Technology Information Law Blog by Charles Gideon Korrell

Tag: standing

  • US Inventor, Inc. v. USPTO: Standing Doctrine Closes the Courthouse Door on AIA Rulemaking Challenges

    US Inventor, Inc. v. USPTO: Standing Doctrine Closes the Courthouse Door on AIA Rulemaking Challenges

    The Federal Circuit’s decision in US Inventor, Inc. v. United States Patent and Trademark Office, No. 2024-1396 (Fed. Cir. Oct. 3, 2025), reinforces a familiar but increasingly consequential theme in administrative patent law: access to judicial review turns first, and often last, on Article III standing. Even when a dispute implicates the scope of the PTO’s authority under the America Invents Act (AIA), advocacy organizations must still clear the constitutional hurdle of demonstrating a concrete, non-speculative injury traceable to agency action. In US Inventor, the court concluded they could not.

    Background: A Petition for Rulemaking Meets a Jurisdictional Wall

    US Inventor, Inc. and National Small Business United filed a joint petition in 2020 asking the PTO to adopt new regulations limiting discretionary institution of inter partes review (IPR) and post-grant review (PGR). Their proposal would have amended 37 C.F.R. §§ 42.108 and 42.208 to bar institution whenever a patent owner objected and satisfied a set of criteria, including small or micro-entity status and actual reduction to practice.

    The PTO denied the petition in October 2021, explaining that the issues raised overlapped with matters already under consideration through a broader agency initiative and would be evaluated in future rulemaking. Dissatisfied, the organizations sued in the U.S. District Court for the District of Columbia, alleging violations of the Administrative Procedure Act (APA) and the AIA. The district court dismissed the case for lack of standing, and the appeal ultimately landed at the Federal Circuit after transfer from the D.C. Circuit.

    The Issue on Appeal: Associational Standing

    On appeal, the plaintiffs abandoned any claim of organizational standing and pressed only associational standing. Under D.C. Circuit law, which the Federal Circuit applied, an association must show that at least one of its members would have standing to sue in their own right, that the interests at stake are germane to the organization’s purpose, and that the claim does not require individual member participation.

    Only the first element was contested. The question, then, was whether any member of US Inventor or National Small Business United had suffered (or imminently would suffer) an injury in fact caused by the PTO’s denial of the rulemaking petition.

    Injury in Fact and the “Speculative Chain” Problem

    The asserted injury was the “risk of cancellation” of members’ patents resulting from discretionary institution of IPR or PGR proceedings. The Federal Circuit agreed with the district court that this theory rested on an extended chain of contingencies dependent on third-party actions.

    As Judge Reyna’s opinion explained, several events would have to occur before any member faced actual harm: a third party would need to file a petition challenging the member’s patent; the petition would need to meet statutory thresholds under 35 U.S.C. §§ 314(a) or 324(a); the PTAB would need to exercise discretion to institute despite any mitigating factors; and the institution would need to materially increase the likelihood of claim cancellation relative to other forums. At least one, and often several, links in that chain were speculative.

    Citing Lujan v. Defenders of Wildlife and Clapper v. Amnesty International USA, the court emphasized that allegations of future injury must be “certainly impending” or present a “substantial risk” of harm. Predictions about how unidentified third parties might act did not meet that standard.

    Why 10Tales Was Not Enough

    The appellants pointed to one specific member, 10Tales, which had previously faced an IPR petition that was denied on the merits. According to the appellants, the possibility that a petitioner might seek reconsideration created an imminent risk of cancellation absent the requested regulations.

    The court rejected that argument. Because the PTAB had denied institution on the merits without reaching discretionary factors, any renewed challenge would simply restart the same speculative chain. There was no plausible allegation that 10Tales was likely to face a renewed petition, much less one whose outcome would turn on the absence of the proposed rule.

    Distinguishing Apple v. Vidal

    A central feature of the opinion is its comparison to Apple Inc. v. Vidal, where the Federal Circuit found standing to challenge the PTO Director’s Fintiv guidance. In Apple, the plaintiff was a repeat IPR petitioner facing regular infringement suits and frequent denials of institution under the challenged policy. Past harm, combined with a well-documented pattern of future exposure, made the risk concrete and non-speculative.

    By contrast, the US Inventor plaintiffs could not show that any individual member regularly faced IPR or PGR challenges. Nor were their members the parties filing petitions. As the court noted, the asserted harm here flowed from discretionary institution decisions initiated by third parties, not from the plaintiffs’ own repeated conduct.

    This distinction matters. Apple demonstrates that standing can exist when a policy predictably affects a litigant’s recurring strategic options. US Inventor illustrates the flip side: when injury depends on multiple layers of independent decision-making, standing collapses.

