Technology Information Law Blog by Charles Gideon Korrell

Tag: patent law

  • Ethanol Boosting Systems v. Ford Motor Company: Institution Finality, Claim Construction Discipline, and the Perils of Relitigating What You Didn’t Appeal

    Ethanol Boosting Systems v. Ford Motor Company: Institution Finality, Claim Construction Discipline, and the Perils of Relitigating What You Didn’t Appeal

    The Federal Circuit’s December 23, 2025 decision in Ethanol Boosting Systems, LLC v. Ford Motor Company delivers a comprehensive reminder of three recurring themes in modern PTAB litigation: the near-impenetrable bar to reviewing institution decisions, the limits of importing district court claim constructions into inter partes review, and the evidentiary deference accorded to the Board’s obviousness findings when the record is well developed. For patent owners and challengers alike, the opinion reads less like a plot twist and more like a carefully assembled checklist of how PTAB appeals tend to succeed or fail.

    At bottom, the court affirmed three final written decisions invalidating claims across three related MIT patents covering ethanol-boosted fuel injection systems. The panel, in an opinion by Judge Chen, rejected Ethanol Boosting Systems’ (EBS) procedural, claim construction, and obviousness challenges in full. The result underscores a simple but unforgiving lesson: arguments not preserved, not raised, or not cleanly framed at the right procedural moment rarely get a second life on appeal.

    Background and the Patents at Issue

    The patents at issue—U.S. Patent Nos. 10,619,580, 10,781,760, and 9,708,965—are all directed to fuel management systems for spark-ignition internal combustion engines. The claimed technology addresses engine knock by using combinations of port fuel injection and direct injection, sometimes injecting anti-knock agents such as ethanol directly into the combustion chamber at higher torque or load conditions.

    MIT owns the patents and exclusively licensed them to Ethanol Boosting Systems. Ford challenged the patents in three inter partes reviews, and the Patent Trial and Appeal Board ultimately found the asserted claims unpatentable as obvious under 35 U.S.C. § 103 based on combinations of well-known prior art references.

    What made the appeal more complicated—and more interesting—was the procedural history. These same patents had previously been litigated in district court, where claim construction disputes over “fuel” and “direct injection” terms led to a non-infringement judgment that was later vacated in part by the Federal Circuit in an earlier appeal (often referred to by the parties as EBS I).

    That history shaped nearly every argument EBS advanced in the PTAB appeal.

    The Institution Challenge and § 314(d): A Door That Stays Shut

    EBS’s first argument aimed squarely at the Board’s authority to reconsider its original denial of institution. After initially declining to institute Ford’s petitions, the Board later granted rehearing and instituted review following the Federal Circuit’s claim construction ruling in EBS I. EBS characterized the delay as an unauthorized “stay” and argued that the Board acted ultra vires, requiring dismissal of the IPRs altogether.

    The Federal Circuit was unmoved. Invoking the familiar and formidable language of 35 U.S.C. § 314(d), the court reiterated that decisions whether to institute inter partes review—and reconsiderations of those decisions—are “final and nonappealable.” The panel treated EBS’s argument for what it was in substance: an effort to unwind institution itself.

    Consistent with Supreme Court precedent in Thryv v. Click-to-Call and Federal Circuit cases such as Medtronic v. Bosch and IGT v. Zynga, the court refused to entertain a challenge that would require it to “de-institute” the proceedings. Labeling the Board’s timing as a “stay” did not change the analysis. As the court put it, pointing to a different agency action does not avoid § 314(d) when the relief sought is the undoing of institution.

    Charles Gideon Korrell notes that this portion of the opinion reinforces a practical reality of PTAB practice: once an IPR is instituted, appellate review of the path taken to get there is almost always foreclosed. Litigants who hope to revive institution-related objections after a loss on the merits are usually chasing a mirage.

    Claim Construction: What You Don’t Appeal Doesn’t Follow You

    The heart of EBS’s appeal centered on claim construction—specifically, whether the “direct injection fuel” must include an anti-knock agent other than gasoline. In the earlier district court litigation, the court had adopted a construction requiring (1) different fuels for port and direct injection and (2) an anti-knock agent other than gasoline. On appeal in EBS I, however, EBS challenged only the first requirement. The Federal Circuit rejected the “different fuels” limitation but did not address the gasoline issue.

    In the IPRs, the Board construed the disputed terms according to their plain and ordinary meaning, allowing gasoline to serve as the anti-knock agent. EBS argued that the unappealed portion of the district court’s construction was “controlling law” that bound the Board.

    The Federal Circuit disagreed—decisively. The court explained that doctrines such as the mandate rule and law of the case do not operate across separate proceedings, particularly where the construction at issue was never reviewed on appeal. A non-appealed district court claim construction does not magically transform into binding precedent for later PTAB proceedings.

    Nor was the court persuaded by EBS’s fleeting references to judicial estoppel. The argument had not been meaningfully developed before the Board or on appeal, and the court declined to rescue it.

    Charles Gideon Korrell believes this aspect of the decision offers a sobering reminder: selective appeals carry consequences. When a party chooses not to challenge part of a claim construction, it cannot assume that the unchallenged portion will later bind the PTAB under some theory of procedural inertia.

    No Obligation to Rescue Unmade Arguments

    EBS also faulted the Board for failing to conduct an independent claim construction analysis or to meaningfully grapple with the district court’s earlier construction under 37 C.F.R. § 42.100(b). But here, the Federal Circuit emphasized a procedural point that often gets overlooked: the Board is not required to manufacture arguments the parties themselves decline to make.

    EBS had not asked the Board to construe the disputed terms. Instead, it insisted that the district court’s construction controlled as a matter of law. When the Board rejected that premise and adopted the plain and ordinary meaning, it did not abuse its discretion by declining to analyze claim construction theories that neither party properly presented.

    The court distinguished cases such as Power Integrations v. Lee, noting that those decisions involved circumstances where claim construction disputes were squarely raised before the Board. That was not the case here.

    Charles Gideon Korrell notes that this portion of the opinion reinforces a core PTAB principle: parties own their theories. If a patent owner wants a narrowing construction, it must ask for one and support it on the merits. The Board is not an insurance policy against strategic silence.

    Substance Matters Too: No Disclaimer of Gasoline

    Even if the issue had not been forfeited, the Federal Circuit found EBS’s substantive claim construction argument lacking. Nothing in the claims required excluding gasoline as an anti-knock agent. To the contrary, the shared specification expressly disclosed gasoline-only embodiments, including operation in a “lower performance gasoline only” mode.

    Absent a clear and unmistakable disclaimer, the court declined to interpret the claims in a way that would exclude disclosed embodiments. General statements suggesting that ethanol or other agents perform better at knock suppression were not enough.

    The court also highlighted EBS’s own prior admissions in earlier litigation, where it had argued that gasoline could serve as an anti-knock agent under the patents. Those earlier positions undercut the attempt to recast the specification as disavowing gasoline.

    Obviousness and Deference to the Board

    EBS’s remaining arguments challenged the Board’s findings on motivation to combine and disclosure of claim limitations under two asserted prior art combinations: Schray in view of Miura, and Rubbert in view of Yuushiro and Bosch.

    Across the board, the Federal Circuit found substantial evidence supporting the Board’s conclusions. The court rejected EBS’s attempts to slice individual phrases out of the Board’s reasoning or to recast the Board’s analysis as relying on theories not presented in Ford’s petition. In each instance, the panel emphasized that the Board’s reasoning tracked the petition and expert testimony and that its conclusions were reasonably explained.

    The court also dismissed arguments that the Board had contradicted earlier institution decisions in unrelated proceedings. Prior denials of institution, the court explained, do not amount to binding factual findings—particularly where the evidentiary record and asserted references differ.

    Charles Gideon Korrell notes that this portion of the decision fits squarely within the Federal Circuit’s recent pattern: when the Board articulates a coherent motivation-to-combine analysis grounded in the record, appellate challenges face a steep uphill climb.

    Takeaways

    The Ethanol Boosting Systems v. Ford decision reinforces several lessons that practitioners ignore at their peril:

    First, institution challenges remain largely untouchable on appeal. Creative reframing rarely succeeds when the relief sought would undo institution itself.

    Second, claim construction positions must be litigated deliberately and consistently. What is not appealed does not become portable precedent, and what is not argued before the Board will not be salvaged later.

    Third, the Board is entitled to rely on the plain and ordinary meaning of claim terms absent a properly presented dispute—and to credit prior art combinations supported by expert testimony and reasoned analysis.

    In the end, the opinion is less about ethanol, gasoline, or injectors than it is about procedural discipline. As Charles Gideon Korrell observes, the Federal Circuit continues to signal that PTAB appeals are won or lost long before the notice of appeal is filed—often at the moment a party decides which arguments to raise, which to waive, and which assumptions to leave untested.

