IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
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We’ve got standards: No issue preclusion for facts that must be proven under higher standard

by | Oct 23, 2025 |

The US Court of Appeals for the Federal Circuit vacated a summary judgment finding claims invalid, on grounds that the district court erred in applying issue preclusion based on factual findings in an inter partes review (IPR) that held other claims invalid. Inland Diamond Products Co. v. Cherry Optical Inc., Case No. 24-1106 (Fed. Cir. Oct. 15, 2025) (Prost, Reyna, Chen, JJ.)

In 2020, Inland Diamond filed a patent infringement suit against Cherry Optical asserting dependent claims of two patents. A year prior, in 2019, the Patent Trial & Appeal Board had determined that the independent claims on which the asserted dependent claims depended were unpatentable in two IPRs. During these 2019 IPRs, the Board determined that the claims now asserted at the district court were not unpatentable. The Board decision was not appealed.

The district court granted Cherry’s motion for summary judgment that the asserted claims were invalid for obviousness. The district court concluded that issue preclusion applied, so Cherry did not have to perform an independent invalidity analysis for limitations of what the district court termed unpatentable claims contained in the asserted claims. The district court’s analysis focused on limitations added by the asserted claims. The district court permitted Inland to defend the asserted claims’ validity because those claims had been adjudicated as not unpatentable in the 2019 IPRs.

Relying on issue preclusion and Cherry’s asserted prior art, the district court granted summary judgment that the asserted claims were invalid for obviousness. Inland appealed.

The Federal Circuit reversed, explaining that the district court erred in applying issue preclusion based on two 2024 decisions, ParkerVision and Kroy. In both decisions, the Federal Circuit reversed the district court’s holding for erroneous application of issue preclusion based on the Board’s factual findings. The Federal Circuit explained that facts proven under the Board’s then-lower standard of proof for unpatentability (preponderance of the evidence) cannot have issue-preclusive effects under the district court’s clear and convincing standard. The Federal Circuit distinguished cases where a claim has already been found unpatentable or invalid; in those situations, issue preclusion bars the assertion of those claims.

Applying this principle, the Federal Circuit reasoned that since the prevailing standard of proof for challenging patentability in 2019 in an IPR was lower and Inland’s asserted claims had never been determined invalid or unpatentable, the district court erred in giving issue-preclusive effect to the Board’s 2019 findings. To grant summary judgment, a district court must find that the patent challenger carried its burden under the clear and convincing standard separate from the Board’s factual findings. The Federal Circuit noted that to meet the higher standard, the evidence may be the same or similar to the evidence that led the Board to find that certain claims were unpatentable by a preponderance of the evidence.



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Associational standing requires concrete, non-speculative harm

by | Oct 16, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a district court decision dismissing a lawsuit against the United States Patent and Trademark Office (USPTO) for lack of associational standing since no member of the association had standing to sue. US Inventor, Inc. v. United States Patent and Trademark Office, Case No. 24-1396 (Fed. Cir. Oct. 3, 2025) (Lourie, Reyna, Stark, JJ.)

US Inventor and National Small Business United (collectively, the plaintiffs) jointly filed a petition for rulemaking at the USPTO to amend the regulations that control the USPTO’s discretion to institute inter partes review (IPR) or post-grant review (PGR) proceedings. The plaintiffs proposed five instances in which the USPTO would have no discretion to institute an IPR or PGR. Separately, the USPTO issued a request for public comments regarding institution discretion two months after the plaintiffs filed their petition.

Eventually, the USPTO denied the petition, citing redundancy with the request for public comment. The USPTO assured the plaintiffs that their request would be considered as a public comment.

In response, the plaintiffs filed a complaint in federal court claiming that the USPTO had committed three errors:

  • The USPTO’s assurance that the plaintiffs’ requests would be considered “in unspecified ‘future rulemaking’” violated its duty to conclude the matter in an appropriate amount of time, as required by the Administrative Procedure Act (APA).
  • Under the APA, the USPTO failed to state adequate grounds for denial.
  • The USPTO violated the America Invents Act (AIA) by “fail[ing] to promulgate notice-and-comment rulemaking.”

The USPTO filed a motion to dismiss, arguing that the plaintiffs lacked standing. The district court granted the motion, finding that the plaintiffs had neither organizational nor associational standing. The plaintiffs appealed.

