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The smoke has cleared – and so has your invalidity defense

by | Sep 25, 2025 | ,

The US District Court for the Northern District of Iowa issued an instructive decision clarifying the scope of statutory estoppel under the Leahy-Smith America Invents Act (AIA) following post-grant review (PGR) proceedings before the Patent Trial & Appeal Board. Intirion Corp. v. College Products, Inc., Case No. 23-cv-4023-CJW-KEM (N.D. Iowa Sept. 16, 2025) (Williams, J.)

Intirion brought a patent infringement suit against College Products, which responded by petitioning the Board for PGR, challenging the patents based on obviousness and indefiniteness. While the PGR was pending, the district court proceeded with claim construction and initially found the terms “level of smoke,” “amount of smoke,” and “dangerous condition” indefinite. Intirion moved for reconsideration, and College Products filed a motion for partial summary judgment asserting invalidity. Intirion also sought a stay of the litigation pending the PGR outcome, which the court granted.

The Board instituted review of all claims. Initially, it found that neither party had requested express construction of any terms and adopted Intirion’s interpretation that “level of smoke” and “amount of smoke” meant “merely detecting smoke,” based on Intirion’s representations in the district court. In its final written decision (FWD), the Board acknowledged the district court’s indefiniteness findings but ultimately adopted the plain and ordinary meaning of the terms, concluding that a person of ordinary skill in the art could determine appropriate thresholds using known methods. Expert testimony persuaded the Board that defining the terms by their function was sufficiently definite under patent law.

After the Board upheld the claims, the district court found that College Products was estopped under 35 U.S.C. §325(e)(2) from asserting any invalidity grounds (including indefiniteness and obviousness) that were or reasonably could have been raised during the PGR. The district court explained that the AIA established a streamlined system allowing third parties to challenge the patentability of issued claims before the Board as a quicker and more cost-effective alternative to litigation. This structure is specifically designed to prevent challengers from getting multiple bites at the apple by raising the same or similar arguments in subsequent court proceedings.

College Products argued that estoppel should not apply because it filed its motion for partial summary judgment before the Board issued its FWD. The district court rejected this argument, explaining that the statutory language provides no exception based on timing and imposes a clear bar once the Board has issued a FWD. The district court also found that College Products’ position was inconsistent with applicable case law and noted that it failed to cite any contrary authority.

The district court further explained that it had intentionally deferred ruling on College Products’ motion for partial summary judgment of invalidity pending the outcome of the PGR proceedings. Once the PTAB issued its FWDs, College Products was estopped from further challenging the validity of the patents, including through its pending summary judgment motion, because it could have raised any such indefiniteness arguments during the PGR process.

Practice note: Unlike inter partes review (IPR), during PGR a petitioner can challenge patentability on grounds [...]

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Derivation proceedings highlight race to file under AIA

by | Sep 11, 2025 | ,

In one of the first decisions regarding derivation proceedings under the America Invents Act (AIA), the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that an application earlier filer had not derived his claimed invention from a later-filing petitioner. Global Health Solutions, LLC v. Marc Selner, Case No. 2023-2009 (Fed. Cir. Aug. 26, 2025) (Stoll, Stark, JJ.) (Goldberg, J., sitting by designation).

Global Health Solutions (GHS) and Marc Selner filed patent applications governed by the AIA and covering similar subject matter. Selner filed his application first. GHS filed a petition to institute derivation under 35 U.S.C. § 135, alleging that Selner’s patent claims were derived from Burnam, the single inventor on the GHS application.

During Board proceedings, the parties submitted evidence regarding the timing of their respective conceptions of the claimed inventions, including several email communications. Based on Selner’s evidence, the Board determined that he could not have derived the claimed invention from Burnam. The Board also rejected GHS’s argument that actual reduction to practice was necessary to complete conception of the claimed invention. GHS appealed.

The Federal Circuit explained that while pre-AIA patent interference proceedings required a party alleging derivation to establish prior conception and communication of the invention to the opposing party, the AIA does not expressly define the evidentiary requirements for derivation petitions. Nevertheless, the Court, borrowing from its interference jurisprudence, reasoned that an AIA derivation proceeding similarly requires a showing of both conception and communication of the claimed invention. The Court emphasized, however, that standards articulated in case law from pre-AIA interference proceedings must be applied with caution and considered in light of the AIA’s distinct statutory framework.