    By Charles Gideon Korrell

  • Micron v. Longhorn IP: When an $8 Million Bond Isn’t Appealable (Yet)

    Micron v. Longhorn IP: When an $8 Million Bond Isn’t Appealable (Yet)

    The Federal Circuit’s December 18, 2025 decision in Micron Technology, Inc. v. Longhorn IP LLC is a reminder that not every high-stakes procedural ruling is immediately appealable, even when it carries an eight-figure price tag and raises substantial federal preemption questions. In dismissing the appeal for lack of jurisdiction, the court sidestepped the merits entirely, leaving unresolved whether Idaho’s aggressive Bad Faith Assertions of Patent Infringement Act can constitutionally regulate patent complaints filed in federal court. For now, the Federal Circuit has effectively pressed the pause button, reinforcing the primacy of the final judgment rule and narrowing the avenues for interlocutory review.

    Background and Procedural Posture

    Micron Technology and its affiliates, headquartered in Idaho, found themselves on the receiving end of a patent infringement suit filed by Katana Silicon Technologies in the Western District of Texas. Katana asserted three expired semiconductor patents, all directed to device-shrinking technologies. Micron responded with counterclaims under Idaho’s Bad Faith Assertions of Patent Infringement Act, alleging that the infringement suit itself constituted an unlawful bad-faith assertion.

    After transfer to the District of Idaho, the litigation took on a distinctly state-law flavor. Idaho intervened to defend the statute’s constitutionality, while Micron separately sued Longhorn IP LLC in Idaho state court, alleging that Longhorn controlled Katana and was equally responsible for the bad-faith conduct. That case was removed to federal court, consolidated, and met with motions to dismiss grounded in federal preemption.

    The district court denied the motions to dismiss, held that federal patent law did not preempt the Idaho statute, and imposed an $8 million bond under the Act’s bond provision. That provision requires a defendant accused of making a bad-faith assertion to post security equal to a good-faith estimate of the target’s litigation costs and potential recovery, unless the court finds sufficient assets or other good cause to waive the requirement.

    Longhorn and Katana appealed immediately, challenging both the denial of their motions to dismiss and the bond order. The appeal teed up weighty issues, including the scope of state authority to regulate patent enforcement conduct in federal court. But the Federal Circuit never reached them.

    The Jurisdictional Wall: Final Judgment Still Reigns

    Applying Federal Circuit law on appellate jurisdiction, the court began with first principles: under 28 U.S.C. § 1295(a)(1), it generally reviews only final decisions. A final decision ends the litigation on the merits and leaves nothing for the district court to do but execute judgment. Here, the bond decision did neither. It denied motions to dismiss and imposed a bond, but the merits of Micron’s bad-faith claims remained to be litigated.

    The appellants conceded there was no final judgment. Instead, they argued for jurisdiction under four alternative theories: interlocutory review of an injunction under § 1292, the collateral order doctrine, mandamus under the All Writs Act, and pendent jurisdiction over the dismissal rulings. The Federal Circuit rejected each in turn.

    No Injunction, No § 1292 Appeal

    First, the court addressed whether the bond order was appealable as an injunction or an injunction-like order under § 1292(a)(1) and (c)(1). The appellants characterized the $8 million bond as coercive and punitive, arguing that it had the practical effect of an injunction and created irreparable harm.

    The Federal Circuit was unpersuaded. An injunction compels or restrains conduct under threat of contempt. The bond order did neither. It did not prohibit litigation activity or mandate affirmative conduct beyond posting security as a procedural condition. Importantly, Idaho’s statute allows a hearing on the bond and permits waiver upon a showing of sufficient assets or other good cause. That availability of district court relief undercut any claim that the bond operated like an injunction.

    Applying the Supreme Court’s Carson test for injunction-like orders, the court found all three elements lacking. The bond did not have the practical effect of an injunction, the appellants failed to show serious or irreparable consequences, and the order was not one that could be effectually challenged only by immediate appeal. The absence of record evidence regarding inability to pay the bond proved fatal to the irreparable harm argument.

    The Collateral Order Doctrine: Narrow Means Narrow

    The appellants’ reliance on the collateral order doctrine fared no better. That doctrine, rooted in Cohen v. Beneficial Industrial Loan Corp., allows immediate appeal of a small class of orders that conclusively determine important issues completely separate from the merits and that would be effectively unreviewable after final judgment.

    At least two of those requirements were missing. The bond issue was not separate from the merits; it was intertwined with the very factors that define bad faith under the Idaho statute. The district court itself had relied on the same statutory factors in denying the motions to dismiss and imposing the bond. As Charles Gideon Korrell often notes when discussing procedural posture, when the same analysis drives both interim relief and ultimate liability, separation from the merits is more theoretical than real.

    Nor was the bond order effectively unreviewable after final judgment. Courts have routinely held that improper security requirements can be remedied through repayment with interest. Idaho law even recognizes recovery of bond premiums as of right. Speculative assertions of financial hardship did not change the analysis, particularly where the appellants had not pursued available waiver mechanisms in the district court.

    Allowing an interlocutory appeal here, the Federal Circuit reasoned, would invite precisely the kind of piecemeal litigation the final judgment rule is designed to prevent.

    Mandamus and Pendent Jurisdiction: Also Out

    The All Writs Act provided no escape hatch. Mandamus is an extraordinary remedy, available only where no other adequate means of relief exist. Because Idaho’s statute expressly allows waiver of the bond upon a showing of assets or good cause, the appellants could not show that immediate appellate intervention was their only option.

    Pendent jurisdiction failed for an even simpler reason. Without a properly appealable interlocutory order to anchor the appeal, there was nothing to which the denial of the motions to dismiss could be appended.

    What the Court Did Not Decide

    Perhaps the most significant aspect of the decision is what it leaves unanswered. The Federal Circuit expressly declined to reach whether federal patent law preempts Idaho’s statute or whether the district court abused its discretion in imposing an $8 million bond. Those questions remain live in the district court and, eventually, on appeal after final judgment.

    This jurisdictional punt has meaningful practical consequences. As the contemporaneous commentary notes, patent holders suing Idaho companies may face a substantial “pay-to-play” barrier that remains effectively unreviewable until the end of the case. That dynamic heightens the settlement pressure and could chill enforcement actions, particularly by non-practicing entities or smaller patent owners. patently-o

    Charles Gideon Korrell believes that this procedural posture is not accidental but reflects the judiciary’s longstanding reluctance to fracture patent litigation into multiple appellate skirmishes. Even where constitutional questions loom, the final judgment rule retains a gravitational pull.

    Broader Context: State Anti-Troll Statutes and Federal Preemption

    Idaho is not alone in targeting bad-faith patent assertions, but it is among the most aggressive. Many state statutes focus on pre-litigation demand letters. Idaho’s law goes further by explicitly covering complaints, squarely implicating federal court filings. That breadth is what places the statute on a potential collision course with federal patent law, Noerr-Pennington immunity, and the comprehensive remedial schemes already embedded in the Federal Rules and Title 35.

    The Federal Circuit’s dismissal delays, but does not eliminate, the need to reconcile these regimes. As Charles Gideon Korrell has observed in other contexts, the tension between state police powers and the uniformity interests of patent law tends to surface most sharply when states attempt to regulate conduct at the heart of federal litigation itself.

    Takeaways for Practitioners and Companies

    For now, the lesson is procedural but potent. Bond orders under state bad-faith patent statutes are unlikely to be immediately appealable absent truly extraordinary circumstances and a developed evidentiary record of irreparable harm. Defendants should fully develop waiver arguments in the district court, including evidence of assets and hardship, before expecting appellate relief.

    Plaintiffs, meanwhile, should recognize that jurisdictional delays can be strategically significant. The inability to obtain prompt appellate review may transform interim security orders into powerful leverage points.

    Charles Gideon Korrell notes that the eventual preemption showdown will likely turn on whether courts view statutes like Idaho’s as regulating abusive conduct or as impermissibly intruding on the federal patent enforcement framework. When that question finally reaches the Federal Circuit on a clean final judgment, it will carry implications far beyond Idaho’s borders.

    For now, however, Micron v. Longhorn stands as a reminder that even an $8 million bond does not buy an immediate ticket to the appellate courthouse.

    By Charles Gideon Korrell

  • Wonderland Switzerland v. Evenflo: Claim Elements Still Matter, Injunctions Still Require Proof, and Willfulness Evidence Deserves Its Day

    Wonderland Switzerland v. Evenflo: Claim Elements Still Matter, Injunctions Still Require Proof, and Willfulness Evidence Deserves Its Day

    The Federal Circuit’s decision in Wonderland Switzerland AG v. Evenflo Company, Inc. (Dec. 17, 2025) delivers a sweeping reset across several familiar but frequently contested areas of patent law: doctrine of equivalents limits, claim construction discipline, permanent injunction standards, and the evidentiary threshold for willfulness. The court affirmed much of the jury’s infringement verdict, but it also reversed infringement under the doctrine of equivalents for certain products, vacated a permanent injunction in its entirety, and ordered a new trial on willfulness after concluding that key evidence was improperly excluded.

    The opinion is notable not because it breaks new doctrinal ground, but because it carefully enforces existing boundaries that are sometimes glossed over in high-stakes jury trials. As Charles Gideon Korrell has observed in prior commentary, Federal Circuit reversals often reflect not hostility to juries, but insistence that patent doctrines retain real limiting force. This decision fits that pattern squarely.

