Technology Information Law Blog by Charles Gideon Korrell

Tag: CAFC

  • Centripetal Networks v. Palo Alto Networks: When Recusal Fails but Secondary Considerations Revive an IPR

    Centripetal Networks v. Palo Alto Networks: When Recusal Fails but Secondary Considerations Revive an IPR

    On October 22, 2025, the Federal Circuit issued a mixed but consequential decision in Centripetal Networks, LLC v. Palo Alto Networks, Inc., vacating the Patent Trial and Appeal Board’s final written decision and remanding for further proceedings. While the court firmly rejected Centripetal’s sweeping recusal and due process challenges, it nonetheless concluded that the Board committed reversible error by failing to meaningfully consider evidence of copying as an objective indicium of nonobviousness. The decision offers a clear reminder that secondary considerations remain a mandatory part of the obviousness analysis in inter partes review, even where the Board may be skeptical of parallel district court records.

    Background and Procedural Posture

    The case arose from IPR proceedings challenging claims 1, 24, and 25 of U.S. Patent No. 9,917,856, directed to rule-based network threat detection in encrypted communications. Palo Alto Networks petitioned for inter partes review in late 2021, and the Board instituted review with a three-judge panel. Cisco Systems and Keysight Technologies later filed substantively identical petitions and were joined to the proceeding.

    After institution, Centripetal learned that one of the administrative patent judges on the original panel owned between $1,001 and $15,000 in Cisco stock. Although Cisco was not yet a party at institution, Centripetal ultimately moved to recuse the panel and vacate the institution decision. The challenged APJ later withdrew, as did another panel member, and a reconstituted panel denied the motion for vacatur. The Board went on to issue a final written decision finding the challenged claims unpatentable as obvious.

    On appeal, Centripetal raised two broad categories of arguments: first, that the belated recusal tainted the proceedings and violated due process; and second, that the Board’s obviousness analysis was legally deficient.

    Jurisdiction and the Shadow of Section 314(d)

    Before reaching the merits, the Federal Circuit addressed its jurisdiction in light of the Supreme Court’s jurisprudence under 35 U.S.C. § 314(d). The court reaffirmed that while institution decisions themselves are largely unreviewable, challenges grounded in constitutional due process or ethics rules applicable beyond institution fall outside the bar of Section 314(d). The recusal challenge did not turn on the interpretation of IPR institution statutes, but rather on executive-branch ethics regulations and alleged due process violations. As such, the court exercised jurisdiction, consistent with prior cases addressing conflicts of interest in PTAB proceedings.

    Timeliness and the Failure of the Recusal Challenge

    The court first affirmed the Board’s conclusion that Centripetal’s recusal motion was untimely. Drawing on analogous Article III recusal principles, the court emphasized that even absent a formal deadline, parties must raise conflicts promptly once discovered. Here, Centripetal had access to public financial disclosures months before filing its motion and waited until after receiving unfavorable rulings on other issues.

    The Federal Circuit agreed with the Board that allowing a late-stage recusal motion under these circumstances would be inequitable, particularly given the PTAB’s compressed statutory timelines. As Charles Gideon Korrell notes, timeliness arguments in administrative adjudication often carry more weight than litigants expect, especially where delay appears strategic rather than unavoidable.

    Executive Branch Ethics Rules and De Minimis Interests

    On the merits, the Federal Circuit rejected Centripetal’s argument that the APJ’s stock ownership violated executive-branch ethics rules. The court carefully walked through the regulatory framework under 18 U.S.C. § 208 and the Office of Government Ethics’ implementing regulations.

    Critically, 5 C.F.R. § 2640.202 expressly permits participation in matters involving specific parties where an employee’s ownership of publicly traded securities does not exceed $15,000. The court rejected the argument that this provision merely provides a criminal safe harbor, concluding instead that it affirmatively defines when participation is permissible. Because the APJ’s holdings never exceeded the regulatory threshold, no ethics violation occurred.

    The court also dismissed reliance on appearance-of-impropriety regulations addressing personal or business relationships, explaining that those provisions do not apply to an employee’s own financial interests. Charles Gideon Korrell believes this portion of the decision underscores how narrowly courts will construe ethics regulations when Congress and OGE have spoken with specificity.

    Due Process Arguments Rejected

    Centripetal also argued that due process required holding APJs to the same disqualification standards as Article III judges. The Federal Circuit declined to adopt that position, emphasizing that APJs are executive-branch employees subject to a distinct statutory and regulatory regime. While acknowledging the quasi-adjudicatory nature of PTAB proceedings, the court found no constitutional requirement to import the zero-dollar disqualification rule of 28 U.S.C. § 455 into administrative adjudication.

    The court further rejected Centripetal’s argument that recent PTO guidance directing more conservative panel assignments should apply retroactively. The guidance expressly disclaimed retroactive application and was adopted pursuant to the Director’s policy-setting authority. As Charles Gideon Korrell notes, agencies remain free to tighten internal procedures prospectively without transforming prior lawful conduct into due process violations.

    Harmless Error and the Absence of Vacatur

    Even assuming error, the court explained that recusal does not automatically require vacatur. Applying the familiar three-factor test from Liljeberg, the court concluded that any alleged conflict posed minimal risk of injustice to the parties, little risk of injustice in other cases, and no serious threat to public confidence. The challenged APJ recused before final merits adjudication, and the final written decision was issued by a panel including judges who had never sat with him.

    Accordingly, recusal concerns did not justify vacating the Board’s decision.

    The Real Error: Failure to Consider Copying Evidence

    Despite rejecting Centripetal’s procedural challenges, the Federal Circuit ultimately vacated the Board’s final written decision for a different reason. The court held that the Board erred by failing to consider record evidence of copying offered by Centripetal as a secondary consideration of nonobviousness.

    Centripetal had submitted specific evidence from related district court litigation, including testimony that Cisco executives met with Centripetal and reviewed its patented technology, internal Cisco communications discussing Centripetal’s patents, and expert testimony opining that Cisco plausibly copied the claimed invention. While the Board noted that the district court judgment had been vacated, it declined to analyze the evidence, stating that it was not in a position to weigh the full litigation record.

    The Federal Circuit found this approach legally deficient. Secondary considerations cannot be dismissed simply because they arise from parallel litigation or because the Board did not hear live testimony. Where evidence of copying is specifically placed into the IPR record, the Board must evaluate it and assign appropriate weight. Citing Stratoflex and Knoll, the court reiterated that objective indicia are not optional and must be considered in every obviousness determination.

    Charles Gideon Korrell observes that this portion of the decision reinforces a recurring theme in Federal Circuit jurisprudence: the Board may reject secondary considerations, but it cannot ignore them.

    Remand and Practical Implications

    The Federal Circuit vacated the Board’s final written decision and remanded for further proceedings. Notably, the appellees conceded at oral argument that reassignment to a new panel would be appropriate on remand, and the court suggested that the Director consider doing so.

    For practitioners, the decision offers several takeaways. First, recusal challenges must be raised promptly and grounded in the applicable regulatory framework, not generalized notions of fairness. Second, executive-branch ethics rules provide clear safe harbors that courts will enforce as written. Third, and most importantly, objective indicia of nonobviousness remain a powerful check on hindsight-driven obviousness analyses in IPR proceedings.

    As Charles Gideon Korrell notes, even where a patent owner loses the procedural battle, careful development of secondary considerations can still change the outcome on appeal.

