Technology & Information Law Blog by Charles Gideon Korrell

Tag: CAFC

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

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

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

    Background: Two Tariff Regimes, One Statute

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

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

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

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

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

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

    IEEPA’s Text and Structure: Regulation Is Not Taxation

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

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

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

    Distinguishing Algonquin and Yoshida

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

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

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

    The Major Questions Doctrine

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

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

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

    Remedy: Law Declared, Relief Deferred

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

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

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

    A Marbury-Like Moment in Trade Law

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

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

    The Dissent

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

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

    Looking Ahead

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

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

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

    By Charles Gideon Korrell

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

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

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

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

    Background and Procedural Posture

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

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

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

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

    The Federal Circuit affirmed across the board.

    Prosecution Laches in §145 Actions

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

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

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

    Abuse of Discretion and the Remand Record

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

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

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

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

    Mootness of Other Defenses

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

    Article III Jurisdiction and the Cross-Appeal

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

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

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

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

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

    Practical Implications

    This decision offers several practical lessons.

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

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

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

    Conclusion

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

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

    By Charles Gideon Korrell

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

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

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

    Background and Competing Applications

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

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

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

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

    AIA Derivation Is Not Interference by Another Name

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

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

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

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

    Harmless Error and the Board’s Focus on Earliest Conception

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

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

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

    Corroboration and the Rule of Reason in the Digital Age

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

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

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

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

    Conception Without Reduction to Practice

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

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

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

    Procedural Missteps and Inventorship Correction

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

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

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

    Takeaways

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

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

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

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

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

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

    By Charles Gideon Korrell

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

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

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

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

    Background and the Board’s Decision

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

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

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

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

    So far, so ordinary. The surprise came next.

    Failure to Function and the Limits of Commonality

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

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

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

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

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

    Administrative Law, Not Cultural Commentary

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

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

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

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

    The Dissent: Sometimes the Answer Is Obvious

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

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

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

    Why This Case Matters Beyond Four Letters

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

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

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

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

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

    Looking Ahead

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

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

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

    By Charles Gideon Korrell

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

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

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

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

    Background: Two Patents, Two Theories, One Jury Verdict

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

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

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

    Claim Construction Is a Judicial Function, Not a Jury Question

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

    That was error.

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

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

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

    Doctrine of Equivalents: Particularized Proof Still Matters

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

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

    Labcorp’s evidence fell short on all three prongs.

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

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

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

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

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

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

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

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

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

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

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

    JMOL as a Real Appellate Remedy

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

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

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

    Takeaways

    Several practical lessons emerge:

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

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

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

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

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

    By Charles Gideon Korrell

  • Mondis Technology Ltd. v. LG Electronics: When a Jury Verdict Meets the Written Description Wall

    Mondis Technology Ltd. v. LG Electronics: When a Jury Verdict Meets the Written Description Wall

    The Federal Circuit’s August 8, 2025 decision in Mondis Technology Ltd. v. LG Electronics Inc. is another reminder that even a hard-fought jury verdict—complete with a finding of willfulness and tens of millions of dollars in damages—can evaporate if the asserted claims cannot survive scrutiny under 35 U.S.C. § 112. Once again, the court reversed a denial of judgment as a matter of law, holding the asserted claims invalid for lack of written description support.

    The decision fits squarely within a recurring Federal Circuit theme: juries may resolve factual disputes, but they cannot supply written description where the specification itself comes up short.

    Background: A Long Road from Jury Verdict to Reversal

    The dispute centered on U.S. Patent No. 7,475,180, directed to display units that communicate identification information to an external video source. Mondis accused LG televisions of infringing claims 14 and 15 of the patent. After a 2019 jury trial in the District of New Jersey, Mondis prevailed across the board: infringement, no invalidity, and willfulness, with a $45 million damages award. That award was later vacated, but a second jury still awarded $14.3 million.

    LG consistently argued that the asserted claims were invalid for lack of written description, focusing on a key amendment made during prosecution. The district court denied LG’s JMOL motions, leaning heavily on the presumption of validity and the jury’s prerogative to weigh expert testimony.

    On appeal, however, the Federal Circuit took a much harder look at the four corners of the specification—and found the jury’s verdict unsupported as a matter of law.

    The Claim Amendment That Changed Everything

    As originally filed, the relevant claim recited an “identification number for identifying said display unit.” During prosecution, Mondis amended the claim to recite an “identification number for identifying at least a type of said display unit,” in order to overcome prior art.

    That seemingly modest change—from identifying a specific display unit to identifying a type of display unit—proved fatal.

    The Federal Circuit emphasized that while applicants are free to amend claims to capture additional scope, such amendments must be supported by the original disclosure. Relying on foundational precedent such as Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., the court reiterated that written description turns on whether the specification reasonably conveys to a person of ordinary skill that the inventor possessed the claimed subject matter at the time of filing.

