Technology Information Law Blog by Charles Gideon Korrell

Tag: inventorship

Fortress Iron v. Digger Specialties: When an Unreachable Inventor Dooms the Patent
The Federal Circuit’s decision in Fortress Iron, LP v. Digger Specialties, Inc., Case No. 24-2313 (Fed. Cir. Apr 2, 2026), addresses a deceptively simple but practically significant question: what happens when everyone agrees a patent omitted a true inventor—but that inventor cannot be found?

The answer is unforgiving. If the omitted inventor cannot be joined through the statutory correction mechanisms of 35 U.S.C. § 256, the patent is invalid. The decision underscores a structural reality of patent law that is sometimes underappreciated in practice: inventorship is not merely a technical formality—it is a validity requirement with strict procedural guardrails.

For companies relying on global design and manufacturing collaborations, the case is a cautionary signal. It is not enough to identify inventors correctly; one must also ensure that those inventors remain reachable if correction later becomes necessary.

This opinion is particularly notable because it resolves a question of first impression regarding the meaning of a “party concerned” under § 256(b), and in doing so, it reinforces the centrality of inventors in the patent system.

Factual Background: Collaborative Design, Missing Inventor

Fortress developed a vertical cable railing system designed to be sold as a pre-assembled panel. The innovation emerged through collaboration among internal personnel and external partners in China. While Fortress employees initially conceived and designed the product, two individuals from a third-party partner—Huang and Lin—contributed key modifications that resolved functional issues in the design.

Those contributions were not trivial. They addressed cable rotation issues during tensioning and were incorporated into the final product ultimately claimed in the patents.

Despite this, when Fortress filed its patent applications, it named only its internal contributors as inventors. Huang and Lin were omitted.

Years later, during litigation against Digger Specialties, Fortress conceded that both Huang and Lin were in fact co-inventors. Fortress successfully corrected inventorship to add Lin under § 256(a), which requires consent from all parties. But Huang presented a different problem: he could not be located.

That factual wrinkle—an acknowledged co-inventor who could not be found—became dispositive.

The Statutory Framework: § 256 as a Conditional “Safety Valve”

The Federal Circuit grounded its analysis in the longstanding principle that incorrect inventorship renders a patent invalid. The court relied on Pannu v. Iolab Corp., which established that the nonjoinder of an actual inventor invalidates a patent unless corrected.

Section 256 provides a mechanism to cure such errors. It allows correction either through the USPTO (§ 256(a)) or through a court order (§ 256(b)). Importantly, § 256 has often been described as a “savings provision,” preserving patent validity when inventorship errors are fixable. But that “savings” function is conditional.

As the court reiterated, correction under § 256(b) requires “notice and hearing of all parties concerned.” That phrase became the central issue in the case.

A Question of First Impression: Who Is a “Party Concerned”?

Fortress argued that Huang was not a “party concerned” under § 256(b) because adding him as an inventor would not harm him economically. In other words, Fortress attempted to interpret “party concerned” through a due process lens, limiting it to those with adverse interests.

The Federal Circuit rejected that framing.

Relying heavily on Chou v. University of Chicago, the court emphasized that inventors themselves are inherently “parties concerned,” regardless of whether they hold current ownership interests.

The court’s reasoning was structural rather than pragmatic. Inventorship carries legal consequences beyond immediate economic impact, including:
- Ownership rights under § 262
- The ability to license or exploit the patent independently
- Attribution and reputational interests
Because of these implications, inventors must be given the opportunity to participate in proceedings affecting inventorship.

The court declined to rewrite the statute to align with Fortress’s narrower interpretation, noting that doing so would improperly substitute “party concerned” with “those with adverse economic interests.”

The takeaway is clear: inventors are always “parties concerned” for purposes of § 256(b), even if their participation appears unnecessary or inconvenient.

Procedural Requirements Are Not Optional

Once the court determined that Huang was a “party concerned,” the outcome followed almost mechanically.

Because Fortress could not locate Huang, it could not provide him with notice or an opportunity to be heard. That failure meant § 256(b) could not be satisfied.

The court was explicit on this point: the procedural requirements of § 256(b) are not mere formalities—they are prerequisites to relief.

This is a critical clarification. While § 256 is often described as flexible or remedial, this decision makes clear that its flexibility has limits. The statute does not permit courts to bypass procedural safeguards, even where doing so would preserve patent validity.

Charles Gideon Korrell would likely observe that this aspect of the decision aligns with a broader trend in Federal Circuit jurisprudence: procedural compliance is increasingly treated as substantive in effect, particularly where statutory text is explicit.