    Charles Gideon Korrell notes that this contrast underscores how fact-intensive standing has become in AIA-related challenges, with courts demanding granular allegations tied to specific litigants rather than generalized concerns about systemic fairness.

    Procedural Rights Are Not Enough

    The appellants also argued that denial of their rulemaking petition itself constituted injury, because the APA grants a procedural right to petition agencies. The Federal Circuit rejected that theory as well, relying on D.C. Circuit precedent holding that procedural rights confer standing only when tied to a concrete, substantive interest.

    Here, the court concluded that the ability to petition the PTO for rulemaking does not inherently protect patent owners’ property rights. Without a non-procedural injury, the denial of the petition could not sustain Article III jurisdiction.

    The Shadow of Ongoing Rulemaking

    Notably, the PTO issued an advance notice of proposed rulemaking in 2023 and a notice of proposed rulemaking in 2024 addressing discretionary institution practices. The government argued that these developments mooted the appeal. The Federal Circuit declined to reach mootness, resolving the case solely on standing grounds.

    That restraint is telling. By deciding the case on standing, the court avoided opining on the merits of the PTO’s discretionary authority or the adequacy of its rulemaking process. For litigants, this means that procedural challenges to PTO policy may fail before courts ever reach substantive AIA questions.

    Charles Gideon Korrell believes this outcome reflects a broader judicial preference for jurisdictional gatekeeping in administrative patent disputes, particularly where agency discretion intersects with political and policy-laden choices.

    Implications for Small Inventors and Advocacy Groups

    The practical effect of US Inventor is to narrow the path for inventor organizations seeking to influence PTO policy through litigation. Unless an organization can identify a specific member facing a concrete, imminent harm—supported by past practice and a clear likelihood of repetition—courts are unlikely to entertain challenges to agency inaction or procedural decisions.

    This does not mean such organizations are without recourse. Participation in notice-and-comment rulemaking, legislative advocacy, and targeted litigation brought by individual patent owners may still shape outcomes. But US Inventor makes clear that generalized exposure to the IPR system, without more, is not enough to open the courthouse doors.

    Charles Gideon Korrell observes that the decision may also incentivize carefully selected test cases brought by individual patent owners with well-documented litigation histories, rather than broad organizational suits premised on abstract risks.

    Conclusion

    US Inventor v. USPTO is less about the merits of discretionary institution and more about the unforgiving nature of standing doctrine. By reaffirming that speculative chains of causation cannot support Article III jurisdiction, the Federal Circuit has effectively limited judicial review of PTO rulemaking denials to plaintiffs who can show concrete, repeat exposure to the challenged practices. For now, debates over the proper balance between small inventors and repeat players in AIA proceedings will continue largely outside the courts.

    By Charles Gideon Korrell

  • Focus Prods v. Kartri Sales: When Restriction Practice Becomes Prosecution History Disclaimer

    Focus Prods v. Kartri Sales: When Restriction Practice Becomes Prosecution History Disclaimer

    The Federal Circuit’s decision in Focus Products Group International, LLC v. Kartri Sales Co., Inc. delivers a wide-ranging opinion that touches nearly every corner of intellectual property litigation: venue after TC Heartland, prosecution history disclaimer, multi-defendant appellate waiver, trademark standing, trade dress functionality, willfulness, and fee shifting. But at its core, the case stands as a cautionary tale about examiner-driven restriction practice and the long shadow it can cast over claim scope years later.

    The dispute arose from “hookless” shower curtains—products designed to hang directly on a shower rod using integrated rings with slits, eliminating the need for separate hooks. Focus Products and its related entities asserted three related utility patents, along with trademark and trade dress rights, against Kartri Sales Co. and its supplier Marquis Mills. After years of litigation in the Southern District of New York, the district court largely sided with Focus, entering summary judgment of patent infringement, finding trademark and trade dress infringement, determining willfulness, and awarding enhanced damages and attorneys’ fees.

    On appeal, the Federal Circuit affirmed some findings, reversed others, vacated substantial portions of the judgment, and remanded for further proceedings. The result was a sharply divided outcome between the two defendants and a detailed roadmap of how procedural and prosecution decisions can dictate substantive outcomes.

    Venue and the Cost of Delay After TC Heartland

    The opinion first addresses venue, rejecting the defendants’ attempt to escape the Southern District of New York under TC Heartland. Although TC Heartland made venue objections newly available, the Federal Circuit emphasized that such objections must still be raised seasonably. Here, the defendants waited nearly four months after TC Heartland—while continuing discovery and depositions—before objecting.