Because the issue of associational standing was not specific to patent law, the Federal Circuit applied the law of the US Circuit Court for the District of Columbia, which reviews standing de novo.

Of the three requirements for associational standing (standing of at least one associational member, applicability of the issue to the association’s purposes, and individual member participation not required for the claim or relief), only the first was at issue.

The Federal Circuit concluded that since no member of the plaintiffs’ organizations had standing to sue, the plaintiffs themselves did not have associational standing. The Court noted that the plaintiffs had failed to claim anything more than speculative harm to any member resulting from the USPTO’s denial of plaintiffs’ petition. The Court found the “risk” of patent cancellation during an IPR or PGR proceeding insufficiently “actual or imminent” to afford any member standing to sue.

The Federal Circuit explained that a requisite third-party action outside of the plaintiffs’ control would need to occur before any harm to the plaintiffs’ members could be concretely realized. Third-party actions, including the filing of a petition for an IPR or PGR proceeding, the USPTO’s institution of such proceeding, and the USPTO’s ultimate decision in such proceeding, constitute multiple steps in the chain of events that might result in harm [...]

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Damages? Apportionment among licensed properties is essential, $10 million award reduced to $1

by | Oct 9, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a district court decision excluding a damages expert’s testimony and reducing a jury’s $10 million damages award to nominal damages. The Court found that the plaintiff failed to put forth evidence from which a jury could reasonably determine damages without speculation. Rex Medical, L.P. v. Intuitive Surgical, Inc., Intuitive Surgical Operations, Inc., Intuitive Surgical Holdings, LLC, Case No. 24-1342 (Fed. Cir. Sept. 8, 2025) (Dyk, Prost, Stoll JJ.)

Rex Medical sued Intuitive for patent infringement. Initially, Rex asserted two related patents directed to systems for stapling tissue during surgery. Intuitive filed a petition for inter partes review (IPR) against one of the patents, and Rex withdrew it from the case.

Rex’s damages expert then opined that a hypothetical negotiation for a license to the remaining patent would have resulted in a $20 million payment. As support, he cited a prior settlement agreement between Rex and Covidien in which Rex asserted both patents before dropping the remaining asserted patent here from that case. Rex and Covidien ultimately settled, with Covidien paying $10 million to license both of the originally asserted patents alongside “eight other U.S. patents, seven U.S. patent applications and nineteen patents or applications from countries outside the United States.”

Intuitive moved to preclude Rex’s expert’s testimony regarding the Covidien license, and the district court granted the motion. Nonetheless, the jury returned an infringement verdict and granted $10 million in damages. Intuitive filed a renewed motion for judgment as a matter of law (JMOL). The district court denied the motion with respect to infringement and validity, but agreed on damages, reducing the award to $1. Rex appealed, challenging the exclusion of its expert’s testimony and the reduction of the damages award.

The Federal Circuit first addressed the exclusion of the expert testimony, reviewing for abuse of discretion. The Court noted that “[w]hen relying on comparable licenses to prove a reasonable royalty, we require a party to ‘account for differences in the technologies and economic circumstances of the contracting parties.’” The district court had held that Rex’s expert failed to adequately address the extent to which the patent dropped from this case and other patents included in the Covidien license contributed to the value of the license. As the Federal Circuit explained, the expert did not allocate the payment between the licensed patents and applications. Thus, the Federal Circuit ruled that the district court did not err in excluding the testimony.

Second, the Federal Circuit addressed the reduction in damages. Rex argued, and the Court agreed, that the reduction was in essence a grant of JMOL of no damages. The Court reviewed for abuse of discretion and described how, at trial, Rex relied primarily on the Covidien license and lay witness testimony to prove damages. While the lay witness testified that the focus of the Covidien license was both of the patents originally asserted here, the Court noted that the patent remaining at issue in this case had been dropped from [...]

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What we have here is a failure to communicate: Expert must map all claim limitations to the accused infringement

by | Oct 2, 2025 |

The US Court of Appeals for the Federal Circuit reversed jury verdicts of infringement, finding that they were not supported by substantial evidence because of deficiencies in the patent owner’s expert testimony. Finesse Wireless LLC v. AT&T Mobility LLC, Case No. 2025 WL 2713518 (Fed. Cir. Sept. 24, 2025) (Moore, C.J.; Linn, Cunningham, JJ.)