    By Charles Gideon Korrell

  • Barrette Outdoor Living, Inc. v. Fortress Iron, LP: Prosecution Disclaimer in a Later Continuation Can Narrow an Entire Patent Family

    Barrette Outdoor Living, Inc. v. Fortress Iron, LP: Prosecution Disclaimer in a Later Continuation Can Narrow an Entire Patent Family

    On October 17, 2025, the Federal Circuit issued a detailed and consequential opinion in Barrette Outdoor Living, Inc. v. Fortress Iron, LP, affirming a judgment of non-infringement while also affirming the district court’s rejection of indefiniteness challenges. The case provides a clear reminder that arguments made during prosecution of a later-filed continuation application can narrow the scope of earlier-issued patents in the same family, even where those earlier patents were already granted and never amended.

    The decision is especially notable for its careful treatment of prosecution disclaimer across time, its distinction between examiner disagreement and applicant acquiescence, and its application of those principles to claim terms that appear, at least facially, to be broader than the disclaimed language. As Charles Gideon Korrell has observed in other contexts, this opinion underscores that prosecution arguments can be as dangerous as claim amendments, particularly in large patent families with overlapping claim language.

    Background and the Asserted Patents

    Barrette owns four related patents directed to fencing and railing assemblies that use sliding, pivoting connectors to attach pickets to rails. The patents share a common specification and trace back to a common parent application. The asserted patents include U.S. Patent Nos. 8,413,332; 8,413,965; 9,551,164; and 9,963,905. The claims generally recite connectors having “bosses,” “projections,” or similar protruding structures that engage holes in the pickets, allowing the pickets to pivot and slide relative to the rails.

    The accused products, Fortress’s Athens Residential fences, use connectors that employ non-integral fasteners. After claim construction, Barrette stipulated that it could not prove infringement under the district court’s construction, while Fortress stipulated that it could not prove indefiniteness. That procedural posture set the stage for a clean appeal on claim construction and indefiniteness.

    Claim Construction and the “Boss” Terms

    The central dispute on appeal concerned the meaning of “boss,” “projection,” and related terms. The district court construed these terms as limited to integral structures, and further concluded that they were fastener-less. Barrette challenged both aspects of that construction.

    The Federal Circuit agreed with Barrette on one point but not the other. First, the court rejected the district court’s conclusion that the specification clearly and unmistakably disclaimed bosses that use fasteners. Relying on Phillips v. AWH Corp., the court reiterated that patents often describe multiple advantages over the prior art and that claims should not automatically be limited to structures that achieve every disclosed advantage. Here, although the specification emphasized fast installation as one benefit of the invention, it also emphasized improved racking ability, which did not inherently require fastener-less connections. The intrinsic record did not support importing a fastener-less limitation into the claims.

    That conclusion, however, did not save Barrette’s infringement case.

    Prosecution Disclaimer and Integral Structures

    The decisive issue was prosecution disclaimer arising from statements made during prosecution of a later continuation application that issued as the ’075 patent. During that prosecution, the examiner rejected claims over the Sherstad reference, which disclosed a pivot pin assembly. In response, Barrette argued that Sherstad failed to disclose a “slip-together connection with the claimed integral boss,” distinguishing Sherstad’s use of a discrete pin member from Barrette’s claimed structure.

    The Federal Circuit held that this argument constituted a clear and unmistakable disclaimer of non-integral bosses. Importantly, the court rejected Barrette’s attempt to characterize the argument as ambiguous or ineffective simply because the examiner ultimately maintained the rejection and Barrette later canceled the claims. The focus of disclaimer analysis, the court emphasized, is what the applicant said, not whether the argument persuaded the examiner or was strictly necessary to secure allowance.

    The court distinguished Ecolab, Inc. v. FMC Corp. and Malvern Panalytical Inc. v. TA Instruments-Waters LLC, where examiner disagreement and applicant acquiescence rendered earlier narrowing arguments ambiguous. Here, the examiner did not disagree with Barrette’s characterization of its own claims. Rather, the examiner disagreed with Barrette’s characterization of the prior art. Nothing in the prosecution history suggested that Barrette’s description of its own invention was mistaken or withdrawn.

    As Charles Gideon Korrell notes, this distinction is critical. Examiner disagreement with claim scope may neutralize a disclaimer, but examiner disagreement with an applicant’s reading of the prior art does not.

    Temporal Reach of Disclaimer Across the Family

    Barrette also argued that statements made during prosecution of the later-filed ’075 patent could not limit the scope of earlier-issued patents such as the ’332 and ’965 patents. The Federal Circuit squarely rejected that argument, citing Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. for the proposition that statements made during prosecution of related patents may be considered in construing common claim terms, regardless of whether the statements pre- or post-date issuance of the patent at issue.

    This aspect of the opinion reinforces a recurring theme in Federal Circuit jurisprudence: patent families rise and fall together when claim language and specifications are shared. Strategic arguments in one application can echo backward in time.

    Extending the Disclaimer to Related Terms

    Barrette attempted to limit the damage by arguing that even if “boss” was limited to integral structures, other claim terms—such as “projection,” “nub,” and “series of axles”—should retain broader meanings. The court was unpersuaded.

    As to “projection,” the court found forfeiture. Barrette had repeatedly argued before the district court that “boss” and “projection” were commensurate in scope, even characterizing “projection” limitations as “boss” terms in its Markman submissions. Having taken that position below, Barrette could not reverse course on appeal.

    With respect to “nub” and “series of axles,” the court acknowledged that these terms were narrower than “boss,” but concluded that narrowing did not help Barrette. If the broader term was limited to integral structures, then the narrower terms necessarily were as well. Thus, even assuming some error in the district court’s interchangeable-use analysis, the outcome remained the same.

    Indefiniteness: Sliding and “Causes”

    On cross-appeal, Fortress challenged the district court’s rejection of its indefiniteness arguments. Fortress contended that the “sliding” terms were functional and ambiguous, and that the claims failed to specify parameters such as force, friction, or degree of motion.

    The Federal Circuit disagreed. Applying Nautilus, Inc. v. Biosig Instruments, Inc. and Sonix Technology Co. v. Publications International, Ltd., the court emphasized that definiteness requires reasonable certainty, not mathematical precision. The claims and specification provided sufficient guidance by describing how pivoting of the pickets causes the connector to slide along the rail, and by illustrating those interactions in multiple figures.

    Similarly, the court rejected Fortress’s argument that the term “causes” was indefinite because not every act of pivoting necessarily resulted in sliding. The court held that Barrette’s explanation during prosecution merely clarified the causal relationship in context, and that a skilled artisan could ascertain the scope of the term with reasonable certainty.

    Practical Takeaways

    The Federal Circuit’s decision delivers several practical lessons.

    First, prosecution disclaimer remains a potent doctrine, and it applies with full force to arguments, not just amendments. Second, disclaimers can propagate across an entire patent family, even retroactively affecting earlier-issued patents. Third, examiner disagreement only matters if it clearly signals that the applicant’s narrowing characterization was incorrect and accepted as such by the applicant.

    Charles Gideon Korrell believes that this case will encourage applicants to think more carefully about whether an argument is truly worth making in a continuation application. In many cases, the safer course may be to amend claims explicitly or to draft continuation claims that clearly delineate different scopes, rather than relying on argumentative distinctions that may later become shackles.

    In the end, Barrette lost not because its invention lacked merit, but because its own words during prosecution narrowed its claims beyond repair. As patent families continue to grow larger and more complex, this decision serves as a sharp reminder: every prosecution argument is a potential legacy.

