Technology & Information Law Blog by Charles Gideon Korrell

Tag: CAFC

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

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

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

    The Patent and the Alleged Error

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

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

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

    The Federal Circuit’s Framework for Judicial Correction

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

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

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

    Error Evident on the Face of the Patent

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

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

    Only One Reasonable Correction

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

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

    PTO Denial Does Not Preclude Judicial Correction

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

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

    Distinguishing Chef America

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

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

    Practical Implications

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

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

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

    By Charles Gideon Korrell

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

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

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

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

    Background: From Institution to Deinstitution

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

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

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

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

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

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

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

    Due Process: No Property Interest in Interim Guidance

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

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

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

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

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

    The APA Arguments: An End-Run Denied

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

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

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

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

    Practical Takeaways

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

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

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

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

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

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

    By Charles Gideon Korrell

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

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

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

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

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

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

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

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

    The Challengers’ Rebuttal: Verbs Matter

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

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

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

    Major Questions Without Saying “Major Questions”

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

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

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

    Remedies and Reviewability

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

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

    Reading the Tea Leaves

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

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

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

    What Comes Next

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

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

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

    By Charles Gideon Korrell

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

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

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

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

    The Core Dispute: Collaboration Versus Inventive Identity

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

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

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

    Reaffirming Land and Its Progeny

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

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

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

    Evidentiary Burdens and the Inventorship Trap

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

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

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

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

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

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

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

    MPEP Reliance and Procedural Fairness

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

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

    Why This Decision Matters

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

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

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

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

    Takeaways

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

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

    By Charles Gideon Korrell

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

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

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

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

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

    The Technology and the Asserted Claims

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

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

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

    The District Court’s Construction

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

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

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

    Federal Circuit Analysis: Implicit Lexicography

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

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

    Here, the court found that standard satisfied.

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

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

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

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

    Judicial Estoppel: Too Late, Too Thin

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

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

    Jurisdictional Cleanup

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

    Drafting Lessons: When Good Writing Goes Bad

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

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

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

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

    Practical Takeaways

    Several practical lessons emerge from this decision:

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

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

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

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

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

    Conclusion

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

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

    By Charles Gideon Korrell

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

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

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

    Background and Procedural Posture

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

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

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

    Jurisdiction and the Shadow of Section 314(d)

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

    Timeliness and the Failure of the Recusal Challenge

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

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

    Executive Branch Ethics Rules and De Minimis Interests

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

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

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

    Due Process Arguments Rejected

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

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

    Harmless Error and the Absence of Vacatur

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

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

    The Real Error: Failure to Consider Copying Evidence

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

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

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

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

    Remand and Practical Implications

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

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

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

    By Charles Gideon Korrell

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

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

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

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

    Background and the Asserted Patents

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

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

    Claim Construction and the “Boss” Terms

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

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

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

    Prosecution Disclaimer and Integral Structures

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

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

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

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

    Temporal Reach of Disclaimer Across the Family

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

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

    Extending the Disclaimer to Related Terms

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

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

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

    Indefiniteness: Sliding and “Causes”

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

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

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

    Practical Takeaways

    The Federal Circuit’s decision delivers several practical lessons.

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

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

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

    By Charles Gideon Korrell

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

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

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

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

    Background: From NDA to Patent Filings

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

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

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

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

    Jurisdiction First: Anti-SLAPP Denials as Collateral Orders

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

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

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

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

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

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

    The Merits: Step One Means Step One

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

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

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

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

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

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

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

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

    What the Court Did Not Decide

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

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

    Implications for Patent and Trade Secret Litigation

    This decision carries several practical implications.

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

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

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

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

    Conclusion

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

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

    By Charles Gideon Korrell

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

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

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

    Background and Procedural History

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

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

    That approach proved fatal on appeal.

    The Federal Circuit’s Framing of the Issue

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

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

    ParkerVision and the Burden-of-Proof Divide

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

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

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

    Kroy and “Immaterially Different” Claims

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

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

    Why the District Court’s Approach Failed

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

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

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

    Claim Construction Adds Another Barrier to Preclusion

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

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

    Survival of IPR Does Not Change the Analysis

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

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

    What Happens on Remand

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

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

    Practical Takeaways

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

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

    By Charles Gideon Korrell

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

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

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

    Background: FRAP as the Claimed Innovation

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

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

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

    Written Description: Possession Limited to Carbon Blocks

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

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

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

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

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

    Enablement: Undue Experimentation Beyond Carbon Blocks

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

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

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

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

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

    The Functional Genus Trap

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

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

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

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

    Practical Takeaways

    Several practical lessons emerge from the decision:

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

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

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

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

    Conclusion

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

    By Charles Gideon Korrell