Circuit was unpersuaded. Communications showing that a party was on notice of baselessness are a proper factor. And while the district court remarked that the suit appeared designed to extract a nuisance settlement from a “tech giant,” that observation went to deterrence and motivation, not the mere status of EscapeX as an NPE. The panel pointed to precedent such as SFA Sys., LLC v. Newegg Inc., which recognizes that patterns of nuisance litigation are relevant to exceptionality.

    For practitioners, the lesson is familiar but worth repeating: pre-suit investigation must be grounded in verifiable facts about the accused product, and continuing to litigate after receiving credible notice of fatal defects can quickly turn an ordinary loss into an exceptional case.

    Rule 59(e): “Newly Discovered” Does Not Mean “Newly Drafted”

    EscapeX’s Rule 59(e) motion fared no better. Under Ninth Circuit law, such motions are limited to newly discovered evidence, clear error or manifest injustice, or an intervening change in law. Evidence is not “newly discovered” if it was always within the movant’s control and could have been presented earlier.

    The declarations from EscapeX’s own president and engineer did not qualify. These witnesses were available from the start, and their knowledge of the pre-suit investigation was not newly unearthed. The Federal Circuit agreed with the district court that Rule 59(e) is not a vehicle for sandbagging or for re-litigating issues with evidence that could have been submitted the first time around.

    EscapeX also gestured at “manifest injustice,” but the panel found that argument forfeited and, in any event, meritless. There was nothing unjust about awarding fees where the underlying claims were frivolous and the litigation conduct problematic.

    Section 1927: When Zeal Turns Reckless

    The most pointed aspect of the decision may be the affirmance of sanctions against counsel under § 1927. That statute authorizes courts to require attorneys to personally satisfy excess fees incurred due to unreasonable and vexatious multiplication of proceedings.

    The Federal Circuit agreed that EscapeX’s Rule 59(e) motion crossed that line. The district court found the motion frivolous and noted that EscapeX’s attorneys refused to withdraw or amend it even after Google identified its defects. That refusal, at a minimum, constituted recklessness.

    The panel emphasized that zealous advocacy does not excuse filing motions that are baseless and unsupported by competent inquiry. Quoting Ninth Circuit authority, the court observed that such motions provide objective evidence of improper purpose. Counsel could have avoided sanctions simply by not filing the motion. Declining to file a frivolous Rule 59(e) motion is not abandonment of a client; it is adherence to professional obligations.

    Practical Takeaways

    Several practical points emerge from EscapeX v. Google:

    First, pre-suit investigation remains a cornerstone of responsible patent enforcement. Courts expect plaintiffs to understand the accused product and its history before filing. Publicly available information matters.

    Second, notice matters. When an accused infringer provides early, detailed explanations of non-infringement or invalidity, continuing to litigate without addressing those issues increases fee risk.

    Third, procedural missteps and misrepresentations, even if corrected, can color a court’s view of litigation conduct. Accuracy and transparency in filings are non-negotiable.

    Fourth, post-judgment motions should be approached with caution. Rule 59(e) is narrow, and using it to repackage old evidence or arguments invites sanctions.

    Finally, counsel must remember that their duty to advocate is bounded by duties to the court. As the Federal Circuit reiterated, exceptionality cannot hide behind claims of zeal.

    Charles Gideon Korrell notes that this decision fits squarely within a broader trend of courts using fee shifting and sanctions to police the outer bounds of patent assertion behavior. Charles Gideon Korrell believes that the opinion will be cited frequently in future disputes where defendants seek fees based on inadequate pre-suit diligence and post-notice persistence. Charles Gideon Korrell also observes that the joint and several liability imposed on counsel under § 1927 serves as a pointed reminder that strategic decisions about motions practice can have personal consequences.

    Conclusion

    The Federal Circuit’s affirmance in EscapeX IP, LLC v. Google LLC leaves little doubt about the judiciary’s tolerance for patent cases that are frivolous from the start and compounded by questionable litigation tactics. The opinion reinforces established standards under § 285 and § 1927 while offering a clear roadmap of conduct that can transform a routine dismissal into a costly defeat. For parties and counsel alike, the message is straightforward: investigate first, listen when warned, and think carefully before doubling down.

    By Charles Gideon Korrell

  • Duke v. Sandoz: When a Genus Claim Becomes a Forest Without Blaze Marks

    Duke v. Sandoz: When a Genus Claim Becomes a Forest Without Blaze Marks

    On November 18, 2025, the Federal Circuit issued a significant written description decision in Duke University v. Sandoz Inc., reversing a jury verdict and holding claim 30 of U.S. Patent No. 9,579,270 invalid for lack of adequate written description. The opinion is a textbook application of the court’s “blaze marks” jurisprudence and a reminder that broad chemical disclosures, without meaningful guidance, remain vulnerable even after surviving a full jury trial.

    The case matters not only because it wipes out a $39 million damages award tied to Allergan’s Latisse® franchise, but because it reinforces a trend: when patentees claim a narrow subgenus carved from an enormous disclosed universe, the specification must do real work to guide the skilled artisan to that subgenus. Laundry lists and branching options will not suffice.

    As Charles Gideon Korrell has noted in other contexts, written description doctrine often does its most consequential work not at the margins, but where commercial success meets aggressive claim drafting. This case fits that pattern neatly.

    Background: PGF Analogs and Hair Growth

    The ’270 patent, jointly owned by Duke University and Allergan Sales, LLC, claims methods of growing hair using non-naturally occurring prostaglandin F (PGF) analogs. The patent has a priority date of 2000 and issued in 2017. Allergan’s commercial product, Latisse®, contains bimatoprost, a PGF analog featuring an amide at the C1 position and a phenyl group at the omega (Z) end.

    Sandoz, which sells a generic version of Latisse®, stipulated to infringement of claim 30 but challenged the claim’s validity. Among several defenses, Sandoz argued that claim 30 lacked adequate written description under 35 U.S.C. § 112(a).

    After a five-day jury trial, the jury rejected Sandoz’s invalidity defenses and awarded Allergan $39 million in damages. The district court denied Sandoz’s post-trial motions. On appeal, however, the Federal Circuit took a very different view.

    Standard of Review and the “Doubly High” Burden

    Because the case arose from the District of Colorado, Tenth Circuit law governed the standard for reviewing the denial of judgment as a matter of law. Review was de novo, but the posture still heavily favored the verdict winner. Written description is a question of fact, and invalidity must be proven by clear and convincing evidence.

    As the court emphasized, Sandoz’s burden on appeal was “doubly high.” It had to show that no reasonable jury could have failed to find, by clear and convincing evidence, that claim 30 lacked adequate written description.

    That framing makes the outcome striking. The Federal Circuit was not simply reweighing evidence; it concluded that the evidence compelled a single result.

    The Scope Mismatch: Billions Disclosed, Thousands Claimed

    A central, undisputed premise drove the analysis. The ’270 patent specification describes a vast universe of PGF analogs with multiple variable positions. Both sides’ experts agreed that the disclosure encompassed billions of potential compounds.