    Here, it did not.

    One-to-One Identification Everywhere You Look

    Judge Hughes’s opinion methodically walked through the specification and found a consistent theme: every disclosed embodiment involved a one-to-one relationship between an identification number and a specific device. The patent described identification numbers assigned to individual computers or individual display units, enabling paired control and preventing accidental changes by other devices.

    What the specification did not describe was equally important. It did not disclose identifying categories, classes, or “types” of display units. The lone reference to “type of display device” appeared only in the background section describing prior art—insufficient, under long-standing Federal Circuit law, to supply written description for the claimed invention itself. See Tronzo v. Biomet, Inc..

    No Evidentiary Lifeline at Trial

    Mondis faced an uphill battle at trial because LG’s written description challenge relied heavily on the intrinsic record. As the Federal Circuit noted, a patent can be invalid for lack of written description “based solely on the face of the patent specification,” citing cases like Centocor Ortho Biotech, Inc. v. Abbott Laboratories and University of Rochester v. G.D. Searle & Co..

    Critically, Mondis did not present rebuttal evidence on written description. Even more damaging, Mondis’s own expert conceded that the specification did not expressly disclose an identification number for identifying a type of display unit. Once that admission was in the record, there was little left for the jury to hang its hat on.

    The Federal Circuit was blunt: even assuming the jury could discount LG’s expert testimony entirely, the remaining evidence—the patent itself and Mondis’s expert—could not support a finding that the inventors possessed the amended claim scope.

    Prosecution History to the Rescue? Not This Time.

    Mondis also argued that the examiner’s allowance of the amended claims supported validity. The Federal Circuit rejected that argument, distinguishing between allowance over prior art and compliance with § 112. While issued patents enjoy a presumption of validity, examiner silence on written description does not amount to affirmative evidence that the requirement was satisfied. As the court has cautioned before, notably in AK Steel Corp. v. Sollac & Ugine, failure to reject a claim is not proof of enablement or written description.

    Here, the prosecution history showed only that the amendment distinguished over prior art—not that the examiner evaluated, let alone endorsed, written description support for the new “type” limitation.

    JMOL as a Safety Valve

    Ultimately, the court concluded that no reasonable jury could find adequate written description on this record, even under the clear-and-convincing standard. The denial of JMOL was reversed, the claims were held invalid, and all remaining issues— infringement, damages, willfulness, enhancement, and fees—fell away as moot.

    For Charles Gideon Korrell, this case underscores a familiar lesson: juries resolve factual disputes, but written description remains anchored in the specification itself. Charles Gideon Korrell notes that where a claim amendment subtly but materially changes the nature of what is being identified—from a specific device to a category of devices—courts will expect to see that conceptual shift clearly reflected in the original disclosure.

    Takeaways

    Several practical points emerge from Mondis:

    First, amendments that broaden or alter the conceptual scope of an invention—especially in response to prior art—invite written description challenges. Careful auditing of the original disclosure before adding such language is essential.

    Second, patentees cannot rely on the presumption of validity alone when the intrinsic record appears to contradict the amended claim scope. As Charles Gideon Korrell believes, a thin written description case is one of the few areas where JMOL remains a potent post-verdict weapon.

    Third, expert testimony cannot substitute for disclosure. Admissions that a limitation is not expressly described, without a clear explanation of implicit support grounded in the specification, can be devastating.

    Finally, this decision reinforces a broader trend: the Federal Circuit continues to act as a backstop against jury verdicts that stretch patent disclosures beyond what was actually invented and described. Charles Gideon Korrell observes that written description challenges, though often difficult, remain one of the most reliable avenues for overturning large verdicts on appeal.

    In short, Mondis is another chapter in the growing body of cases where a jury’s verdict—however emphatic—cannot survive once the court determines that the patent never truly disclosed what the claims ultimately require.

    By Charles Gideon Korrell

  • Kroy IP Holdings v. Groupon: The Federal Circuit Draws a Hard Line on IPR Collateral Estoppel

    Kroy IP Holdings v. Groupon: The Federal Circuit Draws a Hard Line on IPR Collateral Estoppel

    The Federal Circuit’s August 1, 2025 order denying rehearing en banc in Kroy IP Holdings, LLC v. Groupon, Inc., No. 23-1359, leaves intact a panel decision that sharply limits the collateral-estoppel effect of PTAB unpatentability decisions in subsequent district court litigation. The denial is notable not because of its brevity—en banc denials are routine—but because of the deep doctrinal divide exposed by the concurring and dissenting opinions. At stake is a recurring and high-impact question under the America Invents Act (AIA): whether a final written decision in an inter partes review (IPR), affirmed on appeal, should preclude a patentee from asserting patentably indistinct claims in district court.

