Technology Information Law Blog by Charles Gideon Korrell

Tag: patent law

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

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

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

    Background and Competing Applications

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

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

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

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

    AIA Derivation Is Not Interference by Another Name

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

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

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

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

    Harmless Error and the Board’s Focus on Earliest Conception

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

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

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

    Corroboration and the Rule of Reason in the Digital Age

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

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

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

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

    Conception Without Reduction to Practice

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

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

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

    Procedural Missteps and Inventorship Correction

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

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

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

    Takeaways

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

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

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

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

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

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

    By Charles Gideon Korrell

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

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

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

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

    Background: Two Patents, Two Theories, One Jury Verdict

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

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

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

    Claim Construction Is a Judicial Function, Not a Jury Question

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

    That was error.

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

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

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

    Doctrine of Equivalents: Particularized Proof Still Matters

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

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

    Labcorp’s evidence fell short on all three prongs.

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

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

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

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

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

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

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

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

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

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

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

    JMOL as a Real Appellate Remedy

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

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

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

    Takeaways

    Several practical lessons emerge:

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

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

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

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

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

    By Charles Gideon Korrell

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

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

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

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

    Background: A Long Road from Jury Verdict to Reversal

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

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

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

    The Claim Amendment That Changed Everything

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

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

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

    Here, it did not.

    One-to-One Identification Everywhere You Look

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

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

    No Evidentiary Lifeline at Trial

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

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

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

    Prosecution History to the Rescue? Not This Time.

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

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

    JMOL as a Safety Valve

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

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

    Takeaways

    Several practical points emerge from Mondis:

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

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

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

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

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

    By Charles Gideon Korrell

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

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

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

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

    Background: From IPR Cancellation to District Court Do-Over

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

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

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

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

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

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

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

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

    Judge Dyk’s Dissent: The AIA Demands More

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

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

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

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

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

    A Doctrinal Fault Line That Isn’t Going Away

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

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

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

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

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

    By Charles Gideon Korrell

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

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

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

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

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

    The Stability That Wasn’t There

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

    The Federal Circuit disagreed—forcefully.

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

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

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

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

    Family Members Are Not Interchangeable

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

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

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

    Homogeneous Activity ≠ Stability

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

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

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

    Anticipation, Obviousness, and the Proper Injunction Standard

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

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

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

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

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

    Broader Implications: Drafting with the End in Mind

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

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

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

    By Charles Gideon Korrell

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

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

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

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

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

    I. When Excluding Documents Becomes Prejudicial Error

    The case involved three Super Lighting patents:

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

    But Judge Albright excluded:

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

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

    The Federal Circuit was not impressed.

    A. Authentication Is Not Trial by Ambush

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

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

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

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

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

    The panel held the exclusion reversible error.

    C. Result: New Trial on Invalidity and Damages

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

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

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

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

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

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

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

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

    The jury was allowed to believe him. Case closed.

    III. Damages: EcoFactor Looms Large

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

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

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

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

    Her evidence?

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

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

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

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

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

    What Happens Next?

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

    IV. Takeaways for Patent Litigators

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

    1. Authentication Witnesses Should Not Be a Flashpoint

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

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

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

    3. EcoFactor Now Governs the Damages Landscape

    EcoFactor demands:

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

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

    4. Single Damages Verdicts Are Fragile

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

    Conclusion

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

    By Charles Gideon Korrell

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

    The court held that:

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

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

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

    On appeal, Acorda argued that:

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

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

    A. The Gunn Framework

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

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

    Failing any prong ends the inquiry.

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

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

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

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

    IV. A Few Lingering Questions

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

    1. Is Brulotte Preemption a Remedy-Shaping Doctrine?

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

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

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

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

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

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

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

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

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

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

    V. Practical Takeaways for IP and Arbitration Counsel

    1. Be Careful When Pleading Alternative Theories

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

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

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

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

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

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

    4. The Decision Leaves Room for Future Preemption Battles

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

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

    VI. Conclusion

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

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

    By Charles Gideon Korrell

  • IGT v. Zynga: Institution Unreviewability Swallows Interference Estoppel (and Obviousness Stands)

    IGT v. Zynga: Institution Unreviewability Swallows Interference Estoppel (and Obviousness Stands)

    The Federal Circuit’s decision in IGT v. Zynga Inc. delivers a one-two punch that will resonate in AIA practice: (1) the court affirmed the PTAB’s obviousness ruling; and (2) it refused to review the agency’s decision not to apply interference estoppel at institution. Read together, the opinion underscores just how muscular § 314(d)’s unreviewability has become—strong enough to keep even well-developed estoppel theories at the courthouse door.