The Federal Circuit determined that although the Board focused on which party had proof of the earliest conception (typically the dispositive issue in interference proceedings), it was harmless error. Under the AIA first-to-file framework, determination of the first to invent is not dispositive. The Court noted that because Selner was first to file, he only needed to show that his conception was independent of Burnam’s. Here, Selner’s proof of earlier conception was also proof of conception independent of Burnam, the Court noted.

The Federal Circuit also determined that the Board did not err in rejecting GHS’s argument that Selner failed to demonstrate invention in the absence of evidence of actual reduction to practice. The Court found that the Board appropriately addressed whether such a requirement (often applied in interference proceedings to complicated, unpredictable technology) applied to the invention at issue. The Court explained that Selner’s conception was complete either when he could define the invention by its method of preparation or when he had formed a definite and permanent idea of the complete and operative invention. Selner’s earlier email communication to Burnam supported the finding that Selner had reached the requisite understanding to establish complete conception without the need for actual reduction to practice. Accordingly, the Court affirmed the Board’s decision in favor of Selner, finding no derivation.

Practice note: [...]

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Dim damages methods can doom bright ideas

by | Aug 7, 2025 |

In a mixed ruling on evidentiary exclusions and damages methodology, the US Court of Appeals for the Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded a district court’s decision that excluded patent validity evidence and granted judgment as a matter of law (JMOL). The Federal Circuit found that the district court erred in blocking the defendant’s invalidity case and directed it to reassess the reliability of the damages expert’s testimony under Rule 702. Jiaxing Super Lighting Co., Ltd. v. CH Lighting Technology Co., Ltd., Case No. 23-1715 (Fed. Cir. July 28, 2025) (Dyk, Chen, Hughes, JJ.)

Jiaxing Super Lighting and its affiliate Obert (collectively, Super Lighting) sued CH Lighting over three patents related to LED tube lamps – two covering structural designs and one addressing electrical safety. CH Lighting admitted infringement but argued that the structural patents were invalid under the America Invents Act’s (AIA) on-sale bar. The district court excluded key evidence, found the remaining expert testimony insufficient, and granted JMOL in Super Lighting’s favor. A jury later found CH Lighting liable and awarded damages, which the district court doubled. CH Lighting’s motions for a new trial and renewed JMOL were denied. CH appealed.

CH Lighting contended that certain 2014 LED tubes met all claim limitations and triggered the on-sale bar. The Federal Circuit disagreed, affirming the district court’s finding that CH Lighting’s expert lacked a proper foundation, having offered no concrete evidence or personal knowledge of the alleged sales. However, the Court found error in the exclusion of two key evidentiary items: testimony authenticating sales documents and an internal presentation showing competitor products predating the patents. The district court excluded the documents for lack of authentication and barred the presentation because of its connection to a dropped inequitable conduct claim, later reasoning that the products shown differed in wattage. The Federal Circuit rejected both rationales, explaining that the relevant inquiry focused on whether the products disclosed patented features, not their wattage. The Federal Circuit deemed these exclusions an abuse of discretion, warranting a retrial on validity.

The Federal Circuit separately upheld the jury’s findings on a different patent where the jury found the patent not invalid for anticipation and infringed. CH Lighting had argued that a prior art reference anticipated the asserted claims and that the accused chips could not infringe if the reference did not. The Court found, based on the conflicting testimony of the parties’ expert witnesses, that the jury was free to credit one expert over the other and therefore had substantial evidence supporting the jury’s no invalidity verdict. Similarly, the parties’ experts presented conflicting evidence on infringement and that Jiaxing’s expert’s theory was not necessarily inconsistent with the validity ruling. The Court thus affirmed the findings of validity and infringement.

Turning to damages, the Federal Circuit emphasized that expert testimony must be based on reliable methodology and sufficient factual grounding, reinforcing standards articulated in the recent EcoFactor, Inc. v. Google en banc decision. Because the jury [...]

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It’s not monkey business: NFTs can be trademarked

by | Jul 31, 2025 |

The US Court of Appeals for the Ninth Circuit concluded that a non-fungible token (NFT) is a “good” under the Lanham Act but reversed the district court’s grant of summary judgment for trademark infringement because the owner did not prove as a matter of law that the defendants’ use was likely to cause confusion. The Ninth Circuit also affirmed the district court’s dismissal of the defendants’ counterclaim for declaratory relief regarding copyright ownership. Yuga Labs, Inc. v. Ryder Ripps and Jeremy Cahen, Case No. 24-879 (9th Cir. July 23, 2025) (Bade, Forrest, Curiel, JJ.)

