Technology Information Law Blog by Charles Gideon Korrell

Tag: CAFC

  • Janssen v. Teva: Federal Circuit Affirms Validity of Paliperidone Palmitate Dosing Regimen Patent

    Janssen v. Teva: Federal Circuit Affirms Validity of Paliperidone Palmitate Dosing Regimen Patent

    In a significant ruling for pharmaceutical patent litigation, the Federal Circuit in Janssen Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA, Inc., Nos. 25-1228, 25-1252 (Fed. Cir. July 8, 2025), affirmed the district court’s determination that U.S. Patent No. 9,439,906 (“the ’906 patent”)—which claims specific dosing regimens for long-acting injectable formulations of the antipsychotic paliperidone palmitate—is not invalid for obviousness. This opinion resolves Teva’s second appeal in a protracted Hatch-Waxman dispute and clarifies the limited applicability of the presumption of obviousness based on overlapping numerical ranges.

    Charles Gideon Korrell observes that the Federal Circuit’s ruling is particularly notable for its detailed discussion of when, and under what conditions, a presumption of obviousness may apply in the pharmaceutical dosing context—a context far removed from the traditional realm of alloy compositions and manufacturing parameters where such presumptions originated.

    Background and Procedural History

    Janssen Pharmaceuticals sued Teva in 2018, asserting that Teva’s Abbreviated New Drug Application (ANDA) infringed the ’906 patent under the Hatch-Waxman Act. Teva stipulated to infringement but challenged the validity of all 21 claims on obviousness grounds, and additionally challenged claims 19–21 for indefiniteness.

    After a bench trial, the district court upheld the patent’s validity. On initial appeal, the Federal Circuit affirmed the indefiniteness ruling but remanded for reconsideration of obviousness. See Janssen Pharms. Inc. v. Teva Pharms. USA, Inc., 97 F.4th 915 (Fed. Cir. 2024). On remand, the district court again upheld the patent’s validity, and Teva appealed a second time—joined by Mylan Laboratories Ltd., which had agreed to be bound by the outcome of the Teva case.

    The ’906 Patent and the Claimed Invention

    The ’906 patent addresses the challenge of noncompliance in schizophrenia treatment due to the frequent dosing requirements of oral medications. It claims a specific regimen using long-acting injectable formulations of paliperidone palmitate, administered via intramuscular injection.

    The representative claims require:

    • A first loading dose of 150 mg-eq. on day 1 (deltoid),
    • A second loading dose of 100 mg-eq. on days 6–10 (deltoid),
    • A first maintenance dose of 25–150 mg-eq. one month later (deltoid or gluteal), and
    • Optional particle size and formulation parameters (claims 19–21).

    Teva argued these regimens were obvious in light of prior art including:

    1. The ’548 clinical trial protocol (Phase III study),
    2. Janssen’s own prior U.S. Patent No. 6,555,544,
    3. WO 2006/114384 (WO ’384), which disclosed dose volumes of 25–150 mg-eq.

    Teva’s Primary Argument: Overlapping-Range Presumption

    Teva’s central contention was that the district court erred by not applying a presumption of obviousness based on overlapping numerical ranges. Teva pointed to precedents like In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003), and E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996 (Fed. Cir. 2018), to argue that the claimed 150/100 mg-eq. loading regimen was merely an optimization within known ranges.

    The Federal Circuit rejected this argument, explaining that:

    • The overlapping-range presumption applies typically in composition or process optimization scenarios.
    • The claimed regimen involved not just a range of numbers but a specific sequence of two unequal, decreasing loading doses.
    • Prior art, including the ’548 protocol, disclosed three equal loading doses—not the claimed 150 followed by 100 mg-eq.

    Because the combination of specific dosing amounts, sequence, and injection sites formed an integrated, multi-step treatment strategy, the court found the presumption inapplicable.

    As Charles Gideon Korrell explains, the court’s decision underscores that context matters: a presumption rooted in numerical overlap does not override the requirement to evaluate inventive combinations within dosing regimens, especially in the unpredictable arts of pharmacology.

    Substantive Obviousness Analysis

    Having refused to apply the presumption, the Federal Circuit reviewed the full obviousness analysis. It affirmed the district court’s findings that Teva failed to prove:

    1. Motivation to Combine: No prior art taught or suggested the use of decreasing loading doses for long-acting injectables, particularly in acutely ill patients. While Teva cited articles on haloperidol decanoate and olanzapine, those involved stabilized patients or immediate-release medications.
    2. Reasonable Expectation of Success: The prior art lacked safety or efficacy data for the claimed regimen. Testimony supported the view that dosing with two injections (150 mg-eq. followed by 100 mg-eq.) would raise concerns about accumulation and side effects.
    3. Application to Renally Impaired Patients (Claims 10 & 13): The court found insufficient motivation to adjust the prior art’s dosing for patients with mild renal impairment. Teva’s expert conceded that moderate to severe renal impairment would contraindicate use of the product entirely.
    4. Particle Size Claims (20 & 21): Because these depended on the previously upheld claims, the court summarily affirmed their validity under In re Fritch, 972 F.2d 1260 (Fed. Cir. 1992).

    Clarifying the Boundaries of Obviousness Doctrines

    This case contributes to the ongoing dialogue on the boundaries of the overlapping-range presumption. The Federal Circuit emphasized that:

    • The presumption is rooted in expectations of routine optimization, which must be supported by the record.
    • Application is limited in contexts involving complex treatment regimens, particularly where multiple variables interact in non-linear ways.
    • Courts must still apply the traditional Graham factors and cannot bypass fact-intensive analysis.

    As Charles Gideon Korrell notes, the ruling affirms that even where prior art discloses elements within claimed ranges, nuanced differences in sequence and formulation matter—especially in unpredictable arts like pharmaceuticals.

    Conclusion

    The Federal Circuit’s opinion in Janssen v. Teva provides a thoughtful reaffirmation of the evidentiary burdens facing ANDA challengers in Hatch-Waxman litigation. It clarifies the scope of the overlapping-range presumption, distinguishing optimization within compositions from integrated pharmaceutical regimens. For patent holders in the life sciences sector, the decision provides some assurance that precise treatment protocols—backed by clinical insight and carefully drafted claims—can withstand obviousness challenges even in the face of seemingly similar prior art.

    By Charles Gideon Korrell

  • Egenera, Inc. v. Cisco Systems, Inc.: Federal Circuit Affirms Noninfringement Verdict on All Asserted Claims

    Egenera, Inc. v. Cisco Systems, Inc.: Federal Circuit Affirms Noninfringement Verdict on All Asserted Claims

    In a resounding victory for Cisco Systems, the Federal Circuit affirmed a district court’s ruling that Cisco’s Unified Computing System (“UCS”) does not infringe U.S. Patent No. 7,231,430, held by Egenera, Inc. The decision, issued on July 7, 2025, capped nearly a decade of litigation over Egenera’s patented “virtual processing area network” technology.