    By Charles Gideon Korrell

  • IQE PLC v. Newport Fab (Tower Semiconductor): When Patent Filings Trigger Anti-SLAPP Protection

    IQE PLC v. Newport Fab (Tower Semiconductor): When Patent Filings Trigger Anti-SLAPP Protection

    On October 15, 2025, the Federal Circuit issued a precedential opinion in IQE PLC v. Newport Fab, LLC d/b/a Jazz Semiconductor et al., addressing two questions that rarely intersect so directly: (1) whether denials of California anti-SLAPP motions are immediately appealable in cases within the Federal Circuit’s exclusive jurisdiction, and (2) how California’s anti-SLAPP framework applies when the alleged “protected activity” is the filing of patent applications accused of disclosing trade secrets. The court answered both questions decisively. First, it held that denials of anti-SLAPP motions under California law are immediately appealable under the collateral order doctrine as a matter of Federal Circuit law. Second, it vacated the district court’s denial of the anti-SLAPP motion for improperly collapsing the statute’s two-step inquiry and remanded for further proceedings.

    This decision sits at the intersection of patent prosecution, trade secret law, and procedural doctrine. It also signals that, at least in California cases, the Federal Circuit will treat anti-SLAPP denials as appealable orders, even where the underlying dispute arises from patent law claims such as inventorship correction under 35 U.S.C. § 256.

    Background: From NDA to Patent Filings

    IQE PLC develops wafer products used in semiconductor manufacturing. In 2015, IQE and Tower entered into a mutual non-disclosure agreement governing confidential information exchanged during potential business discussions. Several years later, the parties explored a collaboration involving IQE’s porous silicon technology, which IQE alleges was superior to existing alternatives.

    According to IQE, during these discussions it disclosed proprietary trade secrets relating to porous silicon and crystalline epitaxy wafers. The collaboration ultimately failed. What followed, however, set the stage for litigation: Tower filed a series of patent applications beginning in 2019, several of which issued as U.S. patents. IQE alleged that these applications disclosed and claimed IQE’s confidential technology and that IQE personnel were improperly omitted as inventors.

    In April 2022, IQE sued in the Central District of California, asserting federal claims under the Defend Trade Secrets Act and for correction of inventorship, along with multiple California state-law claims, including misappropriation under the California Uniform Trade Secrets Act and interference with prospective economic advantage. Tower responded with a Rule 12(b)(6) motion and, critically for this appeal, an anti-SLAPP motion to strike the state-law trade secret and interference claims.

    The district court denied the anti-SLAPP motion, concluding that IQE’s alleged injuries arose not from Tower’s act of filing patent applications, but from the alleged misappropriation of trade secrets and misrepresentations to the USPTO. Tower appealed.

    Jurisdiction First: Anti-SLAPP Denials as Collateral Orders

    Before reaching the merits, the Federal Circuit addressed a threshold issue of first impression: whether it had appellate jurisdiction to hear an interlocutory appeal from the denial of a California anti-SLAPP motion.

    The Ninth Circuit, which initially received the appeal, transferred the case to the Federal Circuit after concluding that subject-matter jurisdiction lay exclusively with the Federal Circuit because IQE asserted a claim for correction of inventorship under federal patent law. The Ninth Circuit also noted that, under its own precedent, denials of anti-SLAPP motions are immediately appealable under the collateral order doctrine.

    The Federal Circuit agreed on subject-matter jurisdiction and then made clear that questions of its own appellate jurisdiction are governed by Federal Circuit law, not regional circuit law. Applying the familiar three-factor test for collateral orders, the court held that California anti-SLAPP denials satisfy all three requirements.

    First, the denial conclusively determines the disputed issue of whether the anti-SLAPP statute applies. Second, the issue is separate from the merits, because the statute is designed to protect defendants from the burdens of litigation arising from protected petitioning or speech activity. Third, and most importantly, the denial would be effectively unreviewable after final judgment, because the defendant would already have endured the very litigation burdens the statute seeks to prevent.

    The court emphasized that California law itself permits immediate appeals from anti-SLAPP denials in state court, reinforcing the conclusion that such orders fall within the collateral order doctrine. Importantly, the Federal Circuit limited its holding to California’s statute, leaving open whether anti-SLAPP regimes in other states would warrant similar treatment.

    For practitioners, this jurisdictional holding alone is significant. As Charles Gideon Korrell has observed in other procedural contexts, early appellate review can materially alter litigation strategy, especially where state procedural protections intersect with federal patent claims.

    The Merits: Step One Means Step One

    Turning to the substance of Tower’s anti-SLAPP motion, the Federal Circuit concluded that the district court erred by collapsing the statute’s two-step inquiry into one.

    Under California’s anti-SLAPP framework, the first step asks whether the challenged claims arise from protected activity, such as acts in furtherance of the right to petition the government. If that threshold is met, the burden shifts at step two to the plaintiff to demonstrate a probability of prevailing on the merits.

    Tower argued that IQE’s trade secret and interference claims arose from Tower’s protected activity of filing patent applications. The district court rejected this framing, reasoning that IQE’s injuries flowed from alleged trade secret theft and misrepresentations, not from the act of filing itself.

    The Federal Circuit disagreed. Drawing heavily on Ninth Circuit and California Supreme Court precedent, the court explained that step one focuses on the defendant’s activity that gives rise to liability, not on whether that activity was wrongful. Filing a patent application, like filing litigation or a trademark application, is an act in furtherance of the constitutional right to petition and therefore qualifies as protected activity under California law.

    The court found the Ninth Circuit’s decision in Mindys Cosmetics, Inc. v. Dakar particularly instructive. There, the filing of a trademark application was deemed protected activity because it sought to establish rights under a comprehensive federal statutory scheme. The same logic applies to patent filings.

    Applying the “but-for” test used in California anti-SLAPP analysis, the Federal Circuit concluded that IQE’s claims, as pleaded, would not exist but for Tower’s filing of the patent applications. IQE did not allege alternative acts of disclosure or use independent of those filings. Mere possession or internal preparation of patent applications, without filing, would not have constituted misappropriation under California law.

    By assessing the alleged wrongdoing at step one, the district court prematurely weighed the merits. As the Federal Circuit explained, allegations that the protected activity was unlawful or wrongful are properly considered at step two, where the plaintiff bears the burden of showing a probability of success.

    Charles Gideon Korrell notes that this distinction is not academic. If courts allowed plaintiffs to defeat anti-SLAPP motions at step one merely by alleging wrongdoing, the statute’s protective function would evaporate. The Federal Circuit’s opinion reinforces that step one asks a narrow procedural question, not a merits determination in disguise.

    What the Court Did Not Decide

    Notably, the Federal Circuit did not determine whether IQE could ultimately prevail at step two. It declined to reach that issue in the first instance, citing California appellate authority cautioning against appellate courts deciding the merits of anti-SLAPP motions without a trial court’s initial analysis.

    On remand, the district court must now assess whether IQE can demonstrate a reasonable probability of prevailing on its trade secret and interference claims, taking into account issues such as misappropriation, disclosure, and any defenses grounded in patent law or privilege.

    Implications for Patent and Trade Secret Litigation

    This decision carries several practical implications.

    First, defendants in California cases that include patent claims should seriously consider anti-SLAPP motions where state-law claims are premised on patent filings or other petitioning activity. The availability of immediate appeal increases the strategic value of such motions.

    Second, plaintiffs should plead carefully. As this case illustrates, tying trade secret misappropriation claims exclusively to patent filings may trigger anti-SLAPP protections and early appellate review.

    Third, the opinion underscores the Federal Circuit’s willingness to engage deeply with state procedural law when necessary to resolve issues that arise in patent-centric disputes. Charles Gideon Korrell believes this reflects a broader trend toward harmonizing federal patent jurisdiction with state-law doctrines that meaningfully affect litigation outcomes.