AT&T Mobility was accused of infringing two patents owned by Finesse Wireless, both directed to methods for mitigating intermodulation product interference in radios. The accused technology involved Nokia radios implementing passive intermodulation (PIM) cancellation. Nokia intervened in the case. A jury found all asserted claims valid and infringed, awarding Finesse more than $166 million in lump sum damages. AT&T and Nokia moved for judgment as a matter of law (JMOL) on both noninfringement and the damages award, and alternatively sought a new trial. The district court denied the motions. AT&T and Nokia appealed.

The Federal Circuit reversed the district court’s denial of JMOL on noninfringement and vacated the damages award, concluding that the jury verdicts were not supported by substantial evidence. The Court’s decision turned largely on shortcomings in the testimony of Finesse’s infringement expert, whose analysis was the sole basis for Finesse’s infringement case.

For the first patent, the Federal Circuit found that Finesse’s expert failed to demonstrate that Nokia’s PIM cancellation feature received all input signals required by the asserted claims. The expert relied on a Nokia diagram but misinterpreted it by mistakenly identifying a signal generated by the radio as one of the required input signals. Although the expert was made aware of the error, he did not clearly correct his position or identify alternative signals that satisfied the claim limitation. Finesse argued that the expert had corrected a “misimpression,” but the Court disagreed, finding that the expert failed to provide a clear and consistent explanation reconciling his contradictory positions.

The asserted claims of the second patent required seven multiplications involving three signals. Finesse’s expert relied solely on a Nokia document that listed only three multiplications yet equated them to the seven required by the claims. The Federal Circuit found this testimony inadequate, noting that the expert failed to explain how the three multiplications mapped to the seven required. On appeal, Finesse argued that the document actually evidenced 10 multiplications, but the Court was unpersuaded. Neither Finesse nor its expert explained how the 10 multiplications corresponded to the seven required multiplications, nor did they reconcile this new position with the expert’s prior reliance on only three multiplications.

Because Finesse failed to present expert testimony that adequately mapped each claim limitation to the accused method, the Federal Circuit reversed the jury’s infringement findings for both patents and vacated the damages award.

Practice note: The decision underscores the importance of detailed and consistent expert analysis in patent infringement cases, particularly when expert testimony is the sole basis for proving infringement.



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Bank on it: Likelihood of confusion analysis requires factual consistency when evaluating DuPont factors

by | Oct 2, 2025 |

The US Court of Appeals for the Federal Circuit reversed in part a decision by the Trademark Trial & Appeal Board and remanded for new analysis of two factors under the Dupont likelihood of confusion test. The Court emphasized that the factual determination in factor two (similarity of the parties’ goods or services) should remain consistent through the analyses for factors one and six. Apex Bank v. CC Serve Corp., Case No. 23-2143 (Fed. Cir. Sept. 25, 2025) (Moore, Hughes, Cunningham, JJ.)

CC Serve has held a registration for the word mark ASPIRE in connection with credit card services since 1998. In 2019, Apex Bank, a Tennessee-based banking chain, filed intent-to-use applications at the US Patent & Trademark Office (PTO) for marks incorporating ASPIRE BANK for use in “banking and financing services.” CC Serve, which partners with banks to issue and service credit cards, filed a letter of protest during Apex’s trademark prosecution. Despite CC Serve’s objections, the PTO published Apex’s marks in December 2019. CC Serve then formally opposed the marks, and the Board sustained the opposition, finding a likelihood of consumer confusion. Apex appealed.

The Federal Circuit reviewed the Board’s findings under the DuPont framework, which assesses likelihood of confusion based on multiple factors. Apex challenged the Board’s analysis of three specific factors:

  • Factor two: Similarity of the parties’ goods/services
  • Factor six: Strength of the prior mark in the marketplace
  • Factor one: Similarity of the marks themselves

The Federal Circuit upheld the Board’s finding under factor two, agreeing that “credit card services” and “banking/financing services” are highly similar based on their definitions and market overlap.

