Federal Circuit Archives

Federal Circuit

Patent disclosure erases trade secret protection

by Hannah Hurley | Apr 30, 2026 | Patents, Trade Secrets

Addressing the boundary between patent disclosures and trade secret protection, the US Court of Appeals for the Federal Circuit reversed a jury’s findings of trade secret misappropriation, breach of contract, and improper inventorship, concluding that the asserted “trade secrets” were generally known and therefore not protectable under California law. The Court affirmed, however, a $1 million statutory damages award for trademark counterfeiting. International Medical Devices, Inc. v. Cornell, Case Nos. 25 1580; 1605 (Fed. Cir. Apr. 17, 2026) (Dyk, Reyna, Taranto, JJ.)

International Medical Devices, Menova International, and Dr. James Elist (collectively, the plaintiffs) manufacture and sell the Penuma® cosmetic penile implant. The plaintiffs sued Dr. Robert Cornell and associated individuals and entities after Cornell attended a Penuma® surgical training session under a nondisclosure agreement (NDA) and later helped develop a competing implant. The plaintiffs asserted claims for misappropriation of trade secrets, breach of the NDA, trademark counterfeiting based on unauthorized use of the Penuma® mark, and invalidity of two cosmetic implant patents for failure to name Elist as an inventor.

A jury found for the plaintiffs on all claims. After a bench trial on remedies, the district court awarded more than $17 million in trade secret and exemplary damages, entered a permanent injunction, and awarded $1 million in statutory damages for counterfeiting. Cornell appealed.

The Federal Circuit reversed the trade secret verdict in its entirety, concluding that none of the asserted trade secrets were protectable under California law. The Court concluded that the alleged technical trade secrets were disclosed in publicly available patents and thus were “generally known” as a matter of law.

In doing so, the Federal Circuit reaffirmed the long-standing principle that “that which is disclosed in a patent cannot be a trade secret.” Once information enters the public domain through patent disclosures, it cannot later be reclaimed as confidential business information through trade secret law.

The plaintiffs’ remaining alleged trade secret (a list of surgical instruments) fared no better. The Federal Circuit found that the list had been emailed to the defendants without any confidentiality designation or obligation, defeating any claim that reasonable measures were taken to maintain its secrecy.

Because the plaintiffs failed to identify any confidential information beyond the alleged trade secrets, the Federal Circuit also reversed the breach of contract verdict. The NDA expressly excluded information that was “generally available to the public,” and the Court found that an NDA cannot transform public domain information into protected confidential material.

The Federal Circuit reached a different conclusion on trademark counterfeiting, however, and affirmed the jury’s finding and the $1 million statutory damages award. The Court explained that the evidence showed that Cornell had advertised and offered Penuma® implants without authorization. Cornell argued that the Penuma® mark was registered only for goods, not services, and therefore could not support a counterfeiting claim tied to surgical procedures. The Court rejected that argument, concluding there was sufficient evidence that Cornell offered the Penuma® implant itself as a good, not merely a medical service.

Finally, the Federal Circuit [...]

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Public use, even without explicit public disclosure, is patent bar under pre-AIA § 102(b)

by Tyler Jackson | Apr 23, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed summary judgment of invalidity under the pre-America Invents Act (AIA) on sale bar, holding that a third party sale to the public of a product embodying a patented method and apparatus can trigger invalidity even where details of the invention were not expressly disclosed. Definitive Holdings v. Powerteq, Case No. 24-1761 (Fed. Cir. Apr. 14, 2026) (Moore, Dyk, Cunningham, JJ.)

Definitive Holdings sued Powerteq alleging infringement of a patent directed to methods and systems for reprogramming engine controllers. With a priority date of March 30, 2001, the patent was subject to pre-AIA law. Powerteq moved for summary judgment of invalidity under pre-AIA 35 U.S.C. § 102(b), arguing that a nonparty, Hypertech, had sold a product (the PP3) that embodied all limitations of the asserted claims more than one year before the patent’s priority date.