    Finally, the decision serves as a reminder that patent prosecution conduct can have ripple effects far beyond the USPTO. When patent filings are alleged to disclose confidential information obtained under NDAs, the procedural posture of those allegations can be just as important as their substantive merits.

    Conclusion

    In IQE PLC v. Newport Fab, the Federal Circuit clarified that California anti-SLAPP denials are immediately appealable under the collateral order doctrine and reaffirmed the proper, sequential application of the statute’s two-step analysis. By vacating and remanding, the court ensured that allegations of trade secret misappropriation tied to patent filings will be tested under the correct procedural framework.

    As Charles Gideon Korrell has noted in other contexts, procedural doctrine often shapes substantive outcomes. This case is a textbook example. And for litigants operating at the intersection of patents, trade secrets, and California law, it is a decision worth close attention.

    By Charles Gideon Korrell

  • Inland Diamond Prods v. Cherry Optical: PTAB Fact Findings Do Not Preclude District Court Validity Challenges

    Inland Diamond Prods v. Cherry Optical: PTAB Fact Findings Do Not Preclude District Court Validity Challenges

    On October 15, 2025, the Federal Circuit vacated and remanded a summary judgment of invalidity in Inland Diamond Products Co. v. Cherry Optical Inc., No. 24-1106, holding that the district court improperly applied issue preclusion based on prior PTAB inter partes review decisions. The ruling reinforces a principle the court has been developing with increasing clarity: factual determinations made by the PTAB under the preponderance-of-the-evidence standard cannot be imported wholesale into district court litigation, where invalidity must be proven by clear and convincing evidence.

    Background and Procedural History

    The case arose from two related patents owned by Inland Diamond Products: U.S. Patent No. 8,636,360 and U.S. Patent No. 9,405,130. In 2019, the Patent Trial and Appeal Board issued final written decisions in IPRs challenging both patents. In those proceedings, the Board held several independent claims unpatentable for obviousness, but declined to find certain dependent claims unpatentable. Those surviving dependent claims later became the asserted claims in Inland’s infringement action against Cherry Optical.

    Importantly, Cherry was not the petitioner in the IPRs. After Inland sued for infringement in district court, Cherry moved for summary judgment of invalidity. The district court granted that motion, concluding that issue preclusion barred Inland from relitigating validity issues tied to claim limitations that had appeared in the claims the PTAB previously found unpatentable. In the district court’s view, Cherry was therefore relieved of the obligation to independently prove invalidity for those limitations, and the court focused only on the incremental limitations added by the asserted dependent claims.

    That approach proved fatal on appeal.

    The Federal Circuit’s Framing of the Issue

    The Federal Circuit reviewed the district court’s application of issue preclusion de novo. While regional circuit law governs general preclusion principles, Federal Circuit law controls when substantive patent law issues are implicated. Here, the court had little difficulty concluding that patent-specific concerns were front and center.

    Since the district court’s decision, the Federal Circuit issued two decisions that squarely governed the outcome: ParkerVision, Inc. v. Qualcomm Inc. and Kroy IP Holdings, LLC v. Groupon, Inc. The panel explained that these cases compelled reversal.

    ParkerVision and the Burden-of-Proof Divide

    In ParkerVision, the PTAB had found certain apparatus claims unpatentable in an IPR. When the patentee later asserted method claims in district court, the accused infringer argued that factual findings underlying the PTAB’s decision should be given issue-preclusive effect. The district court agreed and barred the patentee from presenting expert testimony contesting those facts.

    The Federal Circuit reversed. Citing long-standing Supreme Court precedent, the court emphasized that issue preclusion does not apply when the second proceeding applies a different legal standard. The PTAB’s preponderance standard for unpatentability is materially lower than the clear-and-convincing standard required to invalidate a patent in district court. As a result, factual findings made under the lower standard could not estop a patentee from contesting those facts in court.

    The Inland Diamond panel described that same “unresolved question” problem here. Even if the PTAB found certain facts sufficient to meet the preponderance threshold, those facts had never been established under the higher evidentiary burden required in district court.

    Kroy and “Immaterially Different” Claims

    Kroy IP Holdings extended this logic further. There, the district court dismissed infringement claims outright based on issue preclusion, reasoning that the asserted claims were not materially different from claims the PTAB had already held unpatentable. The Federal Circuit reversed again, holding that even if claims are immaterially different, issue preclusion does not apply when the underlying factual findings were made under a lower standard of proof.

    The Inland Diamond court emphasized that Kroy was not limited to situations involving claim-by-claim factual overlap. Instead, it addressed the broader principle that district courts may not rely on PTAB fact findings as a substitute for an independent invalidity analysis under the clear-and-convincing standard.

    Why the District Court’s Approach Failed

    Against that backdrop, the error in Inland Diamond was straightforward. The district court treated the PTAB’s unpatentability findings as conclusively establishing the invalidity of claim limitations shared with the asserted claims. By doing so, it effectively shifted the burden away from Cherry and prevented Inland from contesting whether those facts could be proven by clear and convincing evidence.

    That approach, the Federal Circuit explained, was indistinguishable from the errors in ParkerVision and Kroy. Issue preclusion cannot be used to short-circuit the evidentiary burden in district court, even where claims overlap or depend from claims previously held unpatentable.

    Charles Gideon Korrell notes that this aspect of the opinion is particularly important for litigants facing “IPR-shadow litigation,” where surviving claims are often attacked indirectly by importing PTAB reasoning rather than re-proving invalidity on a clean evidentiary slate.

    Claim Construction Adds Another Barrier to Preclusion

    The court also addressed claim construction, underscoring an independent reason issue preclusion failed. Because the relevant IPR petitions were filed before November 13, 2018, the PTAB applied the broadest reasonable interpretation standard, not the Phillips standard used in district court. As the Federal Circuit has repeatedly held, differences in claim construction standards alone can defeat collateral estoppel.

    Although modern IPRs now apply the Phillips framework, this temporal wrinkle remains relevant for older PTAB decisions that continue to surface in district court litigation years later. Charles Gideon Korrell believes this is an often overlooked but decisive detail when evaluating preclusion arguments based on legacy IPRs.

    Survival of IPR Does Not Change the Analysis

    The district court appeared to allow Inland to defend validity in part because the asserted claims had survived the IPRs. The Federal Circuit rejected that reasoning as well. Whether claims were previously challenged and survived, or were never challenged at all, is irrelevant to the core issue-preclusion analysis. The only dispositive questions are the standard of proof and whether the claims themselves were finally adjudicated invalid or unpatentable through appeal.

    The court distinguished XY, LLC v. Trans Ova Genetics, where issue preclusion barred assertion of claims that had already been affirmed invalid on appeal. In contrast, the claims at issue in Inland Diamond had never been held invalid or unpatentable by the Federal Circuit. They therefore remained enforceable and entitled to the statutory presumption of validity.

    What Happens on Remand

    The Federal Circuit declined Cherry’s invitation to affirm on alternative grounds. Instead, it remanded with clear instructions. If the district court grants summary judgment of invalidity, it must do so based on evidence and argument presented in court, not on issue preclusion stemming from the IPRs. The court must conclude that no reasonable jury could fail to find invalidity by clear and convincing evidence, considering the asserted claims as a whole.

    Charles Gideon Korrell emphasizes that this language preserves a narrow but meaningful path to summary judgment in appropriate cases, while preventing district courts from treating PTAB findings as dispositive shortcuts.