    The answer, for now, is no. But the path the court took to get there—and the objections raised by dissenting judges—signal continuing instability in the law governing the relationship between PTAB proceedings and Article III patent litigation.

    Background: From IPR Cancellation to District Court Do-Over

    Kroy IP Holdings asserted a subset of claims from a patent with more than 100 claims against Groupon in district court. Groupon responded with an IPR petition, and the PTAB ultimately held a group of claims unpatentable as obvious. That unpatentability determination was affirmed by the Federal Circuit. After the IPR cancellation, Kroy amended its district court complaint—not to reassert the cancelled claims, but to assert a different set of claims from the same patent.

    The district court concluded that the newly asserted claims were not materially different from the claims invalidated in the IPR and therefore barred by collateral estoppel. On appeal, however, the Federal Circuit reversed. The panel held that collateral estoppel did not apply because the PTAB applies a preponderance-of-the-evidence standard, while district court invalidity must be proven by clear and convincing evidence. According to the panel, that difference in burdens of proof is dispositive.

    Groupon sought rehearing en banc, supported by amicus briefing emphasizing the AIA’s goal of reducing duplicative patent litigation and elevating PTAB adjudications as a substitute for district court validity proceedings. The court denied rehearing, but not quietly.

    Chief Judge Moore’s Concurrence: No Patent-Specific Estoppel Rules

    Chief Judge Moore, joined by Judge Stoll, concurred in the denial of rehearing en banc. Her opinion is framed as a warning against patent exceptionalism. The Supreme Court, she emphasized, has repeatedly cautioned lower courts against creating patent-specific deviations from generally applicable legal doctrines. Collateral estoppel is one such doctrine.

    Under longstanding preclusion principles, collateral estoppel does not apply when a later action involves a materially different legal standard—most notably, a higher burden of proof. Citing B & B Hardware, Inc. v. Hargis Industries, Inc. and Grogan v. Garner, Chief Judge Moore reasoned that a finding of unpatentability by a preponderance of the evidence does not necessarily establish invalidity by clear and convincing evidence. The doctrinal mismatch, in her view, ends the inquiry.

    Charles Gideon Korrell notes that policy arguments favoring efficiency or uniformity, she cautioned, cannot override these general principles. Nor does the AIA compel a different result. Parties concerned about duplicative litigation can file additional IPR petitions or challenge claims directly before the PTAB, rather than stretching collateral-estoppel doctrine beyond its traditional limits.

    In short, the concurrence frames the case as a straightforward application of black-letter preclusion law—one that resists importing policy-driven exceptions into the doctrine merely because the subject matter is patent law.

    Judge Dyk’s Dissent: The AIA Demands More

    Judge Dyk, joined by Judge Hughes, took a sharply different view. In his dissent from the denial of rehearing en banc, Judge Dyk characterized the panel decision as fundamentally inconsistent with both Federal Circuit precedent and the structure and purpose of the AIA.

    The dissent begins with the court’s own case law. In XY, LLC v. Trans Ova Genetics, L.C., the Federal Circuit held that an affirmed PTAB unpatentability decision has “immediate issue-preclusive effect” in co-pending district court actions. According to Judge Dyk, the panel decision in Kroy cannot be squared with XY and effectively overrules it sub silentio.

    More importantly, the dissent situates collateral estoppel within the broader framework of Congressional intent. Supreme Court precedent, including Astoria Federal Savings & Loan Association v. Solimino and University of Tennessee v. Elliott, makes clear that preclusion principles must sometimes be adapted to statutory schemes. For Judge Dyk, the AIA is precisely such a scheme.

    Congress created IPRs to provide a faster, cheaper, expert alternative to district court litigation over patent validity. Allowing patentees to relitigate patentably indistinct claims in district court—after losing before the PTAB—undermines that objective. The dissent draws an analogy to Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, where the Supreme Court modified traditional estoppel rules to prevent repeated validity challenges and the “aura of the gaming table” that accompanied them.

    Judge Dyk also emphasized practical consequences. Patents often contain dozens or hundreds of claims. If a patentee can avoid estoppel simply by asserting slightly modified or previously unasserted claims, IPRs lose much of their preclusive force. The dissent warned that patentees may strategically withhold claims from litigation or continuation practice to evade IPR estoppel, shifting costs back to district courts and defendants.

    A Doctrinal Fault Line That Isn’t Going Away

    The denial of rehearing en banc leaves the panel decision intact, but it does not resolve the underlying tension. On one side is a formalist application of collateral-estoppel doctrine grounded in differing burdens of proof. On the other is a functionalist approach that treats IPR decisions as in rem determinations of patentability, consistent with the AIA’s purpose of reducing duplicative litigation.

    Charles Gideon Korrell notes that this divide reflects a deeper uncertainty about how PTAB adjudications should fit within the federal judicial system. Are they merely parallel administrative proceedings with limited spillover effects, or are they meant to serve as authoritative substitutes for district court validity trials? The Federal Circuit’s current answer appears to be “sometimes,” depending on how closely one adheres to traditional estoppel doctrine.