    The ruling affirms summary judgment of noninfringement on claims 1 and 5, and a jury verdict of noninfringement on claims 3 and 7. Egenera’s post-trial motions for judgment as a matter of law (JMOL) and a new trial were also rejected. Writing for a unanimous panel, Judge Stark carefully dissected each of Egenera’s arguments and concluded that they either failed on the facts or had been waived procedurally.

    As Charles Gideon Korrell notes, this case exemplifies the perils of failing to preserve claim construction arguments and demonstrates the rigorous evidentiary standards patent plaintiffs must meet at both the summary judgment and trial stages.

    Background: The ’430 Patent and Cisco’s UCS

    Egenera’s ’430 patent claims a platform for deploying virtual networks by configuring processors and internal communications via software, rather than physically rewiring connections. Claims 1 and 3 are system claims, while claims 5 and 7 are method claims. Central to all four is the concept of virtual deployment and the emulation of Ethernet functionality.

    Cisco’s UCS, according to Egenera, performed similar virtualized management through software-defined networking, using NICs and virtual NICs (vNICs) to group servers into VLANs. But Cisco countered that the claimed Ethernet emulation and processor behavior were not met.

    Summary Judgment on Claims 1 and 5: Failure to Emulate Ethernet Functionality at the CPU Level

    The district court granted Cisco’s motion for summary judgment on claims 1 and 5 after construing “computer processor” to mean “CPU” and determining that Egenera had not shown the CPUs themselves “emulate Ethernet functionality.”

    Egenera argued that use of Ethernet by CPUs satisfied the claim limitation. But the court held that use ≠ emulation and that Egenera failed to offer evidence showing that UCS’s CPUs performed the required emulation. Instead, the Ethernet functionality resided in the NICs—separate from the CPUs.

    On appeal, Egenera stuck to the argument that the evidence supported a finding of emulation but notably did not challenge the underlying claim construction of “emulate Ethernet functionality.” As the Federal Circuit emphasized:

    “Egenera has not, even on appeal, argued that claim construction is necessary, let alone presented a meaningful claim construction analysis of ‘emulate.’”

    This procedural misstep proved fatal. The court reiterated that a party cannot raise new claim construction issues for the first time on appeal, especially when it consistently characterized the dispute as factual in both the district court and its appellate briefing.

    This part of the ruling is a cautionary tale. As Charles Gideon Korrell emphasizes, practitioners should be wary of framing claim scope disputes as factual disagreements. The failure to preserve and present a proper construction argument can doom an entire case.

    Trial on Claims 3 and 7: Topology Limitation Undermines Infringement

    Claims 3 and 7 required that the processors be “programmed” to establish a specific “virtual local area network topology.” At trial, Cisco presented three alternative noninfringement theories: lack of (1) the topology limitation, (2) modifying messages, and (3) extracting and identifying messages. The jury returned a general verdict of noninfringement.

    Under black-letter law (see i4i Ltd. P’ship v. Microsoft Corp.), a general verdict must be affirmed if supported by substantial evidence on any theory. The Federal Circuit thus focused on the “topology” issue.

    Cisco’s evidence showed that its UCS established network topologies at the NIC level—not at the processor level as required by the claims. Egenera countered with arguments that software loaded into the CPU satisfied the programming requirement, but the jury was free to disbelieve this theory. As the panel explained, “drawing all reasonable inferences in favor of Cisco,” substantial evidence supported the verdict.

    Egenera also argued that the district court erred by reading an “intent” requirement into the claim, but the Federal Circuit rejected this characterization, finding that the court merely summarized what Cisco witnesses had testified to: that CPUs were not programmed to establish topology.

    Again, Charles Gideon Korrell observes that the outcome turned on careful adherence to the burden of proof and deference to the jury’s prerogative to weigh competing expert testimony.

    Denial of New Trial: Procedural Missteps and Lack of Prejudice

    Egenera’s motion for a new trial fared no better. The district court had broad discretion under First Circuit law, and Egenera could not demonstrate that any alleged error rose to the level of a miscarriage of justice.

    Among Egenera’s arguments:

    1. Verdict Against the Weight of Evidence: Rejected due to relevance of Cisco’s evidence and proper jury instructions.
    2. Curative Instruction: Egenera claimed that a voir dire statement by the judge equating infringement with copying required correction. But it waited 10 days and failed to object contemporaneously, and the court’s final instructions correctly outlined the law.
    3. Omitted Jury Instruction on Later Patents: Egenera requested an instruction that a product can infringe even if it is covered by a subsequent patent. While substantively correct, the omission was found not to be prejudicial given the adequacy of the overall instructions.
    4. Improper Expert Testimony from Lay Witnesses: The district court found that Egenera had waived this argument by failing to make timely and specific objections at trial. The Federal Circuit upheld this decision, citing Fusco v. GM Corp. and First Circuit precedent allowing trial judges to enforce procedural forfeiture.
    5. Improper Closing Arguments: Cisco was accused of making veiled references to Egenera’s funding and characterizing it as a “bad bet by venture capitalists.” But these arguments did not literally violate pretrial orders, and Egenera failed to object contemporaneously. The court found no plain error.

    Charles Gideon Korrell emphasizes that the procedural posture of these objections matters deeply. Litigants who fail to timely object cannot later complain that errors warrant a new trial, especially where the court provides accurate and complete jury instructions.

    Key Takeaways

    1. Preserve Claim Construction Arguments Early and Clearly: Egenera’s failure to raise and brief the meaning of “emulate Ethernet functionality” effectively waived the issue. The Federal Circuit will not rescue an underdeveloped claim construction theory after the fact.
    2. Substantial Evidence Deference is High: On a general verdict, a plaintiff must show the absence of support for every alternative noninfringement theory. Egenera failed to overcome the substantial evidence supporting Cisco’s topology argument.
    3. Procedural Discipline Matters: Courts require timely objections to preserve error. Pretrial motions in limine and vague references to disputed issues are not enough.
    4. Appeals Framed as Factual Disputes Are Difficult to Win: Egenera characterized its appeal as a sufficiency-of-evidence question, not a legal error in construction or instruction, which narrowed its ability to persuade the appellate court.

    As Charles Gideon Korrell observes, this decision reinforces the Federal Circuit’s institutional emphasis on claim construction clarity, trial discipline, and respect for jury fact-finding. Cisco’s clean win on all claims and all fronts is a blueprint for defending against complex system and method patents where the accused functionality is modular and distributed.

    By Charles Gideon Korrell

  • Realtek Semiconductor Corp. v. ITC: Federal Circuit Declines Jurisdiction Over Sanctions Appeal

    Realtek Semiconductor Corp. v. ITC: Federal Circuit Declines Jurisdiction Over Sanctions Appeal

    In Realtek Semiconductor Corporation v. International Trade Commission, No. 23-1187 (Fed. Cir. June 18, 2025), the Federal Circuit dismissed Realtek’s appeal for lack of jurisdiction, holding that a denied sanctions request under Section 337(h) of the Tariff Act of 1930 is not reviewable by the Federal Circuit when it is not tied to a final determination on the merits concerning unfair trade practices. The ruling clarifies the bounds of the court’s jurisdiction under 28 U.S.C. § 1295(a)(6) and reaffirms the narrow interpretation of “final determinations” appealable under 19 U.S.C. § 1337(c).