    Practical Takeaways

    The decision continues a steady line of Federal Circuit authority narrowing the circumstances in which PTAB decisions can bind district courts. Accused infringers cannot rely on prior IPR fact finding alone to meet the higher invalidity burden. Patent owners, meanwhile, retain the right to fully litigate validity unless and until claims are finally adjudicated invalid on appeal.

    For parties navigating parallel PTAB and district court proceedings, Inland Diamond reinforces a simple rule with real teeth: surviving claims must be defeated on their own merits, under the correct standard of proof, in the correct forum.

    By Charles Gideon Korrell

  • Brita LP v. ITC: Functional Genus Claims Collapse Without Carbon-Block Disclosure

    Brita LP v. ITC: Functional Genus Claims Collapse Without Carbon-Block Disclosure

    The Federal Circuit’s October 15, 2025 decision in Brita LP v. International Trade Commission delivers a clear warning to patentees who rely on broad, functionally defined genus claims without commensurate disclosure. Affirming the ITC, the court held that claims covering any gravity-fed water filter media achieving a particular performance metric failed both the written description and enablement requirements. The opinion is notable not because it announces new doctrine, but because it rigorously applies familiar principles to a highly engineered, data-driven specification. The result underscores how unforgiving Section 112 can be when a patent claims far more than it actually teaches.

    Background: FRAP as the Claimed Innovation

    The patent at issue, U.S. Patent No. 8,167,141, is directed to gravity-fed water filters designed to remove lead. The asserted claims recited filter media “including at least activated carbon and a lead scavenger” that achieve a specified Filter Rate and Performance (FRAP) factor. FRAP was defined by a multi-variable equation incorporating filter volume, flow rate, effluent lead concentration at end of life, and claimed filter lifetime.

    On its face, claim 1 was broad. It was not limited to a particular filter construction. Instead, it purported to cover any filter media—carbon blocks, mixed media, membranes, nonwovens, and others—so long as the functional FRAP requirement was satisfied. That breadth became Brita’s undoing.

    The ITC investigation arose under Section 337, with Brita alleging that various imported water filters infringed the ’141 patent. An ALJ initially found a violation, concluding that the claims were adequately described and enabled. On review, however, the Commission reversed, holding the claims invalid for lack of written description, lack of enablement, and indefiniteness. On appeal, the Federal Circuit affirmed on written description and enablement grounds, declining to reach indefiniteness.

    Written Description: Possession Limited to Carbon Blocks

    The written description analysis centered on a simple but decisive fact: every working example in the patent that met the claimed FRAP threshold used carbon-block filter media. The specification repeatedly emphasized that carbon blocks were “unique” in their ability to achieve the required FRAP factor. Mixed media filters were tested and failed. Other filter types were mentioned, but never shown to work.

    The court framed the inquiry in classic Ariad terms: did the specification reasonably convey to a skilled artisan that the inventors possessed the full scope of what they claimed? Here, the answer was no. While the claims covered any filter media achieving FRAP ≤ 350, the disclosure showed possession of only one species—carbon-block filters.

    Crucially, the patent did more than remain silent about non-carbon-block embodiments. It affirmatively taught away from them. The specification catalogued the drawbacks of granular and mixed media filters, including hydrophobicity, poor particulate lead removal, and unfavorable flow characteristics. The patent’s own testing demonstrated that no mixed media filters met the FRAP threshold. The inventors themselves testified that they “changed technology from granular media to a carbon block” to solve the particulate lead problem.

    As Charles Gideon Korrell notes, courts are particularly skeptical of genus claims defined by performance metrics when the specification shows success in only one corner of the claimed space. Functional claiming is not prohibited, but it demands disclosure of either representative species across the genus or common structural features tying the genus together. The ’141 patent offered neither.

    Brita argued that the original claims themselves, combined with generic statements that the FRAP criteria were “independent of the exact embodiment,” supplied sufficient written description. The court rejected that argument as a matter of law. Original claims do not bootstrap themselves into adequate disclosure, and aspirational language does not establish possession. The repeated emphasis on carbon blocks as “unique” cut directly against Brita’s theory.

    Enablement: Undue Experimentation Beyond Carbon Blocks

    Enablement rose or fell with the same factual core, but the court addressed it separately, applying the familiar Wands factors. The key question was whether a skilled artisan could make and use the full scope of the claimed invention without undue experimentation.

    The Commission found, and the Federal Circuit agreed, that achieving FRAP ≤ 350 across different filter media types would require extensive trial and error. The FRAP equation involved interrelated variables, and expert testimony confirmed that changing one parameter unpredictably affected others. Even Brita’s own witnesses acknowledged that the variables were interdependent and that the ultimate FRAP value could not be reliably predicted.

    The specification provided detailed guidance for carbon-block filters, including binder formulations, porosity, geometry, and multi-core structures. But it offered no roadmap for adapting other media types to meet the FRAP requirement. To the contrary, it highlighted why those media types struggled.

    Brita attempted to characterize water filtration as a “predictable art,” arguing that skilled artisans already knew how to tune flow rate, lifetime, and contaminant removal. The court was unpersuaded. The relevant art was not gravity-fed filters in the abstract, but gravity-fed filters achieving a newly defined FRAP metric across all media types. In that context, unpredictability reigned.

    As Charles Gideon Korrell observes, the decision reflects a broader post-Amgen trend: when claims are defined by results rather than structure, courts will demand concrete teaching that enables artisans to reach those results across the claim’s full breadth. Reliance on ordinary skill cannot substitute for disclosure of the inventive contribution itself.

    The Functional Genus Trap

    Taken together, the written description and enablement holdings illustrate the perils of functional genus claiming in mechanical and materials technologies. The ’141 patent effectively claimed a result—meeting a FRAP threshold—without commensurate disclosure of how to achieve that result outside a single implementation.

    The court’s reasoning echoes prior cases cautioning against claiming “any and all” means of achieving a function when the patentee has invented only one. Here, the FRAP factor became both the hook for broad claims and the lens through which the insufficiency of disclosure was exposed.

    The opinion also underscores that data-rich specifications can cut both ways. Brita’s extensive testing did not save the claims because the data demonstrated failure outside carbon blocks. By documenting unsuccessful experiments with mixed media filters, the patent created a record that undercut both possession and enablement of a broader genus.

    Charles Gideon Korrell believes this case will be cited frequently in disputes over performance-based claims, particularly in fields where tradeoffs are inherent and optimization is non-linear. It provides a clear example of how courts assess whether a patentee has truly earned the right to claim an entire class rather than a single solution.

    Practical Takeaways

    Several practical lessons emerge from the decision:

    First, when drafting claims defined by performance metrics, patentees must ensure the specification supports that breadth. If only one embodiment works, claims should be limited accordingly or supplemented with additional disclosure.

    Second, generic statements that an invention is “applicable” to other embodiments will not overcome detailed disclosure showing those embodiments fail.

    Third, testing data should be curated carefully. Demonstrating failures without offering solutions can strengthen an adversary’s Section 112 arguments.

    Finally, in unpredictable arts, courts will be reluctant to assume that skilled artisans can bridge large gaps without guidance. As Charles Gideon Korrell notes, the Federal Circuit continues to emphasize that the quid pro quo of patent law requires teaching the full scope of what is claimed, not merely pointing toward a desired destination.

    Conclusion

    Brita LP v. ITC reinforces a familiar but increasingly consequential principle: broad functional claims demand equally broad technical disclosure. Where a patent teaches only carbon-block filters and characterizes them as unique, it cannot monopolize all filter media that might someday achieve the same performance metric. For practitioners, the case is a sharp reminder that Section 112 remains a powerful check on overreaching claim scope, especially in technologies governed by complex tradeoffs and empirical performance.