Rather than disputing the underlying facts, Definitive challenged the admissibility of the evidence on which Powerteq relied. Definitive argued that the deposition testimony of Hypertech’s Rule 30(b)(6) witness, the PP3 source code, and expert testimony relying on that source code were inadmissible. The district court rejected those arguments and granted summary judgment of invalidity, concluding that the third party sales triggered the on sale bar. Definitive appealed.

The Federal Circuit reviewed the summary judgment ruling de novo, applying Tenth Circuit law.

Definitive first argued that the district court improperly relied on testimony from Hypertech’s Rule 30(b)(6) witness, Hypertech CEO and owner Jay Ramsay. The Federal Circuit disagreed, finding that Ramsay’s testimony was based on his personal knowledge and thus was sufficient to authenticate Hypertech’s sales records and establish that Powerteq’s expert analyzed source code from the PP3 product.

The Court explained that a reasonable juror could conclude that Ramsay had personal knowledge of Hypertech’s recordkeeping practices and sales activities. Because those portions of the testimony were sufficient to support summary judgment, the Court declined to address whether other portions of the 30(b)(6) testimony were properly considered and how the Tenth Circuit generally treats Rule 30(b)(6) testimony at summary judgment.

Definitive next argued that the PP3 source code and related expert testimony constituted inadmissible hearsay. The Federal Circuit disagreed. The Court explained that while comments or annotations in source code could, in some circumstances, qualify as hearsay statements, the operative source code itself functions as a set of commands or instructions. As such, it is not offered for the truth of any assertion. The Court therefore found that the district court did not abuse its discretion in considering expert testimony describing the functioning of the source code when granting summary judgment.

Finally, Definitive contended that the on sale bar did not apply because Hypertech’s sales of the PP3 did not publicly disclose how to perform the patented method, even if the PP3 embodied all claim limitations and was sold more than one year before the priority date.

The Federal Circuit rejected Definitive’s argument, emphasizing that Hypertech’s sales directly conveyed to the public the ability to practice the [...]

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Article III standing: Claims of future injury must be sufficiently tied to the claim limitations at issue

by Taylor MacDonald | Apr 16, 2026 | Patents

The US Court of Appeals for the Federal Circuit dismissed an appeal of a post-grant review (PGR) for lack of Article III jurisdiction, finding that the appellant failed to meet its burden to prove it would likely suffer an injury in fact. ironSource Ltd. v. Digital Turbine, Inc., Case No. 2024-1831 (Fed. Cir. Apr. 7, 2026) (Moore, Lourie, Reyna J.J.)

Mobile advertising company Digital Turbine has a patent related to streamlined background processes for downloading and installing mobile applications. That patent is a continuation an earlier related patent which was invalidated during a prior PGR proceeding. Mobile advertising and app monetization platform ironSource once had a product on the market called Aura, which included “Click to Install” features. When faced with what it referred to as “veiled threats” of liability for infringement of the earlier patent, ironSource modified its Aura product – eventually removing it from the market – and petitioned the Patent Trial & Appeal Board for a PGR of the continuation patent’s claims 1 – 22.

During the PGR, the Board held that claims 1 – 22 were all unpatentable pursuant to its earlier decision in the earlier PGR but allowed Digital Turbine to amend the claims. In so doing, Digital Turbine included, among other changes, two narrowing limitations to the claims. The Board concluded that ironSource had not carried its burden of proving that the newly amended claims were unpatentable or ineligible for patent protection. ironSource appealed.

On appeal, the Federal Circuit explained that while Article III standing is not required before the Board, it is required to sustain an appeal of the Board’s decisions. The burden is on the appellant to prove it meets the requirements for standing under federal law at the time of filing. Federal law requires an appellant to prove it has “(1) suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the [appellee], and (3) that is likely to be redressed by a favorable judicial decision.” Spokeo. Specific to patent cases, the appellant must show concrete evidence of its intended future actions that pose a substantial risk of infringement or an assertion of infringement.