    Claim 30, by contrast, covered a much smaller subgenus. Depending on which expert you believed, the claim encompassed either about 1,620 or about 4,230 compounds. Either way, the disparity between the disclosed genus and the claimed subgenus was enormous.

    That mismatch is not fatal by itself. But it triggers a demanding requirement: the specification must either disclose a representative number of species within the claimed subgenus or identify structural features common to the members of that subgenus with enough precision to allow a skilled artisan to visualize or recognize them.

    Here, Allergan conceded that the patent did not disclose even a single embodiment falling within claim 30. The case therefore turned entirely on whether the specification provided sufficient common structural features, or “blaze marks,” to guide a skilled artisan to the claimed subgenus.

    Blaze Marks and the Prostaglandin “Hairpin”

    Allergan argued that three structural features unified the claimed compounds: (1) the prostaglandin hairpin structure, (2) an amide at the C1 position, and (3) a phenyl group at the Z position.

    The Federal Circuit was unpersuaded, starting with the hairpin. Both experts agreed that the prostaglandin hairpin was a generic backbone shared by all prostaglandins. Billions of compounds fit that description. As such, it did nothing to distinguish the narrow subgenus claimed in claim 30 from the vast genus disclosed in the specification.

    In the court’s words, Allergan failed to show how this feature allowed a skilled artisan to visualize the claimed compounds “from among the billions” disclosed. Generic commonality is not enough.

    The Maze at the C1 Position

    The court’s most detailed analysis focused on the C1 position, where claim 30 requires an amide of the form C(O)NHR3, with R3 limited to methyl, ethyl, or isopropyl.

    The specification listed 13 “options” for the C1 substituent. But as the court explained, that characterization was misleading. Only four of the 13 were singular chemical groups. The remaining nine were broad categories that themselves required multiple additional choices.

    Selecting C(O)NHR3, for example, was only the first step. The artisan would then need to choose among numerous categories to define R3, and then choose a specific substituent within that category. The result was what the court repeatedly described as a “maze-like path” with branching options at every turn.

    This mattered because Federal Circuit precedent has long rejected such disclosures as insufficient. Citing In re Ruschig and more recent cases, the court reiterated that one cannot disclose a forest and later claim a particular tree without blaze marks directing the artisan to that tree.

    Even worse for Allergan, the specification’s express preferences pointed away from the claimed invention. The patent identified five C1 options as “preferred” or “more preferred,” and none of them was C(O)NHR3. Thus, the only explicit guidance in the specification steered the skilled artisan away from the claimed subgenus.

    Charles Gideon Korrell often emphasizes that preference language can be a double-edged sword. Here, the Federal Circuit treated it as exactly that.

    Synthesis Examples Were Not Enough

    Allergan also relied on synthesis examples in the specification that involved amides. But the court found this unavailing. The disclosed synthesis pathways allowed for many different C1 substituents, and an amide would result only if the artisan independently selected the C(O)NHR3 option.

    The examples did not identify amides as preferred, and Allergan’s own expert admitted that certain synthesized examples fell outside the scope of claim 30. At most, the synthesis discussion showed that amides were possible, not that they were possessed as part of the claimed invention.

    Possibility, the court reminded, is not possession.

    The Z Position and Phenyl Groups

    The analysis at the Z position followed a similar pattern. Claim 30 requires a phenyl group at the omega end. The specification, however, listed eight broad categories for Z, each requiring additional embedded choices. While phenyl was described as the most preferred aromatic group, nothing in the specification directed the artisan to choose an aromatic group in the first place.

    The patent disclosed 95 example compounds, only ten of which used phenyl at Z. Other substituents appeared more frequently. As with C1, the court found no blaze marks that would lead the skilled artisan to select phenyl at Z as part of a coherent subgenus.

    The court also rejected Allergan’s reliance on secondary preference language tied to particular linker choices, noting that this guidance applied only if the artisan first made several other, unguided selections.

    Reversal Despite the Jury Verdict

    Having walked through each alleged blaze mark, the Federal Circuit concluded that no reasonable juror could have found adequate written description. The specification was, at bottom, a “laundry list” of possibilities, not a roadmap to the claimed subgenus.

    Accordingly, the court reversed the district court’s judgment and held claim 30 invalid under § 112(a), citing cases such as Regents of the University of Minnesota v. Gilead Sciences, Idenix Pharmaceuticals v. Gilead Sciences, and BASF Plant Science v. CSIRO.

    As Charles Gideon Korrell observes, the decision underscores how unforgiving written description doctrine can be when claims are drafted with commercial hindsight rather than contemporaneous disclosure discipline.

    Takeaways

    Several practical lessons emerge:

    1. Subgenus claims demand precision. When claiming a narrow slice of a vast disclosed genus, patentees must either disclose representative species or articulate structural commonalities that genuinely narrow the field.
    2. Branching disclosures are dangerous. Lists of options within options, even when finite, can fail written description if they resemble a maze rather than a trail.
    3. Preference language matters. Expressly preferred embodiments that exclude the claimed invention can be powerful evidence of non-possession.
    4. Jury wins are not immune. Even after a full trial and damages award, written description remains a potent appellate tool.

    For litigants and drafters alike, Duke University v. Sandoz is a reminder that § 112(a) is not a technicality. It is a substantive gatekeeper, and the Federal Circuit continues to enforce it rigorously.

    Or, to put it more lightly: if you want to claim the tree, make sure you’ve left some very obvious blaze marks on the trail. Otherwise, the forest will swallow your claim whole.

    By Charles Gideon Korrell

  • Smartrend Mfg Grp v. Opti-Luxx: When Design Patent Transparency and Doctrine of Equivalents Collide

    Smartrend Mfg Grp v. Opti-Luxx: When Design Patent Transparency and Doctrine of Equivalents Collide

    The Federal Circuit’s decision in Smartrend Manufacturing Group (SMG), Inc. v. Opti-Luxx Inc., Nos. 2024-1616, 2024-1650 (Fed. Cir. Nov. 13, 2025), offers a layered and instructive treatment of two recurring fault lines in patent litigation: claim construction in design patents and the limits of the doctrine of equivalents in utility patents. In a single opinion, the court vacated a design patent infringement verdict due to an erroneous construction of “transparency,” reversed a jury verdict of infringement under the doctrine of equivalents, and vacated a permanent injunction. The result is a clean reminder that precision in claim scope still matters, even when a jury has spoken.

    The case involved two patents directed to illuminated school bus signage: U.S. Design Patent No. D932,930 and U.S. Patent No. 11,348,491. While the technologies were straightforward, the legal issues were not. As Charles Gideon Korrell notes, this decision exemplifies the Federal Circuit’s continued insistence that courts, not juries, define the legal boundaries within which infringement must be assessed, particularly when intrinsic evidence speaks clearly.

    Background and Procedural Posture

    Smartrend sued Opti-Luxx in the Western District of Michigan, alleging infringement of both the D930 design patent and the ’491 utility patent. After trial, a jury found Opti-Luxx infringed both patents. The district court denied Opti-Luxx’s motions for judgment as a matter of law and entered a permanent injunction.