    The court distinguished earlier cases where venue objections were preserved promptly and litigation remained in its early stages. The lesson is straightforward: TC Heartland did not create an open-ended escape hatch. Delay and continued participation in litigation can forfeit venue challenges, even when the law changes mid-case.

    Restriction, Election, and the Birth of Disclaimer

    The most consequential portion of the decision concerns the ’248 and ’609 patents and the meaning of “ring.” During prosecution of the original application, the examiner issued a restriction requirement identifying multiple patentably distinct species. One species included rings with projections or fingers extending from the outer circumference; another species included rings with a flat upper edge.

    The applicant elected the projected-edge species and did not traverse the examiner’s characterization. When the applicant later attempted to include claims expressly reciting a flat upper edge, the examiner withdrew those claims as drawn to a non-elected species. The applicant again did not object and proceeded to allowance.

    Years later, Focus argued that the issued claims were broad enough to encompass flat-topped rings. The Federal Circuit disagreed. Reading the prosecution history as a whole, the court held that the patentee had clearly and unmistakably disclaimed rings with flat upper edges for the ’248 and ’609 patents by acquiescing in the examiner’s species demarcation.

    This was not a case of ambiguous silence. The examiner repeatedly enforced the boundary between species, and the applicant repeatedly accepted it. As the court explained, cooperation with the examiner’s demand to exclude a species—without traversal—can operate as an affirmative disclaimer, even absent express words of surrender.

    The continuation history reinforced that conclusion. When prosecuting the later ’088 patent, the applicant distinguished the earlier patents by adding a “flat upper edge” limitation to overcome a double patenting rejection. That amendment only made sense if the earlier patents did not already cover flat-topped rings. The Federal Circuit treated that prosecution history as confirming the narrowed scope of the earlier claims.

    Because the accused products used flat-topped rings, the court reversed the infringement findings for the ’248 and ’609 patents as to Marquis.

    The ’088 Patent and the Limits of Summary Judgment

    The outcome for the ’088 patent was more nuanced. The Federal Circuit agreed with the district court’s construction of “projecting edge” as “an edge that projects from the outer circumference of the ring.” But it found the infringement analysis insufficiently explained.

    The district court had concluded that a portion of the accused ring constituted a projecting edge, yet failed to articulate where the ring’s outer circumference ended and the projecting edge began. The Federal Circuit noted that the accused rings closely resembled embodiments in the specification that lacked any projecting edge at all.

    Without a clear analytical framework distinguishing circumference from projection, summary judgment could not stand. The court vacated the ’088 patent infringement finding for Marquis and remanded for a more rigorous analysis tied to the intrinsic record.

    Appellate Waiver and Divergent Outcomes

    One of the more unusual aspects of the case was the divergent outcome between Kartri and Marquis, despite their products being essentially identical. That divergence stemmed not from technical differences, but from appellate briefing strategy.

    The defendants filed separate opening briefs that attempted to divide issues between them. Marquis fully developed the patent arguments; Kartri devoted barely a page to them. When challenged, both defendants disclaimed any intent to rely on each other’s arguments—accepting the risk of waiver.

    The Federal Circuit took them at their word. Marquis preserved and won on the key patent issues. Kartri, by contrast, waived its patent non-infringement arguments through underdevelopment. As a result, infringement findings were reversed or vacated for Marquis, but largely affirmed for Kartri.

    This portion of the opinion is a stark reminder that appellate courts will not rescue parties from strategic choices about briefing. Identical facts do not guarantee identical outcomes when arguments are waived.

    Trademarks, Standing, and Ownership Proof

    The court also dismantled the district court’s finding that Focus had standing to assert the EZ ON trademark. Focus relied on a 2012 licensing agreement to show ownership, but the Federal Circuit carefully parsed the contract and found no transfer of trademark ownership before suit was filed.

    The agreement licensed HOOKLESS®, not EZ ON. Provisions concerning “Licensed Products” did not establish mark ownership, and a clause discussing assignment of later-developed intellectual property did not plausibly apply to trademarks through “reduction to practice.” Actual assignment of the EZ ON mark occurred years after the lawsuit began.

    Because standing must exist at filing, the Federal Circuit reversed the EZ ON trademark infringement finding outright.

    The court also vacated the HOOKLESS® trademark infringement finding, concluding that the district court’s likelihood-of-confusion analysis improperly focused on product similarity rather than mark-to-mark comparison in the marketplace context.

    Trade Dress and TrafFix Revisited

    Trade dress fared no better. The district court found Focus’s asserted trade dress non-functional based on its “neat and orderly” appearance and the availability of alternative designs. The Federal Circuit held that analysis incomplete under TrafFix.