To meet this obligation, ironSource submitted a declaration by one of its senior directors. The declarant discussed past changes and concessions to the Aura product that ironSource had made in light of Digital Turbine’s patent rights. It also stated that ironSource intended to reintroduce the Aura product to the market. Nevertheless, the Federal Circuit held that ironSource failed to meet its burden of tying that potential product’s features to the patent’s amended claims. Instead, ironSource focused on the claims of the original, alleging that they were “substantially identical” to the continuation patent’s claims, i.e., the claims Digital Turbine had previously “threatened” against the company. The Court emphasized, however, that ironSource failed to account for the narrowing limitations in the amended claims and thus failed to prove a likely injury in fact from infringement of the substituted claims.

Finally, the Federal Circuit distinguished [...]

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“X” marks the spot: A single DuPont factor may be dispositive

by Tyler Jackson | Apr 16, 2026 | Trademarks

The US Court of Appeals for the Federal Circuit affirmed dismissal of a trademark opposition, concluding that a single DuPont factor may be sufficient on its own to support a finding of no likelihood of confusion. Fuente Mktg. Ltd. v. Vaporous Techs., LLC, Case No. 24-1460 (Fed. Cir. April 8, 2026) (Prost, Taranto, Hughes, JJ.)

Fuente Marketing and Vaporous Technologies both sell smoking related products. Fuente owns two standard character trademark registrations for the letter “X,” used in connection with cigars and related accessories. Vaporous sought to register a highly stylized design mark for use with its vaping products. The parties stipulated that Vaporous’ mark consisted of “an abstract stick figure consisting of two diagonal intersecting lines in the shape of a wide stylized letter ‘X’ with a shaded circle above.”

Fuente opposed the application at the Trademark Trial and Appeal Board (TTAB), arguing that Vaporous’ mark was likely to cause confusion with Fuente’s “X” marks. Applying the DuPont factors, the Trademark Trial & Appeal Board dismissed the opposition, concluding that there was no likelihood of confusion. Fuente appealed.

The Federal Circuit reviewed the Board’s factual findings for substantial evidence and its ultimate likelihood of confusion determination de novo. Fuente challenged the Board’s analysis of two DuPont factors and argued that the Board improperly weighed the factors as a whole.

The Federal Circuit focused on the first DuPont factor, which evaluates the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. The court found that substantial evidence supported the Board’s finding that this factor weighed heavily against a likelihood of confusion. The Federal Circuit agreed that consumers were more likely to perceive Vaporous’ mark as a stylized stick figure rather than the letter “X.” Unlike Fuente’s standard character mark, Vaporous’ design mark did not sound like the letter “X” as it had no pronunciation, and it incorporated prominent visual features – including a shaded circle comprising roughly one fifth of the mark – that were “not a minor or unnoticeable feature.”

Although the Board found that the remaining DuPont factors were neutral or favored Fuente, the Federal Circuit explained that it could “discern the Board’s path to dismissal” and affirmed the conclusion that in a case like this one DuPont factor was sufficient to establish dissimilarity between the marks. The Court emphasized that a likelihood of confusion analysis is a balancing test, and no minimum number of factors must favor one party.

Practice note: This decision reinforces that a single DuPont factor, particularly the dissimilarity of the marks, may be dispositive of likelihood of confusion. Parties should not assume that favorable findings on other factors can overcome a clear lack of similarity in appearance, sound, connotation, or commercial impression.

Where’s Waldo? Inventorship error fatal when omitted coinventor cannot be found

by Courtney Seams | Apr 16, 2026 | Patents

Addressing the limits of correcting inventorship, the US Court of Appeals for the Federal Circuit affirmed an invalidity determination where an omitted coinventor could not be added because statutory notice requirements could not be satisfied. Fortress Iron, LP v. Digger Specialties, Inc., Case No. 24-2313 (Fed. Cir. Apr. 2, 2026) (Lourie, Hughes, Kleeh, JJ.)