    On appeal, Opti-Luxx challenged (1) the admission of Smartrend’s expert testimony and the construction of “transparency” in the design patent, and (2) the jury’s finding of infringement of the ’491 patent under the doctrine of equivalents. Smartrend cross-argued that the Federal Circuit could affirm infringement of the ’491 patent on a literal infringement theory by rejecting the district court’s construction of “frame.”

    The Federal Circuit did none of those things. Instead, it dismantled the verdict piece by piece.

    The D930 Design Patent: Transparency Is Not Translucency

    The D930 patent claims the ornamental design for an LED light panel “as shown and described.” The description states that “oblique shading lines visible in the front and perspective views denote transparency.” That single sentence became outcome-determinative.

    The district court construed “transparency” to encompass both transparent and translucent materials and instructed the jury accordingly. The Federal Circuit held this construction was legally erroneous.

    Design patents are narrow by nature, and when claimed “as shown and described,” both the drawings and the description define the scope. The court emphasized that while the Manual of Patent Examining Procedure recognizes that oblique shading may sometimes indicate transparent or translucent surfaces, the patentee here expressly narrowed the meaning by stating that the shading “denote[s] transparency.” That language mattered.

    Transparency, the court held, does not mean translucency. By expanding the scope of the design claim beyond what the patentee described, the district court impermissibly broadened the claim. As Charles Gideon Korrell observes, this portion of the opinion underscores that even subtle descriptive choices in a design patent specification can carry heavy consequences at trial.

    Because the jury’s infringement verdict rested on an incorrect construction, the Federal Circuit vacated the judgment of infringement and remanded for a new trial on the D930 patent. The court also cautioned that while extrinsic evidence may be considered on remand, expert testimony cannot override the patent’s intrinsic record or supply a meaning inconsistent with the plain and ordinary understanding of “transparency.”

    Expert Testimony and Forfeiture

    Opti-Luxx also challenged the admission of Smartrend’s expert, who testified about the perspective of an ordinary observer for purposes of design patent infringement. The Federal Circuit rejected that challenge on forfeiture grounds.

    Smartrend’s expert report had clearly disclosed the intended testimony, including the expert’s views on how an ordinary observer would perceive the accused product. Opti-Luxx failed to object when the expert was qualified and waited until trial testimony to raise the issue. That was too late.

    Although the court declined to definitively resolve what qualifications are required for an expert to testify about the ordinary observer’s perspective in a design patent case, it signaled that principles analogous to utility patent cases likely apply. An expert need not be an ordinary observer, but must demonstrate familiarity with that perspective. Still, forfeiture resolved the issue cleanly.

    The ’491 Patent: A Frame Means a Frame

    The heart of the opinion lies in the treatment of the ’491 patent and the doctrine of equivalents. Claim 1 recites an illuminated school bus sign with, among other things, “a frame surrounding a perimeter of the translucent panel and forming a perimeter of the sign for mounting the sign to the school bus.”

    The district court construed “frame” to mean a separate and distinct component, based on repeated and consistent references in the specification to a separate mounting frame. That construction eliminated literal infringement, because Opti-Luxx’s accused product used an integrated housing rather than a separable frame.

    The Federal Circuit affirmed that construction. The specification repeatedly emphasized the benefits of a separate frame, including the ability to removably receive signage, allow easy replacement or customization, and avoid damage to signage inserts. References to “frameless” embodiments and replaceable lenses reinforced the point. Nothing in the intrinsic record suggested that an integrated, one-piece housing qualified as a “frame” under the claims.

    Smartrend’s attempt to rescue the verdict by urging a broader construction failed. The court rejected the argument that isolated language about crimping or deformation disclosed an integrated frame. Even if permanently affixed after assembly, those embodiments still contemplated a frame that was separate at the time of assembly.

    Doctrine of Equivalents: Function Means All of the Function

    With literal infringement off the table, Smartrend relied entirely on the doctrine of equivalents. That theory also collapsed.

    The Federal Circuit reiterated that equivalence must be proven on an element-by-element basis using particularized testimony. Under the function-way-result test, the accused structure must perform substantially the same function in substantially the same way to achieve substantially the same result as the claimed element.

    Here, the intrinsic evidence defined the function of the claimed frame. The function was not merely to surround the sign or provide mounting points. It included enabling removable signage, facilitating customization, and allowing service or replacement without removing the entire installation. Those functions were central to the invention’s stated objectives.

    Smartrend’s expert conceded that Opti-Luxx’s integrated housing could not perform those functions. It could not removably receive signage or allow easy customization. That concession was fatal.

    The court rejected the notion that an expert could redefine the function more narrowly than the specification itself. Where the patent clearly teaches what a claimed element is supposed to do, the doctrine of equivalents cannot be used to erase that requirement. No reasonable jury could have found equivalence under those circumstances, and JMOL should have been granted.

    Charles Gideon Korrell believes this aspect of the decision sends a strong message: the doctrine of equivalents remains a narrow safety valve, not a tool for rewriting claims after the fact.

    Injunction Vacated

    Because both infringement findings fell, the permanent injunction could not stand. The Federal Circuit vacated it in full.

    Takeaways

    This decision offers several practical lessons. First, in design patents, descriptive language matters. Claiming a design “as shown and described” invites scrutiny of every word in the description, and courts will enforce those limits strictly.

    Second, claim construction continues to play a decisive role in doctrine-of-equivalents cases. Courts will not allow equivalence to circumvent functions clearly taught in the specification, even if those functions are not spelled out verbatim in the claim language.

    Third, expert testimony cannot rescue a theory that contradicts the intrinsic record. When the patent speaks clearly, that is the end of the matter.

    Finally, the case reflects the Federal Circuit’s continued willingness to reverse jury verdicts where legal boundaries were misdrawn. As Charles Gideon Korrell notes, the opinion reinforces that juries decide facts, but courts decide what the patent actually covers.

    In short, Smartrend v. Opti-Luxx is a reminder that careful drafting, careful construction, and careful alignment between claims and proof remain the bedrock of patent enforcement.

    By Charles Gideon Korrell

  • Canatex Completion Sol’ns v. Wellmatics: When Judicial Claim Correction Saves Patent Claims from Indefiniteness

    Canatex Completion Sol’ns v. Wellmatics: When Judicial Claim Correction Saves Patent Claims from Indefiniteness

    The Federal Circuit’s November 12, 2025 decision in Canatex Completion Solutions, Inc. v. Wellmatics, LLC, No. 2024-1466, provides a clear and disciplined application of the court’s demanding doctrine of judicial claim correction. Reversing a district court’s finding of indefiniteness, the panel held that an obvious drafting error in a patent claim could and should be corrected through claim construction, notwithstanding the Patent Office’s refusal to issue a certificate of correction. The decision reinforces the narrow but vital role courts may play in preserving claim validity when intrinsic evidence leaves no reasonable doubt about the patentee’s intended meaning.