    Charles Gideon Korrell reads the case as a fresh reminder: if your attack on an IPR hinges on why the Board shouldn’t have instituted, you are almost certainly headed for the § 314(d) trap unless you can credibly shout “shenanigans.”

    Backstory: From Interference to IPR

    To appreciate the posture, rewind to the interference era. IGT owned U.S. Patent No. 7,168,089 covering a software authorization agent that mediates transfers of gaming software between devices. Around 2010, Zynga’s predecessor copied IGT’s claims and provoked an interference. In that forum, Zynga argued obviousness over Carlson, Wells, and Alcorn. But the Board never reached the art. Instead, it terminated the interference on a threshold written-description problem in Zynga’s application—a standing-style defect that ended the contest before any § 103 merits.

    Fast-forward. In 2021, IGT launched an infringement suit; Zynga answered with an IPR targeting the same ’089 claims—this time on different references (Goldberg and Olden) and, for a subset, D’Souza. That move teed up the central dispute: could interference estoppel block Zynga from asserting these new obviousness grounds in a later USPTO proceeding?

    Rather than focusing on estoppel itself, the Federal Circuit approached IGT’s interference estoppel challenge through the lens of § 314(d)’s unreviewability provision. As Judge Reyna stated during oral arguments:

    The Estoppel Theory and the Agency’s Path

    The estoppel lives in 37 C.F.R. § 41.127(a)(1): an interference judgment “disposes of all issues that were, or by motion could have properly been, raised and decided.” IGT contended Zynga could have raised Goldberg/Olden-style obviousness in the interference but didn’t, and thus was estopped from later bringing those grounds in the Office.

    The agency’s responses came in layers:

    • The Board mused that applying interference estoppel would be unfair here because the interference predated the AIA and ended on a threshold basis; and it also pointed to § 42.5(b) as authority to waive the interference rule.
    • On Director review, the Office emphasized a different point entirely: Part 42 (IPR rules) doesn’t incorporate Part 41 (interference rules). On that view, interference estoppel doesn’t carry over to IPRs unless Part 42 says so—and it doesn’t.

    IGT pushed back hard. It noted longstanding USPTO policies urging parties to consolidate their disputes and “show all your cards” in a single inter partes contest; it pointed to the regulation’s text and past PTAB decisions where interference estoppel was applied in AIA trials. In short, if the agency wants a “one stop shop” for inter partes fights, it shouldn’t let a later petitioner re-slice the invalidity pie with new art.

    Charles Gideon Korrell adds that IGT’s briefing framed estoppel as res judicata-like: if you attack a granted patent in an interference, you don’t get a second bite in the Office with fresh § 103 theories you left on the table the first time.

    The Court’s Route: § 314(d) Blocks the Door

    Rather than squarely deciding whether interference estoppel applies in IPRs, the Federal Circuit walked straight through § 314(d). Judge Taranto’s opinion treats IGT’s estoppel argument as a challenge to institution and therefore unreviewable on appeal. Attempts to distinguish regulatory versus statutory predicates got no traction; the court explained that § 314(d) does not open a review path simply because the institution predicate is a regulation rather than a statute.

    Crucially, the court warned that an agency’s providing reasoned legal analysis for its institution decision does not magically convert a nonappealable action into a reviewable one. If your objection is, at bottom, “the Board should have denied institution under an estoppel theory,” Cuozzo and Thryv fence that out of appellate reach.

    What about Cuozzo’s “shenanigans” carve-out? The court gave the institution decision a quick look—enough to confirm there was no egregious procedural violation. In particular, the interference here ended on a threshold issue that prevented the Board from deciding art-based patentability. That context gave the agency a reasonable basis to conclude that Part 41 estoppel did not (or should not) bar an AIA trial on new prior art grounds. No shenanigans; no review.

