Technology Information Law Blog by Charles Gideon Korrell

Tag: ITC

  • Crocs v. ITC: When One Decision Becomes Two for Appeal Purposes

    Crocs v. ITC: When One Decision Becomes Two for Appeal Purposes

    On January 8, 2026, the Federal Circuit issued its decision in Crocs, Inc. v. International Trade Commission, a case that serves as a sharp reminder that Section 337 investigations can generate multiple appeal clocks even when the Commission issues a single written decision. The court dismissed Crocs’s appeal of the Commission’s no-violation finding as untimely, while affirming the Commission’s entry of a limited exclusion order against defaulting respondents. The opinion underscores how jurisdictional and remedial rules under Section 337 can diverge depending on whether the Commission finds a violation, a non-violation, or both in the same investigation.

    Background of the Investigation

    Crocs owns two federal trademark registrations, U.S. Trademark Nos. 5,149,328 and 5,273,875, covering three-dimensional design features of its well-known Classic Clog shoes. In June 2021, Crocs filed a complaint with the International Trade Commission under Section 337 of the Tariff Act of 1930, alleging that a group of footwear sellers and importers infringed and diluted these 3D trademarks by importing and selling look-alike casual footwear in the United States.

    The investigation proceeded along two tracks. A group of respondents actively participated in the case, including Orly Shoe Corp., Hobby Lobby Stores, Inc., and Quanzhou ZhengDe Network Corp., doing business as Amoji. Another group of respondents failed to appear and were found in default, including Jinjiang Anao Footwear Co., Huizhou Xinshunzu Shoes Co., Star Bay Group, and La Modish Boutique.

    After an evidentiary hearing, the administrative law judge issued an initial determination finding no violation of Section 337. Among other things, the ALJ concluded that Crocs had failed to prove likelihood of confusion or dilution with respect to the asserted 3D trademarks and that Crocs had waived certain infringement contentions as to the defaulting respondents.

    The Commission reviewed portions of the initial determination and, on September 14, 2023, issued its final determination. The Commission found no violation as to the active respondents. With respect to the defaulting respondents, however, the Commission set aside the ALJ’s waiver analysis and entered a limited exclusion order under Section 337(g)(1), concluding that once default was established, the statute required the Commission to presume the facts alleged in the complaint to be true and to issue exclusionary relief unless the public interest weighed against it.

    Crocs filed its notice of appeal on December 22, 2023.

    The Appeal and the Timing Problem

    On appeal, Crocs challenged both aspects of the Commission’s decision. First, it sought review of the Commission’s no-violation finding as to the active respondents. Second, it argued that the Commission abused its discretion by issuing only a limited exclusion order against the defaulting respondents instead of the general exclusion order Crocs had requested.

    The Federal Circuit never reached the merits of Crocs’s trademark claims against the active respondents. Instead, it dismissed that portion of the appeal as untimely.

    Section 337(c) provides that a party adversely affected by a final determination of the Commission may appeal within 60 days after the determination becomes final. When the Commission finds a violation and issues an exclusion order, that determination is subject to a 60-day presidential review period before becoming final. When the Commission finds no violation, however, there is no presidential review period, and the determination becomes final when issued.

    Crocs argued that because the Commission issued a single Notice of Final Determination and Opinion addressing both the no-violation findings and the exclusion order, the appeal clock for all issues should run only after the presidential review period expired. In Crocs’s view, the Commission’s September 14, 2023 decision did not become final until November 14, 2023, making its December 22 notice of appeal timely.

    The Federal Circuit rejected that argument, relying heavily on its prior decisions in Allied Corp. v. United States International Trade Commission and Broadcom Corp. v. International Trade Commission. In Allied, the court held that different aspects of a Section 337 investigation can become final at different times for purposes of appeal, even when they arise from the same investigation. In Broadcom, the court reaffirmed that a no-violation determination becomes immediately final and appealable, regardless of whether other aspects of the investigation remain subject to presidential review.

    Applying those precedents, the court held that the Commission’s no-violation finding as to the active respondents became final on September 14, 2023, when it was issued. Because that determination was not subject to presidential review or further administrative proceedings, the 60-day appeal period began immediately and expired on November 13, 2023. Crocs’s December 22 filing therefore came too late.