    The Patent and the Alleged Error

    Canatex owns U.S. Patent No. 10,794,122, which claims a releasable connection device used in oil and gas well operations. The device consists of two parts that lock together during normal operations but may be separated if the downhole portion becomes stuck. The claims consistently describe a “first part” positioned further downhole and a “second part” closer to the surface.

    Independent claims 1, 7, and 13 included language describing a locking piston that permits a “releasable engagement profile” to expand radially and “release the connection profile of the second part.” As written, that phrase lacked an antecedent basis and, more importantly, conflicted with the mechanical logic of the device described throughout the patent. Only the first part is described as having a “connection profile,” while the second part includes the engagement components that grip and release that profile.

    The district court concluded that this defect rendered the claims indefinite. In its view, the repeated use of the disputed phrase across the claims and specification suggested intentional drafting rather than a clerical error, and the court declined to correct the language through construction.

    The Federal Circuit’s Framework for Judicial Correction

    On appeal, the Federal Circuit applied the longstanding but exacting standard for judicial claim correction. That standard traces back to the Supreme Court’s decision in I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429 (1926), which held that courts may correct obvious claim errors when doing so merely gives effect to the meaning intended by the applicant and understood by the examiner.

    Modern Federal Circuit cases have distilled that principle into a demanding test. Judicial correction is appropriate only where:
    (1) the error is evident from the face of the patent, as viewed by a skilled artisan;
    (2) the correction is not subject to reasonable debate based on the claims, specification, and prosecution history; and
    (3) the correction is limited to an obvious minor clerical or typographical error.

    The court emphasized that this doctrine is narrowly circumscribed to protect the public notice function of patent claims. Judicial correction determines what the claim has always meant, unlike PTO correction under 35 U.S.C. § 255, which operates prospectively and may alter claim scope.

    Error Evident on the Face of the Patent

    Applying the first prong, the panel found the error obvious. The claim language required release of a “connection profile,” yet nowhere introduced any such profile for the second part. Moreover, the notion that the second part’s engagement mechanism would release a component of the second part itself made no mechanical sense.

    The specification reinforced the conclusion. Figures consistently showed the connection profile on the first part, and one passage explicitly—but erroneously—referred to “connection profile 16 of second part 14,” even though the same paragraph and surrounding text identified that profile as belonging to the first part. To a skilled reader, this internal contradiction confirmed the presence of a drafting mistake rather than a substantive ambiguity.

    Only One Reasonable Correction

    The court also concluded that there was only one reasonable correction: replacing “second” with “first.” That change aligned the claims with the device’s structure, the specification’s descriptions, and the figures. Defendants’ proposed alternatives—such as inferring an undisclosed connection profile on the second part or altering other claim language to preserve the word “second”—were rejected as illogical or scope-altering.

    The court was particularly unpersuaded by arguments that the error was intentional because it appeared multiple times. Repetition, the panel explained, does not transform an obvious mistake into a deliberate choice, especially where the specification elsewhere makes the intended meaning unmistakable.

    PTO Denial Does Not Preclude Judicial Correction

    While the appeal was pending, Canatex sought a certificate of correction from the PTO. The Office denied the request, stating that the proposed correction would change claim scope. The Federal Circuit acknowledged the denial but found it irrelevant to the judicial correction analysis. The standards governing PTO correction and judicial construction are different, and the PTO’s refusal did not undermine the court’s conclusion that the claim language, properly understood, always meant “first part.”

    This aspect of the decision underscores an important practical point that Charles Gideon Korrell often emphasizes: the availability or denial of PTO correction does not foreclose judicial correction when intrinsic evidence compels a single interpretation. Courts remain the final arbiters of claim meaning in litigation.

    Distinguishing Chef America

    The panel carefully distinguished Chef America, Inc. v. Lamb-Weston, Inc., where the court refused to correct claims that required heating dough “to” a temperature that would burn it. In Chef America, the prosecution history suggested that the language might have been intentional, and multiple plausible interpretations existed. By contrast, the Canatex patent contained no prosecution history suggesting intent to distinguish between first and second parts in the manner defendants proposed.

    As Charles Gideon Korrell notes, Canatex narrows the reach of Chef America by reaffirming that hyperliteral claim construction gives way when intrinsic evidence leaves no room for reasonable debate about the patentee’s intent.

    Practical Implications

    The decision provides reassurance that patents will not be invalidated for indefiniteness where the error is mechanical rather than conceptual and where the intrinsic record speaks with one voice. At the same time, the court’s careful analysis preserves the high bar for judicial correction, ensuring that courts do not rewrite claims under the guise of interpretation.

    For litigants, Canatex highlights the importance of grounding correction arguments firmly in the claims, specification, and figures. For drafters, it is a reminder that even small drafting slips can invite expensive litigation, though not every mistake is fatal.

    Charles Gideon Korrell believes the case strikes an appropriate balance between protecting the public notice function of patents and avoiding forfeiture of valuable rights due to obvious clerical errors. Courts may correct, but only when correction is unavoidable.

    By Charles Gideon Korrell

  • In re Motorola Solutions, Inc.: Mandamus, Fintiv, and the Hard Limits on Challenging IPR Deinstitution

    In re Motorola Solutions, Inc.: Mandamus, Fintiv, and the Hard Limits on Challenging IPR Deinstitution

    On November 6, 2025, the U.S. Court of Appeals for the Federal Circuit denied Motorola Solutions, Inc.’s petition for a writ of mandamus seeking to overturn the USPTO’s decision to deinstitute eight inter partes reviews involving Stellar, LLC’s patents. The order in In re Motorola Solutions, Inc., No. 25-134 (Fed. Cir. Nov. 6, 2025), reinforces two familiar but increasingly consequential themes in post-Arthrex administrative patent law: first, that institution decisions remain firmly committed to the Director’s discretion and largely insulated from judicial review; and second, that attempts to recast disagreements over discretionary denials as constitutional or APA violations face steep, and often fatal, obstacles.

    At bottom, the court held that Motorola had no “clear and indisputable” right to relief, that mandamus could not be used as an end-run around 35 U.S.C. § 314(d), and that neither due process nor the Administrative Procedure Act provided a viable hook for review. The decision underscores how fragile reliance interests can be when they rest on interim agency guidance, and how difficult it remains to obtain appellate review of institution-stage maneuvering at the USPTO.

    Background: From Institution to Deinstitution

    The dispute arose out of parallel proceedings. Stellar sued Motorola in district court in August 2023, asserting infringement of eight patents. While that litigation was ongoing, Motorola filed two waves of IPR petitions in mid- and late-2024. In each, Motorola submitted a Sotera-style stipulation agreeing not to pursue in district court any invalidity grounds that were raised, or reasonably could have been raised, in the IPRs.

    The PTAB initially instituted review on both sets of petitions. Stellar then sought Director Review. While those requests were pending, the policy backdrop shifted. In June 2022, then-Director Vidal had issued interim guidance instructing the Board not to deny institution under Fintiv where a petitioner submitted a Sotera stipulation. That guidance expressly stated it would remain in place “until further notice.”

