Technology Information Law Blog by Charles Gideon Korrell

Tag: CAFC

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

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

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

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

    Background and Procedural History

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

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

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

    Standard of Review and Legal Framework

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

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

    DuPont Factor Two: Similarity of the Services (Affirmed)

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

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

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

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

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

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

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

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

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

    The Federal Circuit held that this analysis was legally flawed.

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

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

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

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

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

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

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

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

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

    Practical Takeaways

    This decision offers several practical lessons.

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

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

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

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

    Conclusion

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

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

    By Charles Gideon Korrell

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

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

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

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

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

    The COMPASS Claims and the Prior Art

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

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

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

    “Clinically Proven Effective” and the Functional Relationship Test

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

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

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

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

    Distinguishing Allergan and Open-Ended Claim Drafting

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

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

    Claim Construction of the “First Product”

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

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

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

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

    Motivation to Combine and Reasonable Expectation of Success

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

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

    Unexpected Results and the Nexus Requirement

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

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

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

    Takeaways

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

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

    By Charles Gideon Korrell

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

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

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

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

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

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

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

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

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

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

    The ’775 Patent: Seven Multiplications Means Seven Multiplications

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

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

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

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

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

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

    Damages Fall With Liability

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

    Takeaways

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

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

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

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

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

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

    By Charles Gideon Korrell

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

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

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

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

    Background of the Dispute

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

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

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

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

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

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

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

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

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

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

    Costs Under Rule 54(d)(1)

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

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

    Rule 11 Sanctions

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

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

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

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

    Fees Under 28 U.S.C. § 1927

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

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

    Discovery and Confidentiality Issues

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

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

    Takeaways

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

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

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

    By Charles Gideon Korrell

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

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

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

    The Technology and the Stakes

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

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

    Discovery: “Too Dangerous” to Test

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

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

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

    Trial: The Bait-and-Switch

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

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

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

    General Verdicts and Harmless Error

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

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

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

    Claim Construction: Lexicography Matters

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

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

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

    Lessons for IP Litigators

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

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

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

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

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

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

    Conclusion

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

    By Charles Gideon Korrell

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

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

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

    Background: Two Tariff Regimes, One Statute

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

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

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

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

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

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

    IEEPA’s Text and Structure: Regulation Is Not Taxation

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

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

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

    Distinguishing Algonquin and Yoshida

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

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

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

    The Major Questions Doctrine

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

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

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

    Remedy: Law Declared, Relief Deferred

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

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

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

    A Marbury-Like Moment in Trade Law

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

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

    The Dissent

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

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

    Looking Ahead

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

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

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

    By Charles Gideon Korrell

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

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

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

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

    Background and Procedural Posture

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

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

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

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

    The Federal Circuit affirmed across the board.

    Prosecution Laches in §145 Actions

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

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

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

    Abuse of Discretion and the Remand Record

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

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

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

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

    Mootness of Other Defenses

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

    Article III Jurisdiction and the Cross-Appeal

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

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

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

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

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

    Practical Implications

    This decision offers several practical lessons.

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

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

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

    Conclusion

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

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

    By Charles Gideon Korrell

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

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

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

    Background and Competing Applications

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

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

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

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

    AIA Derivation Is Not Interference by Another Name

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

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

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

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

    Harmless Error and the Board’s Focus on Earliest Conception

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

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

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

    Corroboration and the Rule of Reason in the Digital Age

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

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

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

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

    Conception Without Reduction to Practice

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

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

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

    Procedural Missteps and Inventorship Correction

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

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

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

    Takeaways

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

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

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

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

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

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

    By Charles Gideon Korrell

  • In re Brunetti: Failure to Function Gets an APA Tune-Up from the Federal Circuit

    In re Brunetti: Failure to Function Gets an APA Tune-Up from the Federal Circuit

    The Federal Circuit’s decision in In re Brunetti, No. 23-1539 (Fed. Cir. Aug. 26, 2025), sits at the uneasy intersection of trademark doctrine, administrative law, and cultural ubiquity. At issue was whether the word “FUCK,” sought to be registered in standard characters for a range of consumer goods and retail services, fails to function as a trademark because consumers would not perceive it as identifying a single source. The court largely rejected Erik Brunetti’s constitutional arguments but nonetheless vacated and remanded the Trademark Trial and Appeal Board’s refusal, faulting the Board for failing to articulate a clear, reviewable standard under the Administrative Procedure Act.