    Where an expired utility patent claims the same features asserted as trade dress, functionality is strongly presumed. The district court failed to meaningfully compare the claimed trade dress elements with the features claimed in Focus’s expired patent. Without that comparison, Focus could not meet its burden to prove non-functionality.

    The trade dress infringement finding was vacated and remanded for proper application of TrafFix.

    Willfulness, Fees, and the Unraveling of Enhancements

    With large portions of the infringement judgment undone, the Federal Circuit also vacated findings of willfulness and the resulting enhanced damages. Notice of patent rights alone was insufficient, particularly where defendants articulated consistent non-infringement positions grounded in prosecution history. Similarly, trade dress willfulness could not predate notice of the asserted trade dress.

    The attorneys’ fee award was likewise vacated. While the district court did not abuse its discretion in deeming the case exceptional, the fee calculation failed to separate compensable work from claims on which Focus no longer prevailed.

    Takeaways

    This decision reinforces several practical lessons. Restriction requirements and elections matter, especially when untraversed. Acquiescence can shape claim scope just as powerfully as express disclaimer. Continuation practice can lock in those boundaries rather than erase them. Appellate briefing choices can determine winners and losers independent of product facts. And trademark and trade dress claims demand disciplined proof of ownership and non-functionality.

    As Charles Gideon Korrell notes, restriction practice is often treated as a procedural inconvenience, but Focus Products shows it can become substantive destiny. Charles Gideon Korrell believes that patent prosecutors should treat elections with the same care as claim amendments, assuming every concession may later be read as intentional surrender. And Charles Gideon Korrell observes that this case is also a reminder that appellate courts enforce waiver rules strictly, even when doing so leads to asymmetrical results.

    The Federal Circuit’s opinion is long, detailed, and unsparing. It rewards precision and punishes shortcuts—both in prosecution and in litigation.

    By Charles Gideon Korrell

  • Dolby Laboratories Licensing Corp. v. Unified Patents, LLC: No Standing to Appeal IPR RPI Dispute

    Dolby Laboratories Licensing Corp. v. Unified Patents, LLC: No Standing to Appeal IPR RPI Dispute

    In Dolby Laboratories Licensing Corp. v. Unified Patents, LLC, No. 23-2110 (Fed. Cir. June 5, 2025), the Federal Circuit dismissed Dolby’s appeal for lack of Article III standing. Although Dolby had prevailed before the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) initiated by Unified Patents, it sought to appeal the Board’s refusal to adjudicate a dispute over the petition’s Real Party in Interest (RPI) disclosure. The Federal Circuit held that none of Dolby’s asserted injuries established the “concrete and particularized” harm necessary to create a justiciable controversy.

    Background

    Unified Patents filed an IPR challenging claims 1, 7, and 8 of Dolby’s U.S. Patent No. 10,237,577. Dolby alleged that Unified improperly failed to disclose nine additional RPIs. The Board declined to resolve the RPI dispute, citing PTAB precedent (SharkNinja v. iRobot IPR proceeding, IPR2020-00734) and USPTO policy limiting such adjudications to when the outcome of the proceeding might be affected (e.g., due to time bar or estoppel).

    Charles Gideon Korrell notes that the PTAB ultimately found in favor of Dolby, upholding the challenged claims. Nonetheless, Dolby appealed, asserting that the Board’s refusal to decide the RPI issue caused it harm.

    No Standing Despite Statutory “Right to Appeal”

    Dolby first argued that it had standing based on 35 U.S.C. § 319, which provides a right of appeal to any “party dissatisfied” with a PTAB final written decision. The Federal Circuit rejected this argument, reiterating its longstanding view that statutory appeal rights under the America Invents Act (AIA) do not override the constitutional requirement of Article III standing (JTEKT Corp. v. GKN Automotive, 898 F.3d 1217 (Fed. Cir. 2018)).

    No Informational Injury Under § 312(a)(2)

    Dolby also contended that the failure to adjudicate the RPI issue violated its informational rights under 35 U.S.C. § 312(a)(2), which requires IPR petitions to identify all RPIs. The court disagreed, distinguishing this situation from the “public-disclosure” statutes found in Public Citizen v. DOJ, 491 U.S. 440 (1989) and FEC v. Akins, 524 U.S. 11 (1998). Unlike the statutes at issue in those cases, the AIA does not grant a general right of public access to RPI information, nor does it create a statutory cause of action to vindicate such a right. Furthermore, Charles Gideon Korrell notes, decisions regarding institution—including compliance with § 312(a)(2)—are explicitly made non-appealable under 35 U.S.C. § 314(d) (ESIP Series 2, LLC v. Puzhen Life USA, 958 F.3d 1378 (Fed. Cir. 2020)).