    Background

    Realtek sought sanctions against Future Link Systems, LLC during an ITC investigation (Inv. No. 337-TA-1295). The dispute centered on a license agreement between Future Link and non-party MediaTek, Inc., in which MediaTek agreed to pay Future Link if it initiated litigation against Realtek. Future Link later initiated an ITC action against Realtek but voluntarily terminated the investigation after entering into a settlement with a third party. Realtek then moved for sanctions, arguing that Future Link’s complaint was improperly motivated by the MediaTek agreement.

    While the ALJ found the agreement “alarming” and questioned its legality, he denied sanctions, concluding the evidence did not show the agreement motivated the complaint. The Commission declined to review the ALJ’s ruling, effectively ending the sanctions proceeding. Realtek appealed, seeking a monetary sanction against Future Link.

    The Jurisdictional Framework

    Realtek relied on 28 U.S.C. § 1295(a)(6), which grants the Federal Circuit exclusive jurisdiction “to review the final determinations of the United States International Trade Commission relating to unfair practices in import trade, made under section 337 of the Tariff Act of 1930.”

    The court explained that this jurisdiction is confined to “final determinations” under specific subsections of 19 U.S.C. § 1337(c), namely:

    • § 1337(d): Exclusion orders
    • § 1337(e): Cease and desist orders
    • § 1337(f): Enforcement proceedings
    • § 1337(g): Default determinations

    These sections govern determinations that affect the importation or exclusion of articles. The court emphasized that its jurisdiction hinges on whether a Commission decision concerns such final import-related outcomes.

    The Court’s Analysis

    Judge Bryson, writing for the panel, held that Realtek’s appeal did not fall within this framework:

    1. No “Final Determination” Tied to Import Exclusion:
      The denial of sanctions was not related to the exclusion or non-exclusion of any articles. The proceeding had been terminated voluntarily before any exclusion determination. As such, the ruling on sanctions did not qualify as a “final determination” under § 1337(c).
    2. Viscofan Precedent:
      The court found the case analogous to Viscofan, S.A. v. ITC, 787 F.2d 544 (Fed. Cir. 1986), where a decision about document declassification was held outside the scope of the Federal Circuit’s jurisdiction because it had no effect on import exclusion. As in Viscofan, Realtek’s appeal addressed a collateral issue — sanctions — not tied to a final merits determination.
    3. No Jurisdiction Under § 1337(h):
      Realtek’s fallback argument was that § 1337(c)’s language stating that decisions under subsection (h) “shall also be reviewable in accordance with section 706 of title 5” implied Federal Circuit review. But the court rejected this reading. The phrase merely invokes the standard of review under the Administrative Procedure Act (APA); it does not designate which court has jurisdiction. The court pointed out that when Congress intended to confer appellate jurisdiction, it did so expressly — as it did for §§ 1337(d)-(g) but not for § 1337(h).
    4. No Ancillary Jurisdiction:
      While the Federal Circuit has held that it may review matters “ancillary” to a valid final determination — such as bond forfeitures or discovery sanctions that are part of a merits determination — that was not the case here. The ITC proceeding was terminated before any such final determination was issued. Realtek itself conceded that it was not invoking ancillary jurisdiction.

    Alternative Forum: District Court?

    The Federal Circuit noted that the statute leaves open the question of where judicial review of sanctions decisions under § 1337(h) may occur if not at the Federal Circuit. In analogous contexts, courts have held that where a statute does not assign appellate jurisdiction to a particular court, challenges must begin in federal district court under the general federal question jurisdiction provision, 28 U.S.C. § 1331. The court cited Micei Int’l v. Department of Commerce, 613 F.3d 1147 (D.C. Cir. 2010), and Watts v. SEC, 482 F.3d 501 (D.C. Cir. 2007), as examples of this “default rule.”

    It also pointed to Jubilant DraxImage Inc. v. ITC, 396 F. Supp. 3d 113 (D.D.C. 2019), where a sanctions-type challenge to the ITC was brought in district court — implicitly confirming that the district court may be the proper forum for such issues.

    Implications and Takeaways

    This decision reinforces the narrow jurisdiction of the Federal Circuit over ITC proceedings. A few key points emerge:

    • Only “final determinations” affecting the importation of goods fall under the Federal Circuit’s jurisdiction.
    • Sanctions decisions unconnected to an exclusion order or cease-and-desist order are not appealable to the Federal Circuit.
    • Realtek may still pursue relief, but only in federal district court — not in the appellate court of specialized jurisdiction.
    • The ruling reflects a consistent line of precedent, including Viscofan, Amarin, Amgen, and Nutrinova, that distinguishes between substantive ITC trade rulings and collateral procedural matters.

    Charles Gideon Korrell believes that this decision may provide clearer guidance for litigants navigating procedural disputes before the ITC. Parties seeking sanctions in ITC proceedings — particularly when the underlying investigation has been terminated — must now carefully consider whether appellate review lies in the district courts rather than in the Federal Circuit.

    Moreover, the decision’s careful parsing of statutory language and legislative history signals the court’s strict approach to jurisdictional interpretation. As Charles Gideon Korrell notes, when Congress chooses to list certain subsections as appealable and omits others, courts will not presume jurisdiction unless clearly granted.

    Ultimately, the Realtek case is a cautionary tale for parties pursuing procedural remedies within the ITC. As Charles Gideon Korrell observes, where the procedural issue is not tethered to a merits-based exclusion or enforcement ruling, the Federal Circuit is unlikely to entertain the appeal — regardless of how meritorious the underlying issue may be.

    By Charles Gideon Korrell

  • Optis Cellular Technology v. Apple Inc.: Federal Circuit Orders New Trial on Infringement and Damages Due to Unanimity Violation and Improper Evidence

    Optis Cellular Technology v. Apple Inc.: Federal Circuit Orders New Trial on Infringement and Damages Due to Unanimity Violation and Improper Evidence

    The Federal Circuit’s June 16, 2025, decision in Optis Cellular Technology, LLC v. Apple Inc., Nos. 2022-1904, 2022-1925, vacates a $300 million damages judgment in a high-stakes standard-essential patent (SEP) case and mandates a new trial on both infringement and damages. The court found that the Eastern District of Texas violated Apple’s constitutional right to a unanimous jury verdict and improperly admitted prejudicial evidence, including a large Apple-Qualcomm settlement. The ruling also carries broader implications for the treatment of abstract claims under § 101 and functional claim limitations under § 112 ¶ 6.

    Key Takeaway

    The Federal Circuit vacated both the infringement and damages verdicts because the jury verdict form failed to ensure unanimity on specific claims, and because the district court improperly admitted a high-dollar Apple-Qualcomm settlement agreement. The court also held two of the asserted claims invalid under § 101, reversed a § 112 ¶ 6 ruling, and rejected the patentee’s request to reinstate a previously set-aside $506 million award.