However, the Federal Circuit found fault with the Board’s analysis under factor six, which evaluates third-party use of similar marks to determine the strength of the contested mark. Apex submitted many examples of ASPIRE marks used in both the credit card and broader financial services industries. The Board, however, narrowed its focus to only those marks used in credit card services, excluding broader banking and financial services. The Federal Circuit concluded that this was inconsistent with the Board’s finding under factor two regarding the similarity of the parties’ goods and services. The Court instructed that on remand, the Board should consider third-party ASPIRE marks across both industries.

The Federal Circuit also directed the Board to revisit factor one, which assesses the similarity of the marks in light of the strength of the prior mark. Whether the strength of CC Serve’s mark is diminished when viewed in the broader financial services context could affect the “overall commercial impression” of the marks and the likelihood of confusion.

The Federal Circuit emphasized that factual determinations, particularly regarding the similarity of goods and services, must be applied consistently across the DuPont factors. The Court therefore remanded the case to the Board for reconsideration of factors one and six considering this guidance.



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Functional relationship recitation can’t overcome anticipating prior art

by | Oct 2, 2025 |

Underscoring functional relationships as limitations in patent claims and the importance of claim construction, the US Court of Appeals for the Federal Circuit affirmed in part, vacated in part, and remanded a Patent Trial & Appeal Board decision that found claims of a patent unpatentable notwithstanding a functional relationship recitation. Bayer Pharma Aktiengesellschaft v. Mylan Pharmaceuticals Inc., et al., Case No. 23-2434 (Fed. Cir. Sept. 23, 2025) (Moore, Cunningham, Scarsi, JJ.)

Bayer owns a patent that describes the results of a phase III clinical trial that evaluated the efficacy and safety of administering rivaroxaban with and without aspirin for the prevention of major adverse cardiac events. Certain claims require “administering to the human patient rivaroxaban and aspirin in amounts that are clinically proven effective in reducing the risk of myocardial infarction, stroke or cardiovascular death[,] wherein rivaroxaban is administered in an amount of 2.5 mg twice daily and aspirin is administered in an amount of 75 – 100 mg daily.” Other claims are directed to a once daily administration of “a first product comprising rivaroxaban and aspirin” and “a second product comprising rivaroxaban.”

Mylan challenged the patent in inter partes review (IPR), arguing that certain claims were anticipated by the Foley reference and others were obvious over Foley alone or in combination with Plosker. The Board agreed, finding all challenged claims unpatentable. Bayer appealed.

Bayer argued that the Board erred in:

  • Construing “clinically proven effective” as non-limiting and finding, in the alternative, that it was inherently anticipated
  • Construing “first product comprising rivaroxaban and aspirin” to encompass administration of rivaroxaban and aspirin as separate dosage forms
  • Failing to articulate why a skilled artisan would have combined Foley and Plosker with a reasonable expectation of success
  • Failing to analyze whether clinical proof of efficacy was an unexpected result

The Federal Circuit declined to resolve whether “clinically proven effective” is a limiting claim element, concluding that even if it were, it would not render the claims patentable. The Court explained that the phrase does not create a “new and unobvious functional relationship” with the known method of treatment. Analogizing to a hypothetical claim for a known drug method modified by a post-dated accolade (e.g., “Best Drug of 2026”), the Court emphasized that requiring clinical proof of efficacy does not transform the underlying treatment process.

Bayer relied on the Federal Circuit’s 2019 decision in Allergan Sales v. Sandoz, in which the Court found “wherein” clauses specifying safety and efficacy to be material to patentability. The Federal Circuit distinguished Allergan, noting that the claims there were written in open format and the “wherein” clauses modified the overall composition. In contrast, the claims of Bayer’s patent already specified exact dosages, and “clinically proven effective” did not modify any particular component. The Court therefore affirmed the Board’s finding of unpatentability for these claims.

However, the Federal Circuit agreed with Bayer on the construction of claims requiring a “first product comprising rivaroxaban and aspirin.” Bayer argued that this language required a single dosage [...]

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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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Surprise? Last-minute new theory leads to new trial

by | Sep 18, 2025 |

The US Court of Appeals for the Federal Circuit reversed a district court’s denial of a new trial after the defendant introduced a new noninfringement theory on the eve of trial based on test results it previously refused to produce, saying they were not necessary. Magēmā Technology LLC v. Phillips 66, Phillips 66 Co., and WRB Refining LP, Case No. 2024-1342 (Fed. Cir. Sept. 8, 2025) (Moore, Stoll, Bumb, JJ.)