    If you’re scoring at home, that is a resounding win for unreviewability. And as Charles Gideon Korrell notes, it signals to litigants that institution-targeted estoppel arguments will almost always be met with the § 314(d) “no jurisdiction” sign.

    The Merits: No “New Grounds,” and Obviousness Is Affirmed

    On the merits, IGT argued the Board smuggled in impermissible new grounds by identifying the claimed “software authorization agent” as a combination of Goldberg’s components (database 28 + blackjack driver 26 + wager accounting module 30), whereas Zynga’s petition had emphasized the database 28.

    The Federal Circuit focused on notice. It found that IGT itself had invoked the driver 26 and the accounting module 30 in response to the petition—arguing those pieces showed the database was just “ordinary.” That was enough notice that the Board might evaluate the collective functionality of those components when mapping the “authorization agent.” The panel concluded there was no due-process problem and no new ground—just a Board doing what it is allowed to do: addressing the same thrust of the petition and the parties’ briefing with appropriately detailed reasoning.

    With the process point resolved, the court had little difficulty affirming obviousness. Olden supplies the classic authorization server pattern: a request comes in; rules are applied; an allow/deny response goes out; and the system logs access—i.e., monitors authorization events. Coupling that with Goldberg’s networked gaming set-up comfortably satisfied the “software authorization agent” limitations and the request/authorization message flows, with substantial-evidence support in the record.

    Practical Notes and Signals

    • Interference → IPR sequencing. If an interference ends on a threshold ground (e.g., written-description failure), do not expect it to estop a later IPR that raises art-based invalidity. Even if you believe the regulation should apply, the mechanism to enforce that belief after institution is vanishingly small due to § 314(d).
    • Build merits, not just vetoes. Patent owners should treat estoppel-at-institution as a long shot. Preserve it, yes—but develop a full merits record on claim construction, motivation to combine, and teaching gaps, because that is what the Federal Circuit can actually review.
    • Notice framing matters. Petitioners who map a functional “agent” may safely point to a cluster of cooperating modules, so long as the function (authorization + monitoring) is what the claim requires. Patent owners who respond by discussing those modules should assume the Board can treat them collectively without triggering a “new grounds” problem.
    • Policy drift? The Office’s rationale evolved (Board’s fairness/waiver vs. Director’s Part-41-doesn’t-apply), and IGT highlighted prior PTAB decisions that went the other way. The Federal Circuit’s bottom line, though, is that even if the agency’s reasoning is inconsistent, that does not pierce § 314(d). Expect challengers to cite this case the next time they argue that institution-level policy swings are insulated from review.

    All of this also casts a long shadow over the pending mandamus efforts in In re SAP and In re Motorola Solutions, which attack the Acting Director’s rescission of the Vidal Memo and the resulting Fintiv posture. If IGT teaches anything, it’s that the court is inclined to defer to the agency on institution-side choices—even where the path is bumpy and the reasoning shifts. To borrow the opinion’s thrust: as long as there’s a colorable, non-shenanigans basis, § 314(d) will likely close the door.

    Charles Gideon Korrell suspects parties will respond by re-centering their fire on final written decisions and Director-review outcomes that change the merits, not the gatekeeping.

    Bottom Line

    • Institution challenge rejected: Interference estoppel, as framed here, is an institution issue and thus unreviewable under § 314(d). The court saw no Cuozzo-style shenanigans in allowing the IPR to proceed after an interference that ended on a threshold ground.
    • Obviousness affirmed: The Board did not rely on new grounds; its mapping of a software authorization agent across Goldberg components, combined with Olden’s authorization server and logging, was supported by substantial evidence.

    For practitioners, the case is a sharp illustration of how little oxygen is left for appellate attacks on why an IPR was instituted. The best play remains the oldest one: win (or narrow) on the merits. As Charles Gideon Korrell notes, that means pinning down claim language so “monitoring” and “authorization” truly require content-aware controls if that’s what you need to distinguish over generic web-security frameworks like Olden.

    By Charles Gideon Korrell

    Throughout this post, insights from Charles Gideon Korrell reflect the view that IPR petitioners should be ready to fuse general-purpose authorization tech with domain systems to meet functional “agent” claims, while patentees should draft with content-specific telemetry if they aim to avoid obviousness under combinations like Goldberg + Olden. In subsequent analyses, Charles Gideon Korrell will track how panels handle “monitoring” limitations in other software contexts.