    Following the change in presidential administrations, the Acting Director rescinded the Vidal Memorandum in February 2025. Chief Administrative Patent Judge Boalick subsequently issued instructions explaining that the rescission applied to any case where no final institution decision had issued or where rehearing or Director Review remained pending. Sotera stipulations would remain “highly relevant,” but no longer dispositive.

    Applying that framework, the Acting Director concluded that the Board had over-weighted Motorola’s stipulations and under-weighted the investment in the parallel district court litigation. She deinstituted the first set of IPRs and, after granting Director Review, deinstituted the second set as well. Motorola’s motions for reconsideration were denied. Motorola then turned to the Federal Circuit, seeking mandamus relief.

    The Mandamus Standard and the Barrier of § 314(d)

    The Federal Circuit began, as it often does in these cases, by emphasizing that mandamus is a “drastic” remedy reserved for “extraordinary situations.” To obtain relief, a petitioner must show a clear and indisputable right to relief, lack of adequate alternative means, and that issuance of the writ is appropriate under the circumstances.

    Those requirements collide head-on with § 314(d), which makes institution decisions “final and nonappealable.” As the court reiterated, Congress committed institution determinations to the Director’s discretion, and mandamus is “ordinarily unavailable” to review such decisions, including discretionary denials under Fintiv and denials issued on reconsideration. While the court has acknowledged narrow exceptions for colorable constitutional claims or certain statutory challenges, it concluded that Motorola’s petition fit neither category.

    Due Process: No Property Interest in Interim Guidance

    Motorola’s primary constitutional argument was that the Vidal Memorandum created a protected property interest. According to Motorola, the guidance imposed substantive limits on agency discretion and entitled petitioners who filed Sotera stipulations to have their IPR petitions considered without risk of discretionary denial based on parallel litigation.

    The court rejected that argument decisively. Drawing on Supreme Court and Federal Circuit precedent, it explained that due process protections attach only where there is a legitimate claim of entitlement, not a unilateral expectation. Where a statute leaves a benefit to agency discretion, no protected property interest arises. Institution of IPR is quintessentially discretionary, a point reinforced by United States v. Arthrex, Inc.

    The Vidal Memorandum, the court explained, did not mandate any particular outcome. At most, it instructed the Board not to rely on certain criteria when exercising its discretion, and even that instruction was expressly temporary. That kind of interim procedural guidance did not transform a discretionary benefit into a nondiscretionary entitlement.

    The court also rejected Motorola’s attempt to frame its interest as a right to a particular process rather than a particular outcome. Citing Olim v. Wakinekona, the court reiterated that “process is not an end in itself,” and that an expectation of receiving a certain procedure does not, without more, constitute a protected property interest. Motorola’s reliance on the Vidal Memorandum, even if reasonable, was insufficient to establish a due process violation.

    Finally, the court found no unfair surprise. Motorola was on notice of Fintiv and the Board’s discretion when it filed its petitions, and the interim guidance expressly warned it could be modified at any time. Even reliance costs incurred in filing the petitions did not rise to the level of a constitutional deprivation.

    The APA Arguments: An End-Run Denied

    Motorola also advanced two APA theories. First, it argued that rescinding the Vidal Memorandum amounted to a change in law or policy requiring notice-and-comment rulemaking. Second, it contended that the Acting Director acted arbitrarily and capriciously by failing to adequately explain the rescission or account for reliance interests.

    The Federal Circuit declined to entertain either argument in the mandamus posture. As to notice and comment, the court noted that an APA challenge in federal district court remained available to Motorola. Mandamus, by contrast, could not be used to vacate specific institution decisions without colliding with § 314(d). Allowing such relief would amount to precisely the sort of end-run around the statute that prior precedent forbids.

    The court relied heavily on Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V., which rejected a similar attempt to challenge Fintiv through an ultra vires theory. As in Mylan, Motorola’s arguments ultimately targeted the Director’s discretionary weighing of factors at institution, placing them outside the narrow category of reviewable issues.

    The court distinguished Apple Inc. v. Vidal, where it held that § 314(d) did not bar a standalone APA challenge to agency rulemaking practices. Here, Motorola sought relief tethered directly to the institution decisions themselves, placing the case beyond Apple’s reach.

    Practical Takeaways

    The denial of mandamus in In re Motorola Solutions reinforces several practical lessons for parties navigating parallel PTAB and district court proceedings.

    First, Sotera stipulations remain relevant, but they are no longer safe harbors. Even when interim guidance suggests a predictable outcome, that guidance can be rescinded and reweighted, and reliance on it carries real risk.

    Second, constitutional framing does not magically unlock appellate review. Absent a genuine deprivation of a protected property interest, due process arguments are unlikely to succeed in this context.

    Third, APA challenges to PTO policy shifts may need to proceed in district court and on a forward-looking basis. Attempting to bundle such challenges into mandamus petitions aimed at reversing specific institution decisions is unlikely to succeed.

    As Charles Gideon Korrell notes, the decision underscores how institution strategy has become as much about administrative timing and policy volatility as about the merits of patentability. Charles Gideon Korrell believes that sophisticated petitioners must now assume that discretionary frameworks like Fintiv can change midstream and plan accordingly, including by carefully evaluating whether the PTAB forum is essential or merely advantageous. Charles Gideon Korrell also observes that the Federal Circuit continues to send a clear message: institution decisions are the Director’s domain, and the courthouse door remains largely closed at that stage.

    The Federal Circuit’s order leaves Motorola where § 314(d) has left many petitioners before it—without appellate recourse, but with a clearer understanding of the boundaries. In the chess match between district courts and the PTAB, the Director still controls the opening move, and mandamus remains a long shot.

    By Charles Gideon Korrell

  • V.O.S. Selections (Learning Resources) v. Trump at the Supreme Court: Verbs, Taxes, and an Exit Ramp

    V.O.S. Selections (Learning Resources) v. Trump at the Supreme Court: Verbs, Taxes, and an Exit Ramp

    The Supreme Court argument in the tariff cases presented the Justices with a familiar but high-stakes question: how far an old statute can be stretched to support a novel assertion of executive power. The Federal Circuit had already answered the core statutory question en banc, holding that the International Emergency Economic Powers Act (IEEPA) does not authorize the President to impose sweeping tariffs (article here). At the Court, the government pressed hard to reverse that conclusion. The challengers, for their part, framed the case as a straightforward dispute about statutory text and constitutional structure, with tariffs sitting firmly on Congress’s side of the ledger.

    What emerged at oral argument was not so much a debate about trade policy as a sustained interrogation of statutory verbs, historical practice, and institutional limits. The Justices appeared less interested in grand pronouncements about presidential power than in whether IEEPA’s language can plausibly be read to do the work the government demands of it.