    Speculative Harms Do Not Establish Injury in Fact

    The remainder of Dolby’s arguments were similarly dismissed as speculative. The court found no credible evidence that:

    • Any of the alleged RPIs were violating Dolby license agreements (Apple Inc. v. Qualcomm Inc., 992 F.3d 1378 (Fed. Cir. 2021));
    • The administrative patent judges (APJs) had conflicts of interest;
    • Future estoppel rights would be compromised; or
    • Unified would alter its behavior if RPIs had to be disclosed.

    Without evidence of actual or imminent harm, the court held that Dolby failed to meet its burden under Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992), and Spokeo, Inc. v. Robins, 578 U.S. 330 (2016).

    Key Takeaways

    • Statutory appeal rights under the AIA do not eliminate the requirement of Article III standing.
    • The Federal Circuit continues to take a narrow view of informational injuries, especially in the context of administrative patent proceedings.
    • Speculative future harms and procedural disagreements—without more—are not enough to sustain federal appellate jurisdiction.

    Charles Gideon Korrell sees this case serving as a reminder that even victorious IPR patent owners must demonstrate a cognizable injury to pursue appeals based on procedural grievances.

    By Charles Gideon Korrell

  • Curtin v. United Trademark Holdings, Inc.: No Standing for Consumers to Oppose Trademark Registrations Absent Commercial Interest

    Curtin v. United Trademark Holdings, Inc.: No Standing for Consumers to Oppose Trademark Registrations Absent Commercial Interest

    In Curtin v. United Trademark Holdings, Inc., No. 23-2140 (Fed. Cir. May 22, 2025), the Federal Circuit affirmed the dismissal of a consumer’s opposition to a trademark registration, holding that an individual lacking a commercial interest does not have statutory standing under 15 U.S.C. § 1063 to oppose trademark registration. Applying the Lexmark zone-of-interests and proximate cause framework—previously used in Lanham Act false advertising and cancellation contexts—the court clarified that opposition proceedings are reserved for parties asserting commercial harm.

    Background

    United Trademark Holdings (UTH) applied to register the mark RAPUNZEL for dolls and toy figures. Rebecca Curtin, a law professor and doll collector, filed a notice of opposition, asserting that the mark was generic, merely descriptive, and failed to function as a trademark. She claimed harm as a consumer who values access to a competitive marketplace for fairy tale-themed dolls.

    The TTAB dismissed her opposition, finding that she failed to demonstrate entitlement to bring the proceeding. Curtin appealed, arguing that the Board erred by applying the Lexmark framework instead of the Federal Circuit’s earlier test from Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999), which focused on whether the opposer had a “real interest” and a “reasonable basis” for believing they would be damaged.

    Federal Circuit’s Holding

    The Federal Circuit upheld the TTAB’s decision and confirmed that Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), governs the analysis of who is entitled to bring opposition proceedings under § 1063. The court reasoned that Lexmark provides the correct interpretive framework for determining whether a party falls within the statutory cause of action. It also reiterated its earlier ruling in Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020), which applied Lexmark to cancellation proceedings under § 1064.

    In Curtin, the court saw no reason to distinguish § 1063 from § 1064, especially given the parallel statutory language: both provisions authorize action by any person “who believes that he would be damaged” by a trademark registration. The court rejected Curtin’s argument that opposition proceedings are purely administrative and thus not subject to the same statutory cause-of-action analysis.

    Zone of Interests and Proximate Cause

    Applying the Lexmark test, the court held that Curtin’s interest—as a consumer—fell outside the zone of interests protected by the statutory provisions she invoked (genericness, descriptiveness, and failure to function as a mark). These provisions, the court explained, are designed to protect commercial interests and promote fair competition, not consumer choice or expression per se.

    The court also found Curtin’s alleged harms—such as reduced marketplace diversity, higher prices, and diminished access to “classic” Rapunzel dolls—to be too remote. These effects, it held, were speculative and derivative of any direct harm to commercial actors (e.g., doll manufacturers or sellers) and thus insufficient to establish proximate causation under Lexmark.

    Notable Precedents

    Takeaway

    Curtin reinforces that only parties with a commercial interest may invoke § 1063 to oppose trademark registration on grounds such as genericness or descriptiveness. While consumers may be indirectly affected by trademark registrations, those harms do not suffice under the Lanham Act unless they directly relate to a commercial interest. The ruling narrows the scope of opposition proceedings and aligns § 1063 with the broader statutory cause-of-action framework developed in Lexmark and its progeny.