  • Colibri Heart Valve LLC v. Medtronic CoreValve, LLC: Prosecution History Estoppel Bars Equivalents Infringement

    Colibri Heart Valve LLC v. Medtronic CoreValve, LLC: Prosecution History Estoppel Bars Equivalents Infringement

    In its July 18, 2025 opinion in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC, the Federal Circuit reversed a $106 million jury verdict in favor of Colibri, holding that Colibri’s infringement theory under the doctrine of equivalents was barred by prosecution history estoppel. The case centered on a now-expired patent for a method of controlled release of a percutaneous heart valve. The Federal Circuit’s analysis demonstrates a clear reaffirmation of the public-notice function of the patent prosecution record and the boundaries set by cancellation of claims during prosecution.

    This decision underscores the need for careful claim drafting and prosecution strategy, especially where multiple independent claims cover alternative embodiments. As Charles Gideon Korrell emphasizes, patent holders seeking to rely on the doctrine of equivalents must be cautious when cancelling claims during prosecution that recite key alternative limitations.

    Background and District Court Proceedings

    U.S. Patent No. 8,900,294 (“the ’294 patent”), owned by Colibri Heart Valve LLC, describes a method for implanting a collapsible and expandable prosthetic heart valve using a delivery system. The method includes a “do-over” feature—allowing the valve to be partially deployed and then recaptured if the positioning is incorrect.

    Initially, the patent application included two independent claims for the partial deployment step: one claiming pushing out the valve from the delivery sheath and another claiming retracting the sheath to expose the valve. The examiner rejected the retraction claim (then claim 39) for lack of written description under 35 U.S.C. § 112. Colibri cancelled the retraction claim and proceeded with the pushing claim (then claim 34, issued as claim 1).

    Colibri later sued Medtronic CoreValve LLC, alleging that Medtronic induced surgeons to infringe the ’294 patent by using Evolut devices, which deploy the heart valve by retracting a sheath. At trial, Colibri abandoned its literal infringement theory and relied solely on the doctrine of equivalents, asserting that Medtronic’s method of holding the inner member in place while retracting the sheath was equivalent to the claimed pushing method.

    The jury found in Colibri’s favor and awarded $106 million in damages. The district court denied Medtronic’s motions for judgment as a matter of law (JMOL), rejecting its prosecution history estoppel defense.

    Federal Circuit Reversal: Prosecution History Estoppel Applies

    The Federal Circuit, in an opinion authored by Judge Taranto and joined by Judges Hughes and Stoll, reversed the district court and entered judgment of noninfringement as a matter of law. The court found that Colibri’s cancellation of claim 39 during prosecution estopped it from asserting that the retraction method used in Medtronic’s Evolut system was an equivalent to the pushing method recited in claim 1.

    Key Findings:

    1. Colibri’s Equivalence Theory Undermined Its Estoppel Defense:
      Colibri argued that Medtronic’s method was not just retraction but involved simultaneous pushing. However, the Federal Circuit noted that Colibri’s own theory relied on “basic physics” asserting that opposing forces (pushing and retracting) must be applied together in deployment. Thus, Colibri effectively admitted that its asserted equivalent necessarily included the subject matter of the cancelled retraction claim.
    2. Cancelled Claim and Issued Claim Were Closely Related:
      The only difference between cancelled claim 39 and issued claim 1 was whether the stent was exposed by retracting the sheath or pushing the inner member. Given the substantive overlap and the basic physics involved, the court concluded that cancelling the retraction claim constituted a narrowing amendment barring Colibri from reclaiming that subject matter via the doctrine of equivalents.
    3. Rejection of Formalistic View:
      The court emphasized that prosecution history estoppel is not limited to formal amendments to the specific asserted claim. Citing Honeywell Int’l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131 (Fed. Cir. 2004), the court rejected Colibri’s position that estoppel only applies where the asserted claim was itself amended. Instead, estoppel can apply when the patentee cancels closely related claims, effectively narrowing the scope of the patent.
    4. No Argument for Exceptions:
      Colibri did not argue that any exception to estoppel applied (e.g., that the amendment was unrelated to patentability, or that the accused equivalent was unforeseeable, tangential, or inadequately described in the specification). Thus, the presumption of estoppel stood unrebutted.