    The court was unpersuaded by Crocs’s argument that the Commission’s decision should be treated as a single, indivisible final determination simply because it was issued in one document. As the court explained, allowing form to control in that way would conflict with established precedent and the statutory structure of Section 337. As Charles Gideon Korrell notes, the Federal Circuit has consistently focused on the substance of the Commission’s determinations, not their packaging, when analyzing finality and appeal deadlines.

    Crocs also briefly invoked the Supreme Court’s decision in Harrow v. Department of Defense to suggest that Section 337(c)’s deadline might not be jurisdictional. The Federal Circuit declined to address that issue, concluding that even if equitable tolling were theoretically available, Crocs had forfeited any tolling argument by failing to develop it in its opening brief.

    Limited Exclusion Order Versus General Exclusion Order

    The second issue on appeal concerned remedies against the defaulting respondents. Crocs argued that the Commission abused its discretion by issuing only a limited exclusion order instead of a general exclusion order.

    The Federal Circuit affirmed the Commission’s remedial choice. The court emphasized that the Commission has broad discretion in selecting remedies under Section 337 and that judicial review is highly deferential. A remedy will be upheld unless it is arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.

    Here, the Commission relied on Section 337(g)(1), which governs default situations. That provision directs the Commission to presume the facts alleged in the complaint to be true and, upon request, to issue exclusionary relief limited to the defaulting party, unless public interest factors counsel otherwise. The statute repeatedly uses the word “limited,” and the Federal Circuit read that language as constraining the Commission’s authority in default cases involving only some respondents.

    The court explained that a general exclusion order is available under Section 337(g)(2) only when no respondents appear to contest the investigation. Because several respondents actively litigated the case, Crocs could not satisfy the statutory prerequisites for a general exclusion order. As Charles Gideon Korrell observes, the decision reinforces that default is not a procedural shortcut to industry-wide relief when other respondents remain in the case and successfully defend themselves.

    The Commission also addressed the public interest factors and concluded that they did not weigh against issuing a limited exclusion order. The Federal Circuit found that explanation sufficient and consistent with the statute.

    Practical Takeaways

    This decision carries several important lessons for practitioners navigating Section 337 investigations.

    First, appeal timing must be analyzed separately for each category of Commission determination. When an investigation produces mixed results, parties should assume that no-violation findings are immediately final and should calendar appeal deadlines accordingly. Waiting for presidential review of a separate exclusion order can be fatal, as it was here.

    Second, the form of the Commission’s decision does not control finality. Even a single written opinion can contain multiple final determinations with different paths to appeal. Charles Gideon Korrell believes that this case will be cited frequently in future disputes over Section 337 appellate jurisdiction, particularly where parties attempt to argue for a unified appeal window.

    Third, default remedies under Section 337 are powerful but cabined. Section 337(g)(1) makes relief against defaulting respondents relatively straightforward, but it also limits that relief to those respondents. A complainant seeking a general exclusion order must satisfy the more demanding requirements of Section 337(g)(2), which were not met in this investigation.

    Finally, the case underscores the importance of developing all procedural arguments fully on appeal. Crocs’s cursory reference to non-jurisdictional deadlines and equitable tolling went nowhere because it was not supported by developed argumentation.

    Conclusion

    Crocs v. ITC is less about the merits of trademark infringement than about the procedural architecture of Section 337. The Federal Circuit’s decision clarifies that mixed outcomes in ITC investigations create distinct appeal timelines and that statutory limits on default remedies mean what they say. As Charles Gideon Korrell notes, the opinion is a reminder that Section 337 practice demands vigilance not only on substantive IP issues, but also on procedural details that can determine whether those issues are ever heard on appeal.