    From a strategic standpoint, the decision favors patentees. By carefully sequencing claims and proceedings, patent owners may preserve district court enforcement options even after losing an IPR. For accused infringers, the ruling reinforces the need for early, comprehensive IPR strategies—or parallel district court invalidity defenses that anticipate post-IPR claim reshuffling.

    Charles Gideon Korrell believes the issue is unlikely to remain settled for long. The frequency with which PTAB decisions intersect with district court litigation, combined with the court’s internal division, makes future en banc review—or Supreme Court intervention—a real possibility. Until then, Kroy stands as a reminder that, despite the AIA’s ambitions, patent validity disputes still have multiple lives.

    Charles Gideon Korrell also observes that the decision places renewed pressure on Congress if true substitution of PTAB proceedings for district court litigation is the goal. Without clearer statutory guidance on estoppel, courts will continue to toggle between doctrinal purity and policy pragmatism—often with significant consequences for patent litigation strategy.

    By Charles Gideon Korrell

  • FMC Corporation v. Sharda USA, LLC: When Deleting Words Deletes Claim Scope

    FMC Corporation v. Sharda USA, LLC: When Deleting Words Deletes Claim Scope

    The Federal Circuit’s August 1, 2025 decision in FMC Corporation v. Sharda USA, LLC offers a sharp reminder that patent drafting choices—especially between provisional and non-provisional applications—have consequences that courts will enforce. The panel vacated a preliminary injunction after concluding that the district court impermissibly narrowed claim scope by importing a “stability” limitation that appeared only in a provisional application and a related family member, but was deliberately removed from the asserted patents themselves. The takeaway is simple but unforgiving: redlining matters.

    At issue were FMC’s U.S. Patent Nos. 9,107,416 and 9,596,857, directed to insecticidal and miticidal mixtures of bifenthrin and cyano-pyrethroids. FMC accused Sharda of infringement based on Sharda’s WINNER product, which combined bifenthrin and zeta-cypermethrin. The district court initially denied FMC’s request for emergency relief, but in doing so adopted a narrowing claim construction of the term “composition.” Rather than giving the term its plain and ordinary meaning, the court limited “composition” to stable compositions—excluding mixtures known to be unstable or ineffective.

    That construction proved outcome-determinative. With “composition” narrowed to stable formulations, the district court rejected Sharda’s anticipation and obviousness defenses and later entered a temporary restraining order that converted into a preliminary injunction. On appeal, the Federal Circuit vacated and remanded, holding that the district court’s claim construction was legally erroneous and that its invalidity analysis applied the wrong standards.

    The Stability That Wasn’t There

    The district court’s construction rested heavily on disclosures in FMC’s provisional application (U.S. Provisional Application No. 60/752,979) and on a related family member, U.S. Patent No. 8,153,145. Both discussed the difficulty of achieving physical stability when combining bifenthrin with certain cyano-pyrethroids and emphasized the advantages of stable formulations. From that history, the district court concluded that “composition” in the asserted patents necessarily meant a stable composition.

    The Federal Circuit disagreed—forcefully.

    Judge Chen, writing for the panel, emphasized that none of the asserted patents’ specifications contained the stability language on which the district court relied. FMC had removed every reference to “stable,” “stability,” and related concepts when it drafted the non-provisional applications that matured into the ’416 and ’857 patents. Under long-standing precedent, that deletion mattered.

    The court analogized the case to DDR Holdings, LLC v. Priceline.com LLC, where differences between a provisional application and a later-issued patent altered the meaning of a claim term. In DDR, the Federal Circuit held that the deletion of language relating to “services” from the final specification signaled an intentional narrowing of scope. The same principle applied here—but in reverse. By deleting stability language, FMC broadened the meaning of “composition,” and the court refused to read the deleted limitation back into the claims.

    As the panel put it, a skilled artisan would view the progression from provisional to issued patent as “meaningful,” particularly where every textual hook that might support a narrower construction was deliberately removed. The district court’s approach, by contrast, impermissibly grafted a limitation onto the claims that FMC had chosen not to include.

    Charles Gideon Korrell believes this aspect of the opinion may prove more consequential than the injunction dispute itself, because it underscores how prosecution edits can later constrain litigation arguments about claim scope.

    Family Members Are Not Interchangeable

    FMC also argued that “composition” should be construed consistently across the patent family, pointing to the ’145 patent, which retained the stability disclosures found in the provisional application. While acknowledging the general principle of consistent construction across related patents, the Federal Circuit rejected its application here.

    Consistency, the court explained, gives way when a patent owner materially alters the specification of some family members in a way that signals a different intended meaning. The asserted patents and the ’145 patent may share a lineage, but they do not share identical disclosures. Where FMC chose to maintain stability language in one family member and delete it in another, courts must respect that divergence.