    Practical Implications

    This case serves as a sharp reminder that:

    • Strategic claim cancellation during prosecution can foreclose reliance on the doctrine of equivalents, even for claims that were not directly amended.
    • Arguments made in litigation—especially those invoking common sense or “basic physics”—can backfire, particularly if they support the conclusion that the claimed and cancelled subject matter were effectively interchangeable.
    • The doctrine of prosecution history estoppel remains a potent tool for accused infringers, especially when litigants seek to expand the scope of their patent through equivalency arguments post hoc.

    Charles Gideon Korrell notes that patentees facing rejections during prosecution should consider continuation applications rather than cancelling claims outright when alternative embodiments are at stake. Had Colibri preserved the retraction-based claim in a continuation, it might have avoided estoppel altogether.

    Conclusion

    The Federal Circuit’s decision in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC reinforces the boundaries of the doctrine of equivalents and the public-notice function of patent prosecution. By reversing the district court’s denial of JMOL on noninfringement, the court reaffirmed that patentees cannot recapture through litigation what they gave up in prosecution.

    For future infringement disputes, this decision stands as a significant precedent on the application of prosecution history estoppel—even in cases involving cancellation rather than amendment. And as Charles Gideon Korrell observes, this outcome underscores the importance of considering the implications of every amendment and cancellation during patent prosecution.

    By Charles Gideon Korrell

  • Shockwave Medical v. Cardiovascular Systems: Federal Circuit Clarifies Use of AAPA and Reverses PTAB on Claim 5

    Shockwave Medical v. Cardiovascular Systems: Federal Circuit Clarifies Use of AAPA and Reverses PTAB on Claim 5

    In a significant decision issued on July 14, 2025, the Federal Circuit in Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., Nos. 2023-1864, 2023-1940, affirmed the Patent Trial and Appeal Board’s finding that most of the claims of U.S. Patent No. 8,956,371 were unpatentable as obvious—but reversed the Board’s lone finding of non-obviousness, holding that claim 5 too was unpatentable. This decision is notable for its continued development of the law concerning the permissible use of applicant admitted prior art (AAPA) in inter partes review (IPR) proceedings and its clarification of what constitutes a “basis” under 35 U.S.C. § 311(b).

    Charles Gideon Korrell observes that this ruling confirms the Federal Circuit’s firm adherence to limiting the scope of IPR grounds to prior art patents and printed publications while still allowing general knowledge—including that evidenced by AAPA—to play a critical role in obviousness analysis.

    Background of the Patent and Proceedings

    Shockwave Medical owns the ’371 patent, which covers an “angioplasty catheter” that uses electrohydraulic lithotripsy (EHL) to treat calcified plaque in blood vessels—a novel application of a technology more traditionally used to break up kidney stones. The invention incorporates electrodes within a balloon catheter, which, when activated, produce shockwaves that break apart hardened deposits without excessive balloon pressure.

    Cardiovascular Systems, Inc. (CSI) challenged all 17 claims of the ’371 patent in an IPR proceeding. The Patent Trial and Appeal Board found that claims 1–4 and 6–17 were obvious over the prior art but that claim 5 was not. Shockwave appealed the adverse ruling on claims 1–4 and 6–17, while CSI cross-appealed the Board’s non-obviousness finding on claim 5.

    Federal Circuit’s Holding on the Direct Appeal (Claims 1–4 and 6–17)

    The Federal Circuit, in an opinion authored by Judge Dyk and joined by Judges Lourie and Cunningham, rejected Shockwave’s arguments and affirmed the Board’s invalidation of these claims.

    1. Use of AAPA Does Not Violate § 311(b)

    Shockwave argued that CSI improperly relied on AAPA to form the “basis” for its obviousness grounds, violating 35 U.S.C. § 311(b), which limits IPR challenges to “prior art consisting of patents or printed publications.” The court rejected this argument, emphasizing that:

    “[A]lthough the prior art that can be considered in [IPRs] is limited to patents and printed publications, it does not follow that we ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art.” (Citing Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330 (Fed. Cir. 2020)).