Invalidity as the Default Outcome

With correction unavailable, the court turned to the question of validity.

Here, the Federal Circuit adopted a straightforward reading of § 256(b): if an inventorship error “can be corrected,” the patent is not invalid; by implication, if it cannot be corrected, the patent is invalid.

The court rejected Fortress’s argument that listing at least one true inventor should be sufficient. That position, the court explained, would effectively nullify the statutory framework governing inventorship.

The court also addressed Fortress’s reliance on § 101 and the repeal of § 102(f), clarifying that:
- The term “inventor” includes all individuals who collectively invented the claimed subject matter (§ 100(f))
- The repeal of § 102(f) did not eliminate invalidity based on incorrect inventorship
The decision reinforces the continuing vitality of Pannu and earlier precedents requiring complete and accurate inventorship.

Charles Gideon Korrell notes that this portion of the opinion is particularly important for practitioners who may have assumed that the America Invents Act softened inventorship-based invalidity risks. The court makes clear that it did not.

Practical Implications: Managing Inventorship Risk

The most significant contribution of this case is not doctrinal—it is operational.

The decision exposes a risk that is increasingly common in modern product development: reliance on external collaborators whose long-term accessibility cannot be guaranteed.

Several practical lessons emerge:
1. Identify Inventors Early and Rigorously
  Inventorship analysis should be conducted contemporaneously with development, particularly when external partners contribute to design or problem-solving.
2. Secure Assignments and Contact Information
  It is not enough to obtain assignment agreements. Companies should ensure they maintain reliable contact information for all contributors, including overseas personnel.
3. Consider Contractual Safeguards
  Agreements with vendors and collaborators should include obligations to assist with future patent formalities, including inventorship corrections.
4. Document Contributions Carefully
  Clear documentation of who contributed what—and when—can help avoid disputes and support correction efforts.
5. Assess Litigation Risk Early
  If inventorship issues are identified during litigation, companies should evaluate whether correction is realistically achievable before investing heavily in enforcement.
Charles Gideon Korrell believes that this case will prompt companies to revisit their inventorship diligence processes, particularly in industries where design and manufacturing are distributed across multiple entities and jurisdictions.

Broader Doctrinal Context

The decision fits squarely within the Federal Circuit’s longstanding emphasis on the importance of inventorship.

Cases such as Pannu v. Iolab Corp. and Ethicon, Inc. v. U.S. Surgical Corp. have consistently treated inventorship as a core requirement tied to ownership and validity. The court’s reliance on these precedents underscores continuity rather than doctrinal innovation.

At the same time, the case breaks new ground by addressing a scenario not previously squarely resolved: the inability to locate an acknowledged co-inventor.

The court’s answer is formalistic but predictable. Where Congress has specified procedural requirements, courts will enforce them—even at the cost of invalidating otherwise meritorious patents.

Charles Gideon Korrell notes that the opinion reflects a textualist approach to statutory interpretation, with little appetite for equitable exceptions.

Conclusion

Fortress Iron v. Digger Specialties illustrates a harsh but important principle: patent validity depends not only on the substance of the invention, but also on strict compliance with inventorship requirements and the procedures governing their correction.

An omitted inventor is not a minor defect. And when that defect cannot be cured—because the inventor cannot be found—the patent does not survive.

For companies operating in collaborative, global development environments, the case serves as a reminder that inventorship is not just a legal checkbox. It is a structural requirement that must be managed proactively, or it may later prove fatal.

By Charles Gideon Korrell
April 3, 2026
Implicit v. Sonos: Federal Circuit Holds That Post-IPR Inventorship Corrections Cannot Undo Forfeited Arguments

The Federal Circuit’s recent decision in Implicit, LLC v. Sonos, Inc., No. 25-853 (Fed. Cir. Mar. 9, 2026), addresses a procedural question that arises occasionally in patent litigation but rarely receives sustained appellate attention: what happens when a patent owner corrects inventorship after a Patent Trial and Appeal Board (PTAB) final written decision?

The short answer from the court: a certificate of correction under 35 U.S.C. § 256 does not give a patent owner a second chance to make arguments that could have been raised earlier in the inter partes review (IPR). Even though inventorship corrections are generally retroactive, the Federal Circuit held that ordinary procedural doctrines—particularly forfeiture—still apply.

The decision reinforces an important principle about IPR practice: patent owners must present all viable arguments during the proceeding itself. Post-hoc attempts to change the evidentiary landscape will not reopen the record.