    By Charles Gideon Korrell

  • Federal Circuit Vacates PTAB Decision in CQV Co. v. Merck Patent GmbH, Raising Key Issues in Patent Infringement and Prior Art Analysis

    The United States Court of Appeals for the Federal Circuit recently issued an opinion in CQV Co., Ltd. v. Merck Patent GmbH, vacating and remanding the Patent Trial and Appeal Board (PTAB) decision regarding U.S. Patent No. 10,647,861. The ruling focuses on key legal issues related to patent infringement, prior art determination, and procedural fairness in PTAB proceedings.

    Background of the Case

    Merck Patent GmbH owns U.S. Patent No. 10,647,861, which claims α-Al2O3 (“alpha-alumina”) flakes used in industrial coatings, automotive coatings, printing inks, and cosmetic formulations. The patent purports that these flakes provide improved optical properties compared to prior art.

    CQV Co., Ltd. petitioned the PTAB for post-grant review, arguing that claims 1–22 of the ’861 patent were unpatentable as obvious in light of prior art, including the commercial product Xirallic®. The PTAB, however, found that CQV failed to prove by a preponderance of the evidence that the cited prior art (Xirallic®) was publicly available before the patent’s critical date and rejected CQV’s invalidity challenge. CQV appealed to the Federal Circuit.

    Key Legal Issues Addressed by the Court

    1. Prior Art and the Burden of Proof

    A central issue in the appeal was whether CQV sufficiently established that Xirallic® was prior art before the patent’s critical date. Under patent law, a reference must be publicly available before the critical date to qualify as prior art. The court scrutinized the PTAB’s analysis and found that the Board improperly disregarded unrebutted evidence from CQV indicating that the product was available to the public.

    The Federal Circuit emphasized that, while petitioners bear the burden of proving prior art status, they need only meet the preponderance of the evidence standard. The Board, in rejecting CQV’s argument, failed to fully consider critical evidence that supported Xirallic®’s availability, including testimony on quality control procedures and sales records.

    2. Standing in Post-Grant Review Appeals

    Merck challenged CQV’s standing to appeal the PTAB decision, arguing that CQV had not suffered a concrete injury. The Federal Circuit rejected this argument, holding that CQV had demonstrated a sufficient injury-in-fact based on Merck’s communications with CQV’s customers alleging infringement of the ’861 patent. Because CQV was contractually obligated to indemnify one of its customers against infringement claims, the court found that CQV had standing under Arris Grp., Inc. v. British Telecomms. PLC, which recognizes standing for suppliers who face indirect threats of litigation.

    3. Failure to Consider the Entirety of the Record

    The court criticized the PTAB for failing to consider all relevant evidence regarding the availability of Xirallic® as prior art. Specifically, it noted that the Board omitted testimony from CQV’s expert that contradicted the Board’s conclusion. The Federal Circuit reiterated that the Administrative Procedure Act (APA) requires the Board to fully explain its decisions and consider all material evidence. The failure to do so necessitated vacating and remanding the decision for reconsideration.

    Implications for Patent Litigation and PTAB Proceedings

    This decision highlights several important aspects of patent law:

    • Patent challengers must present compelling evidence to establish prior art status, but the PTAB must also fairly weigh all available evidence when making its determinations.
    • Standing in post-grant review appeals may be established through indemnity obligations, reinforcing the ability of suppliers to challenge patents that may indirectly affect them.
    • The Federal Circuit continues to hold PTAB accountable for failing to properly consider the record, signaling that procedural fairness remains a key concern in administrative patent proceedings.

    Conclusion

    The Federal Circuit’s ruling in CQV Co. v. Merck Patent GmbH serves as a significant reminder of the evidentiary and procedural standards that govern PTAB proceedings. By vacating the PTAB’s decision, the court reinforced the importance of a thorough and fair assessment of prior art claims and set a precedent for future disputes involving commercial products as prior art. As the case returns to the Board for further consideration, patent litigators and stakeholders will be watching closely to see how the PTAB reevaluates the evidence in light of the Federal Circuit’s guidance.

    By Charles Gideon Korrell

  • Federal Circuit Weighs in on Gesture-Based Patent Dispute: Key Takeaways for IP Law

    The Federal Circuit’s recent decision in Apple Inc. v. Gesture Technology Partners, LLC (March 2025) provides important insights into patent law, particularly in the context of inter partes review (IPR) proceedings and obviousness determinations. This ruling builds on the court’s earlier January 2025 decision in another dispute involving Gesture Technology Partners, reinforcing key legal principles regarding patent validity and the scope of IPR challenges.

    Below, we explore the major legal issues addressed in this case, how they connect to the January ruling, and what they mean for the future of intellectual property law in the tech industry.