    Background

    Optis, asserting a suite of five LTE standard-essential patents, sued Apple in the Eastern District of Texas in 2019. After an initial trial in 2020, the jury awarded Optis $506.2 million in damages, finding infringement and willfulness. However, the trial court granted Apple a new trial on damages due to improper exclusion of FRAND evidence. A second trial in 2021 resulted in a $300 million lump-sum verdict.

    Apple appealed, challenging liability, damages, claim construction, and admissibility of certain evidence. Optis cross-appealed, seeking reinstatement of the original damages verdict.

    The Verdict Form and Jury Unanimity Violation

    The Federal Circuit held that the district court erred by using a single verdict question that asked whether Apple infringed “ANY of the asserted claims” without distinguishing between the five asserted patents. This structure permitted a finding of liability even if jurors disagreed on which patents were infringed, violating Apple’s right to a unanimous verdict under the Seventh Amendment and Federal Rule of Civil Procedure 48(b):

    “The verdict form instructed the jury to find Apple liable for infringement regardless of whether all jurors agreed that Apple was infringing the same patent.” (Slip op. at 15)

    Despite the parties’ joint request for patent-by-patent questions, the district court rejected that format. The Federal Circuit deemed this a clear legal error warranting vacatur of the liability judgment and a new trial.

    Damages Verdict Also Vacated

    Because liability was vacated, the court also vacated the $300 million damages verdict. Notably, the district court had instructed the jury to assume all five patents were infringed for purposes of damages—an instruction that now lacks any valid liability finding to support it.

    Further, the court held that the district court abused its discretion under FRE 403 by admitting a high-value Apple-Qualcomm settlement agreement and allowing Optis’s expert to rely on it:

    “[T]he probative value of the Apple-Qualcomm settlement agreement and Mr. Kennedy’s testimony concerning the same is substantially outweighed by the risk of unfair prejudice.” (Slip op. at 36)

    This agreement, which settled global disputes unrelated to the patents-in-suit, was deemed minimally probative and highly prejudicial.

    Patent Eligibility Under § 101

    The court reversed the district court’s denial of Apple’s § 101 motion on claims 6 and 7 of U.S. Patent No. 8,019,332, finding them directed to an abstract mathematical formula:

    “We conclude that the claims are directed to the abstract idea—a mathematical formula.” (Slip op. at 24)

    Charles Gideon Korrell notes that the Federal Circuit found the claims failed Alice step one and remanded for further proceedings on step two.

    Means-Plus-Function and § 112 ¶ 6

    In another reversal, the Federal Circuit held that the term “selecting unit” in claim 1 of U.S. Patent No. 8,411,557 invoked § 112 ¶ 6. It found “unit” to be a nonce term that fails to connote sufficient structure:

    “‘Selecting unit’ in the claim at issue here invokes § 112 ¶ 6.” (Slip op. at 31)

    The district court had relied on a prior Eastern District ruling, but the Federal Circuit found that opinion unpersuasive, particularly in light of Optis’s own assertion that the “unit” could be implemented in hardware or software. The matter was remanded to determine if the specification provides sufficient structure.

    Claim Construction Affirmed

    The court affirmed the construction of a key term in claim 8 of U.S. Patent No. 8,102,833, rejecting Apple’s argument that the mapping of ACK/NACK control signals required a specific start position.

    Optis’s Cross-Appeal Rejected

    Optis had sought reinstatement of the original $506.2 million award from the first trial, but the Federal Circuit dismissed the cross-appeal, concluding that:

    “[T]he first damages judgment presented the same verdict form issue… and thus cannot be reinstated.” (Slip op. at 36)

    Practical Implications

    This decision reinforces several critical points for SEP litigation and patent damages trials:

    1. Verdict Form Precision Matters: Patent plaintiffs must ensure verdict forms distinguish each asserted patent or claim to avoid violating the defendant’s right to unanimity.
    2. Evidence of Other Settlements Is Risky: Courts will scrutinize the use of large dollar-value settlements, especially when they involve different technologies or were driven by non-comparable litigation pressure.
    3. FRAND Damages Must Align with Liability: Damages awards must correspond to actual findings of infringement, particularly in FRAND cases.
    4. § 101 and § 112 Scrutiny Continues: The court’s reversals on patent eligibility and means-plus-function interpretation signal a continued willingness to invalidate improperly drafted claims—even in complex SEP disputes.

    Charles Gideon Korrell notes that the Federal Circuit’s opinion emphasizes procedural fairness as much as substantive patent doctrine. Charles Gideon Korrell also observes that the court’s insistence on clarity in verdict forms may drive future litigants to pay closer attention to the architecture of jury questions.

    Conclusion

    The Federal Circuit’s decision in Optis v. Apple is a comprehensive rebuke of multiple aspects of the trial court’s handling of a major SEP case. By ordering a new trial on both liability and damages and reversing several key legal rulings, the opinion sets important precedent for how SEP litigation should be conducted and how damages should be assessed.

    By Charles Gideon Korrell

  • Ancora Technologies, Inc. v. Roku, Inc.: Federal Circuit Vacates PTAB Decision on Licensing Nexus in Obviousness Analysis

    Ancora Technologies, Inc. v. Roku, Inc.: Federal Circuit Vacates PTAB Decision on Licensing Nexus in Obviousness Analysis

    In the June 16, 2025 decision of Ancora Technologies, Inc. v. Roku, Inc., the Federal Circuit vacated and remanded two inter partes review (IPR) decisions by the Patent Trial and Appeal Board (PTAB) that had found claims of U.S. Patent No. 6,411,941—owned by Ancora Technologies, Inc.—to be unpatentable as obvious. While the Federal Circuit affirmed the Board’s construction of the key term “agent” and upheld its prima facie case of obviousness based on prior art, it held that the PTAB legally erred in dismissing Ancora’s license evidence as lacking a sufficient nexus to the claimed invention. This case offers important guidance on the evidentiary treatment of licenses as objective indicia of nonobviousness.

    The Patent at Issue: Software Licensing and BIOS Security

    Ancora’s ’941 patent addresses software license enforcement mechanisms by embedding license verification structures in the erasable, non-volatile memory of a computer’s BIOS. This technique is intended to secure software against unauthorized use without relying on more volatile or easily altered memory. The method described in claim 1 includes:

    1. Selecting a program in volatile memory (e.g., RAM),
    2. Using an “agent” to set up a verification structure (including at least one license record) in the erasable, non-volatile BIOS memory (e.g., EEPROM),
    3. Verifying the program using the verification structure, and
    4. Acting on the program based on the verification result.

    Claims 1–3, 6–14, and 16 were challenged and ultimately invalidated in IPRs filed by Nintendo, Roku, and VIZIO.

    The PTAB’s Decision: Obviousness Based on Hellman and Chou

    The PTAB found that the challenged claims were obvious over a combination of two prior art references:

    • Hellman (U.S. Patent No. 4,658,093): Discloses a system using hash functions and non-volatile memory to control software use based on allowed instances.
    • Chou (U.S. Patent No. 5,892,906): Describes BIOS-based security methods for verifying passwords and controlling hardware access.