    Background and Procedural Posture

    Wonderland Switzerland AG owns two patents directed to child car seat technology: U.S. Patent Nos. 7,625,043 and 8,141,951. Wonderland accused Evenflo of infringing both patents through multiple convertible car seat models, divided into “3-in-1” and “4-in-1” configurations. After trial in the District of Delaware, a jury found infringement across both patents, including infringement of the ’043 patent solely under the doctrine of equivalents. The jury declined to find willful infringement.

    Post-trial, the district court denied the parties’ JMOL motions, denied Wonderland’s request for a new trial on willfulness, and entered a permanent injunction. Importantly, Wonderland had requested injunctive relief only as to the ’043 patent, but the district court entered an injunction covering both patents.

    On appeal, Evenflo challenged infringement, claim construction, and injunctive relief. Wonderland cross-appealed the denial of a new trial on willfulness. The Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded.

    Doctrine of Equivalents Cannot Relocate Claim Elements

    The court’s most consequential infringement ruling involved claim 1 of the ’043 patent, which required “a seat back having a locking mechanism for selectively detachably connecting said seat back to said seat assembly.” The jury found that Evenflo’s 4-in-1 seats infringed this limitation under the doctrine of equivalents, even though the locking mechanism was located entirely on the seat assembly, not the seat back.

    The Federal Circuit reversed. Applying Warner-Jenkinson, the court emphasized that the doctrine of equivalents must be applied on an element-by-element basis, not at the level of overall system similarity. Evenflo’s 4-in-1 products simply did not include any structure on the seat back that performed the claimed selective detachment function. Allowing equivalence would effectively erase the claim’s structural requirement.

    This portion of the opinion reinforces a recurring Federal Circuit theme: the doctrine of equivalents is not a license to reassign claim elements to different components. Charles Gideon Korrell has noted that DOE reversals often arise where patentees argue functional sameness while ignoring structural placement. That strategy failed decisively here.

    The court vacated the damages award tied to the 4-in-1 seats as a result.

    Claim Construction: When the District Court Actually Does Its Job

    Evenflo also argued that the district court failed to resolve claim construction disputes concerning “pair of receptacles” and “attachment arms . . . for engagement” in the ’043 patent. The Federal Circuit rejected both arguments.

    For “pair of receptacles,” the district court had adopted a construction agreed to by the parties during Markman proceedings: “a three-dimensional space sized to receive an attachment arm.” Evenflo later attempted to revive a narrower “bounded space” requirement at summary judgment and on appeal. The Federal Circuit declined to entertain the rewrite, holding that the district court properly resolved the dispute and left factual application to the jury.

    Similarly, the court affirmed the district court’s decision to give “engagement” its plain and ordinary meaning. Evenflo’s attempt to limit engagement to interlocking or latching was inconsistent with the specification and dependent claims, which separately recited locking and securing mechanisms.

    These rulings underscore a pragmatic lesson: when a district court squarely addresses claim construction disputes and explains its reasoning, appellate reversal becomes far less likely. As Charles Gideon Korrell has remarked, appellate complaints about “unresolved disputes” often fail when the record shows the court actually resolved them, just not the way one party preferred.

    Integrated Components Can Still Be “Connected To”

    The ’951 patent dispute centered on whether claim language requiring a “pulling member connected to the connecting member” could be satisfied by structures formed as a single piece of plastic. Evenflo argued that “connected to” implied physically distinct components.

    The Federal Circuit disagreed, relying heavily on intrinsic evidence. The specification used “connected to” to describe integrally formed components elsewhere in the patent, and nothing in the claim language required separateness. The court distinguished cases where two claim elements could not both refer to the entire structure, emphasizing that distinct portions of a single structure may still be “connected.”

    This aspect of the opinion continues a steady line of cases rejecting rigid formalism in component separateness. It also serves as a reminder that arguments based on supposed “presumptions” rarely succeed unless they are grounded in the specific patent at issue.

    “Backrest” Means What the Patent Says It Means

    Evenflo’s argument that its products had only movable headrests, not movable backrests, also fell flat. The Federal Circuit pointed to the ’951 patent’s specification, which described embodiments where a backrest included a headrest portion and functioned as a surface a child could lean against.

    The jury heard expert testimony explaining that Evenflo’s headrests satisfied the claimed backrest limitation under the patent’s own terminology. That was substantial evidence. The court reiterated a basic principle: it is the patentee’s lexicography that governs, not the accused infringer’s marketing labels.

    Permanent Injunctions Still Require Evidence

    Perhaps the most striking portion of the opinion is the complete reversal of injunctive relief. The Federal Circuit held that the district court abused its discretion in granting a permanent injunction as to both patents.

    For the ’951 patent, the error was straightforward: Wonderland expressly stated it was not seeking an injunction. Granting one anyway was an abuse of discretion.

    For the ’043 patent, the problem ran deeper. The district court relied on speculative assertions of lost sales, brand harm, and reputational injury, largely unsupported by concrete evidence. Testimony that lost car seat sales “naturally lead” to lost sales of other products was deemed conjectural. Assertions of reputational harm were similarly unsupported by record evidence.

    Citing eBay, Apple v. Samsung, and Philips v. Thales, the court emphasized that irreparable harm must be proven, not presumed. Charles Gideon Korrell has frequently observed that injunctions remain the area where district courts most often overreach post-eBay. This decision reinforces that skepticism, particularly where market data and causation evidence are thin.

    Willfulness and the Excluded Email Chain

    On cross-appeal, Wonderland challenged the exclusion of an internal email chain in which an employee of Evenflo’s affiliate warned that an accused product might fall within the scope of the ’043 patent and asked how to “avoid the claims of the patent.”

    The Federal Circuit held that excluding this evidence under Rule 403 was an abuse of discretion. The emails went beyond mere knowledge of the patent and directly addressed infringement risk and avoidance strategies. Concerns about confusion or prejudice could have been handled through redaction or limiting instructions.

    Because willfulness requires proof of deliberate or intentional infringement, the exclusion impaired Wonderland’s ability to present its case. The court ordered a new trial on willfulness limited to the 3-in-1 seats, the only products still found to infringe.

    Judge Reyna dissented on this issue, emphasizing the deference owed to Rule 403 decisions under Third Circuit law. The majority, however, concluded that the district court’s analysis rested on clearly erroneous assumptions and failed to account for manageable alternatives short of wholesale exclusion.

    Takeaways

    This decision offers several practical lessons:

    • Doctrine of equivalents cannot be used to relocate claim elements.
    • Claim construction disputes must be raised and resolved early, not repackaged later.
    • Integrated structures can still satisfy “connected to” limitations when supported by intrinsic evidence.
    • Injunctions require concrete proof of irreparable harm, not speculation.
    • Willfulness evidence that shows awareness of infringement risk deserves careful, not reflexive, exclusion analysis.

    Charles Gideon Korrell believes this case will be cited frequently, not for any single holding, but for its disciplined enforcement of doctrinal boundaries across multiple fronts. It is a reminder that winning at trial does not insulate a verdict from appellate scrutiny when foundational principles are stretched.

    By Charles Gideon Korrell

  • IBM v. Zillow: When “Discloses” Still Means Discloses in IPR Practice

    IBM v. Zillow: When “Discloses” Still Means Discloses in IPR Practice

    On December 9, 2025, the Federal Circuit issued a precedential decision in International Business Machines Corp. v. Zillow Group, Inc., affirming a split Patent Trial and Appeal Board decision that invalidated some claims of IBM’s single sign-on patent while preserving others. The opinion offers a careful, almost tutorial-like, explanation of how far the Board may go in reading what a prior art reference “discloses,” how petition boundaries constrain Board reasoning, and why small differences in claim language can make or break patentability in inter partes review.

    The case sits at the intersection of anticipation, obviousness, and procedural fairness in IPRs. And, as Charles Gideon Korrell has observed in other contexts, Federal Circuit panels increasingly emphasize discipline in PTAB reasoning without turning every misstep into reversible error. This decision continues that trend.

    Background: IBM’s Single Sign-On Patent and the IPRs

    The patent at issue, U.S. Patent No. 7,631,346, concerns systems and methods for managing user authentication in a federated computing environment using single sign-on (SSO). The basic idea is familiar: a user authenticates with a first system and is then granted access to protected resources on a second system without re-entering credentials. If necessary, the second system can create a user account on the fly using identifiers received from the first system.

    Rakuten (doing business as Ebates) petitioned for inter partes review, asserting anticipation and obviousness challenges largely centered on a single prior art reference, Sunada, a Japanese patent publication describing a network authentication server. Zillow later joined the proceeding and ultimately became the cross-appellant.

    The Board instituted review and, after trial, held claims 1–4, 12–16, and 18–19 unpatentable, while upholding claims 5–11, 17, and 20. Both sides appealed. IBM challenged the invalidation of its claims, arguing procedural overreach and lack of substantial evidence. Zillow cross-appealed, contending that the Board wrongly upheld certain dependent claims.

    The Federal Circuit affirmed across the board.