    By Charles Gideon Korrell

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

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

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

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

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

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

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

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

    The Challengers’ Rebuttal: Verbs Matter

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

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

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

    Major Questions Without Saying “Major Questions”

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

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

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

    Remedies and Reviewability

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

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

    Reading the Tea Leaves

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

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

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

    What Comes Next

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

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

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

    By Charles Gideon Korrell

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

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

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

    Background: FRAP as the Claimed Innovation

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

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

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

    Written Description: Possession Limited to Carbon Blocks

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

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

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

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

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

    Enablement: Undue Experimentation Beyond Carbon Blocks

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

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

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

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

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

    The Functional Genus Trap

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

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

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

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

    Practical Takeaways

    Several practical lessons emerge from the decision:

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

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

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

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

    Conclusion

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

    By Charles Gideon Korrell

  • Causam v. ITC: Standing Secured, But the Case Still Slips Away

    Causam v. ITC: Standing Secured, But the Case Still Slips Away

    On October 15, 2025, the Federal Circuit issued a decision in Causam Enterprises, Inc. v. International Trade Commission, No. 23-1769, that delivers a curious combination of vindication and defeat. On the one hand, the court held that Causam did, in fact, own the asserted patent and therefore satisfied Article III standing to pursue its appeal. On the other hand, the court declined to reach the merits of infringement because a companion PTAB appeal decided the same day rendered the case moot. The result is a dismissal that nonetheless contains a substantial and precedential analysis of patent ownership, assignment language, and standing in appeals from the ITC.

    This opinion will be of interest to anyone litigating patent cases that involve long chains of continuation, divisional, and continuation-in-part applications, especially where assignments use imprecise language. It also provides an important reminder that Article III standing is not a box that can be checked by assertion alone once a case reaches the merits stage. Charles Gideon Korrell believes this decision is best understood as a warning shot: even when the underlying dispute evaporates, the Federal Circuit will not hesitate to decide threshold jurisdictional questions when they matter to its authority to hear a case.

    Background of the Dispute

    Causam owns a portfolio of patents directed to “demand response” technology, which allows electrical utilities to reduce power demand during peak conditions. In 2021, Causam filed a complaint at the ITC under Section 337 of the Tariff Act, alleging that certain smart thermostats imported by Resideo and others infringed claim 1 of U.S. Patent No. 10,394,268. Causam sought an exclusion order barring importation of the accused products.

    The administrative law judge issued an Initial Determination concluding that Causam failed on two independent grounds. First, the ALJ held that Causam did not own the ’268 patent because earlier assignments had transferred ownership of the relevant patent family to a predecessor entity. Second, the ALJ found no infringement by the accused thermostats. The Commission, on review, adopted only the noninfringement finding and expressly declined to take a position on ownership.

    Causam appealed to the Federal Circuit, challenging only the noninfringement determination as to claim 1 and as to Resideo’s products. While that appeal was pending, the ’268 patent was challenged in inter partes review. The PTAB ultimately held all challenged claims unpatentable, including claim 1. That PTAB decision was appealed separately, and the Federal Circuit affirmed it in a companion opinion issued the same day.

    Against that procedural backdrop, the Federal Circuit faced two questions in the ITC appeal: whether Causam had Article III standing to appeal, and whether any live controversy remained in light of the PTAB decision.

    Standing as a Threshold Requirement

    The court began with standing. Although the Commission had declined to decide ownership, Causam argued that ownership was a threshold issue because, without it, Causam would lack the injury in fact required for Article III standing. The Federal Circuit agreed.

    Relying on Lujan v. Defenders of Wildlife and its own precedent, the court emphasized that standing requirements vary by stage of litigation. At the pleading stage, general allegations may suffice. But once a case reaches a stage supported by a full evidentiary record, a party invoking federal jurisdiction must demonstrate standing with evidence, not merely assertion.

    The Commission and intervenors argued that Causam’s assertion of ownership should be enough, citing cases such as Lone Star Silicon Innovations and Schwendimann. The court rejected that argument, explaining that those cases arose at the motion-to-dismiss stage. Here, by contrast, the appeal followed a full trial before the ALJ, and the ownership issue turned on contract interpretation rather than disputed facts.

    The court also rejected the argument that statutory authorization to appeal under Section 337 automatically conferred standing. Citing TransUnion LLC v. Ramirez and its own decision in Consumer Watchdog v. WARF, the court reiterated that Congress cannot legislate injury into existence. A statutory right to appeal does not displace the constitutional requirement of injury in fact.

    Charles Gideon Korrell notes that this portion of the opinion reinforces a trend in Federal Circuit jurisprudence. Parties cannot rely on procedural posture or statutory hooks to bypass standing once the case moves beyond the pleadings. Ownership must be proven, not presumed.