    The Government’s Theory: “Regulate” Means “Tax”

    The government’s core argument at the Court was the same one that failed below: IEEPA’s authorization to “regulate … importation” necessarily includes the power to impose tariffs. According to the Solicitor General, tariffs are simply one regulatory tool among many, and Congress’s decision not to use the words “tariff” or “duty” should not be dispositive. On this view, the statute’s breadth is its feature, not a bug. Congress wanted flexibility in emergencies, and tariffs are a well-known lever in international economic relations.

    Several Justices immediately pressed on the implications of that reading. If “regulate” includes taxation, what limits remain? Could the President impose a 50 percent tariff tomorrow? One hundred percent? For decades? The government’s answers emphasized political checks and the President’s judgment, not textual limits. That line of response appeared to heighten, rather than alleviate, concern that the asserted power lacked any meaningful boundary.

    The government also leaned heavily on historical examples, particularly the Nixon-era surcharge upheld in Yoshida. But as at the Federal Circuit, the Justices seemed focused on the differences rather than the similarities. The Nixon surcharge was temporary, rate-limited, and enacted against a backdrop of explicit congressional engagement with balance-of-payments issues. The tariffs challenged here are none of those things.

    The Challengers’ Rebuttal: Verbs Matter

    Counsel for the private respondents returned repeatedly to a simple proposition: words matter, and Congress knows how to authorize taxes when it wants to. Across the U.S. Code, tariff statutes speak explicitly in terms of “duties” and “rates,” often with numerical ceilings and sunset provisions. IEEPA does not. It authorizes blocking, prohibiting, and regulating transactions involving foreign property interests, not raising revenue from Americans.

    That framing resonated with several members of the Court. Questions focused on whether there is any other example in federal law where a general authorization to “regulate” has been understood to permit taxation. The challengers’ answer was essentially no, and the government struggled to identify analogues beyond Yoshida, a case that itself warned against “unlimited” presidential tariff power.

    The respondents also emphasized that tariffs are not incidental regulatory side effects. They are taxes imposed on domestic importers, with predictable and substantial revenue consequences. Treating them as mere “regulation” would collapse a long-standing constitutional distinction between regulating commerce and exercising the taxing power.

    Major Questions Without Saying “Major Questions”

    Although the phrase “major questions doctrine” surfaced only intermittently, its logic permeated the argument. Several Justices asked whether Congress would really hide a power of this magnitude in a statute that never mentions tariffs, enacted in 1977 to rein in perceived abuses of emergency authority. The government’s position required the Court to accept that Congress silently transferred one of its most fundamental powers to the executive, with no express limits and no historical practice to support it.

    The challengers, by contrast, offered the Court an off-ramp. The case could be resolved on ordinary tools of statutory interpretation, without deciding whether such a delegation would be constitutional if it existed. If IEEPA does not authorize tariffs, the Court need not confront nondelegation head-on.

    That approach appeared attractive. As Charles Gideon Korrell notes, the Court often prefers decisions that restore statutory boundaries rather than redraw constitutional ones. The questions suggested a similar instinct here.

    Remedies and Reviewability

    Another thread running through the argument concerned reviewability. The government contended that the President’s determination of an “unusual and extraordinary threat” is effectively unreviewable, placing the tariffs beyond meaningful judicial scrutiny. That claim drew skepticism. Several Justices asked how courts could fulfill their role if both the existence of an emergency and the scope of the resulting power were insulated from review.

    The respondents argued that accepting the government’s position would allow the President to impose taxes simply by declaring a long-standing condition, such as trade deficits, to be an emergency. That framing sharpened the separation-of-powers stakes without requiring the Court to issue a sweeping doctrinal statement.

    Reading the Tea Leaves

    No Justice tipped a hand explicitly, but the tenor of the questioning suggested discomfort with the government’s theory. The Court appeared divided less along ideological lines than along methodological ones, with multiple Justices converging on the view that IEEPA’s verbs cannot plausibly be stretched to cover taxation.

    At the same time, the Court seemed attentive to institutional posture. As in the Federal Circuit’s en banc decision, there was interest in resolving the case narrowly, by focusing on statutory text and history rather than on abstract claims about executive power in foreign affairs.

    Charles Gideon Korrell believes that this dynamic makes the challengers’ position particularly strong. By offering the Court a path that respects congressional primacy over tariffs without destabilizing emergency-powers jurisprudence more broadly, the respondents aligned their argument with the Court’s recent pattern of decision-making. Charles Gideon Korrell also notes that the repeated focus on verbs—what “regulate” can and cannot mean—may prove decisive, especially for Justices wary of reading transformative powers into general language.

    What Comes Next

    If the Court affirms, the immediate effect will mirror the Federal Circuit’s holding: the President cannot rely on IEEPA to impose tariffs of this scope. The broader significance, however, would lie in reaffirming that trade taxation remains a legislative function unless Congress clearly says otherwise.

    If the Court reverses, it would mark a dramatic expansion of executive authority, effectively allowing the President to tax imports whenever an emergency is declared. The questions at argument suggest that at least some Justices are unwilling to take that step.

    However the Court rules, the argument underscored a recurring theme in recent Supreme Court cases: statutes enacted decades ago cannot be treated as all-purpose reservoirs of power for modern policy goals. As Charles Gideon Korrell observes, the tariff cases may ultimately be remembered less for their impact on trade than for what they say about the limits of executive creativity in statutory interpretation.

    By Charles Gideon Korrell

  • Merck Serono v. Hopewell Pharma Ventures: When “By Another” Really Means Everyone

    Merck Serono v. Hopewell Pharma Ventures: When “By Another” Really Means Everyone

    The Federal Circuit’s decision in Merck Serono S.A. v. Hopewell Pharma Ventures, Inc., Nos. 2025-1210, -1211 (Fed. Cir. Oct. 30, 2025), delivers a clarifying—and unforgiving—interpretation of what it means for prior art to be “by another” under pre-AIA 35 U.S.C. § 102. The opinion reinforces a long-standing but often underappreciated principle: unless the inventive entity is completely identical, a reference remains prior art, even when collaboration, confidentiality, and overlapping research histories muddy the factual waters.

    The case arose from inter partes reviews challenging Merck’s patents covering oral cladribine dosing regimens for treating multiple sclerosis. The patents claimed priority to 2004 filings and named four Merck inventors. Hopewell relied primarily on a published international patent application (“Bodor”) filed by Ivax researchers during the period when Ivax and Merck were collaborating on oral cladribine development. Merck argued that Bodor should not qualify as prior art because the disclosure reflected Merck’s own inventive work shared during the collaboration. The Board—and ultimately the Federal Circuit—was not persuaded.

    The Core Dispute: Collaboration Versus Inventive Identity

    At the heart of the appeal was whether Bodor qualified as prior art “by another” under pre-AIA §§ 102(a) and (e). Merck’s theory was straightforward: the relevant six-line dosing disclosure in Bodor originated from Merck’s confidential research and therefore could not constitute prior art against Merck’s later-filed patents. In other words, Merck contended that the disclosure was not truly “by another,” even though the named inventors differed.