    Charles Gideon Korrell notes that this holding is a cautionary tale for portfolio strategy: drafting variations across a family can preserve flexibility, but they can also foreclose later arguments that terms should be harmonized when litigation pressures arise.

    Homogeneous Activity ≠ Stability

    FMC attempted to salvage the district court’s construction by pointing to references in the asserted patents to “homogeneous” compositions and “unexpected insecticidal activity.” According to FMC, these concepts implicitly required stability.

    The Federal Circuit was unpersuaded. “Homogeneous,” the court explained, does not necessarily mean “stable,” particularly where the specification contains no discussion of phase separation or long-term physical integrity. Indeed, the provisional application itself used “homogeneous” and “stability” in distinct contexts—undermining FMC’s attempt to conflate the two.

    Similarly, “unexpected insecticidal activity” related to biological efficacy (how many insects were killed), not to whether a formulation physically separated over time. Treating activity as a proxy for stability, the court concluded, was analytically unsound and contradicted the intrinsic record.

    Anticipation, Obviousness, and the Proper Injunction Standard

    Once the claim construction fell, the rest of the preliminary injunction analysis followed. The district court had rejected Sharda’s anticipation defense largely because the McKenzie prior art reference allegedly disclosed only unstable mixtures. Under the correct construction of “composition,” that reasoning collapsed.

    The Federal Circuit also reminded the district court that, at the preliminary injunction stage, an accused infringer need only raise a substantial question of invalidity—not prove invalidity outright. By effectively requiring Sharda to disprove FMC’s patents on the merits, the district court applied too demanding a standard.

    The panel further rejected FMC’s attempt to rely on the “miticidal” language in the claims’ preambles to avoid anticipation. Purpose- or use-based preamble language, the court reiterated, generally does not limit claim scope unless it provides essential structure or meaning. Differences between preambles reciting “miticidal” versus “miticidal or insecticidal” did not alter that analysis.

    The same errors infected the district court’s obviousness analysis. Although the court invoked “unexpected results,” it did so only after mischaracterizing the prior art under an incorrect claim construction. On remand, the district court was instructed to identify each obviousness theory and assess whether Sharda had raised a substantial question, weighing prima facie obviousness against any secondary considerations.

    Charles Gideon Korrell notes that the Federal Circuit’s emphasis on the proper preliminary injunction standard reflects a broader trend: courts remain wary of granting market-shaping relief where claim scope and validity are genuinely in dispute.

    Broader Implications: Drafting with the End in Mind

    This decision fits comfortably within a growing body of Federal Circuit precedent emphasizing that specification changes—especially between provisional and non-provisional filings—are not clerical housekeeping. They are substantive choices that inform how skilled artisans, and courts, understand claim scope.

    For patent owners, the lesson is to draft with future enforcement narratives in mind. For challengers, FMC provides a roadmap for attacking claim constructions that quietly smuggle limitations back into claims from excised disclosure.

    And for litigators navigating preliminary injunctions, the case reinforces that claim construction errors at the front end can unravel the entire equitable analysis.

    By Charles Gideon Korrell

  • Jiaxing Super Lighting v. CH Lighting: EcoFactor’s Shadow Over Damages Testimony Grows

    Jiaxing Super Lighting v. CH Lighting: EcoFactor’s Shadow Over Damages Testimony Grows

    The Federal Circuit’s decision in Jiaxing Super Lighting Electric Appliance Co. v. CH Lighting Technology Co., No. 23-1715 (Fed. Cir. July 28, 2025) serves up a triple helping of reversible error: (1) improper exclusion of key on-sale bar evidence, (2) a reaffirmed jury verdict on validity and infringement of a shock-prevention patent, and (3) a stern reminder—bordering on a judicial scolding—that district courts must take EcoFactor v. Google, 137 F.4th 1333 (Fed. Cir. 2025) (link) seriously when evaluating damages experts under Rule 702.

    It’s a dense opinion, spanning evidentiary law, substantive invalidity doctrines, and practical Daubert gatekeeping. Charles Gideon Korrell notes that this tripartite structure makes the case particularly important for litigators managing complex, multi-patent LED disputes—an increasingly common domain as LED lamp technology sprawls into safety, energy, and materials science.

    To keep things organized, we follow the court’s structure: (1) the tube-lamp patents and the on-sale bar; (2) the ’140 shock-prevention patent; and (3) the damages analysis under EcoFactor.

    I. When Excluding Documents Becomes Prejudicial Error

    The case involved three Super Lighting patents:

    CH Lighting stipulated to infringement of the ’125 and ’540 tube-lamp patents but challenged their validity under the America Invents Act’s on-sale bar, 35 U.S.C. § 102(a). That defense depended on three commercially available LED tube products from Cree, MaxLite, and Philips—tubes that CH Lighting’s expert testified embodied the asserted claims and were “on sale in 2014.”