Building products manufacturer Fortress Iron sued competitor Digger Specialties for infringement of two patents directed to pre assembled vertical cable railing panels. The inventions resulted from collaboration among Fortress’ owner and an employee, as well as two employees of its quality control liaison, Hua Ping Huang and Alfonso Lin, who proposed design changes to address cable tensioning issues. The issued patents, however, named only Fortress personnel and omitted Lin and Huang as coinventors.

During the litigation, Fortress acknowledged that Lin and Huang were coinventors. Fortress successfully added Lin under 35 U.S.C. § 256(a) but was unable to locate Huang, who had left the liaison company years earlier without providing contact information. The parties filed cross motions for summary judgment, with Fortress seeking correction of inventorship and Digger seeking invalidity. The district court denied Fortress’ motion and held the patents invalid for incorrect inventorship. Fortress appealed.

Fortress argued that Huang was not a “party concerned” under § 256(b) and therefore was not entitled to notice and a hearing. The Federal Circuit rejected that argument, explaining that an omitted inventor qualifies as a “party concerned” regardless of whether the inventor has a demonstrated economic interest in the patent. The Court explained that inventorship carries legal, financial, and ownership consequences that an inventor has a right to contest, and § 256(b)’s notice and hearing requirements cannot be bypassed. The Court further clarified that standing and “party concerned” status under § 256(b) are distinct legal concepts with different requirements.

The Federal Circuit also rejected Fortress’ characterization of § 256(b) as a broadly permissive “savings provision,” explaining that the statute only operates to save patents once its procedural prerequisites of notice and an opportunity to be heard are satisfied.

Turning to Fortress’ second argument, the Federal Circuit concluded that a patent that incorrectly lists its inventors and cannot be corrected under § 256 has a clear statutory basis for invalidity. Reading § 256(b) together with §§ 101 and 100(f), the Court concluded that when an invention has multiple inventors, all must be named. Allowing a patent to survive with only some inventors listed would render § 256’s corrective framework meaningless.

Practice note: The decision underscores the importance of accurate inventorship determinations and the practical risk that patents may be rendered invalid if an omitted inventor cannot be located and statutory correction requirements cannot be met.

Game over: No self-help clock reset for mandatory stay request

by Dexter Hamilton | Apr 9, 2026 | Patents

The US Court of Appeals for the Federal Circuit held that a respondent in a US International Trade Commission proceeding may not seek a mandatory stay of a companion federal district court case under 28 U.S.C. § 1659(a)(2) by refiling a declaratory judgment action involving the same parties when it missed the mandatory 30-day deadline for seeking a stay in the originally filed action. Ascendis Pharma A/S v. BioMarin Pharmaceutical Inc., Case No. 26-1026 (Fed. Cir. Mar. 26, 2026) (Lourie, Chen, Stoll, JJ.)

Ascendis Pharma and BioMarin Pharmaceutical are both drug manufacturers. Ascendis filed a New Drug Application (NDA) with the US Food & Drug Administration (FDA) for its drug TransCon CNP. The next day, BioMarin filed a complaint at the Commission, alleging that TransCon CNP infringed a BioMarin patent. To avoid the Commission’s importation safe harbor, BioMarin alleged that TransCon CNP was being imported in a quantity that exceeded “any quantity that would be solely for uses reasonably related to the development and submission of information to the FDA.”

Ascendis filed a declaratory judgment action in federal district court, asserting that its “manufacture, use, and importation” was “exempt from patent infringement liability by the statutory safe harbor.” After BioMarin moved to dismiss or stay the declaratory judgment action, Ascendis reversed course and filed a notice of voluntary dismissal, stating its intention to refile its declaratory judgment action and seek a mandatory stay under § 1659(a)(2). Ascendis refiled and two weeks later filed a § 1659(a)(2) motion for a mandatory stay. The district court granted BioMarin’s discretionary stay and denied Ascendis’s motion as moot. Ascendis appealed.