    The result is not a holding that FUCK must be registered. Instead, the court sent the case back with instructions that amount to a polite but pointed reminder: agencies cannot decide cases based on vibes. They must explain themselves.

    Background and the Board’s Decision

    Brunetti filed four intent-to-use applications in 2019 seeking registration of the word FUCK for goods including sunglasses, jewelry, bags, and related retail services. After the Supreme Court’s decision in Iancu v. Brunetti eliminated the Lanham Act’s bar on “immoral or scandalous” marks, the examining attorney shifted gears and refused the applications on a different ground: failure to function as a trademark under Sections 1, 2, 3, and 45 of the Lanham Act.

    The examining attorney characterized FUCK as “widely-used commonplace wording,” supported by extensive evidence of third-party use on similar consumer goods. The Board affirmed in a precedential decision, emphasizing that the relevant public is accustomed to seeing the word used by many different sources to convey a wide range of emotions and sentiments. Because of that ubiquity, the Board concluded, consumers would not perceive the word as a source identifier for Brunetti’s goods or services.

    On appeal, Brunetti advanced several arguments. He contended that the refusal amounted to viewpoint discrimination, retaliation for his prior Supreme Court victory, and an impermissible resurrection of the “immoral or scandalous” bar under a different label. He also argued that the Board had effectively created a new per se rule barring registration of “widely-used” words.

    The Federal Circuit rejected most of those arguments. The constitutional claims failed, the court explained, because failure-to-function analysis is viewpoint-neutral and focuses on consumer perception, not message approval or disapproval. Nor did Iancu v. Brunetti dictate the outcome, because that case involved a different statutory provision and a different mark (FUCT rather than FUCK).

    So far, so ordinary. The surprise came next.

    Failure to Function and the Limits of Commonality

    Trademark law has always required that a mark identify source. As the court reiterated, distinctiveness is the classic pathway, whether inherent or acquired. But distinctiveness and failure to function are not coextensive. Even a designation that might be arbitrary or suggestive in the abstract can be refused registration if, in practice, consumers do not perceive it as indicating a single source.

    The Board leaned heavily on this principle, characterizing FUCK as an “all-purpose word” with a multitude of meanings and extraordinary prevalence in the marketplace. The Federal Circuit did not dispute that factual premise. Indeed, the court accepted that the record supported the conclusion that the word is used ubiquitously across goods similar to those in Brunetti’s applications.

    What troubled the court was not the conclusion, but the path taken to reach it.

    The Board repeatedly insisted that “commonality is not the test,” while at the same time relying on commonality to deny registration. It dismissed Brunetti’s reliance on other registered marks, including registrations for LOVE and even third-party registrations for FUCK itself, as irrelevant because they lacked “contextual information.” Yet the Board never explained what context would matter, how it would be evaluated, or how an applicant could ever satisfy the standard.

    As the majority put it, the Board appeared to be applying an “I know it when I see it” approach to failure-to-function refusals. That may be tempting when dealing with a word as culturally saturated as FUCK, but it is not compatible with reasoned decision-making under the APA.

    Administrative Law, Not Cultural Commentary

    A central theme of the opinion is that trademark examination does not occur in a vacuum. The PTO processes applications through hundreds of examining attorneys, and inconsistency at the examination level is inevitable. Prior registrations do not bind the agency, and erroneous approvals do not compel repetition of the error.