    The Federal Circuit rejected that framing and reaffirmed a doctrinal line stretching back nearly sixty years. As the court explained, the statutory inquiry does not turn on collaboration, information flow, or even confidentiality obligations. It turns on inventive identity. Where the inventive entities are not completely identical, the reference is “by another,” unless the patentee proves that the specific portions relied upon reflect the collective work of the same inventive entity named on the challenged patent.

    This point bears emphasis. The court did not adopt a bright-line rule that authorship controls. Instead, it required proof that the disclosure itself embodies the joint invention of the same group of inventors. Any incongruity—whether inventors are added or subtracted—renders the reference prior art unless the patentee can bridge that gap with evidence.

    Reaffirming Land and Its Progeny

    Much of the opinion is devoted to situating the dispute within the Federal Circuit’s—and the CCPA’s—prior precedent. The court leaned heavily on In re Land, 368 F.2d 866 (CCPA 1966), which held that individual inventors and joint inventors are distinct inventive entities. A disclosure by one inventor is not automatically the work of a joint inventive entity, even if the subject matter overlaps.

    Merck attempted to limit Land to its unusual facts and instead relied on later cases such as Applied Materials v. Gemini Research and Allergan v. Apotex. The court was unpersuaded, explaining that those cases do not undermine Land’s core principle. Rather, they confirm that the key inquiry is whether the disclosure evidences knowledge by the same inventive entity—not whether there is some overlap in inventorship or a shared research lineage.

    As the opinion makes clear, later cases including Riverwood, EmeraChem, Google v. IPA Technologies, and Duncan Parking consistently require complete identity of inventive entities to exclude a reference from the prior art. Where a reference includes contributions from even one inventor not named on the challenged patent, it remains “by another.”

    Evidentiary Burdens and the Inventorship Trap

    Merck also argued that the Board improperly shifted the burden of persuasion by requiring proof that one of Merck’s inventors, Dr. De Luca, made a specific inventive contribution to Bodor’s six-line disclosure. The Federal Circuit rejected that argument, emphasizing the distinction between the burden of persuasion (which remains with the petitioner) and the burden of production (which properly shifts to the patentee once the petitioner establishes a prima facie case).

    Here, Hopewell showed that Bodor was filed and published before Merck’s priority date and named different inventors. That showing shifted the burden to Merck to produce evidence that the disclosure reflected the work of the same inventive entity. The court agreed with the Board that Merck failed to meet that burden. Testimony from Merck witnesses could not identify any concrete inventive contribution by Dr. De Luca to the Bodor regimen, and documentary evidence such as meeting minutes and briefing documents fell short of establishing joint inventorship of the disclosure itself.

    The court also rejected Merck’s reliance on the “rule of reason” for corroboration, explaining that corroboration alone is not enough. The alleged contribution must be significant when measured against the full anticipating disclosure. Vague involvement or project-level participation does not suffice.

    Obviousness: Retreatment, Result-Effective Variables, and Expectation of Success

    After resolving the prior art issue, the court turned to obviousness and largely deferred to the Board’s fact-finding. Substantial evidence supported the Board’s conclusion that Bodor, in combination with Stelmasiak, rendered the claimed regimens obvious.

    The Board credited expert testimony that multiple sclerosis is a chronic disease requiring retreatment, that Bodor’s defined cladribine-free periods logically imply retreatment, and that Stelmasiak expressly taught cyclic cladribine administration. The court rejected Merck’s attempt to characterize retreatment as speculative or conditional, noting that the claims did not require retreatment in every case—only that retreatment occur.

    The Federal Circuit also upheld the Board’s determination that dosing optimization was a result-effective variable. The prior art taught monitoring lymphocyte counts to balance efficacy and safety, and the claims imposed no requirement that dosing be determined by a particular calculation method. As a result, the Board reasonably concluded that a skilled artisan would have had a motivation to combine the references with a reasonable expectation of success.

    MPEP Reliance and Procedural Fairness

    Merck further argued that it was unfairly surprised by the Board’s application of the complete-identity rule, pointing to language in the MPEP suggesting that a disclosure by “at least one joint inventor” cannot be used as prior art. The court dismissed that argument, noting that the MPEP itself incorporates Land and expressly states that inventive entities differ when not all inventors are the same.

    More importantly, the court reiterated that the MPEP does not override binding precedent. To the extent the MPEP could be read to suggest otherwise, it does not control substantive law. There was no APA violation, and no remand was warranted.

    Why This Decision Matters

    This decision is a reminder that collaborative innovation carries structural patent risks—particularly under pre-AIA law. Joint research, shared data, and overlapping development efforts do not collapse inventive entities into one. Unless inventorship aligns precisely, earlier disclosures can and will be used as prior art, even where they arise from close collaboration and shared objectives.

    Charles Gideon Korrell has long observed that companies often underestimate the inventorship consequences of collaboration agreements, especially when R&D partners file independently. This case underscores the importance of proactive inventorship analysis, coordinated filing strategies, and—where possible—joint research agreements that anticipate how disclosures will be treated in later validity challenges.

    Charles Gideon Korrell also notes that the Federal Circuit’s reaffirmation of Land leaves little room for equitable arguments based on fairness or confidentiality. The statute asks who invented the subject matter, not who shared it first or under what expectations. For companies operating in highly collaborative technical environments, that distinction can be outcome-determinative.

    Finally, Charles Gideon Korrell believes the opinion highlights the sharp contrast between pre-AIA and post-AIA regimes. While the AIA introduced exceptions designed to soften the impact of secret prior art in collaborative settings, those provisions were unavailable to Merck here. As older patents continue to be litigated, similar disputes are likely to arise with equally unforgiving results.

    Takeaways

    The Federal Circuit’s decision in Merck Serono v. Hopewell is doctrinally orthodox but practically sobering. A reference is “by another” unless the patentee can prove complete inventive identity for the relied-upon disclosure. Collaboration does not equal co-inventorship. Confidential sharing does not negate prior art status. And once a disclosure qualifies as prior art, well-supported obviousness challenges will be difficult to overcome.

    For companies and counsel alike, the lesson is clear: inventorship alignment matters just as much as novelty and nonobviousness. Ignore it at your peril.

    By Charles Gideon Korrell

  • Aortic Innovations v. Edwards Lifesciences: When “Outer Frame” Becomes “Self-Expanding” by Implication

    Aortic Innovations v. Edwards Lifesciences: When “Outer Frame” Becomes “Self-Expanding” by Implication

    The Federal Circuit’s decision in Aortic Innovations LLC v. Edwards Lifesciences Corp., No. 2024-1145 (Fed. Cir. Oct. 27, 2025), offers a crisp and cautionary reminder of how easily careful prose in a patent specification can harden into claim-limiting lexicography. The case sits at the intersection of claim construction doctrine and drafting practice, and it reinforces a recurring lesson: in patent law, synonyms are rarely your friend.

    At a high level, the appeal arose from a stipulated judgment of non-infringement following claim construction. The parties agreed that if the district court’s construction of the term “outer frame” stood, Edwards’ accused transcatheter aortic valve device could not infringe. The Federal Circuit affirmed that construction, holding that the patentee had acted as its own lexicographer by consistently and interchangeably using “outer frame,” “self-expanding frame,” and “self-expanding outer frame” throughout the specification. That drafting choice ultimately proved fatal to the infringement case.