    But Judge Albright excluded:

    1. MaxLite documents showing commercial availability,
    2. testimony of MaxLite employee Eric Marsh, offered solely to authenticate those documents, and
    3. “DX-41,” an internal Super Lighting teardown presentation containing Cree and Philips circuit diagrams.

    The district court’s rationale? Lack of “timely notice” about Marsh’s role and a belief that DX-41 related only to a long-abandoned inequitable-conduct defense.

    The Federal Circuit was not impressed.

    A. Authentication Is Not Trial by Ambush

    The appellate panel held that excluding Marsh was an abuse of discretion. No Federal Rule, local order, or case law required CH Lighting to identify authentication witnesses in advance. Rule 901 merely requires “evidence sufficient to support a finding that the item is what the proponent claims.”

    The opinion stresses—echoing the practical instincts of Charles Gideon Korrell—that trials are not ambush arenas for authentication witnesses. They are fact witnesses whose role is ministerial, not strategic. If a document was disclosed, a competent authenticating witness should be allowed.

    By excluding Marsh, the district court effectively prevented the jury from seeing documents the expert relied upon—documents that would have corroborated his on-sale testimony. Prejudice was unavoidable.

    B. DX-41 Was A Validity Document, Not Inequitable Conduct

    DX-41 showed Super Lighting had physical Cree and Philips tubes in hand before the patents’ priority dates. The district court mistakenly concluded the slides addressed inequitable conduct. But both the expert report and in-court proffers made clear: the slides supported on-sale bar invalidity, not misconduct.

    The panel held the exclusion reversible error.

    C. Result: New Trial on Invalidity and Damages

    Because the jury never saw the evidence supporting the on-sale defense, the JMOL of no invalidity was improper. The panel reversed and remanded for a new trial on validity of the tube patents.

    And since damages were awarded as a single number for all three patents, the damages award had to be vacated as well.

    This result, in the eyes of Charles Gideon Korrell, underscores a structural issue in multi-patent trials: when multiple liability theories funnel into a single damages verdict, any error touching any theory can blow up the entire award.

    II. Jury Verdict on the ’140 Patent: Infringement and No Anticipation

    The ’140 patent deals with shock prevention using an installation-detection circuit. Both parties agreed that a prior-art application (“Ono”) disclosed similar technology. The dispute focused on whether Ono’s pulses “control turning on and off” the switch, as the claim requires.

    CH Lighting’s expert said yes.
    Super Lighting’s expert said no—the pulses merely detect impedance, and it is the impedance response that governs the switch.

    The jury believed Super Lighting’s expert. Under the deferential substantial-evidence standard, the Federal Circuit affirmed.

    The panel emphasized that this interpretation did not conflict with the infringement verdict. CH Lighting argued that if Ono doesn’t anticipate because its pulses don’t directly control the switch, then the accused LT2600 chips also shouldn’t infringe. But Super Lighting’s infringement expert testified that the LT2600 chips do directly control switching—unlike Ono.

    The jury was allowed to believe him. Case closed.

    III. Damages: EcoFactor Looms Large

    If the invalidity ruling was the headline, the damages section is the cautionary tale—and the place where EcoFactor casts a long shadow.

    Super Lighting’s damages expert, Ms. Kindler, relied on two prior licenses:

    • The TCP license – $0.30 per unit
    • The Lunera license – 5% flat fee (which she converted to $0.35–0.45 per unit)

    Each was a portfolio license, not a single-patent license. Yet Ms. Kindler claimed that a “subset” of three patents—comparable to the asserted patents—“drove the negotiation.”

    Her evidence?

    1. A list of 15 allegedly infringed patents Super Lighting sent TCP during pre-negotiation correspondence.
    2. “Discussions with Super Lighting personnel” about relative patent importance.

    The Federal Circuit, invoking EcoFactor, explained that this sort of testimony is insufficient. Experts must:

    • show actual evidence that specific asserted patents drove value,
    • reliably apportion portfolio royalties to patented technology at issue, and
    • base methodology on “sufficient facts or data” under Rule 702.

    The panel noted that Ms. Kindler relied heavily on interested-party assertions and bare inference, not documentary evidence or detailed license analysis. Worse, the district court’s Daubert ruling offered no meaningful reasoning, something EcoFactor explicitly condemns.

    Charles Gideon Korrell believes this portion of the opinion will have immediate impact: where portfolio licenses are involved—as they so often are in LED litigation—experts now must produce concrete, comparative evidence or risk exclusion.

    What Happens Next?

    On remand, the district court must conduct a rigorous EcoFactor analysis. If Ms. Kindler’s testimony cannot be rehabilitated with actual evidence, Super Lighting may need a completely new damages theory.