Background of the Dispute

The case arose from IPR petitions filed by Sonos challenging two patents owned by Implicit: U.S. Patent Nos. 7,391,791 and 8,942,252. The patents relate to wireless audio systems—technology that sits squarely within the ecosystem where companies like Sonos have built significant commercial products.

The key prior art reference relied upon by Sonos was a patent issued to Janevski. Because Janevski had a filing date of December 2001, Implicit attempted to antedate the reference by arguing earlier conception and reduction to practice.

The strategy depended on showing that two named inventors conceived of the invention and communicated it to an engineer who helped implement the system. If that work properly “inured to the benefit” of the inventors, then the reference might not qualify as prior art.

The PTAB rejected the argument. It found the evidence insufficient to establish conception and communication of the invention before the Janevski filing date. As a result, the Board determined that Janevski qualified as prior art and that the challenged claims were unpatentable as anticipated or obvious.

The Complication: Arthrex and a Procedural Reset

The case took an unusual procedural path because it intersected with the constitutional litigation surrounding PTAB administrative patent judges.

After the Federal Circuit issued its decision in Arthrex, Inc. v. Smith & Nephew, Inc., the appeal was remanded so that the patent owner could seek review by the Director of the USPTO. The Supreme Court later confirmed the Director-review remedy in United States v. Arthrex, Inc.

While that process unfolded, Implicit made a strategic move.

It asked the USPTO to correct inventorship on both patents to add a third individual—Guy Carpenter—who had previously been described only as an engineer involved in implementation.

The USPTO issued certificates of correction adding Carpenter as an inventor.

Implicit then attempted to rely on those corrections to revisit the PTAB’s earlier findings about conception and reduction to practice.

The PTAB’s Decision on Remand

The Federal Circuit remanded the case to the Board for a narrow question: what effect, if any, should the inventorship corrections have on the original final written decisions?

The Board concluded that the corrections did not change the outcome.

Although § 256 corrections typically operate retroactively, the Board determined that equitable doctrines—particularly waiver and judicial estoppel—prevented Implicit from relying on the newly corrected inventorship at that stage of the proceedings. Implicit appealed again.

The Federal Circuit’s Holding

The Federal Circuit affirmed, framing the issue as a narrow but important procedural question: whether the retroactive effect of an inventorship correction under § 256 eliminates the possibility that a party forfeited arguments by failing to raise them during the IPR. The answer was no.

The panel held that the retroactive effect of § 256 does not override ordinary procedural doctrines such as forfeiture.

In other words, a patent owner cannot rely on a later correction of inventorship to resurrect arguments that were not properly presented during the IPR itself.

This was a matter of litigation procedure, not patent validity doctrine.

The Federal Circuit therefore upheld the Board’s determination that Implicit forfeited the argument by waiting until after the final written decisions to correct inventorship and raise new theories tied to that correction.

Why Retroactivity Did Not Control

Implicit’s core argument was that § 256 corrections operate retroactively. Historically, courts have treated corrected inventorship as though the patent had always listed the proper inventors.

The Federal Circuit did not dispute that principle.

However, the court emphasized that retroactivity in substantive patent law does not automatically displace procedural rules governing litigation conduct.

A correction may retroactively fix inventorship for purposes of ownership or validity analysis, but it does not erase the procedural reality that the issue was not raised in the IPR record.

The court therefore treated the case as a straightforward application of forfeiture doctrine.

Relationship to Earlier Inventorship Case Law

The decision fits within a line of Federal Circuit cases addressing inventorship corrections and their litigation consequences.

For example, Pannu v. Iolab Corp. recognized that incorrect inventorship can render a patent invalid unless corrected under § 256. The statute was designed to prevent harsh outcomes when errors occur.

Similarly, in Egenera, Inc. v. Cisco Systems, Inc., the Federal Circuit examined whether a patent owner could remove an inventor during litigation in order to avoid prior art complications. That case also highlighted the strategic consequences of inventorship corrections.

What Implicit v. Sonos adds is a procedural dimension: even if a correction is legally effective, it cannot be used to reopen issues that should have been addressed earlier in the administrative proceeding.

As Charles Gideon Korrell notes, the case illustrates how procedural doctrines can effectively limit the practical impact of otherwise powerful statutory remedies.

The Importance of IPR Record Building

From a practical perspective, the decision underscores the importance of developing the factual record during the IPR itself.

Inventorship questions often intersect with priority arguments, particularly when a patent owner seeks to antedate prior art.