Magēmā owns a patent directed to a solution to desulfurize fuel used to power cargo ships. Magēmā entered into licensing discussions with Phillips, but after the parties failed to reach an agreement, Phillips modified its hydrotreater reactors to implement what Magēmā believed was an infringing desulfurization process. Magēmā sued.

The governing fuel standard required a flashpoint of at least 140 degrees, meaning fuel with a pre-hydroprocessing flashpoint below that threshold would not infringe. The parties disagreed on where at the refinery the flashpoint should be tested. Phillips provided data from one sampling point while Magēmā requested data from a location closer to the hydrotreater reactor. Phillips refused, citing safety concerns, and argued that Magēmā could estimate the flashpoint using an accepted formula. The district court denied Magēmā’s motion to compel, agreeing that the formula sufficed. However, after discovery closed, Phillips moved to supplement the summary judgment record with new flashpoint test results from a different sampling station. The district court denied the motion, finding Phillips had no reasonable explanation for failing to sample earlier, and that introducing the evidence late would be unduly prejudicial, especially since Phillips had previously said Magēmā could rely on the formula. Yet shortly before jury selection, Magēmā learned that Phillips intended to argue that the formula was inadequate and that only actual testing could prove infringement (evidence Magēmā lacked), effectively shifting the burden. Magēmā objected, but the district court overruled the objection.

At trial, Philips told the jury that the standard required actual flashpoint testing and that Magēmā could not prove infringement without test samples. Magēmā requested a curative instruction, which the district court denied. The district court also barred Magēmā from explaining why it had relied on a formula rather than actual testing data. The jury returned a general verdict of noninfringement. Although the district court acknowledged that Phillips’ arguments were “improper and prejudicial,” it denied Magēmā’s motion for a new trial, finding that the misconduct did not affect the outcome. Magēmā appealed.

Phillips argued that Magēmā had failed to timely object, but the Federal Circuit disagreed, citing to Magēmā’s pre-jury selection objection, request for a curative instruction, and motion for a new trial. Finding that the district court abused its discretion in denying a new trial, the Federal Circuit agreed that Phillips’ argument was “improper and prejudicial,” characterizing it as a “bait-and-switch.”

Because the jury returned a general verdict form, the Federal Circuit could not determine the basis for the noninfringement finding and, given the repeated emphasis Phillips placed on its improper argument, the Court concluded it would be unjust to let the [...]

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Prevailing party: Dismissal with prejudice will do it

by | Sep 18, 2025 |

The US Court of Appeals for the Federal Circuit found that a district court erred in denying fees and costs to the prevailing party (here, the defendant), but upheld the district court’s denial of Rule 11 sanctions. Future Link Sys., LLC v. Realtek Semiconductor Corp., Case Nos. 23-1056; -1057 (Fed. Cir. Sept. 9, 2025) (Stoll, Reyna, Bryson, JJ.)

Future Link sued Realtek for patent infringement in the Western District of Texas. Realtek challenged service and personal jurisdiction and subsequently moved for Rule 11 sanctions. During discovery, Future Link produced a licensing agreement with a third party, under which the third party had agreed to pay a lump sum if Future Link sued Realtek. Shortly afterward, Future Link entered into a separate licensing agreement with Realtek covering the accused products and voluntarily dismissed the case.

Realtek moved for attorneys’ fees under 35 U.S.C. § 285 and costs under Rule 54(d)(1), and asserted that Future Link had filed objectively baseless lawsuits. The district court denied Realtek’s motions for fees and sanctions, did not address the motion for costs, and converted Future Link’s voluntary dismissal to a dismissal with prejudice.

Fees and costs

To seek fees and costs, a party must qualify as “the prevailing party.” In reviewing the district court’s decision on fees and costs, the Federal Circuit addressed Realtek’s prevailing party status under both § 285 and Rule 54(d).