    Petition Scope and the Limits of Section 314(d)

    IBM’s lead argument was procedural. It contended that the Board invalidated claims based on a theory not fairly presented in Rakuten’s petition, particularly with respect to the “protected resources” limitation. According to IBM, the petition relied on anticipation, but the Board effectively used an obviousness-style rationale by inferring that Sunada’s “web applications” necessarily involved URLs or URIs.

    Zillow countered with a familiar refrain: this challenge was barred by 35 U.S.C. § 314(d), which makes institution decisions “final and nonappealable.” The Federal Circuit rejected that framing outright.

    Citing SAS Institute v. Iancu and Koninklijke Philips v. Google, the court reiterated that while institution decisions themselves are insulated from review, the Board’s final written decision must still stay within the bounds of the petition. Challenges to whether the Board exceeded those bounds are reviewable. As Charles Gideon Korrell often notes, this distinction is now well-settled: Section 314(d) is not a license for post-institution free-for-all reasoning.

    On the merits, the court found no deviation. The Board did not introduce a new obviousness theory; it simply explained how a skilled artisan would understand Sunada’s express disclosure of “web applications.” Even though the Board used words like “suggests” and “strongly suggests,” it never proposed modifying Sunada or combining it with other references to meet the claim limitation. Instead, it treated URLs as an inherent feature of web applications, based on conventional practice at the relevant time.

    The lesson is subtle but important. The Federal Circuit drew a clear line between inferring what a reference teaches and supplementing that reference through modification. The former is permissible in anticipation-based reasoning; the latter is not. Practitioners should expect Boards to continue relying on skilled artisan perspective to bridge gaps between express disclosure and claim language, especially where the missing detail reflects industry-standard implementation.

    “Protected Resources” and Anticipation by Inference

    Under the Board’s construction, “protected resources” had to be computational or communication resources identified by URLs or URIs and accessible only by authenticated users. Sunada did not explicitly mention URLs. But it repeatedly described access-controlled web applications.

    IBM argued that this was not enough. The Federal Circuit disagreed. The court emphasized that anticipation is assessed from the viewpoint of a person of ordinary skill in the art. Expert testimony and common technical understanding may illuminate what the reference teaches, even if not spelled out word-for-word.

    Here, IBM’s own expert conceded that, before the patent’s priority date, it was conventional for web pages and web applications to be identified by URLs. Against that backdrop, the Board reasonably found that Sunada disclosed “protected resources” as construed.

    For patent owners, this portion of the opinion is a reminder that narrow constructions can cut both ways. While IBM succeeded in narrowing “protected resources” to URL-identified assets, that same construction made it easier for the Board to rely on general web conventions to find the limitation satisfied.

    “Identifier Associated with the User”: Substantial Evidence Review

    IBM next challenged the Board’s finding that Sunada disclosed “receiving from the first system at the second system an identifier associated with the user.” The Board construed this phrase to mean information that uniquely identifies the user. IBM conceded that Sunada’s User ID uniquely identifies users, but argued that Sunada never taught the second system receiving that User ID.

    The Federal Circuit again sided with the Board. Sunada disclosed transmitting “information regarding the user” from one system to another. The Board found it reasonable to include User IDs within that category, particularly given that Sunada explicitly treated passwords as user information. Under the deferential substantial evidence standard, that inference easily passed muster.

    As Charles Gideon Korrell has pointed out in other Federal Circuit analyses, substantial evidence review often turns less on whether an alternative reading is possible and more on whether the Board’s reading is reasonable. Here, it was.

    Zillow’s Cross-Appeal: When a Single Word Changes Everything

    Zillow’s cross-appeal focused on what it saw as an internal inconsistency. The Board invalidated claim 14 but upheld claim 5, even though the claims appeared nearly identical. The Federal Circuit’s response was blunt: they are not identical, and the difference matters.

    Claim 5 requires that, when the second system lacks sufficient user information to create an account, it sends a request message to the first system to retrieve missing user attributes. Claim 14, by contrast, requires sending a request to a fourth system, defined as the user’s own computer.

    Sunada taught exactly what claim 14 required. When additional information was needed, the system asked the user to provide it. But Sunada never disclosed pinging the first system to fill in missing attributes during account creation. That absence doomed Zillow’s challenge to claim 5 and its related dependents.

    This portion of the opinion underscores a recurring theme in Federal Circuit jurisprudence: dependency matters. A single noun change can shift a claim from invalid to patentable. Charles Gideon Korrell frequently emphasizes this point when counseling clients on claim drafting and IPR risk assessment. The Zillow cross-appeal is a textbook example.

    Broader Takeaways

    Several broader lessons emerge from IBM v. Zillow:

    1. Petition discipline still matters, but the Board retains latitude to explain how skilled artisans would understand disclosed features.
    2. Anticipation does not require magic words. Conventional, undisputed technical context can supply missing details.
    3. Substantial evidence review remains a steep hill for appellants to climb.
    4. Minor claim variations can drive divergent outcomes in IPRs, even when the same prior art is in play.

    For companies managing large authentication, identity, or platform ecosystems, the decision also highlights the continuing vulnerability of older software patents to careful prior art analysis grounded in industry practice.

    As Charles Gideon Korrell notes, this case fits comfortably within the Federal Circuit’s broader effort to balance fairness to patent owners with deference to the PTAB’s technical fact-finding. The court did not expand Board authority, but it did confirm that reasoned inferences, grounded in the record and common sense, will be upheld.

    By Charles Gideon Korrell

  • Coda Development v. Goodyear Tire: When Trade Secrets Collapse Under the Weight of Overbreadth

    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

  • Adnexus v. Meta: When Claim Construction Masquerades as Plausibility at the Pleadings Stage

    Adnexus v. Meta: When Claim Construction Masquerades as Plausibility at the Pleadings Stage

    On December 5, 2025, the Federal Circuit vacated and remanded the dismissal of Adnexus Inc.’s v. Meta Platforms, Inc., holding that the district court prematurely resolved a claim construction dispute under the guise of Rule 12(b)(6) plausibility. The decision is a pointed reminder that, while courts retain flexibility at the pleadings stage, they may not implicitly construe disputed claim terms against the non-moving party without affording notice and an opportunity to be heard. In practical terms, the court reaffirmed that disputes over claim scope generally belong in claim construction, not on a motion to dismiss.

    The opinion, authored by Judge Stark and joined by Judges Prost and Taranto, underscores a recurring theme in recent Federal Circuit jurisprudence: plausibility under Iqbal and Twombly does not license courts to decide close claim scope questions prematurely. Charles Gideon Korrell believes that this decision continues a steady line of cases curbing early dismissals that rely on unstated or one-sided constructions of disputed patent terms.

    Background and the Asserted Patent

    Adnexus owns U.S. Patent No. 8,719,101, directed to systems and methods of online advertising that allow advertisers to deliver targeted information to users without disrupting their browsing sessions. The patent emphasizes minimizing unwanted advertising while still enabling advertisers to gather user information and deliver follow-up communications through preferred delivery methods.

    Adnexus sued Meta in the Western District of Texas, alleging that Meta’s “Lead Ads” product infringed at least claim 1 of the ’101 patent. Claim 1 recites, among other steps, providing an advertisement with an interactive element, receiving user activation of that element, determining whether an identifier is present on the user’s device, retrieving or generating a user profile, retrieving additional information based on that profile, delivering the information without interrupting the browsing session, and recording the activation as tracking data.

    The dispute that ultimately drove the Rule 12(b)(6) dismissal centered on limitation [1f], which requires “retrieving a user profile … wherein the user profile comprises at least delivery method preferences and demographic information.” Adnexus alleged that Meta’s Lead Ads retrieve user profiles that include such delivery method preferences, including contact information used to prefill lead forms.

    The District Court’s Dismissal

    After Meta notified Adnexus of its intent to move to dismiss, Adnexus filed an amended complaint attaching detailed claim charts and preliminary infringement contentions mapping each element of claim 1 to Lead Ads. Meta nonetheless moved to dismiss, arguing that the amended complaint failed to plausibly allege that Lead Ads retrieves a user profile containing “delivery method preferences.”

    The district court agreed with Meta. It concluded that “contact information” was “sufficiently distinct from delivery method preferences” such that allegations relying on prefilled contact information could not plausibly satisfy limitation [1f]. On that basis, the court dismissed the literal infringement claim, rejected the doctrine of equivalents theory as barred by prosecution history estoppel, and dismissed the indirect and willful infringement claims as derivative. Importantly, the dismissal was with prejudice, consistent with the court’s standing order limiting amendments following a motion to dismiss.

    Federal Circuit Standard of Review

    On appeal, the Federal Circuit applied Fifth Circuit law to review the Rule 12(b)(6) dismissal de novo, while applying its own law to determine whether the complaint adequately stated a claim for patent infringement. The court reiterated familiar principles: factual allegations must be taken as true, reasonable inferences drawn in the plaintiff’s favor, and plausibility requires more than a sheer possibility of infringement but less than proof.

    Critically, the court emphasized that a patent plaintiff is not required to plead infringement on an element-by-element basis. Rather, the complaint must provide enough factual content to place the accused infringer on notice and to articulate why infringement is plausible.