Yuga Labs is the creator of the Bored Ape Yacht Club (BAYC) NFT collection. Yuga created this collection through a smart contract recorded on the blockchain Ethereum. Each BAYC NFT has a cartoon of a bored ape and a sequential unique identifier called an ape ID. Per its terms and conditions, BAYC NFT consumers receive commercial and personal rights free of royalty fees.

Ryder Ripps and Jermey Cahen created the Ryder Ripps Bored Ape Yacht Club (RR/BAYC) using the same ape images and ape IDs. The collection was also hosted on an Ethereum blockchain smart contract. They criticized Yuga for “using neo-Nazi symbolism, alt-right dog whistles, and racist imagery” and alleged that they created RR/BAYC as satire and criticism. Ripps made the RR/BAYC smart contracts’ names “Bored Ape Yacht Club” and made the smart contract symbol “BAYC.” Ripps’ website includes an artist statement that the artwork is a “new mint of BAYC imagery.” NFT marketplace websites for RR/BAYC displayed a large header “Bored Ape Yacht Club” and in a smaller text “@ryder_ripps.”

Yuga sued Ripps and Cahen for several claims, including trademark infringement based on a false designation of origin theory, false advertising, and cybersquatting. In response, the defendants asserted that Yuga did not have enforceable trademark rights, and even if it did, the defendants’ use was protected by fair use and the First Amendment. The defendants asserted several counterclaims, including knowing misrepresentation of infringing activity under the Digital Millenium Copyright Act (DMCA), and sought declaratory judgment of no copyright ownership.

The district court granted Yuga’s motion for summary judgment on its false designation of origin and cybersquatting claims. Yuga withdrew its remaining claims, so the trial proceeded only for equitable remedies on the false designation of origin and cybersquatting. At trial, the district court found that Yuga’s BAYC marks were unregistered trademarks. The district court awarded Yuga disgorgement of the defendants’ profits, maximum statutory damages, and attorneys’ fees after finding that the case was exceptional due to the defendants’ willful infringement, bad faith intent to profit, and litigation conduct. The defendants were also permanently enjoined. The defendants appealed the grant of summary judgment and sought vacatur of the remedies.

The Ninth Circuit first addressed the defendants’ argument that NFTs are not goods protected by the Lanham Act. The Court concluded that NFTs are goods under the Lanham Act based on a US Patent & Trademark Office report that determined them as such. The Court also [...]

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Victory lap: Extraterritorial injunction permitted for breach of settlement agreement

by | Jul 24, 2025 |

The US Court of Appeals for the Fourth Circuit upheld a permanent injunction, concluding that the district court properly determined that a party’s violation of a settlement agreement would lead to irreparable harm. Wudi Industrial (Shanghai) Co., Ltd. v. Wong, Case No. 24-1186 (4th Cir. July 11, 2025) (King, Gregory, Rushing, JJ.)

The dispute originated in 2017 when Wudi registered the trademark GTRACING with the US Patent & Trademark Office. Wai L. Wong, asserting prior use of the similar mark GT OMEGA RACING, initiated cancellation proceedings before the Trademark Trial & Appeal Board. In 2020, the Board ruled in Wong’s favor. Wudi sought review in the Eastern District of Virginia under 15 U.S.C. § 1071(b), and Wong counterclaimed for trademark infringement.

In May 2021, the parties entered into a confidential global concurrent-use settlement agreement resolving their litigation. Under the agreement, Wudi was permitted to use GTRACING globally, except in designated regions including multiple European countries. Critically, paragraph 6(b) of the agreement prohibited Wudi from using the phrases “GTRACING” or “GT RACING” in online advertising or social media within the European carve-out. The district court subsequently granted a stay of the dispute pending compliance by the parties.

Following the compliance period, Wong alleged that Wudi violated the agreement by using prohibited terms in online marketing within the restricted regions. The district court granted Wong’s motion to enforce the agreement, ordering Wudi to remove specific content and cease future violations. The district court warned that continued noncompliance could result in contempt proceedings.

Wudi appealed, and the Fourth Circuit initially remanded the case, instructing the district court to apply the four-factor eBay test for injunctive relief. The district court found that Wudi had breached the agreement and that Wong had suffered irreparable harm to the goodwill of its marks. The court concluded that monetary damages were inadequate, the balance of hardships favored Wong, and enforcing the agreement served the public interest. The district court issued a permanent injunction. Wudi appealed again.