    The Ownership Question and Assignment Language

    Turning to the merits of ownership, the court framed the issue narrowly. Ownership of the ’268 patent depended on whether a 2007 assignment executed by the inventor, Joseph Forbes, transferred rights not only to the original application but also to later continuation-in-part applications.

    The 2007 assignment conveyed the “invention” of the ’909 application and “all divisions, reissues, continuations and extensions thereof.” Critically, it did not mention continuations-in-part. Years later, Forbes assigned a continuation-in-part application (the ’761 application) and its descendants, including the ’268 patent, to Causam.

    The intervenors argued that “continuations” should be read broadly to include continuations-in-part, or alternatively that assignment of the “invention” necessarily encompassed later continuations-in-part. The Federal Circuit rejected both arguments.

    Applying basic principles of contract interpretation, the court emphasized that it cannot insert words the parties did not use. Continuations and continuations-in-part are distinct legal concepts, a distinction reflected throughout the Manual of Patent Examining Procedure and patent law generally. A continuation cannot add new matter; a continuation-in-part can. That difference matters, especially to inventors who may wish to assign rights narrowly while retaining the ability to develop new subject matter.

    The court distinguished Regents of the University of New Mexico v. Knight, where broader language across multiple agreements supported assignment of continuation-in-part applications. Here, there was no comparable set of agreements or broad language justifying such an interpretation.

    Accordingly, the court held that the 2007 assignment did not transfer rights in the continuation-in-part application. Forbes therefore retained ownership of the ’761 application and validly assigned it, and its descendants, to Causam in 2014. Causam owned the ’268 patent and satisfied Article III standing.

    Charles Gideon Korrell believes this portion of the opinion will be heavily cited in future ownership disputes. The court’s insistence on respecting the precise language of assignment agreements underscores the risks of boilerplate drafting and the importance of explicitly addressing continuations-in-part when allocating rights.

    Mootness and the Limits of Appellate Review

    Having resolved standing in Causam’s favor, the court turned to mootness. This is where the case ultimately ended.

    Section 337 authorizes exclusion orders only for infringement of a “valid and enforceable” patent. In the companion appeal, the Federal Circuit affirmed the PTAB’s determination that claim 1 of the ’268 patent was unpatentable. Because claim 1 was the only claim at issue in the ITC appeal, Causam no longer had any right to relief.

    The court rejected arguments that co-pending litigation or residual interests could keep the case alive. Citing Texas Instruments v. ITC and Hyosung TNS v. ITC, the court explained that once the Commission lacks authority to issue an exclusion order, the appeal becomes moot. Causam conceded at oral argument that affirmance of the PTAB decision would moot the ITC appeal.

    Accordingly, the court dismissed the appeal as moot without reaching the noninfringement determination.

    Practical Takeaways

    This decision offers several lessons.

    First, standing matters at every stage, and appellate courts will scrutinize it even when the agency below did not. Parties appealing from the ITC should be prepared to prove ownership with evidence, particularly when assignments are contested.

    Second, assignment language matters enormously. The omission of “continuations-in-part” was decisive. Those drafting or reviewing patent assignments should treat that omission as intentional unless the agreement clearly indicates otherwise. Charles Gideon Korrell notes that this case is a reminder that ambiguity tends to be resolved by what the contract actually says, not what one party later wishes it had said.

    Third, parallel PTAB proceedings can overtake ITC litigation entirely. Even a successful standing argument cannot preserve an appeal if the asserted claims are later held unpatentable. Strategic coordination between ITC actions and PTAB defenses remains critical.

    In the end, Causam v. ITC is a case where the Federal Circuit answered an important legal question even as it closed the courthouse door. Ownership was clarified, standing was secured, but the victory came too late to matter. For litigants, that may be cold comfort, but for practitioners, the guidance is valuable and likely to endure.

    By Charles Gideon Korrell

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

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

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

    Background: Two Tariff Regimes, One Statute

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

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

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

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

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

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

    IEEPA’s Text and Structure: Regulation Is Not Taxation

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

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

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

    Distinguishing Algonquin and Yoshida

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

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

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

    The Major Questions Doctrine

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

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

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

    Remedy: Law Declared, Relief Deferred

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

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

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

    A Marbury-Like Moment in Trade Law

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

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

    The Dissent

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

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

    Looking Ahead

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

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

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

    By Charles Gideon Korrell

    V.O.S. Selections, Inc. v. United States: Court Strikes Down Presidential Tariff Authority Under IEEPA
  • Realtek Semiconductor Corp. v. ITC: Federal Circuit Declines Jurisdiction Over Sanctions Appeal

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

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

    Background

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

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

    The Jurisdictional Framework

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

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

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

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

    The Court’s Analysis

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

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

    Alternative Forum: District Court?