If a third party’s work is critical to establishing conception or reduction to practice, the inventorship issue should be addressed early—either through correction proceedings or through the evidentiary record presented to the PTAB.

Waiting until after the Board issues a final written decision risks precisely the outcome seen here.

Charles Gideon Korrell believes that the ruling will likely encourage patent owners to scrutinize inventorship more carefully before entering IPR proceedings, particularly where earlier development work involved engineers or collaborators who were not originally listed as inventors.

Implications for Patent Owners

The case sends several signals to patent owners defending patents in PTAB proceedings.

First, inventorship corrections remain available and can still have substantive legal consequences.

But second—and more importantly—the timing of those corrections matters.

If inventorship is central to priority or conception arguments, the issue must be addressed during the IPR. Courts are unlikely to permit a late correction to alter the evidentiary posture of a completed proceeding.

As Charles Gideon Korrell observes, the Federal Circuit’s reasoning reflects a broader theme in PTAB jurisprudence: the administrative process is designed to produce a closed record, and parties are expected to present their full case within that framework.

Implications for PTAB Practice

The decision also reflects the Federal Circuit’s continued emphasis on procedural discipline in PTAB litigation.

Over the past decade, the court has repeatedly reinforced doctrines such as waiver and forfeiture in the context of IPRs. Arguments not raised before the Board generally cannot be raised later on appeal.

By applying forfeiture even in the face of a retroactive statutory correction, the court signaled that those procedural constraints remain robust.

The PTAB process is not designed to allow iterative relitigation after the fact.

Conclusion

Implicit v. Sonos provides a clear reminder that statutory tools like § 256 corrections cannot override the procedural realities of patent litigation.

Even though inventorship corrections operate retroactively, they do not reopen a closed administrative record or undo arguments that were forfeited during the original proceeding.

For patent owners involved in IPRs, the lesson is straightforward: issues related to inventorship, conception, and priority must be addressed early and thoroughly. Waiting until after a final written decision to adjust the theory of the case is unlikely to succeed.

By affirming the PTAB’s decision, the Federal Circuit reinforced the importance of procedural finality in inter partes review—an outcome that will likely shape how inventorship disputes are handled in future PTAB litigation.

By Charles Gideon Korrell

March 9, 2026
Coda Development v. Goodyear Tire: When Trade Secrets Collapse Under the Weight of Overbreadth

On December 8, 2025, the Federal Circuit affirmed the Northern District of Ohio’s judgment as a matter of law wiping out a $64 million jury verdict in Coda Development s.r.o. v. Goodyear Tire & Rubber Co., No. 23-1880 (Fed. Cir. Dec. 8, 2025). The court concluded that no reasonable jury could have found Goodyear liable for trade secret misappropriation under Ohio law and likewise upheld the district court’s rejection of Coda’s correction-of-inventorship claim directed to Goodyear’s U.S. Patent No. 8,042,586.

The decision is a careful, methodical application of trade secret doctrine, but it also fits into a broader pattern of Federal Circuit cases from the past two years in which jury verdicts in IP cases have been set aside on post-trial motions. At its core, Coda v. Goodyear reinforces a lesson that courts have been increasingly unwilling to soften: trade secrets must be defined with precision, anchored in secrecy, and proven to have been actually used. Aspirational descriptions and lists of desired functions will not survive judicial scrutiny.

Background and Procedural Posture

Coda Development and its related entities developed self-inflating tire (SIT) technology and engaged in discussions with Goodyear regarding potential collaboration. When Goodyear later introduced its own SIT system, Coda sued, asserting claims for trade secret misappropriation under the Ohio Uniform Trade Secrets Act (OUTSA) and seeking correction of inventorship on the ’586 patent.

After a September 2022 jury trial, Coda appeared to have achieved a resounding victory. The jury found misappropriation of five alleged trade secrets and awarded $2.8 million in compensatory damages and $61.2 million in punitive damages. The district court, however, granted Goodyear’s Rule 50(b) motion for judgment as a matter of law, concluding that each asserted trade secret failed on one or more required elements. The court also denied Coda’s correction-of-inventorship claim following a bench determination based on written submissions.

On appeal, Coda challenged nearly every aspect of those rulings. The Federal Circuit affirmed across the board.

The Governing Legal Framework

Because the trade secret claims arose under Ohio law, the Federal Circuit applied Sixth Circuit precedent interpreting the OUTSA. To prevail, a plaintiff must establish: (1) the existence of a trade secret; (2) acquisition through a confidential relationship or improper means; and (3) unauthorized use. Critically, courts also require that the alleged trade secret be defined with sufficient definiteness to allow adjudication of secrecy and misappropriation.