Wudi challenged the injunction on multiple grounds, including claims of extraterritorial overreach, improper application of the eBay factors, erroneous breach findings, exclusion of parol evidence, failure to apply the unclean hands doctrine, and improper award of attorneys’ fees.

The Fourth Circuit rejected Wudi’s arguments and affirmed the district court’s ruling. The Court held that the injunction merely enforced contractual obligations voluntarily undertaken by Wudi and that the district court properly applied the eBay test. The Court also found no abuse of discretion in the district court’s exclusion of parol evidence and its rejection of the unclean hands defense, finding that the district court properly concluded that reputational harm can demonstrate that irreparable injury will flow from the breach of a trademark-related settlement agreement.



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Motivation, expectation of success negate obviousness presumption in overlapping range case

by | Jul 17, 2025 |

The US Court of Appeals for the Federal Circuit affirmed (on its second review) a district court’s ruling upholding the validity of patent claims related to a long-acting injectable dosing regimen, finding that the presumption of obviousness does not apply automatically and must be grounded in specific factual findings, particularly regarding a skilled artisan’s motivation and expectations. Janssen Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA, Inc., Case No. 25-1228 (Fed. Cir. July 8, 2025) (Prost, Reyna, Taranto, JJ.)

Janssen sued Teva under the Hatch-Waxman Act in 2018 after Teva filed an abbreviated new drug application (ANDA) seeking approval for a generic version of Janssen’s drug. Teva stipulated infringement but challenged the patent’s validity, arguing that all claims were obvious in light of prior art. The patent at issue covered a dosing regimen involving two “loading doses” spaced about a week apart, followed by monthly maintenance injections, designed to improve patient compliance compared to traditional oral dosing.

In 2021, the district court rejected Teva’s obviousness arguments, citing key differences between the claims and prior art, including the specific dosage amounts, the sequence of administration, and the requirement for deltoid injections. In 2024, the Federal Circuit initially vacated that decision and remanded for further analysis. On remand, the district court again found the claims nonobvious, and Teva appealed again.

A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. Teva argued that a presumption of obviousness should apply because the prior art disclosed equal loading doses (150 or 100 mg-eq) within the claimed range. The Federal Circuit disagreed, emphasizing that the presumption depends on factual premises (such as a skilled artisan’s motivation to optimize and expectations from routine experimentation), which were not met here. The Court noted that Janssen’s specific choice of a higher first dose followed by a lower second dose did not clearly fall within the presumption’s scope.

Turning to the obviousness analysis, the Federal Circuit found that the three primary prior art references did not disclose a loading-dose regimen. Teva’s additional references, which it claimed taught dose reduction strategies, were also deemed insufficient. The Court found that one expert cited a reference recommending a high first dose for acutely ill patients while another noted that long-acting injectables were not typically used for such patients. The Court found that the prior art taken as a whole undermined Teva’s position.

Teva further contended that the district court improperly considered safety and efficacy (factors not recited in the claims) and erred in finding that the multidose regimen added complexity that would discourage a skilled artisan. The Federal Circuit rejected these arguments, affirming that the district court appropriately considered the motivation to develop a safe and effective regimen and correctly found that the prior art lacked relevant safety or efficacy data for multidose approaches.



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Prosecution history primacy: “Consisting essentially of” means what applicant said it meant

by | Jul 10, 2025 | ,

In a decision that underscores the primacy of prosecution history to determine claim scope, the US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s interpretation of the transitional phrase “consisting essentially of,” holding that the patentee’s actions during prosecution narrowed the claims beyond the conventional construction. Eye Therapies, LLC v. Slayback Pharma, LLC, Case No. 23-2173 (Fed. Cir. June 30, 2025) (Scarsi, Dist. J., by designation; Taranto, Stoll, JJ.)

The case involved a method for reducing eye redness using low concentrations of brimonidine, a vasoconstrictive compound. Eye Therapies owns a patent that claims methods of administering brimonidine “consisting essentially of” the active ingredient. During inter partes review (IPR), the Board applied the typical construction of that transitional phrase, allowing for the presence of other active agents as long as they did not materially affect the invention’s basic and novel properties. Based on that reading, the Board found the claims obvious over prior art references that disclosed brimonidine in combination with other drugs. On appeal, Eye Therapies argued that the Board’s construction was too broad and inconsistent with the prosecution history.