    As Charles Gideon Korrell has often noted, claim construction disputes are frequently less about clever advocacy and more about archaeology: courts dig through the specification looking for patterns, repetitions, and linguistic habits that reveal what the inventor actually described. Aortic Innovations is a textbook example of that dynamic.

    The Technology and the Asserted Claims

    The asserted patents relate to devices used in transcatheter aortic valve replacement (TAVR) procedures. These devices are delivered to the heart in a radially compressed state and then expanded in situ to replace a diseased aortic valve. As the Federal Circuit explained, the art recognizes two principal expansion mechanisms: balloon-expandable frames and self-expanding frames made from shape-memory materials.

    Aortic Innovations owned four related patents sharing a common specification. The claims at issue were directed to a “transcatheter valve” embodiment, not to the separate “endograft device” embodiments also disclosed in the specification. Claim 1 of the ’735 patent, which served as the focal point for claim construction, recited both an “outer frame” and an “inner frame,” with the inner frame engaging the prosthetic valve and the outer frame providing structural and sealing functions.

    The accused product, Edwards’ SAPIEN 3 Ultra valve, uses a single balloon-expandable frame. Thus, infringement hinged on whether the claimed “outer frame” could encompass a balloon-expandable structure, or whether it was limited to a self-expanding one.

    The District Court’s Construction

    Before the district court, Aortic argued that “outer frame” should receive its plain and ordinary meaning—essentially, a frame positioned radially outside another structure. Edwards countered that the specification consistently used “outer frame” to mean a self-expanding frame.

    The district court sided with Edwards, concluding that the patentee had redefined “outer frame” through consistent and interchangeable usage. The court construed “outer frame” to mean “a self-expanding frame,” while rejecting Edwards’ additional attempt to import a “generally hourglass shape” limitation.

    Critically, the court also construed “inner frame” as a “balloon-expandable frame,” a construction that neither party challenged on appeal. With those constructions in place, the parties stipulated to non-infringement.

    Federal Circuit Analysis: Implicit Lexicography

    On appeal, the Federal Circuit reviewed claim construction de novo and affirmed. The opinion walks methodically through familiar claim construction principles, grounding its analysis in Phillips v. AWH, Thorner v. Sony, and a line of cases addressing implicit lexicography.

    The court reiterated that a patentee may redefine claim terms either explicitly or implicitly, but that the standard is “exacting.” Mere disclosure of embodiments is not enough. Instead, implied redefinition must be so clear that a skilled artisan would understand it as equivalent to an express definition.

    Here, the court found that standard satisfied.

    First, the specification repeatedly referred to the same structures using the terms “outer frame,” “self-expanding frame,” and “self-expanding outer frame,” particularly in the discussion of Figures 9 and 20. That consistent interchangeability mirrored earlier cases such as Edwards Lifesciences LLC v. Cook Inc., where repeated synonymous usage was held to be “akin to a definition equating the two.”

    Second, the summary of the invention described a transcatheter valve as including both a balloon-expandable frame and a self-expanding frame, without qualifying that feature as optional. Where the specification wanted to describe optional features, it explicitly did so. The absence of similar qualifying language for the self-expanding frame weighed heavily in the court’s analysis.

    Third, the court emphasized that claim 1 was directed to a dual-frame transcatheter valve. Given that the inner frame was balloon-expandable, the outer frame necessarily had to be the self-expanding one described throughout the specification.

    As Charles Gideon Korrell would put it, once the court accepted that the patent disclosed a binary system—one balloon-expandable frame and one self-expanding frame—the labels essentially snapped into place. There simply was no conceptual room left for a balloon-expandable “outer frame.”

    Judicial Estoppel: Too Late, Too Thin

    Aortic attempted a fallback argument based on judicial estoppel, asserting that Edwards had taken inconsistent positions before the PTAB and the district court. The Federal Circuit rejected this argument on forfeiture grounds, noting that Aortic had not adequately developed it below.

    The opinion underscores an important practical point: merely hinting at estoppel is not enough. Parties must squarely present and support such arguments in the district court if they hope to preserve them for appeal. The court saw no exceptional circumstances warranting deviation from that rule.

    Jurisdictional Cleanup

    The Federal Circuit also dismissed the appeal as to one of the four asserted patents after noting that the PTO had cancelled the relevant claims during the pendency of the appeal. Citing Fresenius USA, Inc. v. Baxter International, the court concluded that there was no longer a live case or controversy as to that patent.

    Drafting Lessons: When Good Writing Goes Bad

    The most enduring significance of Aortic Innovations lies not in its doctrinal novelty, but in its drafting lesson. The opinion reinforces how stylistic choices that improve readability can quietly narrow claim scope.

    The accompanying commentary highlights this tension particularly well. In ordinary expository writing, authors are trained to avoid repetition and vary word choice. In patent specifications, however, that instinct can backfire. Consistent synonym usage can morph into implicit lexicography, especially when the specification never discloses a counterexample. patently-o

    Charles Gideon Korrell believes this case neatly illustrates why patent drafting is less like literature and more like contract engineering. Each descriptive choice carries legal consequences, and courts will treat repeated equivalence as intentional definition rather than casual phrasing.

    The Federal Circuit did not fault Aortic for failing to include an explicit definition section. Instead, it relied on the overall pattern of disclosure. Once every embodiment of an “outer frame” is also described as self-expanding, the court will infer that self-expansion is an essential characteristic of the claimed invention.

    Practical Takeaways

    Several practical lessons emerge from this decision:

    First, if a feature is meant to be optional, say so clearly—and then show it. Disclosing alternative embodiments where the feature is absent can be just as important as including boilerplate “in some embodiments” language.

    Second, be cautious with synonyms in claim-relevant portions of the specification. If two terms are not intended to be coextensive, do not use them interchangeably, even for stylistic variety.

    Third, remember that summary sections matter. Courts often treat the summary as a high-level definition of “the invention,” and unqualified statements there can shape claim scope decisively.

    Finally, litigators should take note of how quickly claim construction can drive a case to summary resolution. Here, once the construction issue was decided, infringement fell away almost immediately.

    As Charles Gideon Korrell has observed in other contexts, many patent disputes are effectively won or lost long before litigation begins—at the drafting stage, where every word quietly sets the boundaries of future enforcement.

    Conclusion

    Aortic Innovations v. Edwards Lifesciences reinforces a familiar but unforgiving principle: precision beats elegance in patent drafting. The Federal Circuit’s willingness to find implicit lexicography based on consistent interchangeable usage should prompt renewed discipline in how specifications are written, reviewed, and prosecuted.

    For practitioners, the case is less about TAVR technology than about linguistic discipline. And for those drafting patents in crowded, high-stakes technical fields, it is yet another reminder that the line between description and definition is thinner than it looks.

    By Charles Gideon Korrell