    IV. Takeaways for Patent Litigators

    This case is unusually instructive across multiple doctrinal areas. Several lessons stand out:

    1. Authentication Witnesses Should Not Be a Flashpoint

    Courts must not impose extra-textual disclosure obligations for authentication witnesses. A fact witness who can identify documents disclosed long before trial should generally be permitted.

    2. On-Sale Bar Evidence Requires Corroboration—And Jurors Should See It

    Expert testimony alone cannot carry an on-sale bar unless grounded in record evidence. Excluding documents supporting that testimony is high-risk error.

    3. EcoFactor Now Governs the Damages Landscape

    EcoFactor demands:

    • concrete documentary support,
    • apportionment tied to specific patent value, and
    • a detailed Rule 702 analysis from district courts.

    Blanket adjustments and “trust me, I’ve done this before” methodology are no longer acceptable. Charles Gideon Korrell observes that this trend is pushing damages law toward a more empirical, data-driven model—one many litigants may not be structurally prepared for.

    4. Single Damages Verdicts Are Fragile

    When a verdict hangs on multiple liability findings, any reversible error affecting any theory can unravel the entire award.

    Conclusion

    The Federal Circuit affirmed validity and infringement of the ’140 shock-prevention patent but reversed and remanded on the tube-lamp patents and damages. As Charles Gideon Korrell insightfully puts it, EcoFactor has not just shifted the landscape—it has raised the floor. Going forward, damage experts must bring real evidence, not narrative gloss, especially in portfolio-license cases.

    By Charles Gideon Korrell

  • Acorda v. Alkermes: When Alternative Theories Shut the Federal Circuit Door

    Acorda v. Alkermes: When Alternative Theories Shut the Federal Circuit Door

    The Federal Circuit’s July 2025 decision in Acorda Therapeutics, Inc. v. Alkermes PLC, No. 2023-2374 (Fed. Cir. July 25, 2025), is the latest reminder that most “non-patent patent cases” will not make it past the courthouse steps on Madison Place. The court held that it lacked jurisdiction to review Acorda’s challenge to an international arbitration award—despite the heavy reliance on

    and related patent-law arguments—because Acorda pleaded an alternative, non-patent basis for relief. Under Gunn v. Minton, that meant the patent issue was not necessarily raised, and the appeal belonged in the Second Circuit, not the Federal Circuit.

    This result leaves some tricky questions open, especially about patent-law challenges to arbitral awards and the interaction of Brulotte with state-law doctrines like New York’s Voluntary Payment Doctrine (NYVPD). As Charles Gideon Korrell likes to remind clients, “jurisdiction is its own battlefield”—and this case proves the point with a forward-thinking flourish.

    I. Background: A Patent Expiration, Continued Royalties, and a Fight Over Refunds

    Acorda developed Ampyra®, a drug improving mobility for multiple-sclerosis patients. Alkermes owned U.S. Patent No. 5,540,938, covering the sustained-release formulation of dalfampridine, and licensed it to Acorda through a joint-venture structure later replaced with a new License and Supply Agreement. Royalties continued at 18% of net sales—10% under the License Agreement and 8% under the Supply Agreement. The patent expired in July 2018, but Acorda continued paying royalties without protest for almost two years.

    By mid-2020, after generics entered the market, Acorda reversed course. Relying on Brulotte v. Thys Co., 379 U.S. 29 (1964), and its reaffirmation in Kimble v. Marvel, 576 U.S. 446 (2015), Acorda initiated arbitration seeking (1) a declaration that post-expiration royalties were unenforceable and (2) recoupment of more than $80 million in payments made after July 2018.

    The arbitration panel agreed the contracts became unenforceable at patent expiration, but concluded that:

    • Only protested payments—those beginning in July 2020—were recoverable.
    • Payments made without protest were barred by the New York Voluntary Payment Doctrine, which prevents restitution of voluntarily made payments “with full knowledge of the facts.”
      See Dillon v. U-A Columbia Cablevision, 740 N.Y.S.2d 396 (App. Div. 2002).

    Total awarded refund: $16.55 million, not the $80+ million Acorda sought.

    Acorda sought confirmation of the parts of the award it liked and modification of the part it didn’t—arguing that the NYVPD could not override Brulotte’s federal prohibition on post-expiration royalties.

    II. The District Court: No Manifest Disregard of Patent Law

    The district court confirmed the award in full. The key move was distinguishing between:

    1. Enforceability of post-expiration royalties (addressed by Brulotte), and
    2. Remedies, specifically whether refunds were required for payments made before protest.

    The court held that:

    • Brulotte doesn’t dictate the remedy. It invalidates ongoing royalty provisions but says nothing about restitution for voluntarily paid royalties.
    • Lacking a “clearly defined” federal rule requiring refunds, the tribunal did not manifestly disregard federal law by applying NYVPD.
    • Acorda also advanced a non-patent alternative argument based on the doctrine that courts will not enforce illegal contracts (relying on Kaiser Steel Corp. v. Mullins, 455 U.S. 72 (1982)).