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

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

    Implications and Takeaways

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

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

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

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

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

    By Charles Gideon Korrell

  • Court of Appeals Decision in Lashify, Inc. v. International Trade Commission: Key Takeaways

    On March 5, 2025, the United States Court of Appeals for the Federal Circuit issued a decision in Lashify, Inc. v. International Trade Commission, a case concerning intellectual property rights in the context of international trade and the domestic industry requirement under Section 337 of the Tariff Act of 1930. The ruling has significant implications for patent enforcement at the U.S. International Trade Commission (ITC) and the interpretation of what constitutes a “domestic industry.”

    Background of the Case

    Lashify, Inc., a U.S.-based company, filed a complaint with the ITC alleging that several importers were violating Section 337 by importing and selling artificial eyelash extension products that infringed its patents. The patents at issue included:

    • U.S. Patent No. 10,721,984 (a utility patent related to lash extensions and their application process), and
    • U.S. Design Patent Nos. D877,416 and D867,664 (design patents covering a lash applicator and storage cartridge).

    To succeed under Section 337, Lashify had to demonstrate both patent infringement and the existence of a domestic industry relating to the patented products. The ITC ruled against Lashify, finding that it failed to satisfy the “economic prong” of the domestic industry requirement and that its own products did not practice the claimed invention of the ’984 patent.

    Key Legal Issues Addressed

    1. Domestic Industry Requirement Under Section 337

    One of the central legal issues was the interpretation of the “economic prong” of the domestic industry requirement under Section 337(a)(3), which requires a complainant to show:

    • (A) Significant investment in plant and equipment;
    • (B) Significant employment of labor or capital; or
    • (C) Substantial investment in the exploitation of the patent, including engineering, research and development, or licensing.

    The ITC found that Lashify’s domestic activities—sales, marketing, warehousing, quality control, and distribution—did not qualify as “significant employment of labor or capital” under subsection (B). The Federal Circuit rejected this interpretation, ruling that the ITC had applied an overly restrictive reading of the statute. The court held that Section 337 does not categorically exclude expenditures on sales, marketing, warehousing, quality control, and distribution. Instead, it directed the ITC to reassess Lashify’s expenditures under the correct legal framework.

    2. Claim Construction and the “Heat Fused” Limitation

    Another key issue was whether Lashify’s own lash extension products met the “heat fused” requirement in its ’984 patent. The ITC had determined that Lashify’s products did not satisfy the technical prong of the domestic industry test because they did not form a “single entity” as required by the claim construction.

    Lashify challenged this finding, arguing that “heat fused” should be interpreted more broadly. The Federal Circuit upheld the ITC’s construction, emphasizing that the claim language and specification supported the requirement that the fused fibers form a “single entity,” excluding methods that merely use glue as a binding agent. This ruling underscores the importance of precise claim drafting in patent applications and litigation.

    Implications for Intellectual Property Law

    This decision has several notable implications:

    1. Expanded Scope of Domestic Industry: The ruling clarifies that non-manufacturing activities, such as warehousing and marketing, can contribute to a domestic industry analysis under Section 337. This makes it easier for companies that primarily engage in sales and distribution to seek ITC protection against infringing imports.
    2. Stricter Standards for Proving Patent Practice: The court’s affirmation of the ITC’s claim construction reinforces the importance of clear patent drafting and claim scope. Patent holders must ensure that their claims are not so narrowly construed that their own products fail to qualify.
    3. Stronger ITC Jurisdiction Over Design Patents: Since the Federal Circuit vacated the ITC’s decision regarding the economic prong for the design patents, the case may lead to stronger ITC enforcement of design patents, which are often easier to enforce than utility patents due to their lack of technical-prong requirements.