    But inconsistency does not absolve the Board of its obligation to articulate a coherent standard, particularly in a precedential decision. The court invoked Booking.com to underscore that the PTO must consider its own past practice when developing comprehensive rules. And it emphasized long-standing administrative law principles requiring agencies to explain the reasoning behind their decisions with enough clarity to permit judicial review.

    Here, the Board failed that test. It did not explain when an “all-purpose word” crosses the line from registrable to inherently incapable of functioning as a mark. It did not explain what evidence could rebut a prima facie case of failure to function. And it did not reconcile, even at a high level, why some ubiquitous words can serve as marks while others cannot.

    The result, according to the court, is doctrinal drift. Without articulated standards, failure-to-function refusals risk becoming unpredictable and unreviewable, particularly as the doctrine expands beyond classic informational slogans into broader categories of language.

    The Dissent: Sometimes the Answer Is Obvious

    Judge Lourie dissented, and his opinion captured the intuitive appeal of the Board’s original decision. In his view, substantial evidence supported the conclusion that consumers cannot associate the f-word with a single source because of its sheer ubiquity and semantic elasticity. He distinguished words like LOVE and phrases like “F— cancer” as having more limited, focused meanings, capable of serving as source identifiers despite their frequency of use.

    For Judge Lourie, the majority’s concern with analytical precision missed the forest for the trees. The record was sufficient. The conclusion was clear. Remand would only prolong a case that, in his view, had already consumed nearly a decade.

    That tension between doctrinal rigor and practical intuition is the beating heart of this case.

    Why This Case Matters Beyond Four Letters

    For practitioners, In re Brunetti is less about profanity and more about process. The Federal Circuit did not bless the registration of FUCK. Instead, it insisted that if the PTO is going to deny registration based on failure to function, it must explain how and why, in a way that can be applied consistently and reviewed meaningfully.

    This matters because failure-to-function refusals are on the rise. The doctrine increasingly operates as a catch-all for designations that make examiners uncomfortable but do not fit neatly into traditional distinctiveness categories. Without clear standards, applicants are left guessing what evidence will matter and how to structure their records.

    As Charles Gideon Korrell observes, the decision reflects a broader trend in Federal Circuit jurisprudence: heightened sensitivity to administrative law constraints even in areas traditionally viewed as examiner-driven and discretionary. That perspective is particularly relevant for trademark applicants pushing boundaries with minimalist branding, slogans, or culturally loaded language.

    The opinion also signals that the PTO cannot sidestep its own precedents by invoking case-by-case discretion without explanation. While prior registrations do not control, they do form part of the backdrop against which reasoned decision-making is assessed.

    Charles Gideon Korrell notes that this case may ultimately force the Board to articulate a clearer framework for evaluating when widespread third-party use negates source significance, and when it merely reflects a crowded but registrable field. That guidance, if it emerges on remand, could shape trademark prosecution strategy well beyond this case.

    Looking Ahead

    On remand, the Board faces an unenviable task. It must either articulate a principled standard that explains why FUCK cannot function as a mark for these goods, or reconsider its refusal in light of a clarified framework. Either way, the decision will likely become a reference point for future failure-to-function disputes involving ubiquitous language.

    For now, In re Brunetti stands as a reminder that trademark law, for all its cultural entanglements, is still administrative law at its core. Even when the answer feels obvious, the agency must show its work.

    Charles Gideon Korrell believes that insistence on articulated standards, rather than intuitive judgments, is what ultimately keeps trademark law predictable enough to function in a crowded and expressive marketplace. Whether the Board can deliver that clarity on remand remains to be seen.