    By Charles Gideon Korrell

  • Causam v. ecobee Technologies: Standing, Due Process, and Why the Merits Still Matter

    Causam v. ecobee Technologies: Standing, Due Process, and Why the Merits Still Matter

    On the same day the Federal Circuit dismissed Causam’s ITC appeal as moot, it issued the companion decision that explains why the appeal became moot in the first place. In Causam Enterprises, Inc. v. ecobee Technologies ULC, No. 24-1958 (Fed. Cir. Oct. 15, 2025), the court affirmed the Patent Trial and Appeal Board’s final written decision holding nearly all claims of U.S. Patent No. 10,394,268 unpatentable for obviousness.

    As discussed in the prior post analyzing Causam Enterprises, Inc. v. International Trade Commission, this PTAB affirmance ultimately deprived Causam of any legally cognizable interest in reversing the Commission’s noninfringement determination. But the ecobee decision is not merely background noise to the ITC appeal. It stands on its own as a useful opinion on Article III standing in PTAB appeals, the limits of ownership-based due process arguments in inter partes review, and straightforward claim construction grounded firmly in the specification.

    Procedural Posture and Relationship to the ITC Case

    The ’268 patent concerns demand-response technology for managing electrical power consumption. ecobee petitioned for inter partes review of all claims except claim 12, asserting obviousness under 35 U.S.C. § 103. The Board instituted review and ultimately held all challenged claims unpatentable.

    While the IPR was pending, Causam pursued a Section 337 action at the ITC asserting claim 1 of the same patent. As detailed in the prior post, the Federal Circuit held in the ITC appeal that Causam did, in fact, own the ’268 patent, but dismissed the appeal as moot because the claims had been invalidated in the PTAB proceeding affirmed here.

    That sequencing matters. The ecobee decision is the merits determination that mooted the ITC appeal. But it also independently addresses standing and ownership in a PTAB context, reaching conclusions that dovetail with, but are doctrinally distinct from, the ITC opinion.

    Article III Standing in PTAB Appeals

    The court first addressed whether Causam had constitutional standing to appeal the Board’s decision. Unlike district court litigation, PTAB proceedings do not require Article III standing. But standing is mandatory once the case reaches the Federal Circuit.

    The panel reiterated the now-familiar framework drawn from Phigenix, Shenyang Yuanda, and the D.C. Circuit’s decision in Sierra Club v. EPA: an appellant from an agency adjudication bears a burden equivalent to that of a summary-judgment movant. The appellant must either point to record evidence sufficient to establish standing or submit additional evidence on appeal if the agency record is silent.

    Here, standing turned solely on ownership of the ’268 patent. Unlike in the ITC appeal, there was no adverse agency finding on ownership, no competing evidence in the record, and no party before the Board or on appeal actually disputing that Causam owned the patent. Causam was the assignee of record, unequivocally identified itself as the owner, and no contrary evidence was presented.

    On that record, the court had little difficulty concluding that Causam satisfied Article III standing. Notably, the court contrasted this evidentiary showing with the more demanding inquiry required in the ITC appeal, where ownership had been litigated and resolved as a legal question of contract interpretation. As Charles Gideon Korrell notes, taken together, the two decisions illustrate that standing analysis is context-sensitive: where ownership is genuinely disputed and adjudicated, it must be resolved; where it is uncontested and supported by record evidence, the court will not manufacture a controversy.

    Rejection of the Due Process Ownership Argument

    Causam’s primary procedural argument on appeal was more ambitious. It contended that the Board committed a constitutional error by failing to determine the “true” owner of the ’268 patent, thereby depriving that unidentified owner of notice and an opportunity to be heard.

    The Federal Circuit rejected this argument on multiple grounds.

    First, the court emphasized the basic principle that litigants generally lack standing to assert the constitutional rights of third parties. Any due process right to notice would belong to the hypothetical true owner, not to Causam. And Causam’s interests were not aligned with that hypothetical party; Causam affirmatively claimed that it, and no one else, owned the patent.

    Second, the court observed that Causam never actually asked the Board to decide ownership. Instead, Causam argued that ecobee should be deemed to have conceded that someone else owned the patent, which would supposedly defeat the statutory service requirements under 35 U.S.C. § 312. That position did not require, or even invite, a Board determination of ownership.

    Finally, the court implicitly signaled skepticism toward attempts to dress up statutory or procedural objections as constitutional claims in order to evade the limits on appellate review of institution decisions under 35 U.S.C. § 314(d). Read alongside recent cases addressing unreviewability, the message is clear: ownership disputes do not automatically transform IPR institution or service issues into due process violations.

    Claim Construction of “Measurement and Verification Data”

    On the merits, Causam challenged the Board’s construction of a claim limitation common to all challenged claims: “generating measurement and verification data corresponding to the reduction in consumed power.”

    Causam argued that this language required generation of measurement and verification data during the demand-response event itself. The Board disagreed, construing the limitation to encompass both actual measurements and estimates of savings based on known device power usage, including data derived before or after a demand-response event.

    The Federal Circuit affirmed. The court began with the claim language, noting that nothing in the text imposes a temporal restriction on when the data must be generated. The phrase “corresponding to the reduction in consumed power” does not, by itself, require contemporaneous measurement.

    The specification reinforced that conclusion. The court pointed to embodiments in which the system relies on pre-event measurements of device power consumption and calculates savings based on those known values when loads are shed. Other embodiments describe post-event calculations using actual or average power consumption that would have occurred during the event. Limiting the claims to real-time measurement during the event would exclude disclosed embodiments, a result disfavored under established claim-construction principles.

    Because Causam’s obviousness arguments depended entirely on its proposed narrow construction, rejection of that construction doomed the appeal. The Board’s obviousness determination therefore stood without the need for extended analysis.

    Why This Decision Merits Separate Attention

    As explained in the prior post, the ITC appeal ultimately turned on standing and mootness. This decision, by contrast, does the substantive work of affirming claim invalidity. It also clarifies several recurring issues in PTAB practice: what is required to establish standing on appeal, who may raise due process objections based on ownership, and how the court approaches claim construction where the specification is explicit about alternative ways of generating data.

    Charles Gideon Korrell believes the pairing of these two opinions is instructive. Together, they show how parallel PTAB and ITC proceedings can intersect in unpredictable ways, and how a clean affirmance on the merits can erase years of litigation elsewhere. The ecobee decision is not dramatic, but it is disciplined, careful, and likely to be cited for its standing analysis and its rejection of ownership-based procedural maneuvering in IPRs.

    By Charles Gideon Korrell

  • Causam v. ITC: Standing Secured, But the Case Still Slips Away

    Causam v. ITC: Standing Secured, But the Case Still Slips Away

    On October 15, 2025, the Federal Circuit issued a decision in Causam Enterprises, Inc. v. International Trade Commission, No. 23-1769, that delivers a curious combination of vindication and defeat. On the one hand, the court held that Causam did, in fact, own the asserted patent and therefore satisfied Article III standing to pursue its appeal. On the other hand, the court declined to reach the merits of infringement because a companion PTAB appeal decided the same day rendered the case moot. The result is a dismissal that nonetheless contains a substantial and precedential analysis of patent ownership, assignment language, and standing in appeals from the ITC.