    Conclusion

    The Lashify, Inc. v. ITC decision is a pivotal case in ITC intellectual property enforcement. It reinforces a broader interpretation of the domestic industry requirement, making it more accessible for U.S.-based companies relying on intellectual property protection. At the same time, it highlights the critical importance of robust patent claim drafting and the need to ensure that a company’s own products meet the claimed invention’s requirements. As the case heads back to the ITC on remand, the industry will be watching closely to see how these legal principles are applied in practice.

    By Charles Gideon Korrell

  • Federal Circuit Overturns ITC’s Patent Ineligibility Ruling in US Synthetic v. ITC

    On February 13, 2025, the United States Court of Appeals for the Federal Circuit issued its opinion in US Synthetic Corp. v. International Trade Commission, a case involving key issues in intellectual property law, particularly the eligibility of patent claims under 35 U.S.C. § 101 and the requirements for enablement under § 112. The Federal Circuit reversed the ITC’s conclusion that certain patent claims were directed to an abstract idea and, therefore, ineligible for patent protection, marking a significant decision for patent law concerning material compositions.

    Case Background

    US Synthetic Corp. (USS) filed a complaint with the International Trade Commission (ITC) alleging that several companies had violated Section 337 of the Tariff Act (19 U.S.C. § 1337) by importing and selling products that infringed its U.S. Patent No. 10,508,502 (the ’502 patent). The patent in question covers a polycrystalline diamond compact (PDC), a material used in drilling and machining applications.

    After an investigation, the ITC determined that the asserted claims of the ’502 patent were directed to an abstract idea and were thus patent-ineligible under § 101. The ITC’s ruling was based on its conclusion that the patent claims were primarily focused on certain magnetic properties of the PDCs, which it considered to be merely the result of the manufacturing process rather than structural limitations of the claimed composition.

    USS appealed this determination, arguing that the ITC had misapplied the Supreme Court’s Alice test and that the patent claims were not abstract but instead directed to a specific, novel composition of matter.

    Federal Circuit’s Analysis and Ruling

    The Federal Circuit reversed the ITC’s finding of patent ineligibility and ruled in favor of USS. The court applied the Alice two-step test for determining patent eligibility:

    1. Step One: Are the Claims Directed to an Abstract Idea? The Federal Circuit found that the claims were not directed to an abstract idea but rather to a specific composition of matter. The court emphasized that the patent defines the PDC by its material composition, including diamond grains, catalyst properties, grain size, and certain magnetic properties. Because these characteristics inform a skilled artisan about the structure and physical properties of the PDC, the claims were not abstract.
    2. Step Two: Do the Claims Contain an Inventive Concept? Since the claims were not abstract under step one, the court did not need to proceed to step two. However, it noted that even if step two had been necessary, the claimed composition involved specific manufacturing parameters that resulted in improved material properties, which could qualify as an inventive concept.

    Enablement Under § 112

    In addition to patent eligibility, the intervenors argued that the claims were not enabled under § 112 because the patent did not adequately describe how to achieve the claimed properties without undue experimentation. However, the Federal Circuit upheld the ITC’s conclusion that the claims were enabled. The court found that the patent specification contained sufficient details on the manufacturing process and provided working examples that a skilled artisan could follow without undue experimentation.

    Key Takeaways for Intellectual Property Law

    1. Clarification on Patent Eligibility for Material Compositions
      • The ruling reinforces that claims defining specific material compositions—especially when tied to measurable properties—are not abstract ideas under § 101.
      • The decision pushes back against an overly restrictive view of patent eligibility that might otherwise exclude innovations in material science.
    2. Reaffirmation of the Enablement Standard
      • The Federal Circuit reiterated that the burden of proving non-enablement is on the party challenging the patent.
      • The court emphasized that some level of experimentation is permissible as long as it is not unduly extensive.

    Conclusion

    The US Synthetic v. ITC decision is a significant win for patent holders in the field of material science. It demonstrates that courts are willing to take a nuanced approach when assessing whether a patent is directed to an abstract idea, particularly in cases involving compositions of matter. Moreover, the ruling affirms that patents must provide enough information to enable a skilled artisan to practice the invention without undue experimentation, but they do not need to be exhaustive in their disclosures. This decision is likely to influence future litigation involving patent eligibility and enablement in the chemical and material sciences industries.

    By Charles Gideon Korrell