The Federal Circuit agreed. Although “consisting essentially of” is generally understood to permit unlisted ingredients that don’t materially affect the invention, the Court emphasized that this meaning can be overridden by the intrinsic record. In this case, the applicant amended the claims to avoid prior art and repeatedly argued that the invention involved only brimonidine, with no other active agents. During the original prosecution, the examiner allowed the claims on that basis. The Court found these statements to be definitional, particularly in light of the applicant’s use of “i.e.” to equate the claim language with a brimonidine-only method. Given the clarity and consistency of the applicant’s position, the Court concluded that the prosecution history required a narrower reading than the one the Board used based on the phrase’s conventional meaning.

The Federal Circuit acknowledged that the patent specification disclosed embodiments containing additional active agents. That alone, however, did not justify a broader construction. The narrowing amendment came after the specification was drafted, and the Court reiterated that not every embodiment must fall within the scope of the claims, particularly when the claims have been narrowed during prosecution. The Court also noted that other embodiments in the specification were fully consistent with the narrower interpretation. Taken together, these factors reinforced the conclusion that the applicant’s prosecution statements – not the broader illustrative disclosures – defined the proper scope of the claims.

The Federal Circuit distinguished its 2009 decision in Ecolab v. FMC, where it declined to apply prosecution history disclaimer despite similar language. In Ecolab, the patentee initially stated that peracetic acid was the “sole antimicrobial agent,” but the examiner clarified that “consisting essentially of” did not mean “solely.” The applicant never repeated the statement and secured allowance on other grounds. The specification in Ecolab also described compositions that included other known antimicrobial agents, which supported the broader interpretation. In contrast, the applicant here amended the claims, consistently [...]

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Seeing double? Director instructs Board to resolve claim construction pre-institution

by | Jul 2, 2025 |

The acting director of the US Patent & Trademark Office (PTO) vacated and remanded a Patent Trial & Appeal Board decision to institute two inter partes review (IPR) petitions that challenged the same claims. The acting director determined that the two petitions primarily differed with respect to claim construction. In a decision designated as “informative,” he authorized the Board to resolve claim construction pre-institution in view of the Consolidated Trial Practice Guide’s (CTPG) direction that “one petition should be sufficient to challenge the claims of a patent in most situations.” CrowdStrike, Inc. v. GoSecure, Inc., IPR2025-00068; -00070 (PTAB June 25, 2025) (Stewart, Act. Dir.) The PTO designates a decision as informative when it provides “norms on recurring issues, guidance on issues of first impression to the Board, guidance on Board rules and practices, and guidance on issues that may develop through analysis of recurring issues in many cases.”

CrowdStrike submitted two IPR petitions that challenged the same claims of GoSecure’s patent. The Board instituted both IPRs. GoSecure requested director review, asserting that instituting both petitions was an abuse of the Board’s discretion. On review, the acting director determined that the Board abused its discretion in view of the CTPG’s direction.

The acting director concluded that the two petitions did not reflect an exception to the CTPG’s direction. He determined that CrowdStrike’s petitions were primarily distinguished by the constructions applied to a claim term. The acting director explained that the Board should have construed the term at issue prior to granting institution, concluding that the Board’s institution decision amounted to improper expansion of CrowdStrike’s permitted word count and placed a substantial and unnecessary burden on the Board and GoSecure that could raise fairness, timing, and efficiency concerns. The acting director vacated and remanded the Board’s institution decision.

The acting director also instructed the Board that the patent owner should be allowed to “submit whatever arguments are necessary for the panel to make a claim construction determination” even if the patent owner has not addressed the issue.



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CRISPR Clarity: Enablement Is Analyzed Differently Under §§ 102 and 112

by | Jun 18, 2025 | ,

In a decision underscoring the distinct standards governing enablement under §§ 102 and 112, the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that a prior art reference was enabling for purposes of anticipation, even in the absence of working examples. Agilent Technologies, Inc. v. Synthego Corp., Case Nos. 23-2186; -2187 (Fed. Cir. June 11, 2025) (Prost, Linn, Reyna, JJ.)

The case centers on CRISPR, the gene-editing technology that has reshaped the frontiers of biology and biotechnology. Agilent owns patents that claim chemically modified guide RNAs (gRNAs) designed to improve stability and performance in CRISPR-Cas systems. Synthego filed an inter partes review (IPR) petition asserting that the patents were unpatentable. The Board found all claims unpatentable, relying on a 2014 publication by Pioneer Hi-Bred that disclosed similar modified gRNAs. Agilent appealed.