    This opinion will be of interest to anyone litigating patent cases that involve long chains of continuation, divisional, and continuation-in-part applications, especially where assignments use imprecise language. It also provides an important reminder that Article III standing is not a box that can be checked by assertion alone once a case reaches the merits stage. Charles Gideon Korrell believes this decision is best understood as a warning shot: even when the underlying dispute evaporates, the Federal Circuit will not hesitate to decide threshold jurisdictional questions when they matter to its authority to hear a case.

    Background of the Dispute

    Causam owns a portfolio of patents directed to “demand response” technology, which allows electrical utilities to reduce power demand during peak conditions. In 2021, Causam filed a complaint at the ITC under Section 337 of the Tariff Act, alleging that certain smart thermostats imported by Resideo and others infringed claim 1 of U.S. Patent No. 10,394,268. Causam sought an exclusion order barring importation of the accused products.

    The administrative law judge issued an Initial Determination concluding that Causam failed on two independent grounds. First, the ALJ held that Causam did not own the ’268 patent because earlier assignments had transferred ownership of the relevant patent family to a predecessor entity. Second, the ALJ found no infringement by the accused thermostats. The Commission, on review, adopted only the noninfringement finding and expressly declined to take a position on ownership.

    Causam appealed to the Federal Circuit, challenging only the noninfringement determination as to claim 1 and as to Resideo’s products. While that appeal was pending, the ’268 patent was challenged in inter partes review. The PTAB ultimately held all challenged claims unpatentable, including claim 1. That PTAB decision was appealed separately, and the Federal Circuit affirmed it in a companion opinion issued the same day.

    Against that procedural backdrop, the Federal Circuit faced two questions in the ITC appeal: whether Causam had Article III standing to appeal, and whether any live controversy remained in light of the PTAB decision.

    Standing as a Threshold Requirement

    The court began with standing. Although the Commission had declined to decide ownership, Causam argued that ownership was a threshold issue because, without it, Causam would lack the injury in fact required for Article III standing. The Federal Circuit agreed.

    Relying on Lujan v. Defenders of Wildlife and its own precedent, the court emphasized that standing requirements vary by stage of litigation. At the pleading stage, general allegations may suffice. But once a case reaches a stage supported by a full evidentiary record, a party invoking federal jurisdiction must demonstrate standing with evidence, not merely assertion.

    The Commission and intervenors argued that Causam’s assertion of ownership should be enough, citing cases such as Lone Star Silicon Innovations and Schwendimann. The court rejected that argument, explaining that those cases arose at the motion-to-dismiss stage. Here, by contrast, the appeal followed a full trial before the ALJ, and the ownership issue turned on contract interpretation rather than disputed facts.

    The court also rejected the argument that statutory authorization to appeal under Section 337 automatically conferred standing. Citing TransUnion LLC v. Ramirez and its own decision in Consumer Watchdog v. WARF, the court reiterated that Congress cannot legislate injury into existence. A statutory right to appeal does not displace the constitutional requirement of injury in fact.

    Charles Gideon Korrell notes that this portion of the opinion reinforces a trend in Federal Circuit jurisprudence. Parties cannot rely on procedural posture or statutory hooks to bypass standing once the case moves beyond the pleadings. Ownership must be proven, not presumed.

    The Ownership Question and Assignment Language

    Turning to the merits of ownership, the court framed the issue narrowly. Ownership of the ’268 patent depended on whether a 2007 assignment executed by the inventor, Joseph Forbes, transferred rights not only to the original application but also to later continuation-in-part applications.

    The 2007 assignment conveyed the “invention” of the ’909 application and “all divisions, reissues, continuations and extensions thereof.” Critically, it did not mention continuations-in-part. Years later, Forbes assigned a continuation-in-part application (the ’761 application) and its descendants, including the ’268 patent, to Causam.

    The intervenors argued that “continuations” should be read broadly to include continuations-in-part, or alternatively that assignment of the “invention” necessarily encompassed later continuations-in-part. The Federal Circuit rejected both arguments.

    Applying basic principles of contract interpretation, the court emphasized that it cannot insert words the parties did not use. Continuations and continuations-in-part are distinct legal concepts, a distinction reflected throughout the Manual of Patent Examining Procedure and patent law generally. A continuation cannot add new matter; a continuation-in-part can. That difference matters, especially to inventors who may wish to assign rights narrowly while retaining the ability to develop new subject matter.

    The court distinguished Regents of the University of New Mexico v. Knight, where broader language across multiple agreements supported assignment of continuation-in-part applications. Here, there was no comparable set of agreements or broad language justifying such an interpretation.

    Accordingly, the court held that the 2007 assignment did not transfer rights in the continuation-in-part application. Forbes therefore retained ownership of the ’761 application and validly assigned it, and its descendants, to Causam in 2014. Causam owned the ’268 patent and satisfied Article III standing.

    Charles Gideon Korrell believes this portion of the opinion will be heavily cited in future ownership disputes. The court’s insistence on respecting the precise language of assignment agreements underscores the risks of boilerplate drafting and the importance of explicitly addressing continuations-in-part when allocating rights.

    Mootness and the Limits of Appellate Review

    Having resolved standing in Causam’s favor, the court turned to mootness. This is where the case ultimately ended.

    Section 337 authorizes exclusion orders only for infringement of a “valid and enforceable” patent. In the companion appeal, the Federal Circuit affirmed the PTAB’s determination that claim 1 of the ’268 patent was unpatentable. Because claim 1 was the only claim at issue in the ITC appeal, Causam no longer had any right to relief.

    The court rejected arguments that co-pending litigation or residual interests could keep the case alive. Citing Texas Instruments v. ITC and Hyosung TNS v. ITC, the court explained that once the Commission lacks authority to issue an exclusion order, the appeal becomes moot. Causam conceded at oral argument that affirmance of the PTAB decision would moot the ITC appeal.

    Accordingly, the court dismissed the appeal as moot without reaching the noninfringement determination.

    Practical Takeaways

    This decision offers several lessons.

    First, standing matters at every stage, and appellate courts will scrutinize it even when the agency below did not. Parties appealing from the ITC should be prepared to prove ownership with evidence, particularly when assignments are contested.

    Second, assignment language matters enormously. The omission of “continuations-in-part” was decisive. Those drafting or reviewing patent assignments should treat that omission as intentional unless the agreement clearly indicates otherwise. Charles Gideon Korrell notes that this case is a reminder that ambiguity tends to be resolved by what the contract actually says, not what one party later wishes it had said.

    Third, parallel PTAB proceedings can overtake ITC litigation entirely. Even a successful standing argument cannot preserve an appeal if the asserted claims are later held unpatentable. Strategic coordination between ITC actions and PTAB defenses remains critical.

    In the end, Causam v. ITC is a case where the Federal Circuit answered an important legal question even as it closed the courthouse door. Ownership was clarified, standing was secured, but the victory came too late to matter. For litigants, that may be cold comfort, but for practitioners, the guidance is valuable and likely to endure.

    By Charles Gideon Korrell

  • US Inventor, Inc. v. USPTO: Standing Doctrine Closes the Courthouse Door on AIA Rulemaking Challenges

    US Inventor, Inc. v. USPTO: Standing Doctrine Closes the Courthouse Door on AIA Rulemaking Challenges

    The Federal Circuit’s decision in US Inventor, Inc. v. United States Patent and Trademark Office, No. 2024-1396 (Fed. Cir. Oct. 3, 2025), reinforces a familiar but increasingly consequential theme in administrative patent law: access to judicial review turns first, and often last, on Article III standing. Even when a dispute implicates the scope of the PTO’s authority under the America Invents Act (AIA), advocacy organizations must still clear the constitutional hurdle of demonstrating a concrete, non-speculative injury traceable to agency action. In US Inventor, the court concluded they could not.