    The court distinguished its prior holdings in Qualcomm I (24 F.4th 1367 (Fed. Cir. 2022)) and Qualcomm II (134 F.4th 1355 (Fed. Cir. 2025)), noting that CSI never labeled the AAPA as a “basis” in its petition. The use of AAPA here merely provided background knowledge, consistent with permissible uses recognized in Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013).

    Charles Gideon Korrell notes that this distinction between AAPA as a reference and as a “basis” helps clarify a murky area in IPR practice. Petitioners may use AAPA to demonstrate a skilled artisan’s background knowledge, but must be cautious not to identify it as a foundational reference for an obviousness ground.

    2. Claim Construction of “Angioplasty Balloon”

    Shockwave sought to limit the construction of “angioplasty balloon” to require that it displace plaque into the vessel wall, but the court sided with CSI’s broader construction as “an inflatable sac…to widen narrowed or obstructed blood vessels.” The specification itself undermined Shockwave’s construction, explicitly stating that the balloon need not be snug to the vessel wall.

    3. Obviousness Over Levy and Background Knowledge

    Substantial evidence supported the Board’s findings:

    • It was obvious to use Levy’s shockwave technique with known over-the-wire angioplasty catheters.
    • Levy disclosed shockwave generation in vascular applications.
    • The commercial success and secondary considerations proffered by Shockwave lacked sufficient linkage to the claimed invention and were unpersuasive.

    Reversal on CSI’s Cross-Appeal: Claim 5 Is Also Obvious

    Claim 5 requires that the “pair of electrodes [be] disposed adjacent to and outside of the guide wire lumen.” The Board had found that this configuration was not disclosed in CSI’s references. However, the Federal Circuit reversed that determination, finding the Board had failed to consider the combination of references as a whole.

    The key reference was Uchiyama, which taught placement of electrodes in a balloon for lithotripsy but did not show them outside the guidewire lumen. CSI’s expert testified that relocating the electrodes outside the lumen would be a routine design modification offering better lateral plaque coverage—something well within the grasp of a skilled artisan.

    The court emphasized that:

    “The standard for obviousness requires consideration of the prior art combination taken as a whole.” (Citing In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012)).

    CSI’s expert also relied on KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), and Uber Technologies, Inc. v. X One, Inc., 957 F.3d 1334 (Fed. Cir. 2020), to argue that the placement of electrodes was among a finite number of predictable options.

    Because Shockwave failed to rebut this with contrary evidence, the Federal Circuit found the Board’s ruling unsupported by substantial evidence and reversed outright.

    Charles Gideon Korrell observes that this aspect of the decision serves as a reminder that design choices considered “routine” in the context of the art may justify an obviousness finding—especially when unchallenged by countervailing expert testimony.

    Standing on Appeal

    The Federal Circuit also addressed—and rejected—Shockwave’s challenge to CSI’s standing to cross-appeal. The court found that CSI had sufficiently concrete plans to commercialize a competing IVL product and was at risk of being sued under claim 5, especially in light of Shockwave’s public statements claiming broad coverage and intent to assert that claim.

    This mirrors prior rulings like Adidas AG v. Nike, Inc., 963 F.3d 1355 (Fed. Cir. 2020), and General Electric Co. v. Raytheon Techs. Corp., 983 F.3d 1334 (Fed. Cir. 2020).

    Conclusion

    In sum, the Federal Circuit:

    • Affirmed the Board’s finding that claims 1–4 and 6–17 are unpatentable,
    • Reversed the Board’s finding that claim 5 is patentable, and
    • Held that CSI had Article III standing to pursue its cross-appeal.

    The opinion reinforces key principles of IPR law, especially:

    • Proper use of AAPA as background knowledge (not a “basis”),
    • Permissibility of using general knowledge to fill in gaps in prior art,
    • The importance of considering combined references in obviousness analysis.

    Charles Gideon Korrell believes this decision is a helpful roadmap for petitioners navigating the narrow permissible uses of AAPA in IPRs. It also serves as a cautionary tale for patentees relying heavily on secondary considerations or overly narrow claim constructions without robust evidentiary support.

    By Charles Gideon Korrell