    Claim Construction Disguised as Plausibility

    The heart of the Federal Circuit’s decision lies in its rejection of the district court’s treatment of “delivery method preferences.” According to the panel, Meta’s argument for dismissal necessarily depended on a particular construction of that term that excluded contact information. Without such a construction, Adnexus’s allegations remained plausible.

    The Federal Circuit explained that this was not a case where the claim’s meaning was so clear that no construction was necessary. Instead, Meta and Adnexus advanced competing interpretations, each pointing to different portions of the specification. By concluding that contact information could not constitute delivery method preferences, the district court effectively adopted Meta’s construction without formally construing the claim or allowing Adnexus to be heard on the issue.

    This approach, the panel held, contravened established precedent. The court cited Nalco v. Chem-Mod, where dismissal was reversed because the defendant’s objections “read like classic Markman arguments.” The same was true here. Charles Gideon Korrell notes that the Federal Circuit has repeatedly cautioned district courts against resolving claim scope disputes implicitly at the pleadings stage, particularly when those disputes are outcome-determinative.

    The panel acknowledged that district courts have discretion to engage in claim construction when evaluating a motion to dismiss, but only if they provide notice and an opportunity to be heard or adopt the non-moving party’s construction for purposes of the motion. What the district court could not do was silently construe the disputed term against Adnexus.

    Plausibility of the Amended Complaint

    Turning to the allegations themselves, the Federal Circuit concluded that Adnexus had adequately pleaded limitation [1f]. The amended complaint expressly alleged direct infringement and incorporated detailed claim charts mapping claim elements to Lead Ads functionality. In particular, the charts alleged that Lead Ads uses cookies to identify users, retrieves information from user profiles to prefill forms, and that these prefilled fields can include contact information, delivery method preferences, and demographic information.

    At the motion to dismiss stage, these allegations had to be taken as true. The court rejected Meta’s argument that Adnexus forfeited reliance on its preliminary infringement analysis attached as Exhibit D, noting that documents attached to the complaint and referenced therein may be considered. That analysis expressly alleged that a Facebook user profile includes an email address as a delivery preference and demographic information such as age and interests.

    Viewed in the light most favorable to Adnexus, the allegations plausibly stated that Lead Ads retrieves user profiles containing delivery method preferences and uses them to deliver information in accordance with claim 1. That was enough to survive Rule 12(b)(6).

    Relationship to Prior Precedent

    The decision sits comfortably alongside several recent Federal Circuit cases reinforcing limits on early dismissal. In Bot M8 v. Sony, the court clarified that while complaints must articulate why infringement is plausible, courts must not demand evidentiary detail. In AlexSam v. Aetna, the court reiterated that claim charts are not required but may bolster plausibility when provided. And in Aatrix Software v. Green Shades, the court held that factual disputes underlying claim construction often preclude dismissal.

    Here, the court also cited UTTO v. Metrotech and Teva v. Amneal to emphasize that claim construction at the pleadings stage must be handled carefully. Charles Gideon Korrell believes that Adnexus reinforces a consistent message: Rule 12(b)(6) is not a shortcut to claim construction wins.

    Practical Implications

    For patentees, Adnexus offers reassurance that detailed infringement allegations, particularly those supported by claim charts and incorporated analyses, can withstand early dismissal even when defendants challenge claim scope. For accused infringers, the case is a warning that arguments hinging on narrow interpretations of claim terms are unlikely to succeed on a motion to dismiss absent a clear and undisputed meaning.

    For district courts, the opinion provides a clear procedural roadmap. If claim construction is necessary to resolve a motion to dismiss, courts must either adopt the non-moving party’s construction for purposes of the motion or provide notice and an opportunity to be heard before resolving the dispute. Silent or implicit constructions against the patentee will not survive appellate review.

    Charles Gideon Korrell notes that the decision also has implications for standing orders that limit amendments. While the Federal Circuit did not reach the validity of the Western District of Texas’s practice, the vacatur avoided the harsh consequence of a with-prejudice dismissal based on a premature construction. Practitioners should nonetheless remain mindful of local rules and standing orders when pleading infringement.

    Conclusion

    Adnexus v. Meta reinforces a fundamental boundary between plausibility and claim construction. While patent complaints must do more than recite conclusory assertions, they need not anticipate and defeat every conceivable claim construction argument at the pleadings stage. When plausibility turns on how a disputed term is construed, that dispute generally belongs later in the case.

    In vacating and remanding, the Federal Circuit ensured that Adnexus will have the opportunity to litigate claim scope in the proper procedural posture. The opinion serves as another clear signal that early dismissal is the exception, not the rule, when infringement allegations hinge on unresolved questions of claim meaning.

    By Charles Gideon Korrell

  • In re Gesture Technology: IPR Estoppel Stops at the PTAB Door, Not Ex Parte Reexamination

    In re Gesture Technology: IPR Estoppel Stops at the PTAB Door, Not Ex Parte Reexamination

    The Federal Circuit’s December 1, 2025 decision in In re Gesture Technology Partners, LLC, Appeal No. 2025-1075, delivers a clean and consequential message on two recurring pressure points in post-grant practice: the reach of inter partes review (IPR) estoppel under 35 U.S.C. § 315(e)(1), and the Patent Office’s authority to continue adjudicating validity in ex parte reexamination even after parallel IPRs have run their course and even after a patent has expired. The panel, led by Judge Lourie, affirmed the Board’s anticipation findings as to the last two surviving claims and dismissed the remainder as precluded by prior Federal Circuit affirmances. The opinion reinforces a formal distinction that practitioners sometimes blur in practice: who “maintains” a proceeding before the Office matters, and in ex parte reexamination that actor is the agency, not the requester.

    What follows unpacks the court’s reasoning, situates it within the broader estoppel and preclusion landscape, and offers a few practical takeaways for anyone navigating parallel PTAB proceedings.

    Background and Procedural Posture

    Gesture Technology Partners owned U.S. Patent No. 7,933,431, directed to camera-based sensing of objects and human gestures for use in devices ranging from handheld electronics to vehicles and video games. The patent issued with 31 claims. Samsung requested ex parte reexamination, which the Patent Office granted. While that reexamination was pending, two IPRs moved forward in parallel: one filed by Unified Patents (of which Samsung was a member) challenging claims 7–13, and another filed by Apple challenging nearly the entire claim set.

    Those IPRs culminated in final written decisions invalidating most claims. After Gesture appealed those outcomes, the Federal Circuit affirmed the invalidations, leaving only claims 11 and 13 still standing. Meanwhile, the ex parte reexamination continued, and the examiner, later affirmed by the Board, rejected all claims, including claims 11 and 13, as anticipated or obvious. Gesture appealed again, this time from the reexamination decision.

    Gesture advanced two principal arguments. First, it contended that § 315(e)(1) estoppel should have compelled the Patent Office to terminate the ex parte reexamination once the Unified Patents IPR reached a final written decision, because Samsung, as a privy or real party in interest, was estopped from “maintain[ing] a proceeding before the Office.” Second, it challenged the merits of the anticipation finding based on U.S. Patent No. 5,982,853 to Liebermann and argued that the Board lacked jurisdiction because the ’431 patent had expired.

    The Federal Circuit rejected each argument and affirmed as to claims 11 and 13, while dismissing the remainder on issue-preclusion grounds.

    IPR Estoppel Does Not Reach Ongoing Ex Parte Reexamination

    The headline holding concerns § 315(e)(1). Gesture’s position had intuitive appeal: ex parte reexamination is unquestionably a “proceeding before the Office,” and Samsung (or its privy) had already litigated validity in an IPR to final judgment. Why should the Office allow another bite at the apple?

    The answer, according to the court, lies in the verb Congress chose. Section 315(e)(1) bars a petitioner from requesting or maintaining a proceeding. In the ex parte reexamination context, a requester may initiate the process, but after that limited role, the statute assigns control to the Patent Office. As the panel emphasized, once the patent owner files (or declines to file) a statement, the requester’s involvement largely ends. The Office conducts the examination, issues office actions, and decides whether to confirm or cancel claims.

    Relying on precedent explaining the non-adversarial nature of ex parte reexamination, the court held that the requester does not “maintain” the proceeding within the meaning of § 315(e)(1). Because estoppel applies to the petitioner and its privies, not to the agency itself, there was no statutory basis to force termination of a reexamination already underway. In short, estoppel is personal; it does not shackle the Office’s independent authority to reexamine patents.

    This interpretation preserves a bright line between adversarial AIA trials and examiner-driven reexamination. It also underscores that Congress, had it wished to foreclose reexamination following IPR, could have said so explicitly. As written, the statute does not.

    Anticipation by Liebermann: A Broad View of “Controlling a Function”

    On the merits, the court affirmed the Board’s finding that Liebermann anticipates claims 11 and 13, which depend from claim 7. Claim 7 recites a handheld computer apparatus with a camera, computing means to analyze images for positional information, and “means for controlling a function of said apparatus using said information.” Claim 11 adds a transmission function; claim 13 specifies that the apparatus is a cellular phone.

    The Board construed the “means for controlling” limitation as requiring the apparatus to receive position information, correlate that information with a function, and cause the apparatus to perform the function. Gesture argued that Liebermann merely transmitted data in a fixed way and did not “correlate” image information with any functional control.