First addressing appellate jurisdiction, the Federal Circuit held that Ascendis had standing for its appeal. At the district court, BioMarin had argued that the district court should retain authority to lift any stay and stated that if the FDA approved TransCon CNP and the Ascendis NDA, BioMarin intended to seek preliminary injunctive relief from the district court. The Federal Circuit explained that those circumstances created a sufficiently real and immediate controversy for appellate jurisdiction.

The Federal Circuit then assessed whether it had jurisdiction under the collateral order doctrine. Under that doctrine, an order must meet three requirements to permit an interlocutory appeal. It must “(1) ‘conclusively determine the disputed question’; (2) ‘resolve an important issue completely separate from the merits of the action’; and (3) ‘be effectively unreviewable on appeal from a final judgment.’” Because denial of Ascendis’s stay motion conclusively determined that issue, and because the intent of § 1659(a)(2) is to prevent overlapping litigation, the Court found that the requirements for collateral order jurisdiction were met.

The Federal Circuit concluded that Ascendis’s arguments failed on the merits, however. After entering a discretionary stay, the district court had denied Ascendis’s motion as moot. The Federal Circuit found that a temporary stay does not necessarily render a stay under § 1659(a)(2) moot, and that a discretionary stay that can be lifted is not the same as (and thus does not moot) a request for [...]

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Code, copies, and consequences: $185 million verdict uninstalled!

by Jodi Benassi | Mar 26, 2026 | Patents

Addressing patent eligibility, infringement, willfulness, enhanced damages, and the limits of patent damages tied to foreign software sales, the US Court of Appeals for the Federal Circuit vacated a $185 million jury award after finding that damages based on foreign sales were improperly included because the accused software copies were made and installed abroad. Trs. of Columbia Univ. v. Gen Digital Inc., Case No. 24-1243 (Fed. Cir. Mar. 11, 2026) (Dyk, Prost, Reyna, JJ.)

The Trustees of Columbia University sued Gen Digital, the Norton software brand marketer, for infringement of patents directed to detecting anomalous program execution in antivirus software. A jury found willful infringement and awarded approximately $185 million in damages, including more than $94 million attributable to foreign sales of Norton software products based on findings that the infringing product sold to foreign customers was made in and distributed from the United States. The district court denied Gen Digital’s post-trial motions, enhanced the damages, and awarded attorneys’ fees. Gen Digital appealed.

Patent eligibility: Abstract at Alice step one

The Federal Circuit determined that the asserted claims are directed to an abstract idea at step one of the Alice framework. The Court explained that the claims, at their core, involve comparing data (function calls) to a model – created using multiple computers – to identify anomalous behavior, which is a long-standing abstract concept in the context of virus detection. Although Columbia argued that the claims improved computer functionality through efficiency gains and the use of distributed models, the Court found that those purported improvements were either themselves abstract or not required by the claim language. The Court agreed with Columbia that factual disputes remain as to whether certain claimed features – particularly the “model of function calls” – were well-understood, routine, and conventional, precluding resolution of step two of the Alice framework. The Court remanded for further proceedings to perform an Alice step two analysis.

Willfulness: Affirmed by substantial evidence

The Federal Circuit found that substantial evidence supported a finding that Gen Digital knew or should have known of the asserted patents, including evidence that its personnel were aware of the underlying technology and related patent applications prior to issuance. The Court rejected Gen Digital’s argument that its litigation defenses precluded willfulness, explaining that post hoc reasonable defenses do not negate willfulness absent evidence that the defendant relied on those defenses at the time of the accused conduct. Because the record supported a finding that Gen Digital failed to adequately investigate potential infringement despite being aware of the patents, the Federal Circuit found no basis to disturb the district court jury’s willfulness determination.