The panel emphasized that this definiteness requirement is not a technicality. Without a concrete definition, courts cannot distinguish protected information from general industry knowledge or public disclosures.

TS 24 and the Problem of Public Disclosure

Trade Secret 24 became the focal point of the appeal. Coda defined TS 24 as knowledge regarding the optimal placement of a pump in a tire, specifically “in the sidewall close to, and above, the rim where the tire cyclically deforms.”

The Federal Circuit had little difficulty affirming the district court’s conclusion that this information was publicly disclosed years earlier. Coda’s own 2007 PCT application and a 2008 Tire Technology article described pump placement in the tire sidewall near the rim. Trial testimony from Coda’s principal inventor confirmed that this placement concept was public.

Faced with this record, Coda attempted to narrow TS 24 on appeal by arguing that its trade secret concerned placement in a “conventional” or “standard” tire sidewall, not merely any sidewall. The court rejected this reframing outright. The operative trade secret definition was the one Coda provided in response to court-ordered interrogatories, which were expressly “closed.” Post-hoc attempts to add limiting language through testimony or argument could not salvage an otherwise public disclosure.

The panel’s analysis here is instructive. Once a trade secret plaintiff commits to a definition, courts will hold it to that definition. Elasticity cuts against secrecy.

TS 7, TS 11, and TS 20: Functional Descriptions Are Not Trade Secrets

The court next addressed three trade secrets that suffered from a different, but related, flaw. TS 7, TS 11, and TS 20 were each framed as combinations of components or lists of functions associated with self-inflating tire systems.

For example, TS 7 described a “multi-purpose interface” capable of performing ten separate functions, including connecting various components, routing air, and holding filters. What it did not describe was the underlying design or development knowledge that enabled those functions.

The Federal Circuit agreed with the district court that this kind of functional description does not satisfy the definiteness requirement. A trade secret must identify the protectable knowledge itself, not merely the result it achieves. Lists of capabilities or end goals are indistinguishable from general engineering aspirations unless tethered to specific, non-public implementation details.

TS 11 and TS 20 fared no better. Each consisted of long lists of features, geometries, and system concepts, but none articulated how those elements were designed, selected, or combined in a way that would meaningfully separate secret knowledge from what was already known in the field.

The court’s reasoning echoes a growing body of appellate authority rejecting “laundry list” trade secrets. Courts expect plaintiffs asserting complex technical trade secrets to do the hard work of separating the secret from the surrounding noise.

Failure of Proof on “Use”

Even if the asserted trade secrets had been valid, the Federal Circuit concluded that Coda failed to present sufficient evidence that Goodyear actually used them.

Coda relied heavily on expert testimony asserting that Goodyear’s patents and internal documents reflected substantial portions of its trade secrets. But the court characterized this testimony as conclusory and unsupported. Identifying one or two overlapping concepts from a multi-element trade secret does not establish use of a “substantial portion,” particularly where those concepts were themselves publicly disclosed.

This aspect of the decision underscores a practical litigation reality: use must be proven with specificity. Generalized comparisons and thematic similarities will not carry a verdict through post-trial review.

TS 23 and the Limits of Inference

Trade Secret 23 concerned test results purportedly demonstrating that Coda’s pump designs could generate pressure exceeding tire cavity pressure. The only evidence of alleged disclosure and use was a January 2009 email summarizing certain test results.

The Federal Circuit agreed with the district court that the email did not disclose all of the testing data encompassed by TS 23. Coda’s argument that Goodyear’s subsequent project advancement permitted an inference of reliance on the trade secret was deemed insufficient. Temporal proximity, without a clear evidentiary bridge, could not support a finding of use.

Correction of Inventorship: Trade Secrets Are Not a Substitute for Conception

Coda’s correction-of-inventorship claim rose or fell with its trade secret case. Because the court affirmed the JMOL ruling, there was no factual predicate left to support inventorship correction.

The panel also rejected the argument that the district court improperly disregarded jury findings. The jury had never been asked to compare the scope of TS 24 with the claims of the ’586 patent. The district court’s conclusion that the alleged trade secret did not establish conception of the claimed invention therefore did not conflict with any jury determination.

The court reiterated a fundamental principle of patent law: conception requires possession of every feature of the claimed invention. Trade secret allegations, particularly those found indefinite or publicly disclosed, cannot fill that gap.