    The Board determined that Hellman provided the base mechanism for license enforcement and that Chou taught the use of BIOS memory for secure storage. Ancora argued that this combination was inoperable and lacked a motivation to combine, but the Board found otherwise and rejected Ancora’s claims as obvious.

    The Board construed the term “agent” in the claims as “a software program or routine,” declining Ancora’s argument that the term should be limited to software running at the OS level. Relying on intrinsic evidence and dictionaries, the Board found no disavowal or redefinition requiring a narrower construction.

    Charles Gideon Korrell notes that the Federal Circuit gave deference to the Board’s reliance on extrinsic evidence, including industry definitions and expert declarations, and determined that “agent” was not limited to software-only or OS-level implementations. The court found substantial evidence supported the Board’s construction.

    Secondary Considerations: Licensing and the Nexus Requirement

    The Federal Circuit’s principal disagreement with the Board lay in its treatment of Ancora’s license agreements as objective indicia of nonobviousness.

    Ancora had presented multiple licenses entered into after extended litigation, many just before trial and with substantial royalty payments. The PTAB found that Ancora failed to show a nexus between these licenses and the specific claims of the ’941 patent, concluding that they could reflect business decisions to avoid litigation rather than recognition of the patent’s strength.

    The Federal Circuit sharply criticized this reasoning:

    “Licenses to the challenged patent then, unlike products or other forms of objective evidence of nonobviousness, do not require a nexus with respect to the specific claims at issue…”

    Citing LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51 (Fed. Cir. 2012) and Institut Pasteur v. Focarino, 738 F.3d 1337 (Fed. Cir. 2013), the court emphasized that actual licenses to the patented technology are highly probative of nonobviousness and should not be subject to the same parsing applied to commercial product evidence.

    In the court’s view, according to Charles Gideon Korrell, the Board erred by demanding a higher evidentiary burden than the law requires. Even if the licenses also referenced related patents or included redacted sections, that did not undermine the fact that they expressly covered the ’941 patent. The Board’s approach “too finely parsed” the record and ignored the licensing context: settlements reached after years of litigation and near trial dates, with substantial consideration paid.

    Charles Gideon Korrell explains that the Federal Circuit’s holding here confirms that the economic behavior of parties—especially sophisticated technology companies licensing patents to avoid trial—is relevant and weighty evidence of the patent’s nonobviousness, even where the license bundles multiple rights.

    Remedy and Remand

    Although the Federal Circuit affirmed the PTAB’s claim construction and the Board’s finding of a prima facie case of obviousness, it vacated the Board’s decision due to legal error in the analysis of secondary considerations. On remand, the PTAB must:

    1. Re-evaluate the nexus between the challenged claims and Ancora’s licenses under the proper legal standard,
    2. Weigh this licensing evidence, including both high- and low-value settlements, as part of its overall nonobviousness analysis.

    This remand could potentially alter the outcome if the Board concludes that the licenses provide significant objective evidence supporting the validity of the challenged claims.

    Conclusion

    The Federal Circuit’s decision in Ancora Technologies, Inc. v. Roku, Inc. underscores the importance of properly evaluating licensing evidence in an obviousness analysis. While upholding a broad construction of “agent” and affirming the prima facie obviousness of the claims, the court found fault with the PTAB’s overly narrow view of what constitutes a nexus between a patent and license agreements. The decision reinforces that real-world licensing behavior—especially in litigation contexts—can and should play a meaningful role in the nonobviousness inquiry.

    Charles Gideon Korrell believes this decision will have broad implications for how PTAB and district courts assess secondary considerations in IPR and invalidity proceedings. In particular, it may offer patent holders new avenues to bolster the validity of their claims with well-supported licensing histories.

    By Charles Gideon Korrell

  • V.O.S. Selections v. Trump: Sets Expedited En Banc Review of Tariff Orders After Staying CIT’s Injunction

    V.O.S. Selections v. Trump: Sets Expedited En Banc Review of Tariff Orders After Staying CIT’s Injunction

    In V.O.S. Selections, Inc. v. Trump, the Federal Circuit has now stayed the Court of International Trade’s injunctions and agreed to hear the government’s appeal on an expedited basis before the full court. This appeal by the Trump Administration follows the CIT’s landmark ruling that certain Executive Orders imposing tariffs were unlawful and issued a permanent injunction against their enforcement, a decision previously discussed in detail here.

    Briefing Deadlines:

    • Opening Brief (United States): : June 26, 2025
    • Response Briefs (Private Plaintiffs and State Plaintiffs): July 10, 2025
    • Reply Brief (United States): July 21, 2025

    Oral Argument:

    • Date: July 31, 2025
    • Time: 10:00 a.m.
    • Location: Courtroom 201
    • Argument Time: 45 minutes per side (including rebuttal), with counsel instructed to coordinate allocation among multiple parties on each side.

    Amicus Briefing:

    • Amicus briefs are permitted without leave of court, but must be filed on the same day as the principal brief they support. All briefs must comply with Federal Circuit Rule 29(b).

    Institutional Posture and Political Crosswinds

    Every order issued by the CAFC in this matter has been unanimous and per curiam. This strongly suggests to Charles Gideon Korrell that a calculated by the CAFC to attempt to maintain judicial cohesion in the face of a politically charged case that pits the federal judiciary against the Executive Branch’s expansive claims of trade authority.

    The initial stay granted to the government, allowing the tariffs to remain in effect, is not necessarily a predictor of the court’s final decision. Nonetheless, it hands the Executive a short-term win that avoids immediate disruption of the contested trade measures.

    Whatever the outcome at the Federal Circuit, this litigation has the hallmarks of a Supreme Court case in the making. The constitutional implications of executive power in trade, the procedural dimensions of judicial review, and the stark political framing of the dispute all but guarantee that the Supreme Court will be called upon to weigh in. And given the expedited schedule, Charles Gideon Korrell that petition could be filed as early as this fall.

    Conclusion

    The Federal Circuit has thus far responded to V.O.S. Selections v. Trump with urgency, unanimity, and institutional caution. The en banc court has preserved the Executive’s contested tariffs for now but is moving quickly toward a decision that will almost certainly shape the future of trade law and executive authority.

    By Charles Gideon Korrell

  • Mitek Systems, Inc. v. United Services Automobile Association: No Standing for Declaratory Non-Infringement Claims Based on Indirect Liability or Customer Indemnity

    Mitek Systems, Inc. v. United Services Automobile Association: No Standing for Declaratory Non-Infringement Claims Based on Indirect Liability or Customer Indemnity

    In a detailed and precedent-reinforcing opinion issued on June 12, 2025, the Federal Circuit in Mitek Systems, Inc. v. United Services Automobile Association, No. 23-1687, affirmed the dismissal of Mitek’s declaratory judgment action for lack of subject-matter jurisdiction. The court held that Mitek failed to establish a justiciable controversy under Article III and the Declaratory Judgment Act, either through a reasonable apprehension of infringement liability or through indemnity obligations to its customers. Even if jurisdiction had existed, the court found no abuse of discretion in the district court’s alternative decision to decline to hear the case.