No domestic infringement for foreign-made software copies

The Federal Circuit reiterated the general rule that US patent law does not apply to products made and sold abroad. Although the jury was instructed that damages could include foreign sales if the infringing product was “made in or distributed from the United States,” the Court found this instruction legally incorrect. The Court further explained that 35 U.S.C. § [...]

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Absent a client waiver, attorney-client relationship survives conflict

by Connor M. Larson | Mar 26, 2026 | Patents

Reversing a district court order requiring the disclosure of attorney-client communications and holding a law firm in civil contempt, the US Court of Appeals for the Federal Circuit ruled that an attorney’s conflict of interest does not automatically terminate the attorney-client privilege and that an invalid order could not support civil contempt. Trs. of Columbia Univ. in City of New York v. Gen Digital Inc., Case No. 24-1243, (Fed. Cir. Mar. 11, 2026) (Dyk, Prost, Reyna, JJ.)

The Trustees of Columbia University sued Gen Digital, the Norton software brand marketer, for infringement of two patents and to correct the inventorship of one of the patents. Norton owned the patent on which inventorship correction was sought, and a Norton employee, Dr. Dacier, was listed as the sole inventor. Columbia alleged that two Columbia professors invented the subject matter.

On the inventorship issue, Norton and Dr. Dacier were both represented by Quinn Emanuel Urquhart & Sullivan. Dr. Dacier was deposed and testified about the development of the invention, including activities involving the Columbia professors. Dr. Dacier did not attribute any inventive contributions to the Columbia professors, but Columbia argued – and the district court agreed – that his testimony supported Columbia’s inventorship theory.

Before the district court, Columbia argued that this representation created an improper conflict of interest, particularly because Dr. Dacier had allegedly expressed views critical of Norton’s litigation positions. In Columbia’s view, Quinn Emanuel had improperly prevented Dr. Dacier from testifying at trial in support of Columbia’s inventorship claims. The district court agreed, finding that Quinn Emanuel’s representation of Dr. Dacier raised a conflict, and ruled that Quinn Emanuel’s current representation of Norton automatically terminated its representation of Dr. Dacier. The district court ordered Quinn Emanuel to release its communications with Dr. Dacier. Quinn Emanuel had previously asserted a claim of privilege over these communications. Quinn Emanuel refused the production order, and the district court found Quinn Emanuel in civil contempt. As a sanction, the district court imposed a negative evidentiary inference that Dr. Dacier would have testified to improper conduct by Quinn Emanuel – supporting Columbia’s motion for enhanced damages and attorneys’ fees in a companion case. Quinn Emanuel appealed.

On appeal, Quinn Emanuel argued that the district court’s order requiring the disclosure of communications with Dr. Dacier was invalid because it improperly compelled production of privileged communications and that the contempt finding should be reversed. Columbia argued that the disclosure order was proper because Norton did not raise the privilege issue response to Columbia’s motion for an order to show cause, Quinn Emanuel failed to request in camera review, Quinn Emanuel did not contact Dr. Dacier to determine if he wanted to assert privilege, and Dr. Dacier waived the privilege by emailing both Columbia’s counsel and Quinn Emanuel disclosing that he had been in contact with Columbia’s counsel.

The Federal Circuit rejected all four arguments, holding that there was “no question that Dr. Dacier retained Quinn [Emanuel] to represent him and that he did not terminate the relationship [...]

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Corresponding disclosed structure? Only what’s necessary to perform a recited function

by Tyler Jackson | Mar 26, 2026 | Patents

The US Court of Appeals for the Federal Circuit held that the disclosure of an added function in the specification of a patent should not affect the structure necessary to meet the recited function in a Section 112(f) claim element. Gramm v. Deere & Co., Case No. 24-1598 (Fed. Cir. Mar. 11, 2026) (Lourie, Reyna, Cunningham, JJ.)