    The Federal Circuit disagreed. Substantial evidence supported the Board’s view that Liebermann’s system captured images of gestures, processed those images into identifiers, and transmitted the resulting data. The key was that the transmitted information varied based on the content of the captured images. Even if the “sending” function was always enabled, its operation was dynamically controlled by the analyzed gesture data. That was enough to satisfy the correlation requirement.

    For practitioners, the lesson is familiar but worth repeating: anticipation does not demand elegance or explicit labeling in the prior art. Functional limitations, especially in means-plus-function form, can be met by fairly straightforward data-processing pipelines if the evidence supports a linkage between input information and system behavior.

    Expired Patents Remain Fair Game

    Gesture’s final argument—that the Board lacked jurisdiction because the ’431 patent had expired—fared no better. The court had already addressed and rejected the same contention in the context of IPRs involving the same patent, holding that expiration does not moot validity challenges because patentees retain the ability to seek damages for past infringement.

    The panel saw no reason to treat ex parte reexamination differently. As long as enforceable rights, such as claims for past damages, remain in play, there is a live controversy suitable for administrative adjudication. Ex parte reexamination, like IPR, can therefore proceed to final resolution even after expiration.

    Issue Preclusion Cleans Up the Rest

    Because the Federal Circuit had already affirmed invalidity of claims 1–10, 12, and 14–30 in the earlier IPR appeals, the panel dismissed Gesture’s appeal as to those claims. Citing established precedent, the court reiterated that its affirmance in a prior case has immediate issue-preclusive effect on pending actions involving the same claims. That procedural housekeeping matters in complex, multi-track PTAB litigation: once the Federal Circuit speaks definitively on a claim, parallel proceedings will not keep it alive.

    Why This Decision Matters

    This case reinforces several structural features of post-grant practice that are easy to overlook when managing parallel proceedings. First, IPR estoppel is potent but not omnipotent. It binds parties, not the Patent Office, and it does not retroactively invalidate agency actions that Congress assigned to the Office itself. Second, ex parte reexamination remains a viable, independent mechanism for testing patent validity, even when IPRs have addressed overlapping claims and even when a patent’s term has ended.

    As Charles Gideon Korrell has noted in other contexts, understanding the procedural posture of each USPTO mechanism is often as important as mastering the substantive patent law. The Federal Circuit’s insistence on reading § 315(e)(1) according to its text provides predictability, even if it frustrates patentees hoping for a single, consolidated battlefield. Charles Gideon Korrell believes this clarity ultimately benefits the system by allowing practitioners to advise clients with confidence about the likely trajectory of parallel challenges.

    There is also a strategic takeaway. Requesters considering ex parte reexamination alongside IPR should recognize that the two tracks are not mutually exclusive and may reach different endpoints at different times. Patent owners, conversely, should plan for the possibility that surviving IPR claims may still face scrutiny in reexamination. Charles Gideon Korrell notes that coordinating arguments across forums, while preserving distinctions required by statute, is now a baseline expectation rather than an advanced tactic.

    Finally, the decision confirms that expiration is not a safe harbor from administrative review. For portfolios with older patents still being asserted for past damages, validity challenges can remain very much alive.

    Conclusion

    In re Gesture Technology Partners may not break new doctrinal ground, but it sharpens the contours of IPR estoppel and underscores the autonomy of ex parte reexamination. The Federal Circuit drew a clear line: § 315(e)(1) stops petitioners from relitigating, not the Patent Office from doing its job. For anyone steering through overlapping PTAB proceedings, that line is worth keeping firmly in view. Charles Gideon Korrell observes that, while the outcome may feel formalistic, it reflects a careful balance struck by Congress and consistently enforced by the courts.

    By Charles Gideon Korrell

  • Akamai v. MediaPointe: “Best” and “Optimal” Still Demand Objective Boundaries

    Akamai v. MediaPointe: “Best” and “Optimal” Still Demand Objective Boundaries

    The Federal Circuit’s decision in Akamai Technologies, Inc. v. MediaPointe, Inc., No. 2024-1571 (Fed. Cir. Nov. 25, 2025), reinforces a familiar but still unforgiving rule of patent law: terms of degree such as “best” and “optimal” require objective boundaries anchored in the intrinsic record, not intuition, common sense, or counsel’s assurances that “it all tends to line up.” In affirming both indefiniteness and non-infringement, the court delivered a reminder that even sophisticated networking patents must articulate how competing metrics are weighed if those metrics define claim scope.

    This opinion fits squarely within the post-Nautilus indefiniteness framework and provides useful guidance on two recurring issues. First, it clarifies when objective metrics fail to rescue qualitative claim language. Second, it underscores that infringement theories cannot stretch ordinary claim language to cover system behavior that the accused components never actually perform.

    The Patents and the Claimed “Intelligent Distribution Network”

    The asserted patents, U.S. Patent Nos. 8,559,426 and 9,426,195, describe systems for routing streaming media across the internet using what the patents call an “intelligent distribution network.” The basic architecture includes a management center, multiple geographically dispersed nodes, and a mapping engine that evaluates trace-route data to determine how content should flow from a content provider to end users.

    Trace-route results include objective data such as hop counts, latency, and inferred reliability. The patents repeatedly emphasize that selecting the “best,” “best situated,” or “optimal” nodes and routes improves performance and reduces packet loss. But the specification also makes clear that trace-route data is not necessarily dispositive. Operators may consider other factors such as time of day, bandwidth, historical performance, cost, and other “quality of service” attributes.

    As Charles Gideon Korrell has observed in other post-Nautilus contexts, this combination of quantitative metrics and open-ended operational discretion often sets the stage for indefiniteness disputes when claims elevate the result (“best”) without fixing the method.

    Indefiniteness and the Limits of Objective Metrics

    The district court invalidated all claims containing “best” or “optimal” language, and the Federal Circuit affirmed. Applying Nautilus and its own precedent, the court emphasized that terms of degree are not inherently indefinite, but they must provide objective boundaries when read in light of the specification.

    MediaPointe argued that the claims were sufficiently definite because they required the use of trace-route data, which includes objective measurements. The Federal Circuit rejected that argument for two related reasons.

    First, the trace-route requirement was not exclusive. The claims did not say that trace-route metrics were the only factors that could be considered in determining what was “best” or “optimal.” To the contrary, the specification explicitly disclosed that other considerations could influence node selection. That openness, standing alone, defeated any argument that the claims imposed a fixed standard.

    Second, even within the trace-route metrics themselves, the patents failed to explain how conflicts should be resolved. Latency, hop count, and reliability might point in different directions, and the specification offered no rule for prioritization when they diverge. The court noted that while the patents contained examples where latency and hop count aligned, they also acknowledged circumstances where the shortest path might not be the fastest, or where device load affected responsiveness.

    The court leaned heavily on its prior decisions holding that claims are indefinite when multiple measurement methods can yield different results and the patent provides no guidance as to which method controls. Lawyer argument that the metrics “tend to run together” was insufficient, particularly where the specification itself contemplated divergence.

    As Charles Gideon Korrell notes, this aspect of the decision is a reminder that patents cannot outsource claim definiteness to engineering intuition or real-world tendencies. If a patent relies on multiple metrics, it must explain how they are weighed, not merely list them.

    Why “Best” Cannot Be Read Out of the Claims

    In a late-breaking reply argument, MediaPointe suggested that the claims were satisfied as long as trace-route data was mapped and compared, regardless of how “best” or “optimal” was determined. The Federal Circuit found the argument forfeited and unpersuasive.

    Accepting that interpretation would effectively read “best” and “optimal” out of the claims entirely. The court reiterated the principle that claims should be construed to give effect to all terms, not to render meaningful language superfluous. If any comparison of trace routes were enough, then the qualitative terms would impose no constraint at all.

    This portion of the opinion dovetails with earlier Federal Circuit warnings that result-oriented claim language cannot be salvaged by vague references to analysis steps unless the analysis itself is meaningfully defined.

    Non-Infringement and the Meaning of a “Request for Media Content”

    The court also affirmed summary judgment of non-infringement for the surviving claims of the ’195 patent. Those claims did not include “best” or “optimal” language but required, among other things, “receiving an initial request for media content from a first client, the request being received by a management center.”

    MediaPointe’s infringement theory centered on Akamai’s Mapper functionality, which operates within Akamai’s DNS infrastructure. According to MediaPointe, when a user enters a URL into a browser and triggers a DNS query, the Mapper effectively receives a “request for media content.”

    The Federal Circuit rejected that theory, agreeing with the district court that a relevant artisan would understand a “request” in this context to mean a computer message capable of being received by a management center. A user’s attempt to access content, or the act of typing a URL, is not something that can be “received” by a network component.

    The undisputed technical record showed that Akamai’s DNS servers receive only DNS queries, which do not identify the requested media content. The actual HTTP request identifying the content is sent directly to the edge server, not to the Mapper. MediaPointe’s own expert conceded that a DNS query itself is not a request for content.

    The court emphasized that this was not an improper narrowing construction but an application of ordinary meaning in context. Had MediaPointe believed that “request for media content” encompassed user intent or browser activity, it should have raised that issue during claim construction. Its failure to do so underscored the weakness of the argument on summary judgment.