    This ruling not only clarifies the standing requirements for declaratory judgment actions involving allegations of indirect patent infringement and indemnity but also limits the ability of suppliers to seek a judgment of non-infringement when their customers—not they—are the direct targets of patent enforcement.

    Background: Mitek and the MiSnap SDK

    Mitek Systems developed and licenses a software development kit (SDK) called MiSnap, which enables automatic image capture in mobile banking applications. Financial institutions such as Wells Fargo integrated MiSnap into their apps, some of which became targets of patent infringement suits by USAA, which owns a portfolio of patents relating to remote deposit capture technology.

    USAA’s litigation campaign included high-profile cases against banks such as Wells Fargo, PNC, and Truist, but USAA never directly sued Mitek. Nevertheless, during the Wells Fargo litigation, USAA relied on evidence involving MiSnap functionality and cited Mitek’s documentation in claim charts for some—but not all—limitations of the asserted claims. In response, Mitek filed a declaratory judgment action in the Eastern District of Texas, seeking a declaration that MiSnap does not infringe any valid claim of four USAA patents: U.S. Patent Nos. 8,699,779; 9,336,517; 9,818,090; and 8,977,571.

    First Appeal and Remand: Mitek I

    In the first appeal (Mitek I, 34 F.4th 1334 (Fed. Cir. 2022)), the Federal Circuit vacated the initial dismissal and remanded the case, instructing the district court to undertake a more fact-intensive inquiry into:

    • Mitek’s potential liability for direct, induced, or contributory infringement;
    • The nature of Mitek’s indemnity obligations to its customers;
    • Whether post-filing events extinguished any controversy; and
    • Whether discretionary dismissal was appropriate.

    The panel emphasized that both the factual record and legal analysis needed to focus more precisely on the role of MiSnap in the alleged infringement and the scope of the indemnity agreements at issue.

    Second Dismissal and Affirmance

    On remand, the district court (Chief Judge Rodney Gilstrap) once again dismissed the case, finding no subject-matter jurisdiction. The Federal Circuit, in an opinion authored by Judge Chen and joined by Judges Taranto and Schall, affirmed in full.

    No Reasonable Apprehension of Infringement

    The Federal Circuit methodically analyzed all three possible infringement theories and found each insufficient to confer standing.

    1. Direct Infringement

    There was no evidence that MiSnap alone performed all claim limitations of any asserted patent. Even Mitek acknowledged that USAA’s trial evidence against Wells Fargo attributed only some limitations to MiSnap. Moreover, several asserted claims included hardware components (e.g., “image capture device” or “presentation device”) that MiSnap, as a software SDK, could not meet. The panel agreed with the district court that no reasonable threat of direct infringement existed at the time of filing.

    2. Induced Infringement

    Citing Microsoft Corp. v. DataTern, Inc., 755 F.3d 899 (Fed. Cir. 2014), the court found that inducement claims require evidence that the accused party affirmatively encouraged or instructed customers to perform all claim limitations. Here, USAA had not cited Mitek’s documentation for all claim elements, and there was no indication that Mitek “took affirmative steps” to induce infringement.

    3. Contributory Infringement

    Contributory infringement under § 271(c) requires the accused product to lack substantial non-infringing uses. USAA and trial testimony in the Wells Fargo case confirmed that MiSnap was customizable and could be used in non-infringing ways (e.g., with manual capture). Accordingly, Mitek could not show the absence of non-infringing uses.

    As Charles Gideon Korrell notes, DataTern continues to serve as the touchstone for evaluating supplier-based declaratory judgment actions and reinforces the high burden to show inducement or contributory infringement.

    No Reasonable Potential for Indemnity-Based Standing

    Mitek also argued that it faced a reasonable likelihood of indemnity liability to its customers, particularly those sued by USAA. The Federal Circuit disagreed.

    While Mitek had received indemnity requests and had indemnity agreements in place, the court found that:

    • Many agreements included carve-outs that would preclude liability for USAA’s claims;
    • Some agreements were with intermediaries (e.g., service providers), not with the directly accused banks;
    • There was no chain of privity sufficient to establish standing based on indirect indemnity obligations.

    Quoting BP Chemicals Ltd. v. Union Carbide Corp., 4 F.3d 975 (Fed. Cir. 1993), the court reaffirmed that a supplier cannot assert a declaratory judgment claim unless the indemnity relationship and controversy with the patentee are both direct and substantial.

    Charles Gideon Korrell believes this ruling should be carefully considered by suppliers who may be contractually exposed but remain one step removed from the asserted liability.

    Post-Complaint Developments Extinguished Any Remaining Case or Controversy

    Even if standing had existed at the time of filing, the court noted that subsequent events extinguished any live controversy:

    • The Wells Fargo, PNC, and Truist lawsuits settled;
    • Claims of the ’571 and ’779 patents were invalidated by the PTAB and affirmed by the Federal Circuit in United Servs. Auto. Ass’n v. PNC Bank N.A., 2025 WL 370141 (Fed. Cir. Feb. 3, 2025);
    • No new lawsuits involving the remaining patents-in-suit had been filed.

    These developments underscored the absence of any ongoing threat to Mitek or its customers.

    Discretionary Dismissal Was Appropriate

    Even assuming subject-matter jurisdiction, the court found no abuse of discretion in the district court’s refusal to hear the case. The district court reasoned that:

    • Mitek could defend its interests more effectively by intervening in customer litigation;
    • Litigating a non-infringement case about MiSnap would require third-party discovery and complex issues of estoppel due to customer customization;
    • The declaratory judgment action would not provide clarity or relief to the parties most affected—Mitek’s customers.

    Charles Gideon Korrell emphasizes that the court’s analysis follows earlier decisions like BP Chemicals and EMC Corp. v. Norand Corp., 89 F.3d 807 (Fed. Cir. 1996), highlighting judicial efficiency and the need for cases to resolve—not amplify—controversies.

    Final Thoughts

    The Federal Circuit’s opinion in Mitek v. USAA solidifies the boundary between supplier-based declaratory judgment actions and the traditional framework for resolving patent infringement claims. Suppliers cannot rely solely on generalized fears or indirect customer disputes to establish standing. They must either show a direct threat or pursue alternative routes such as intervention.

    This decision will likely influence how technology vendors structure indemnity clauses, respond to customer infringement suits, and approach litigation strategy when their products are implicated but not explicitly accused.

    As Charles Gideon Korrell observes, the court’s insistence on a “real and immediate” controversy—grounded in evidence and not speculation—sets an important precedent in the declaratory judgment landscape.