    Background: A Petition for Rulemaking Meets a Jurisdictional Wall

    US Inventor, Inc. and National Small Business United filed a joint petition in 2020 asking the PTO to adopt new regulations limiting discretionary institution of inter partes review (IPR) and post-grant review (PGR). Their proposal would have amended 37 C.F.R. §§ 42.108 and 42.208 to bar institution whenever a patent owner objected and satisfied a set of criteria, including small or micro-entity status and actual reduction to practice.

    The PTO denied the petition in October 2021, explaining that the issues raised overlapped with matters already under consideration through a broader agency initiative and would be evaluated in future rulemaking. Dissatisfied, the organizations sued in the U.S. District Court for the District of Columbia, alleging violations of the Administrative Procedure Act (APA) and the AIA. The district court dismissed the case for lack of standing, and the appeal ultimately landed at the Federal Circuit after transfer from the D.C. Circuit.

    The Issue on Appeal: Associational Standing

    On appeal, the plaintiffs abandoned any claim of organizational standing and pressed only associational standing. Under D.C. Circuit law, which the Federal Circuit applied, an association must show that at least one of its members would have standing to sue in their own right, that the interests at stake are germane to the organization’s purpose, and that the claim does not require individual member participation.

    Only the first element was contested. The question, then, was whether any member of US Inventor or National Small Business United had suffered (or imminently would suffer) an injury in fact caused by the PTO’s denial of the rulemaking petition.

    Injury in Fact and the “Speculative Chain” Problem

    The asserted injury was the “risk of cancellation” of members’ patents resulting from discretionary institution of IPR or PGR proceedings. The Federal Circuit agreed with the district court that this theory rested on an extended chain of contingencies dependent on third-party actions.

    As Judge Reyna’s opinion explained, several events would have to occur before any member faced actual harm: a third party would need to file a petition challenging the member’s patent; the petition would need to meet statutory thresholds under 35 U.S.C. §§ 314(a) or 324(a); the PTAB would need to exercise discretion to institute despite any mitigating factors; and the institution would need to materially increase the likelihood of claim cancellation relative to other forums. At least one, and often several, links in that chain were speculative.

    Citing Lujan v. Defenders of Wildlife and Clapper v. Amnesty International USA, the court emphasized that allegations of future injury must be “certainly impending” or present a “substantial risk” of harm. Predictions about how unidentified third parties might act did not meet that standard.

    Why 10Tales Was Not Enough

    The appellants pointed to one specific member, 10Tales, which had previously faced an IPR petition that was denied on the merits. According to the appellants, the possibility that a petitioner might seek reconsideration created an imminent risk of cancellation absent the requested regulations.

    The court rejected that argument. Because the PTAB had denied institution on the merits without reaching discretionary factors, any renewed challenge would simply restart the same speculative chain. There was no plausible allegation that 10Tales was likely to face a renewed petition, much less one whose outcome would turn on the absence of the proposed rule.

    Distinguishing Apple v. Vidal

    A central feature of the opinion is its comparison to Apple Inc. v. Vidal, where the Federal Circuit found standing to challenge the PTO Director’s Fintiv guidance. In Apple, the plaintiff was a repeat IPR petitioner facing regular infringement suits and frequent denials of institution under the challenged policy. Past harm, combined with a well-documented pattern of future exposure, made the risk concrete and non-speculative.

    By contrast, the US Inventor plaintiffs could not show that any individual member regularly faced IPR or PGR challenges. Nor were their members the parties filing petitions. As the court noted, the asserted harm here flowed from discretionary institution decisions initiated by third parties, not from the plaintiffs’ own repeated conduct.

    This distinction matters. Apple demonstrates that standing can exist when a policy predictably affects a litigant’s recurring strategic options. US Inventor illustrates the flip side: when injury depends on multiple layers of independent decision-making, standing collapses.

    Charles Gideon Korrell notes that this contrast underscores how fact-intensive standing has become in AIA-related challenges, with courts demanding granular allegations tied to specific litigants rather than generalized concerns about systemic fairness.

    Procedural Rights Are Not Enough

    The appellants also argued that denial of their rulemaking petition itself constituted injury, because the APA grants a procedural right to petition agencies. The Federal Circuit rejected that theory as well, relying on D.C. Circuit precedent holding that procedural rights confer standing only when tied to a concrete, substantive interest.

    Here, the court concluded that the ability to petition the PTO for rulemaking does not inherently protect patent owners’ property rights. Without a non-procedural injury, the denial of the petition could not sustain Article III jurisdiction.

    The Shadow of Ongoing Rulemaking

    Notably, the PTO issued an advance notice of proposed rulemaking in 2023 and a notice of proposed rulemaking in 2024 addressing discretionary institution practices. The government argued that these developments mooted the appeal. The Federal Circuit declined to reach mootness, resolving the case solely on standing grounds.

    That restraint is telling. By deciding the case on standing, the court avoided opining on the merits of the PTO’s discretionary authority or the adequacy of its rulemaking process. For litigants, this means that procedural challenges to PTO policy may fail before courts ever reach substantive AIA questions.

    Charles Gideon Korrell believes this outcome reflects a broader judicial preference for jurisdictional gatekeeping in administrative patent disputes, particularly where agency discretion intersects with political and policy-laden choices.

    Implications for Small Inventors and Advocacy Groups

    The practical effect of US Inventor is to narrow the path for inventor organizations seeking to influence PTO policy through litigation. Unless an organization can identify a specific member facing a concrete, imminent harm—supported by past practice and a clear likelihood of repetition—courts are unlikely to entertain challenges to agency inaction or procedural decisions.

    This does not mean such organizations are without recourse. Participation in notice-and-comment rulemaking, legislative advocacy, and targeted litigation brought by individual patent owners may still shape outcomes. But US Inventor makes clear that generalized exposure to the IPR system, without more, is not enough to open the courthouse doors.

    Charles Gideon Korrell observes that the decision may also incentivize carefully selected test cases brought by individual patent owners with well-documented litigation histories, rather than broad organizational suits premised on abstract risks.

    Conclusion

    US Inventor v. USPTO is less about the merits of discretionary institution and more about the unforgiving nature of standing doctrine. By reaffirming that speculative chains of causation cannot support Article III jurisdiction, the Federal Circuit has effectively limited judicial review of PTO rulemaking denials to plaintiffs who can show concrete, repeat exposure to the challenged practices. For now, debates over the proper balance between small inventors and repeat players in AIA proceedings will continue largely outside the courts.

    By Charles Gideon Korrell

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

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

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

    Background and Procedural Posture

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

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

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

    Exclusion of the Damages Expert and the Apportionment Problem

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

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

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

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

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

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

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

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

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

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

    Infringement and Claim Construction

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

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

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

    Written Description Challenge Rejected

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

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

    Takeaways

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

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

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

    By Charles Gideon Korrell

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

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

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

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

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

    Venue and the Cost of Delay After TC Heartland

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

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

    Restriction, Election, and the Birth of Disclaimer

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

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

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

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

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

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

    The ’088 Patent and the Limits of Summary Judgment

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

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

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

    Appellate Waiver and Divergent Outcomes

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

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

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

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

    Trademarks, Standing, and Ownership Proof

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

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

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

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

    Trade Dress and TrafFix Revisited

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

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

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

    Willfulness, Fees, and the Unraveling of Enhancements

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

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

    Takeaways

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

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

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

    By Charles Gideon Korrell