Broader Implications

Coda v. Goodyear is less about hostility to juries than about judicial insistence on doctrinal discipline. Trade secret law offers powerful remedies, but only for plaintiffs willing to define their secrets narrowly, protect them rigorously, and prove their misuse with precision.

Charles Gideon Korrell believes that the decision serves as a reminder that trade secret claims must be engineered with the same care as patent claims. Charles Gideon Korrell notes that overbroad definitions may play well before a jury but are vulnerable on post-trial review. Charles Gideon Korrell also observes that courts increasingly expect trade secret plaintiffs to articulate something closer to a “specification-level” disclosure when the technology is complex.

For companies navigating collaborations, joint development discussions, or exploratory partnerships, the case reinforces the importance of disciplined information management. For litigators, it underscores the need to lock down trade secret definitions early and live with them through trial and appeal.

In the end, Coda v. Goodyear stands as a cautionary tale: when everything is a trade secret, nothing is.

By Charles Gideon Korrell

December 9, 2025
IQE PLC v. Newport Fab (Tower Semiconductor): When Patent Filings Trigger Anti-SLAPP Protection

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

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

Background: From NDA to Patent Filings

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

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

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

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

Jurisdiction First: Anti-SLAPP Denials as Collateral Orders

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

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

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

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

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

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

The Merits: Step One Means Step One

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

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

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

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

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

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

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

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

What the Court Did Not Decide

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

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

Implications for Patent and Trade Secret Litigation

This decision carries several practical implications.

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

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

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

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

Conclusion

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

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

By Charles Gideon Korrell

October 17, 2025
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

August 27, 2025
BEARBOX LLC v. LANCIUM LLC: A Legal Examination of Inventorship and State Law Preemption in Patent Law
In the recent case of BearBox LLC v. Lancium LLC, the United States Court of Appeals for the Federal Circuit addressed pivotal issues concerning inventorship claims and the preemption of state law by federal patent statutes. This case underscores the intricate balance between state and federal jurisdictions in intellectual property disputes.

Case Background

Austin Storms, founder of BearBox LLC, engaged in discussions with Lancium LLC’s co-founders, Michael T. McNamara and Dr. Raymond E. Cline, Jr., during a Bitcoin mining conference. Subsequently, Storms sent an email containing technical information about BearBox’s technology. Lancium later secured U.S. Patent No. 10,608,433 (“the ‘433 patent”), leading Storms to assert that he should be recognized as an inventor. BearBox pursued legal action, alleging conversion under Louisiana state law and seeking correction of inventorship on the ‘433 patent.

Key Legal Issues Addressed
1. Preemption of State Law Conversion Claim
  - BearBox’s conversion claim centered on Lancium’s alleged unauthorized use of its unpatented technology. The district court dismissed this claim, determining it was preempted by federal patent law. The court reasoned that allowing such a state law claim would conflict with the objectives of federal patent statutes, which aim to promote public disclosure and free use of unpatented ideas. The Federal Circuit affirmed this decision, emphasizing that state laws cannot offer patent-like protection to intellectual creations unprotected under federal law.
2. Exclusion of Supplemental Expert Report
  - BearBox submitted a supplemental expert report after the close of discovery without seeking the court’s permission. The district court excluded this report, citing procedural rules and the untimely nature of its submission. The Federal Circuit upheld this exclusion, noting that BearBox had ample opportunity to address claim construction issues earlier in the proceedings and failed to justify the delayed submission.
3. Inventorship Claims
  - At the heart of the dispute was whether Storms should be recognized as a sole or joint inventor of the ‘433 patent. The district court, after a thorough bench trial, found that BearBox did not provide clear and convincing evidence to support Storms’ inventorship claims. The court highlighted that the information shared by Storms did not establish his conception of the claimed invention, nor did it precede Lancium’s independent development. The Federal Circuit affirmed this finding, underscoring the necessity for corroborated evidence in inventorship disputes.
Implications for Intellectual Property Law

This case reinforces the principle that federal patent law preempts state laws that attempt to grant patent-like protections to unpatented ideas. It also highlights the critical importance of timely and procedurally correct submissions in litigation, especially concerning expert reports. For inventors and companies, the decision underscores the necessity of maintaining thorough documentation and clear communication when collaborating or sharing technical information, as these records are vital in establishing claims of inventorship.

In conclusion, the BearBox LLC v. Lancium LLC decision provides valuable insights into the complexities of patent law, particularly regarding the boundaries of state and federal jurisdictions and the stringent requirements for proving inventorship.

By Charles Gideon Korrell
January 14, 2025