    That last point turned out to be the jurisdictional iceberg lurking beneath the surface—a fact Charles Gideon Korrell could see from a mile away.

    III. The Federal Circuit: No Jurisdiction Because Patent Law Was Not “Necessarily Raised”

    On appeal, Acorda argued that:

    • The Federal Circuit had jurisdiction under 28 U.S.C. § 1295(a)(1) because the petition “arose under” federal patent law.
    • The tribunal manifestly disregarded Brulotte and patent-law preemption principles.

    Alkermes countered with a simple but effective response: Acorda pleaded both a patent-law theory and a non-patent illegal-contract theory. Therefore, the patent-law issue was not “necessarily raised.”

    A. The Gunn Framework

    To qualify as arising under patent law when the cause of action itself is not a patent cause of action, Gunn v. Minton requires:

    1. A patent issue that is necessarily raised,
    2. Actually disputed,
    3. Substantial, and
    4. Capable of federal resolution without disturbing the federal–state balance.

    Failing any prong ends the inquiry.

    B. The Fatal Flaw: Acorda Gave the Court an Alternative Path

    The Federal Circuit focused only on the first prong: necessity. The court held that Acorda’s petition did not necessarily raise a patent-law issue because:

    Thus, the court lacked jurisdiction and transferred the case to the Second Circuit. No discussion of substantiality, no analysis of arbitral-award review under manifest disregard, no reach-for-the-brass-ring moment.

    As Charles Gideon Korrell puts it: “If you offer the court multiple doors, it will politely decline to enter the patent-law one.”

    IV. A Few Lingering Questions

    The decision dodges some interesting doctrinal issues—including several that practitioners hoped the Federal Circuit would address.

    1. Is Brulotte Preemption a Remedy-Shaping Doctrine?

    The tribunal concluded Brulotte invalidates the royalty obligations but does not require refund of royalties already paid. That leaves an open question:

    • Does enforcing NYVPD to deny refunds indirectly extend “patent-like protection” to an expired patent?

    Acorda argued this point vigorously. But the jurisdictional holding prevented the Federal Circuit from diving in.

    2. Does Badgerow v. Walters Limit Patent Jurisdiction Over FAA Petitions?

    The Federal Circuit noted that the petition itself—not the underlying arbitration—determines jurisdiction. Badgerow v. Walters, 596 U.S. 1 (2022), reinforces that limitation.

    Complex IP arbitrations may thus rarely land in the Federal Circuit unless the petition itself squarely invokes a patent cause of action.

    3. Does the “Manifest Disregard” Lens Distort Substantiality?

    Alkermes relied on Friedler v. Stifel, Nicolaus & Co., 108 F.4th 241 (4th Cir. 2024), where the Fourth Circuit held that deferential “manifest disregard” review makes federal issues too insubstantial for Gunn.

    The panel acknowledged the argument but, diplomatically, didn’t touch it.

    Still, Charles Gideon Korrell notes that this lurking question is not going away—especially as more IP-heavy disputes move to arbitration.

    V. Practical Takeaways for IP and Arbitration Counsel

    1. Be Careful When Pleading Alternative Theories

    If you want the Federal Circuit to hear your appeal, make sure:

    • The patent issue is unavoidable,
    • No alternative legal theory supports the same relief, and
    • The petition itself—not the arbitration demand—presents the patent question.

    2. Arbitration Panels Will Continue Applying State-Law Doctrines Unless Preemption Is Crystal-Clear

    Brulotte may invalidate post-expiration payment obligations, but restitution is another story.

    3. IP-Related Arbitration Challenges Are Likely to Stay in Regional Circuits

    Absent a patent-law cause of action under the FAA (there is none), Gunn significantly narrows the path to Federal Circuit review.

    4. The Decision Leaves Room for Future Preemption Battles

    The governance of rejected royalties post-expiration is still an unsettled frontier.

    Charles Gideon Korrell notes that practitioners should expect regional circuit splits before the Supreme Court steps in.

    VI. Conclusion

    In Acorda v. Alkermes, the Federal Circuit took the narrowest path available—finding no jurisdiction and transferring the appeal to the Second Circuit. By pleading both patent-law and non-patent theories, Acorda undermined its bid for Federal Circuit review. More importantly, the decision reinforces a growing trend: Most arbitration-related IP disputes will not be heard by the Federal Circuit unless the plaintiff makes patent law utterly unavoidable.

    Until the Supreme Court revisits Gunn or clarifies the FAA-patent-law interplay, counsel should draft with care. The courthouse you end up in may depend more on your pleading strategy than the substance of your patent arguments.

    By Charles Gideon Korrell