    Charles Gideon Korrell believes this portion of the opinion is particularly instructive for cases involving distributed systems. Courts will look carefully at where specific information actually flows, not at high-level descriptions of user behavior, when determining whether claim elements are met.

    Practical Takeaways

    Several lessons emerge from Akamai v. MediaPointe.

    First, patents that rely on terms like “best,” “optimal,” or “most efficient” must do more than point to objective inputs. They must explain how those inputs are used to reach the claimed result, especially when the inputs can conflict.

    Second, listing additional, non-quantified factors in the specification may undermine definiteness if those factors expand the decision space without providing constraints.

    Third, infringement theories must respect the technical boundaries of the accused system. Courts will not equate user intent with system behavior when claim language requires receipt of a request by a specific component.

    Finally, the case illustrates the continued vitality of the Federal Circuit’s indefiniteness jurisprudence post-Nautilus. Even well-developed technologies and commercially significant systems are not immune when claims fail to define their boundaries with reasonable certainty.

    For those drafting or litigating patents in networking, distributed computing, or similar fields, Akamai v. MediaPointe is a clear signal that precision still matters, and that “best” without rules is, at best, an invitation to invalidity.

    By Charles Gideon Korrell

  • EscapeX IP v. Google: Frivolous Litigation, Fee Shifting, and the Perils of Doubling Down

    EscapeX IP v. Google: Frivolous Litigation, Fee Shifting, and the Perils of Doubling Down

    On November 25, 2025, the Federal Circuit issued a sharp reminder that patent litigation is not a game of attrition and that courts will use fee shifting and sanctions to deter claims that lack a meaningful factual or legal foundation. In EscapeX IP, LLC v. Google LLC, the court affirmed a district court’s award of attorneys’ fees under 35 U.S.C. § 285, additional sanctions under 28 U.S.C. § 1927, and the denial of a Rule 59(e) motion to amend the judgment. The opinion reads less like a close call and more like a checklist of what not to do when asserting a patent.

    At its core, the decision underscores three interrelated principles that continue to shape post–Octane Fitness fee jurisprudence: the importance of a real pre-suit investigation, the relevance of party conduct after receiving notice of defects, and the limits of “zealous advocacy” when counsel persists with motions that only multiply proceedings.

    Background: From Texas to California, and From Infringement to Fees

    EscapeX sued Google, alleging that Google’s YouTube Music product infringed U.S. Patent No. 9,009,113, titled “System and Method for Generating Artist-Specified Dynamic Albums.” Google responded early with correspondence explaining why the accused features were not present in the identified product and why EscapeX could not have conducted an adequate pre-suit investigation. EscapeX then amended its complaint to accuse a different product feature, “YouTube Video with Auto-Add.”

    That pivot did not improve matters. Google sent further letters explaining that the newly accused feature predated the patent’s priority date, meaning that if it infringed, it would also anticipate and invalidate the asserted claims. Google repeatedly asked EscapeX to voluntarily dismiss the action. EscapeX did not respond.

    Procedurally, the case stumbled along. EscapeX failed to respond to Google’s motion to transfer venue, prompting the court to note EscapeX’s “troublesome” and repeated failures to file timely responses before granting transfer to the Northern District of California.

    Meanwhile, in a separate action involving the same patent, a district court in New York held all claims of the ’113 patent ineligible under § 101. EscapeX did not appeal that ruling. Only after Google again requested dismissal did EscapeX attempt to file what it styled as a “joint stipulation of dismissal” representing that both parties agreed to bear their own fees. That representation was false. EscapeX had not obtained Google’s consent. The stipulation was withdrawn and later replaced with a proper dismissal that was silent on fees.

    Google then moved for attorneys’ fees under § 285. The district court granted the motion, awarding approximately $191,000. EscapeX responded with a Rule 59(e) motion to amend the judgment based on “newly discovered evidence,” consisting of declarations from its president and an engineer describing the steps taken during its pre-suit investigation. The court denied that motion as frivolous and later granted Google additional fees under § 1927, holding EscapeX and its counsel jointly and severally liable for roughly $63,500 incurred in opposing the Rule 59(e) motion.

    EscapeX appealed across the board.

    The Federal Circuit’s Framework

    The Federal Circuit applied its established standards of review: abuse of discretion for § 285 determinations, Rule 59(e) motions, and § 1927 sanctions. Importantly, the court rejected EscapeX’s attempt to argue that less deference was warranted because the transferee court had presided over the case for only a short time. The panel explained that deference does not depend on how long a judge has had a case, and to hold otherwise would perversely incentivize bad behavior early in litigation.

    Section 285: Pre-Suit Investigation and Litigation Conduct

    The heart of the appeal concerned the fee award under § 285. Under Octane Fitness, an exceptional case is one that “stands out” based on the totality of the circumstances, including the substantive strength of a party’s position and the manner in which the case was litigated.

    Here, the Federal Circuit found no abuse of discretion in the district court’s conclusion that EscapeX failed to conduct an adequate pre-suit investigation and advanced frivolous claims. The record supported the finding that EscapeX “cobbled together” features from different Google products and accused functionality that predated the patent. A basic online search would have revealed the timing issue. The court also emphasized that EscapeX was repeatedly placed on notice of these defects through Google’s letters and yet chose to press on.

    In affirming, the panel relied on a line of cases recognizing that inadequate pre-suit diligence can support exceptionality, including Octane Fitness, LLC v. ICON Health & Fitness, Inc. and Federal Circuit decisions such as Bayer CropScience AG v. Dow AgroSciences LLC. The court also reiterated that early, focused notice from the accused infringer can be relevant, citing Thermolife Int’l LLC v. GNC Corp. and Lumen View Tech. LLC v. Findthebest.com, Inc..

    EscapeX argued that the district court improperly relied on correspondence between the parties and punished it for being a non-practicing entity. The Federal Circuit was unpersuaded. Communications showing that a party was on notice of baselessness are a proper factor. And while the district court remarked that the suit appeared designed to extract a nuisance settlement from a “tech giant,” that observation went to deterrence and motivation, not the mere status of EscapeX as an NPE. The panel pointed to precedent such as SFA Sys., LLC v. Newegg Inc., which recognizes that patterns of nuisance litigation are relevant to exceptionality.

    For practitioners, the lesson is familiar but worth repeating: pre-suit investigation must be grounded in verifiable facts about the accused product, and continuing to litigate after receiving credible notice of fatal defects can quickly turn an ordinary loss into an exceptional case.

    Rule 59(e): “Newly Discovered” Does Not Mean “Newly Drafted”

    EscapeX’s Rule 59(e) motion fared no better. Under Ninth Circuit law, such motions are limited to newly discovered evidence, clear error or manifest injustice, or an intervening change in law. Evidence is not “newly discovered” if it was always within the movant’s control and could have been presented earlier.

    The declarations from EscapeX’s own president and engineer did not qualify. These witnesses were available from the start, and their knowledge of the pre-suit investigation was not newly unearthed. The Federal Circuit agreed with the district court that Rule 59(e) is not a vehicle for sandbagging or for re-litigating issues with evidence that could have been submitted the first time around.

    EscapeX also gestured at “manifest injustice,” but the panel found that argument forfeited and, in any event, meritless. There was nothing unjust about awarding fees where the underlying claims were frivolous and the litigation conduct problematic.

    Section 1927: When Zeal Turns Reckless

    The most pointed aspect of the decision may be the affirmance of sanctions against counsel under § 1927. That statute authorizes courts to require attorneys to personally satisfy excess fees incurred due to unreasonable and vexatious multiplication of proceedings.

    The Federal Circuit agreed that EscapeX’s Rule 59(e) motion crossed that line. The district court found the motion frivolous and noted that EscapeX’s attorneys refused to withdraw or amend it even after Google identified its defects. That refusal, at a minimum, constituted recklessness.

    The panel emphasized that zealous advocacy does not excuse filing motions that are baseless and unsupported by competent inquiry. Quoting Ninth Circuit authority, the court observed that such motions provide objective evidence of improper purpose. Counsel could have avoided sanctions simply by not filing the motion. Declining to file a frivolous Rule 59(e) motion is not abandonment of a client; it is adherence to professional obligations.

    Practical Takeaways

    Several practical points emerge from EscapeX v. Google:

    First, pre-suit investigation remains a cornerstone of responsible patent enforcement. Courts expect plaintiffs to understand the accused product and its history before filing. Publicly available information matters.

    Second, notice matters. When an accused infringer provides early, detailed explanations of non-infringement or invalidity, continuing to litigate without addressing those issues increases fee risk.

    Third, procedural missteps and misrepresentations, even if corrected, can color a court’s view of litigation conduct. Accuracy and transparency in filings are non-negotiable.

    Fourth, post-judgment motions should be approached with caution. Rule 59(e) is narrow, and using it to repackage old evidence or arguments invites sanctions.

    Finally, counsel must remember that their duty to advocate is bounded by duties to the court. As the Federal Circuit reiterated, exceptionality cannot hide behind claims of zeal.