Agilent challenged the Board’s finding that the prior art was enabling, arguing that Pioneer Hi-Bred merely proposed a research plan without demonstrating which specific modifications would yield functional gRNAs. Agilent emphasized that the reference lacked working examples and disclosed numerous nonfunctional sequences, contending that a skilled artisan would not have been able to identify a successful embodiment without undue experimentation. It also argued that the nascent state of CRISPR technology in 2014 compounded the unpredictability, making the reference non-enabling. In support, Agilent relied heavily on the Supreme Court’s 2023 decision in Amgen v. Sanofi, where the Supreme Court invalidated a broad genus claim for failing to enable its full scope.

The Federal Circuit was not persuaded. The Court drew a clear distinction between enablement under § 112 (which governs patent validity) and enablement under § 102 (which governs anticipation). The Court explained that the bar is lower for the latter, and that a prior art reference need only enable a single embodiment within the scope of the claim. While Amgen involved § 112, the Court emphasized that this case turned on § 102, where the standard is less demanding.

The Federal Circuit grounded this distinction in both the statutory text and the underlying purpose of the respective provisions. Statutorily, § 112 requires that a patent specification enable a person of ordinary skill in the art to “make and use” the invention. Section 102, by contrast, contains no such requirement. This divergence reflects a difference in purpose: § 112 ensures that the patentee does not claim more than they have taught, thereby preventing overbroad monopolies. As the Supreme Court explained in Amgen, “[t]he more a party claims, the broader the monopoly it demands, the more it must enable.” But the Federal Circuit emphasized that the Supreme Court’s reasoning in Amgen was rooted in the patentee’s burden to support the full scope of a genus claim under § 112. That concern, the Court explained, does not apply in the § 102 context, where the question is not how much the prior art claims, but whether it teaches enough for a skilled artisan to practice at least one embodiment without undue [...]

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X-Ray Vision: Court Sees Through Implicit Claim Construction

by | Jun 5, 2025 |

The US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s final determination that challenged patent claims were not unpatentable, finding that the Board’s decision relied on an erroneous implicit claim construction. Sigray, Inc. v. Carl Zeiss X-Ray Microscopy, Inc., Case No. 23-2211 (Fed. Cir. May 23, 2025) (Dyk, Prost, JJ.; Goldberg, Chief Distr. J., sitting by designation).

Zeiss owns a patent related to X-ray imaging systems that incorporate projection magnification. Sigray filed a petition requesting inter partes review (IPR) of all claims in the patent. After institution, the Board issued its final written decision, which declined to hold any of the challenged claims unpatentable. Sigray appealed.

On appeal, Sigray argued that the claims were unpatentable based on a single prior art reference, Jorgensen. The Jorgensen reference “describes a system that uses an X-ray source to generate an X-ray beam, which then passes through a sample before being received by a detector.” Sigray argued that Jorgensen anticipated or rendered the challenged claims obvious. The parties agreed that Jorgensen explicitly disclosed all the limitations of the independent claim except for one reading “a magnification of the projection X ray stage . . . between 1 and 10 times.”

The parties’ arguments centered on whether the magnification limitation was inherently disclosed in Jorgensen. The Board concluded that “viewing the record as a whole, . . . [Sigray] has not shown persuasively that Jorgensen inherently discloses projection magnification within the claimed range. Sigray argued, and the Federal Circuit agreed, that the Board’s findings incorrectly relied on a flawed understanding of the claimed range. In Sigray’s view, “the Board implicitly and incorrectly construed the limitation ‘between 1 and 10’ to exclude unspecified, small divergence resulting in projection magnifications only slightly greater than 1.” This was illustrated by the Board’s determination that Sigray “failed to show that the . . . X-ray beam in Jorgensen diverges enough to result in projection magnification between 1 and 10 times.”

The Federal Circuit found that the Board’s use of the term “enough” indicated that the evidence it relied on supported a finding of some divergence in the X-ray beams. Because the beams were not completely parallel, the Court reasoned that some magnification necessarily resulted, and that even a miniscule amount (as disclosed in the prior art) fell within the claimed magnification range of 1 to 10. Since the Board made only one evidence-supported finding relevant to anticipation, the Court reversed on the independent claim and two dependent claims without remand. However, the Court remanded the case to the Board to determine whether the three remaining challenged claims, which recited further material limitations, would have been obvious.



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