    By Charles Gideon Korrell

  • Laboratory Corp. of America Holdings v. Qiagen Sciences, LLC: When “Identical” Means Identical—and the Doctrine of Equivalents Is Not a Jury Mulligan

    Laboratory Corp. of America Holdings v. Qiagen Sciences, LLC: When “Identical” Means Identical—and the Doctrine of Equivalents Is Not a Jury Mulligan

    The Federal Circuit’s decision in Laboratory Corp. of America Holdings v. Qiagen Sciences, LLC, No. 23-2350 (Fed. Cir. Aug. 13, 2025), offers a sharp reminder that not every jury verdict survives appellate scrutiny, particularly where infringement theories stretch claim language or rely on generalized expert testimony. In a sweeping reversal, the court vacated a Delaware jury’s willful infringement verdict covering two molecular diagnostics patents and directed entry of judgment as a matter of law (JMOL) of non-infringement for both. The opinion is a detailed roadmap for litigators navigating claim construction disputes, doctrine-of-equivalents proof, and the limits of “working together” theories of infringement.

    Charles Gideon Korrell believes the decision underscores a broader Federal Circuit trend: courts are increasingly unwilling to let juries paper over claim-scope problems or evidentiary gaps with broad narratives about technical similarity or system-level functionality.

    Background: Two Patents, Two Theories, One Jury Verdict

    The patents at issue, U.S. Patent Nos. 10,017,810 and 10,450,597, relate to methods for preparing DNA samples for sequencing using enrichment techniques. Both patents focus on polymerase chain reaction (PCR) workflows employing various primers to selectively amplify regions of interest within a DNA sample.

    Qiagen sold accused kits used in DNA sample preparation. After a five-day trial, the jury found that Qiagen willfully infringed the ’810 patent under the doctrine of equivalents and willfully and literally infringed the ’597 patent. The jury rejected Qiagen’s invalidity defenses and awarded approximately $4.7 million in damages. The district court denied Qiagen’s renewed JMOL motions, and Qiagen appealed.

    On appeal, the Federal Circuit reversed across the board, holding that no reasonable jury could have found infringement of either patent on the evidence presented.

    Claim Construction Is a Judicial Function, Not a Jury Question

    The court began with the ’810 patent, which required a “second target-specific primer” having a nucleotide sequence “identical to a second sequencing primer.” Qiagen’s accused primer was 19 nucleotides long, while the referenced sequencing primer was 34 nucleotides long. Labcorp argued that “identical” could include identity to a portion of the sequencing primer, and the district court permitted the jury to decide whether that interpretation was reasonable.

    That was error.

    Relying on O2 Micro International Ltd. v. Beyond Innovation Technology Co., the Federal Circuit reiterated that when the parties raise a real dispute over claim scope, it is the court’s job to resolve it. Allowing the jury to decide whether “identical” could mean “identical to a portion” impermissibly delegated claim construction to the factfinder.

    The panel emphasized that the intrinsic record differentiated between sequences that must be “identical” and those that need only be “identical to a portion.” Reading the “portion” modifier into an unmodified term would render other claim language superfluous, violating settled claim construction principles. As the court explained, where the claims and specification use different words to denote different degrees of similarity, courts must give effect to those differences.

    Charles Gideon Korrell notes that this portion of the opinion is particularly valuable for litigators confronting “plain meaning” arguments at trial. Even when courts defer claim construction disputes to trial, unresolved scope disagreements can resurface post-verdict with decisive force.

    Doctrine of Equivalents: Particularized Proof Still Matters

    The jury’s infringement finding for the ’810 patent rested entirely on the doctrine of equivalents. That theory fared no better on appeal.

    Citing Warner-Jenkinson Co. v. Hilton Davis Chemical Co. and the Federal Circuit’s more recent decision in VLSI Technology LLC v. Intel Corp., the panel stressed that equivalence is the exception, not the rule. Proof must be limitation-by-limitation and supported by particularized testimony showing that the accused element performs substantially the same function, in substantially the same way, to achieve substantially the same result.

    Labcorp’s evidence fell short on all three prongs.

    Functionally, the claimed “second target-specific primer” was designed to anneal to a known target sequence and increase specificity by enriching target DNA over non-target DNA. Qiagen’s accused primer, by contrast, served to make DNA fragments compatible with sequencing instruments and did not provide target specificity. Labcorp’s own expert conceded that the accused primer did not bind to the native target sequence.