    By Charles Gideon Korrell

  • United Services Automobile Association v. PNC Bank N.A.: Federal Circuit Invalidates Mobile Check Deposit Patent as Abstract and Non-Inventive

    United Services Automobile Association v. PNC Bank N.A.: Federal Circuit Invalidates Mobile Check Deposit Patent as Abstract and Non-Inventive

    In United Services Automobile Association v. PNC Bank N.A., the Federal Circuit reversed a district court ruling that had upheld the patent eligibility of United Services Automobile Association’s (“USAA”) mobile check deposit patent, holding instead that the asserted claim of U.S. Patent No. 10,402,638 (“the ’638 patent”) was directed to an abstract idea and lacked any inventive concept. The decision is a significant application of the Alice two-step framework to financial technology patents and reinforces the limits of § 101 patent eligibility for routine, computer-implemented processes.

    Charles Gideon Korrell notes that the ruling offers a textbook example of how courts are applying Alice in cases where a technology’s commercial success does not correlate with technical inventiveness.

    Background: The Dispute and the Patent

    USAA brought suit against PNC Bank in the Eastern District of Texas, alleging infringement of several patents relating to remote check deposit technology. The focus of the appeal was Claim 20 of the ’638 patent, which describes a “system for allowing a customer to deposit a check using a customer’s handheld mobile device.” The claim outlines the use of a downloadable banking app that helps users photograph a check and submit it wirelessly, with steps for authentication, error checking, and optical character recognition (OCR) to ensure deposit quality.

    Following cross-motions for summary judgment on § 101 eligibility, the district court sided with USAA, holding that the claim was not directed to an abstract idea. The case proceeded to trial, where a jury found PNC liable for infringing the ’638 and ’598 patents. However, PNC appealed, challenging the § 101 ruling. Meanwhile, separate inter partes reviews invalidated the asserted claims of the ’598 and ’136 patents under § 103, leaving only the ’638 patent’s § 101 validity at issue.

    The Federal Circuit’s Analysis

    Step One – Abstract Idea

    Applying the first step of the Alice test, the Federal Circuit concluded that the asserted claim was directed to the abstract idea of “depositing a check using a handheld mobile device.” This, the court emphasized, amounted to the digitization of a longstanding business process without meaningful technological innovation.

    Key to the court’s reasoning was that the claimed process simply implemented traditional check deposit steps—such as capturing images, checking for errors, and transmitting data—on a generic mobile device. These functions, the court explained, had long been performed by bank employees and early scanning systems.

    The court cited Content Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014), where similar check processing steps (data capture, OCR, and information storage) were deemed abstract. Also invoked was Electronic Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), which held that collecting, analyzing, and displaying information—even if performed by a computer—constitutes an abstract idea.

    In contrast to McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), where the claims provided specific rules to automate animation, the ’638 patent was result-oriented and lacked detailed steps or algorithms that could have provided a technological improvement.

    Step Two – Lack of Inventive Concept

    At the second step of Alice, the court held that the claim failed to recite any inventive concept that would render the abstract idea patentable. While USAA argued that implementing mobile check deposit with error-checking and OCR on consumer devices was non-obvious and commercially valuable, the court found that these features were themselves routine and generic.

    Indeed, USAA’s own patent specification acknowledged that the invention operated “in conjunction with electronics that today’s customers actually own or can easily acquire, such as a general purpose computer, a scanner, and a digital camera.” The claim, said the court, merely applied existing technologies to a known financial process.

    The panel rejected the argument that the ordered combination of claim elements transformed the abstract idea into a patent-eligible application. As the court noted, invoking a computer as a tool to perform a longstanding business task—even when streamlined by modern devices—does not make the process inventive. The court cited Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359 (Fed. Cir. 2020), and Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015), for the proposition that limiting a claim to a particular field or environment is insufficient.

    Charles Gideon Korrell believes this conclusion reinforces a key point in § 101 jurisprudence: implementation on mobile hardware—even if novel from a product development standpoint—is not a substitute for true technical innovation.

    No Disputed Facts to Preclude Summary Judgment

    USAA also argued that summary judgment was inappropriate because there were disputed facts over whether certain claim elements—such as OCR and mobile deposit apps—were conventional. The Federal Circuit disagreed. Citing Broadband iTV, Inc. v. Amazon.com, Inc., 113 F.4th 1359 (Fed. Cir. 2024), it held that summary judgment is appropriate under § 101 when there are no genuine disputes of material fact. The record demonstrated that OCR and remote image processing were widely known, and no specific improvement in their use was disclosed or claimed.

    Consequence of the Ruling

    Because the Federal Circuit determined that the only remaining asserted claim was invalid under § 101, it declined to reach USAA’s cross-appeal concerning allegedly improper expert testimony on damages. Without a valid patent, any damage award was moot.

    The decision has immediate implications for litigation involving similar mobile deposit patents, especially given the Federal Circuit’s earlier affirmances of § 103 invalidations of USAA’s related patents in inter partes review. As the court reiterated, under XY, LLC v. Trans Ova Genetics, 890 F.3d 1282 (Fed. Cir. 2018), an affirmance of invalidity has collateral estoppel effect on pending and co-pending actions involving the same claims.

    Charles Gideon Korrell points out that although USAA pioneered remote deposit in the commercial market, the court made clear that commercial success alone cannot confer patent eligibility absent concrete technical innovation.

    Key Takeaways

    • Abstract Idea: Mobile check deposit is a digitized version of a longstanding financial practice and falls within the abstract idea category.
    • Lack of Specificity: The patent recited desired results (e.g., error checking, OCR) without describing how these functions were implemented.
    • No Inventive Concept: Routine use of OCR and mobile apps, even if previously done with specialized equipment, did not amount to an inventive concept.
    • Broad Implications: The ruling emphasizes that convenient implementation on mobile platforms does not make a claim patent-eligible.

    Charles Gideon Korrell observes that the decision draws a firm line between commercial value and patent eligibility. For those drafting or litigating financial services patents, the opinion is a cautionary tale in claiming functionality without detailing the technological advancement behind it.

    By Charles Gideon Korrell

  • Fraunhofer v. Sirius XM: CAFC Clarifies Limits of Equitable Estoppel in Patent Litigation

    Fraunhofer v. Sirius XM: CAFC Clarifies Limits of Equitable Estoppel in Patent Litigation

    The Federal Circuit reversed a district court’s grant of summary judgment in Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung e.V. v. Sirius XM Radio Inc., No. 23-2267, holding that disputed issues of fact precluded the application of equitable estoppel to bar Fraunhofer’s patent infringement claims. While the decision arises from a complex licensing history involving satellite radio technology, Charles Gideon Korrell believes that its precedential value lies in its clarifications regarding the elements of equitable estoppel, especially the requirements of reliance and prejudice.

    Background

    Fraunhofer, a German research institute, developed multicarrier modulation (MCM) technology and licensed it to WorldSpace in 1998, granting sublicense rights. XM Satellite Radio obtained such a sublicense and collaborated with Fraunhofer to implement the patented technology in its high-band satellite radio system. When XM later merged with Sirius in 2008 to form Sirius XM Radio Inc. (SXM), the combined entity continued to use the high-band system. Fraunhofer later asserted that WorldSpace’s 2010 bankruptcy terminated the license and that any rights in the patents had reverted to Fraunhofer.