    Background of the Case

    The dispute centers around U.S. Patent No. 7,933,431 (the ’431 patent), which relates to gesture-based input methods using cameras and optical sensors. Gesture Technology Partners, LLC (Gesture) sued Apple, LG Electronics, and Google for alleged infringement of the ’431 patent. Apple and its co-appellees petitioned for inter partes review (IPR), challenging the patent’s validity based on prior art.

    The Patent Trial and Appeal Board (PTAB) ruled that most claims were unpatentable but upheld claims 11 and 13. Apple appealed this decision, while Gesture cross-appealed, arguing that additional claims should remain valid.

    The Federal Circuit ultimately affirmed the PTAB’s findings, ruling that claims 1–10, 12, and 14–31 were unpatentable, while upholding claims 11 and 13.

    Connection to the January 2025 CAFC Decision

    This decision follows and reinforces the January 2025 ruling in Gesture Technology Partners, LLC v. Unified Patents LLC, another Federal Circuit case involving Gesture’s ’431 patent. In that case:

    • The Federal Circuit affirmed the PTAB’s finding that claims 7–9 and 12 were unpatentable, relying heavily on prior art disclosures in the Numazaki reference.
    • However, the court also upheld the PTAB’s ruling that claims 10, 11, and 13 were not unpatentable, which became a key point of contention in Apple’s subsequent appeal.

    The March 2025 ruling effectively follows the logic of the January 2025 decision, particularly in two major ways:

    1. Reaffirming PTAB’s Findings on Patent Validity:
      • Both cases emphasized that Numazaki disclosed fundamental aspects of gesture-based control, making most of Gesture’s claims obvious under 35 U.S.C. § 103.
      • The Federal Circuit consistently deferred to the PTAB’s factual findings regarding how Numazaki rendered certain claims unpatentable.
    2. Consistently Upholding Claims 11 and 13:
      • The January 2025 case upheld claims 10, 11, and 13, creating a foundation for Apple’s subsequent challenge.
      • In the March 2025 decision, Apple sought to overturn the PTAB’s finding on claims 11 and 13, arguing that the Board misapplied the obviousness standard—but the Federal Circuit again upheld these claims, reinforcing its prior stance.

    Together, these two decisions establish a strong precedent for how courts evaluate IPR outcomes, particularly in disputes involving expired patents and prior art analysis.

    Key Legal Issues Addressed by the Court

    1. Obviousness and Prior Art

    The primary legal issue in both cases was whether the patent claims were invalid due to obviousness under 35 U.S.C. § 103. The court ruled that most of the patent’s claims were obvious in light of prior art—particularly U.S. Patent No. 6,144,366 (Numazaki).

    • Apple argued that Numazaki disclosed similar technology and that a person of ordinary skill in the art would have found the claimed invention obvious.
    • Gesture countered that Numazaki did not sufficiently teach key elements of the ’431 patent, particularly its sensing and image-processing functionalities.

    In both cases, the court upheld the PTAB’s determinations, reaffirming that Numazaki was sufficient prior art to invalidate most claims.

    2. Inter Partes Review (IPR) Estoppel and Standing

    Apple faced a procedural challenge regarding IPR estoppel under 35 U.S.C. § 315(e)(1), which bars petitioners from re-litigating arguments that were (or could have been) raised in an earlier IPR.

    • Gesture argued that Apple should be estopped from challenging claims 11 and 13 because it was allegedly a real party in interest or privy of Unified Patents, the petitioner in the earlier January 2025 case.
    • The court rejected this argument, holding that Gesture had forfeited this claim by not raising it before the PTAB.

    This ruling aligns with the January 2025 decision, where the court emphasized that procedural challenges must be properly raised at the PTAB stage, not on appeal.

    3. Means-Plus-Function Claims and Claim Construction

    Another major issue was the interpretation of means-plus-function claims under 35 U.S.C. § 112, ¶ 6.

    • The March 2025 decision reaffirmed that Numazaki adequately disclosed structures corresponding to the claimed “sensing means” and “computer means” in the ’431 patent.
    • Gesture’s arguments that the Numazaki reference did not sufficiently disclose tracking and image analysis were rejected—just as they were in the January 2025 case.

    4. PTAB’s Jurisdiction Over Expired Patents

    Gesture made a broader challenge, arguing that the PTAB lacks jurisdiction over expired patents—a claim it also raised unsuccessfully in the January case.

    • The March 2025 ruling definitively rejected this argument, reaffirming the Federal Circuit’s prior holding that expired patents remain subject to IPR challenges.
    • This decision aligns with the court’s reasoning in January 2025, reinforcing that patent expiration does not shield invalid claims from IPR proceedings.