    On “way,” the court found that the accused primer operated differently, binding to a common sequence added during amplification rather than annealing directly to the target region. And on “result,” the accused primer amplified any DNA fragment containing the common sequence, including off-target products, undermining any claim of substantially similar outcomes.

    The court rejected Labcorp’s attempt to aggregate functions across multiple Qiagen primers, explaining that the doctrine of equivalents does not permit a patentee to stitch together the roles of distinct components to satisfy a single claim limitation.

    Charles Gideon Korrell observes that this analysis reinforces a recurring appellate message: generalized testimony that components “work together” will not rescue an equivalence theory where the claim requires a specific element to perform a specific role.

    Literal Infringement of the ’597 Patent: “Target-Specific” Means What It Says

    The Federal Circuit next turned to the ’597 patent, where the jury found literal infringement based on Qiagen’s forward primer (FP) allegedly satisfying the “target-specific primer” limitation.

    The district court relied on testimony that the FP “targets the ligated adaptor” and binds to only a small proportion of molecules in the sample. But the appellate court held that this evidence could not support the verdict under the court’s own claim construction.

    The claim construction required that a target-specific primer anneal to and mediate amplification of the nucleic acid of interest while not annealing to non-target sequences. Qiagen’s FP bound to an artificial adaptor sequence common to all DNA fragments, regardless of whether they contained the target sequence. That adaptor was not itself analyzed and therefore could not constitute the “target nucleic acid.”

    The court rejected the theory that binding to an adaptor attached to a target molecule sufficed. A primer that anneals indiscriminately to adaptor sequences does not become target-specific merely because those adaptors are attached to DNA fragments that happen to contain target regions.

    Nor could Labcorp rely on Qiagen’s gene-specific primers to fill the gap. The claim construction required the target-specific primer itself to perform the requisite functions, not to do so in concert with other primers. Allowing such bootstrapping would improperly rewrite the claim.

    Charles Gideon Korrell notes that this portion of the opinion is especially instructive for cases involving multi-component systems. Courts remain skeptical of infringement theories that rely on collective behavior when claims require individual components to meet defined functional criteria.

    JMOL as a Real Appellate Remedy

    Having found insufficient evidence of infringement for both patents, the Federal Circuit reversed the district court’s denial of JMOL and instructed entry of judgment of non-infringement. The panel did not reach Qiagen’s invalidity or damages arguments.

    For litigators, the case is a reminder that jury verdicts—particularly those grounded in technical complexity—are not immune from rigorous appellate review. Where claim construction errors or evidentiary deficiencies exist, JMOL remains a potent corrective tool.

    Charles Gideon Korrell believes Labcorp v. Qiagen fits squarely within a growing line of Federal Circuit decisions emphasizing disciplined claim construction and demanding infringement proof. It also illustrates the court’s continued reluctance to allow the doctrine of equivalents to blur claim boundaries that patentees chose during prosecution.

    Takeaways

    Several practical lessons emerge:

    First, unresolved claim construction disputes are dangerous. Allowing juries to decide the scope of contested terms invites reversal under O2 Micro.

    Second, doctrine-of-equivalents cases live or die on particularized evidence. Broad assertions of similarity, or reliance on system-level cooperation, will not satisfy the function-way-result test.

    Third, for literal infringement, claim limitations apply to individual components as claimed. Courts will not permit patentees to combine multiple accused elements to meet a single limitation absent clear claim language.

    Finally, post-verdict JMOL motions are not mere formalities. When properly preserved, they can reshape the entire outcome on appeal.

    As Charles Gideon Korrell notes, for IP litigators this decision is less about biotechnology and more about fundamentals: words matter, evidence matters, and juries cannot be asked to fix what claims and proof leave undone.

    By Charles Gideon Korrell