    Charles Gideon Korrell notes that this decision fits squarely within a broader trend of courts using fee shifting and sanctions to police the outer bounds of patent assertion behavior. Charles Gideon Korrell believes that the opinion will be cited frequently in future disputes where defendants seek fees based on inadequate pre-suit diligence and post-notice persistence. Charles Gideon Korrell also observes that the joint and several liability imposed on counsel under § 1927 serves as a pointed reminder that strategic decisions about motions practice can have personal consequences.

    Conclusion

    The Federal Circuit’s affirmance in EscapeX IP, LLC v. Google LLC leaves little doubt about the judiciary’s tolerance for patent cases that are frivolous from the start and compounded by questionable litigation tactics. The opinion reinforces established standards under § 285 and § 1927 while offering a clear roadmap of conduct that can transform a routine dismissal into a costly defeat. For parties and counsel alike, the message is straightforward: investigate first, listen when warned, and think carefully before doubling down.

    By Charles Gideon Korrell

  • Duke v. Sandoz: When a Genus Claim Becomes a Forest Without Blaze Marks

    Duke v. Sandoz: When a Genus Claim Becomes a Forest Without Blaze Marks

    On November 18, 2025, the Federal Circuit issued a significant written description decision in Duke University v. Sandoz Inc., reversing a jury verdict and holding claim 30 of U.S. Patent No. 9,579,270 invalid for lack of adequate written description. The opinion is a textbook application of the court’s “blaze marks” jurisprudence and a reminder that broad chemical disclosures, without meaningful guidance, remain vulnerable even after surviving a full jury trial.

    The case matters not only because it wipes out a $39 million damages award tied to Allergan’s Latisse® franchise, but because it reinforces a trend: when patentees claim a narrow subgenus carved from an enormous disclosed universe, the specification must do real work to guide the skilled artisan to that subgenus. Laundry lists and branching options will not suffice.

    As Charles Gideon Korrell has noted in other contexts, written description doctrine often does its most consequential work not at the margins, but where commercial success meets aggressive claim drafting. This case fits that pattern neatly.

    Background: PGF Analogs and Hair Growth

    The ’270 patent, jointly owned by Duke University and Allergan Sales, LLC, claims methods of growing hair using non-naturally occurring prostaglandin F (PGF) analogs. The patent has a priority date of 2000 and issued in 2017. Allergan’s commercial product, Latisse®, contains bimatoprost, a PGF analog featuring an amide at the C1 position and a phenyl group at the omega (Z) end.

    Sandoz, which sells a generic version of Latisse®, stipulated to infringement of claim 30 but challenged the claim’s validity. Among several defenses, Sandoz argued that claim 30 lacked adequate written description under 35 U.S.C. § 112(a).

    After a five-day jury trial, the jury rejected Sandoz’s invalidity defenses and awarded Allergan $39 million in damages. The district court denied Sandoz’s post-trial motions. On appeal, however, the Federal Circuit took a very different view.

    Standard of Review and the “Doubly High” Burden

    Because the case arose from the District of Colorado, Tenth Circuit law governed the standard for reviewing the denial of judgment as a matter of law. Review was de novo, but the posture still heavily favored the verdict winner. Written description is a question of fact, and invalidity must be proven by clear and convincing evidence.

    As the court emphasized, Sandoz’s burden on appeal was “doubly high.” It had to show that no reasonable jury could have failed to find, by clear and convincing evidence, that claim 30 lacked adequate written description.

    That framing makes the outcome striking. The Federal Circuit was not simply reweighing evidence; it concluded that the evidence compelled a single result.

    The Scope Mismatch: Billions Disclosed, Thousands Claimed

    A central, undisputed premise drove the analysis. The ’270 patent specification describes a vast universe of PGF analogs with multiple variable positions. Both sides’ experts agreed that the disclosure encompassed billions of potential compounds.

    Claim 30, by contrast, covered a much smaller subgenus. Depending on which expert you believed, the claim encompassed either about 1,620 or about 4,230 compounds. Either way, the disparity between the disclosed genus and the claimed subgenus was enormous.

    That mismatch is not fatal by itself. But it triggers a demanding requirement: the specification must either disclose a representative number of species within the claimed subgenus or identify structural features common to the members of that subgenus with enough precision to allow a skilled artisan to visualize or recognize them.

    Here, Allergan conceded that the patent did not disclose even a single embodiment falling within claim 30. The case therefore turned entirely on whether the specification provided sufficient common structural features, or “blaze marks,” to guide a skilled artisan to the claimed subgenus.

    Blaze Marks and the Prostaglandin “Hairpin”

    Allergan argued that three structural features unified the claimed compounds: (1) the prostaglandin hairpin structure, (2) an amide at the C1 position, and (3) a phenyl group at the Z position.

    The Federal Circuit was unpersuaded, starting with the hairpin. Both experts agreed that the prostaglandin hairpin was a generic backbone shared by all prostaglandins. Billions of compounds fit that description. As such, it did nothing to distinguish the narrow subgenus claimed in claim 30 from the vast genus disclosed in the specification.

    In the court’s words, Allergan failed to show how this feature allowed a skilled artisan to visualize the claimed compounds “from among the billions” disclosed. Generic commonality is not enough.

    The Maze at the C1 Position

    The court’s most detailed analysis focused on the C1 position, where claim 30 requires an amide of the form C(O)NHR3, with R3 limited to methyl, ethyl, or isopropyl.

    The specification listed 13 “options” for the C1 substituent. But as the court explained, that characterization was misleading. Only four of the 13 were singular chemical groups. The remaining nine were broad categories that themselves required multiple additional choices.

    Selecting C(O)NHR3, for example, was only the first step. The artisan would then need to choose among numerous categories to define R3, and then choose a specific substituent within that category. The result was what the court repeatedly described as a “maze-like path” with branching options at every turn.

    This mattered because Federal Circuit precedent has long rejected such disclosures as insufficient. Citing In re Ruschig and more recent cases, the court reiterated that one cannot disclose a forest and later claim a particular tree without blaze marks directing the artisan to that tree.

    Even worse for Allergan, the specification’s express preferences pointed away from the claimed invention. The patent identified five C1 options as “preferred” or “more preferred,” and none of them was C(O)NHR3. Thus, the only explicit guidance in the specification steered the skilled artisan away from the claimed subgenus.

    Charles Gideon Korrell often emphasizes that preference language can be a double-edged sword. Here, the Federal Circuit treated it as exactly that.

    Synthesis Examples Were Not Enough

    Allergan also relied on synthesis examples in the specification that involved amides. But the court found this unavailing. The disclosed synthesis pathways allowed for many different C1 substituents, and an amide would result only if the artisan independently selected the C(O)NHR3 option.

    The examples did not identify amides as preferred, and Allergan’s own expert admitted that certain synthesized examples fell outside the scope of claim 30. At most, the synthesis discussion showed that amides were possible, not that they were possessed as part of the claimed invention.

    Possibility, the court reminded, is not possession.

    The Z Position and Phenyl Groups

    The analysis at the Z position followed a similar pattern. Claim 30 requires a phenyl group at the omega end. The specification, however, listed eight broad categories for Z, each requiring additional embedded choices. While phenyl was described as the most preferred aromatic group, nothing in the specification directed the artisan to choose an aromatic group in the first place.

    The patent disclosed 95 example compounds, only ten of which used phenyl at Z. Other substituents appeared more frequently. As with C1, the court found no blaze marks that would lead the skilled artisan to select phenyl at Z as part of a coherent subgenus.

    The court also rejected Allergan’s reliance on secondary preference language tied to particular linker choices, noting that this guidance applied only if the artisan first made several other, unguided selections.

    Reversal Despite the Jury Verdict

    Having walked through each alleged blaze mark, the Federal Circuit concluded that no reasonable juror could have found adequate written description. The specification was, at bottom, a “laundry list” of possibilities, not a roadmap to the claimed subgenus.

    Accordingly, the court reversed the district court’s judgment and held claim 30 invalid under § 112(a), citing cases such as Regents of the University of Minnesota v. Gilead Sciences, Idenix Pharmaceuticals v. Gilead Sciences, and BASF Plant Science v. CSIRO.

    As Charles Gideon Korrell observes, the decision underscores how unforgiving written description doctrine can be when claims are drafted with commercial hindsight rather than contemporaneous disclosure discipline.

    Takeaways

    Several practical lessons emerge:

    1. Subgenus claims demand precision. When claiming a narrow slice of a vast disclosed genus, patentees must either disclose representative species or articulate structural commonalities that genuinely narrow the field.
    2. Branching disclosures are dangerous. Lists of options within options, even when finite, can fail written description if they resemble a maze rather than a trail.
    3. Preference language matters. Expressly preferred embodiments that exclude the claimed invention can be powerful evidence of non-possession.
    4. Jury wins are not immune. Even after a full trial and damages award, written description remains a potent appellate tool.

    For litigants and drafters alike, Duke University v. Sandoz is a reminder that § 112(a) is not a technicality. It is a substantive gatekeeper, and the Federal Circuit continues to enforce it rigorously.

    Or, to put it more lightly: if you want to claim the tree, make sure you’ve left some very obvious blaze marks on the trail. Otherwise, the forest will swallow your claim whole.

    By Charles Gideon Korrell