    Despite its knowledge of SXM’s continued use of the technology, Fraunhofer waited until 2015 to notify SXM of alleged infringement and filed suit in 2017. The district court held that Fraunhofer’s delay and prior conduct gave rise to equitable estoppel and granted summary judgment in favor of SXM. The Federal Circuit reversed.

    Key Legal Issues and Holdings

    1. Misleading Conduct May Arise from Silence, But Context Matters

    The Federal Circuit affirmed that Fraunhofer’s five-year silence—despite knowledge of SXM’s continued use of the accused system—could constitute misleading conduct. Charles Gideon Korrell sees this as especially true where, as here, the patentee had participated in developing the allegedly infringing product. The decision reaffirms the rule from A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc), that silence can support estoppel where it conveys acquiescence.

    2. Reliance Requires More Than Inference—It Must Be Evidenced

    Charles Gideon Korrell sees the court’s most significant contribution to be its treatment of the reliance prong of equitable estoppel. It emphasized that the accused infringer must show actual reliance on the patentee’s silence or conduct—not just that the silence coincided with business decisions.

    SXM argued it relied on Fraunhofer’s silence when choosing to migrate car manufacturers to the high-band (allegedly infringing) system rather than to a non-infringing low-band alternative. But deposition testimony revealed that this decision was based on business pragmatism—migrating the smaller user base was easier—not on any perceived legal clearance.

    Charles Gideon Korrell notes that this distinction echoes prior holdings in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 767 F.3d 1339 (Fed. Cir. 2014), and Hemstreet v. Computer Entry Systems Corp., 972 F.2d 1290 (Fed. Cir. 1992): independent commercial reasons cannot substitute for reliance on the patentee’s conduct.

    3. Prejudice Must Flow from Reliance, Not Merely From Delay

    The third requirement—material prejudice—must be causally connected to the reliance. Here, while SXM had clearly invested heavily in the high-band system, the Federal Circuit found that economic harm alone is not sufficient unless it was caused by reliance on misleading conduct. Without that link, the estoppel defense fails.

    Why This Case Is Precedential

    Charles Gideon Korrell believes that the Federal Circuit made this opinion precedential to:

    • Clarify that misleading conduct and economic prejudice do not by themselves establish estoppel—they must be joined by clear evidence of reliance;
    • Reinforce that estoppel is a fact-intensive defense and rarely suitable for summary judgment absent unequivocal evidence;
    • Provide guidance for licensing and collaboration disputes, particularly where technologies are co-developed or sublicensed under evolving corporate structures.

    These clarifications build upon a line of post-Aukerman cases and offer a refined framework for assessing estoppel in complex patent enforcement contexts.

    Looking Ahead

    The case now returns to the district court, where the parties’ remaining summary judgment motions remain unresolved. If SXM can prove at trial that it relied on Fraunhofer’s conduct in a legally meaningful way, the estoppel defense may still apply. But absent that showing, Fraunhofer’s infringement claims—despite their delay—remain viable.

    By Charles Gideon Korrell

  • Dolby Laboratories Licensing Corp. v. Unified Patents, LLC: No Standing to Appeal IPR RPI Dispute

    Dolby Laboratories Licensing Corp. v. Unified Patents, LLC: No Standing to Appeal IPR RPI Dispute

    In Dolby Laboratories Licensing Corp. v. Unified Patents, LLC, No. 23-2110 (Fed. Cir. June 5, 2025), the Federal Circuit dismissed Dolby’s appeal for lack of Article III standing. Although Dolby had prevailed before the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) initiated by Unified Patents, it sought to appeal the Board’s refusal to adjudicate a dispute over the petition’s Real Party in Interest (RPI) disclosure. The Federal Circuit held that none of Dolby’s asserted injuries established the “concrete and particularized” harm necessary to create a justiciable controversy.

    Background

    Unified Patents filed an IPR challenging claims 1, 7, and 8 of Dolby’s U.S. Patent No. 10,237,577. Dolby alleged that Unified improperly failed to disclose nine additional RPIs. The Board declined to resolve the RPI dispute, citing PTAB precedent (SharkNinja v. iRobot IPR proceeding, IPR2020-00734) and USPTO policy limiting such adjudications to when the outcome of the proceeding might be affected (e.g., due to time bar or estoppel).

    Charles Gideon Korrell notes that the PTAB ultimately found in favor of Dolby, upholding the challenged claims. Nonetheless, Dolby appealed, asserting that the Board’s refusal to decide the RPI issue caused it harm.

    No Standing Despite Statutory “Right to Appeal”

    Dolby first argued that it had standing based on 35 U.S.C. § 319, which provides a right of appeal to any “party dissatisfied” with a PTAB final written decision. The Federal Circuit rejected this argument, reiterating its longstanding view that statutory appeal rights under the America Invents Act (AIA) do not override the constitutional requirement of Article III standing (JTEKT Corp. v. GKN Automotive, 898 F.3d 1217 (Fed. Cir. 2018)).

    No Informational Injury Under § 312(a)(2)

    Dolby also contended that the failure to adjudicate the RPI issue violated its informational rights under 35 U.S.C. § 312(a)(2), which requires IPR petitions to identify all RPIs. The court disagreed, distinguishing this situation from the “public-disclosure” statutes found in Public Citizen v. DOJ, 491 U.S. 440 (1989) and FEC v. Akins, 524 U.S. 11 (1998). Unlike the statutes at issue in those cases, the AIA does not grant a general right of public access to RPI information, nor does it create a statutory cause of action to vindicate such a right. Furthermore, Charles Gideon Korrell notes, decisions regarding institution—including compliance with § 312(a)(2)—are explicitly made non-appealable under 35 U.S.C. § 314(d) (ESIP Series 2, LLC v. Puzhen Life USA, 958 F.3d 1378 (Fed. Cir. 2020)).

    Speculative Harms Do Not Establish Injury in Fact

    The remainder of Dolby’s arguments were similarly dismissed as speculative. The court found no credible evidence that:

    • Any of the alleged RPIs were violating Dolby license agreements (Apple Inc. v. Qualcomm Inc., 992 F.3d 1378 (Fed. Cir. 2021));
    • The administrative patent judges (APJs) had conflicts of interest;
    • Future estoppel rights would be compromised; or
    • Unified would alter its behavior if RPIs had to be disclosed.

    Without evidence of actual or imminent harm, the court held that Dolby failed to meet its burden under Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992), and Spokeo, Inc. v. Robins, 578 U.S. 330 (2016).

    Key Takeaways

    • Statutory appeal rights under the AIA do not eliminate the requirement of Article III standing.
    • The Federal Circuit continues to take a narrow view of informational injuries, especially in the context of administrative patent proceedings.
    • Speculative future harms and procedural disagreements—without more—are not enough to sustain federal appellate jurisdiction.

    Charles Gideon Korrell sees this case serving as a reminder that even victorious IPR patent owners must demonstrate a cognizable injury to pursue appeals based on procedural grievances.

    By Charles Gideon Korrell