Applying de novo review, the Federal Circuit concluded that Realtek was the prevailing party, despite the voluntary dismissal, because the district court had converted that dismissal to one with prejudice. The Federal Circuit emphasized that prevailing party analysis turns on whether there has been a material alteration of the legal relationship between the parties. Citing its own precedent, the Court explained that a dismissal with prejudice constitutes such a change because it bars the plaintiff from reasserting the same claims against the same products.
The Court explained that a favorable ruling on the merits is not required. A defendant that successfully avoids liability, such as through dismissal with prejudice, can still be deemed the prevailing party.

Since the dismissal with prejudice prevented Future Link from reasserting its patent claims against the accused products, Realtek was the prevailing party. The Federal Circuit vacated the district court’s denial of attorneys’ fees under § 285 and remanded the issue for consideration of whether the case was exceptional and fees were warranted. It likewise remanded the Rule 54(d) costs issue for initial determination.

Rule 11 sanctions

The Federal Circuit affirmed the district court’s denial of Rule 11 sanctions. Realtek had argued that Future Link’s prefiling investigation was inadequate and that the lawsuit was improperly motivated by a third-party payment arrangement, making that arrangement the but-for cause of the lawsuit.

The Federal Circuit rejected both arguments. First, it found that Future Link’s pre-suit investigation met Rule 11 standards: Future Link obtained and analyzed three accused products, prepared claim charts comparing asserted patent claims to the accused products, and investigated relevant optional features that it reasonably believed [...]

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Claims barred by laches: Prosecution delay doesn’t pay, nor does skipping evidence of concrete injury

by | Sep 11, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s judgment for the US Patent & Trademark Office (PTO) on application of prosecution laches in an action under 35 USC § 145. The Federal Circuit also agreed that the district court lacked Article III jurisdiction over certain claims because the plaintiff failed to provide evidence of concrete injury when challenged after initial pleadings. Hyatt v. Stewart, Case Nos. 2018-2390; -2391; -2392; 2019-1049; -1038; -1039; -1070; 2024-1992; -1993; -1994; -1995 (Fed. Cir. Aug. 29, 2025) (Reyna, Wallach, Hughes, JJ.) (precedential).

Gilbert Hyatt filed four GATT bubble patent applications, all of which had claims rejected by the examiner. Hyatt appealed those rejections to the Patent Trial & Appeal Board, which affirmed various rejections of others. Following the Board decisions, Hyatt filed four separate actions in district court under 35 U.S.C. § 145, challenging the PTO rejections. In response, the PTO asserted prosecution laches as an affirmative defense and, in the alternative, invalidity, based on anticipation and lack of written description.

The district court initially ruled in Hyatt’s favor, finding that the PTO’s affirmative defenses failed with respect to the claims for which the Board affirmed the examiner’s rejection. The district court concluded that it lacked Article III jurisdiction over the remaining claims (those for which the Board reversed the examiner) because there was no final agency action as to those claims.

The PTO appealed, arguing that prosecution laches barred all of the claims or, in the alternative, that the claims were invalid. Hyatt cross-appealed, contending that prosecution laches did not apply in § 145 actions or that the district court abused its discretion in applying laches in these specific § 145 actions.

In an earlier appeal, Hyatt I, the Federal Circuit vacated the district court’s rulings on prosecution laches, holding that the district court applied the wrong standard for prosecution laches and had the burden of proving that Hyatt engaged in unreasonable and unexplained delay in prosecuting his applications and that the delay was prejudicial. The panel remanded the case held the issue of Article III jurisdiction in abeyance. On remand, the district court reversed course and found in favor of the PTO on prosecution laches, concluding that Hyatt had unreasonably delayed prosecution in a manner that prejudiced the agency.

Hyatt appealed. The Federal Circuit consolidated the appeals with the earlier stayed jurisdictional issues. The Federal Circuit affirmed the district court’s application of prosecution laches, finding no clear error in its determination that Hyatt’s conduct met the standard for delay and prejudice. The Federal Circuit also agreed that the district court lacked Article III jurisdiction over claims that had not been finally rejected by the PTO, reinforcing that § 145 actions may only proceed where there is a final agency determination resulting in a justiciable controversy.

On the issue of prosecution laches, the Federal Circuit explained that it had already considered and rejected Hyatt’s argument that prosecution laches is unavailable in a § 145 action in Hyatt I, and [...]

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