    Implications for Patent Holders and Tech Companies

    The two 2025 Federal Circuit rulings offer several key lessons for companies engaged in patent litigation, particularly in the tech sector:

    1. Strengthen Patent Drafting & Prosecution – Ensure patents are clearly distinct from prior art to withstand obviousness challenges.
    2. Raise Procedural Challenges Early – Issues like IPR estoppel and standing must be raised at the PTAB stage, not for the first time on appeal.
    3. Be Strategic About IPRs – Defendants should carefully assess prior art before filing an IPR to maximize their chances of invalidation.

    With the continued expansion of gesture-based and optical-sensing technology, these cases serve as important precedents in software and hardware patent disputes.

    Final Thoughts: A Consistent Approach to Patent Challenges

    The January and March 2025 decisions together paint a clear picture:

    • The Federal Circuit remains deferential to PTAB findings, particularly in IPR proceedings.
    • Courts continue to take a rigorous approach to obviousness analysis, ensuring that patents covering well-known technologies do not survive merely due to clever claim drafting.
    • Expired patents remain vulnerable to challenges under IPR, reinforcing the importance of early and thorough patent prosecution strategies.

    As the tech industry continues to develop new gesture-based and camera-driven input systems, these rulings may have far-reaching consequences for how such patents are drafted, enforced, and challenged in the future.

    By Charles Gideon Korrell

  • Platinum Optics v. Viavi: Dismissal of Appeal for Lack of Standing Despite Prior Infringement Disputes

    In Platinum Optics Technology Inc. v. Viavi Solutions Inc., No. 23-1227 (Fed. Cir. Aug. 16, 2024), the Federal Circuit dismissed an appeal from an inter partes review (IPR) decision for lack of Article III standing. The court declined to reach the merits of the Patent Trial and Appeal Board’s (PTAB) decision upholding the validity of Viavi’s U.S. Patent No. 9,354,369, which claims optical filters using hydrogenated silicon with precise optical properties.

    Background

    Viavi’s ’369 patent claims a hydrogenated silicon material with a high refractive index (n > 3) and low extinction coefficient (k < 0.0005) over a wavelength range of 800–1100 nm—properties touted as enhancing optical filter performance. Platinum Optics Technology Inc. (PTOT) challenged the claims in an IPR, arguing obviousness based on prior art including Pilgrim, Gibbons, Lairson, and Yoda. The PTAB disagreed, concluding that the specific combination of optical properties was not taught or suggested in the cited references and would have required significant experimentation without an expectation of success.

    Following this defeat, PTOT sought Federal Circuit review—but was met with a standing challenge.

    No Injury, No Standing

    The court reiterated that unlike participation before the PTAB, appeal to the Federal Circuit requires Article III standing. Relying on Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992), Spokeo, Inc. v. Robins, 578 U.S. 330 (2016), and Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168 (Fed. Cir. 2017), the panel emphasized the need for a “concrete and particularized” injury.

    PTOT cited two bases for standing: (1) continued distribution of the same products previously accused of infringing the ’369 patent, and (2) development of new optical filters. But the infringement claims involving the ’369 patent had been dismissed with prejudice in earlier district court actions (Viavi I and Viavi II), foreclosing future liability from those suits. Citing Apple Inc. v. Qualcomm Inc., 992 F.3d 1378 (Fed. Cir. 2021), and Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d 1329 (Fed. Cir. 2008), the court held that PTOT’s speculation about the risk of future litigation did not amount to a substantial risk of infringement or a threat sufficient to establish standing.

    As to the new products under development, the court found the supporting declaration from PTOT’s executive vague and conclusory. Following JTEKT Corp. v. GKN Auto. LTD., 898 F.3d 1217 (Fed. Cir. 2018), and Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC, 85 F.4th 1377 (Fed. Cir. 2023), the court explained that declarations lacking specific technical detail or concrete plans cannot support a finding of injury in fact.

    Key Takeaways

    • A history of litigation—without more—does not establish standing to appeal an IPR decision, particularly where infringement claims have been dismissed with prejudice.
    • General assertions about ongoing product development are insufficient. Concrete, detailed plans and a plausible risk of suit are necessary to satisfy Article III.
    • PTOT’s inability to cross the standing threshold means the Federal Circuit left undisturbed the PTAB’s substantive finding that the ’369 patent was not shown to be obvious over the prior art.

    While the technical validity of Viavi’s patent remains intact, Platinum Optics underscores a strategic pitfall for petitioners: an IPR loss cannot always be appealed, even after contentious district court litigation. Petitioners should consider standing implications early—especially if litigation history may later undercut injury arguments on appeal.

    By Charles Gideon Korrell