Richard Gramm exclusively licensed Reaper Solutions rights to a patent directed to an apparatus for keeping the header of a crop harvester at a certain height above the ground as the harvester moves across a field. Gramm and Reaper sued Deere & Co., alleging that specific Deere header sensor kits infringed the patent. Deere challenged the validity of the patent in a partially successful inter partes review (IPR) proceeding, leaving one independent claim and some of the dependent claims asserted.

In connection with claim construction during the IPR proceeding, Reaper and Deere disputed the meaning of “control means” in the independent claim. At issue was whether the specification’s discussion of the “head controller 20” was sufficiently definite corresponding disclosed structure for the (§112(f)) means-plus-function claim element to satisfy the definiteness requirement of §112 (b). The function of the claimed “head controller” was to provide electrical control signals to another feature in the claimed apparatus to control the lateral position of the corn header and its height above the ground or soil. Deere argued that “head controller 20” was not sufficiently definite since it amounted to a general-purpose computer or processor, thus requiring disclosure of code or an algorithm to avoid being indefinite.

In 1997, the patent’s priority date, there were only three commercially available head controllers used in Deere combines: Dial-A-Matic Versions #1, #2, and #3. Deere argued that only Versions #2 and #3 could constitute corresponding structure for the “head controller 20,” as only those versions could control both header height and lateral position. Because Versions #2 and #3 used microprocessors to control header height, Deere argued that the patent specification was required to disclose an algorithm for performing the claimed function. In the alternative, Deere argued that the district court should hold Reaper to its argument in the IPR proceeding that the corresponding disclosed structure was the specific controller incorporated into Deere’s Dial-A-Matic Version #1, which “controlled header height through a series of diodes, switches and integrated circuits rather than a microprocessor.”

The district court found the independent claim indefinite and reasoned that the specification’s reference to Dial-A-Matic Versions #2 and #3 triggered the need for a disclosure of a general-purpose computer or microprocessor that the patent failed to satisfy. The district court accepted Deere’s argument that the specification did not disclose Dial-A-Matic Version #1 as a corresponding structure because it could not perform the function of controlling the lateral position of the corn header. Reaper appealed.

The Federal Circuit agreed with Reaper that the district court erred by identifying a corresponding structure for “control means” beyond what was necessary to perform the claimed function, leading the district court to incorrectly [...]

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Too late to help: Inventorship fix fails to revive forfeited argument

by Amit Kumar Saha, PhD | Mar 19, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board, concluding that the retroactive effect of a correction of inventorship under 35 U.S.C. § 256 does not bar the application of forfeiture principles in inter partes review (IPR) proceedings, and that a patent owner that fails to timely raise an antedating theory during an IPR may forfeit reliance on a later corrected inventorship to resurrect that theory. Implicit, LLC v. Sonos, Inc., Case Nos. 20-1173; -1174 (Fed. Cir. Mar. 9, 2026) (Taranto, Stoll, Cunningham, JJ.)

Implicit owns patents directed to content rendering that originally named Edward Balassanian and Scott Bradley as co-inventors. Sonos filed IPR petitions against both patents, asserting unpatentability under 35 U.S.C. §§ 102 and 103, primarily based on Janevski, which had an effective prior art date of December 11, 2001.

To avoid Janevski as prior art, Implicit argued that the inventions were conceived and reduced to practice before December 11, 2001. It contended that Balassanian and Bradley conceived of the inventions and collaborated with another engineer, Guy Carpenter, to implement the invention prior to December 2001. Implicit argued that Carpenter’s work inured to the benefit of the named inventors, thereby antedating Janevski. The Board rejected Implicit’s argument and found the challenged claims unpatentable as anticipated or obvious over Janevski. The Board found Implicit’s evidence insufficient to establish conception and communication of the invention by Carpenter in a manner that would support an earlier reduction to practice.

Following the Federal Circuit’s and Supreme Court’s decisions in Arthrex v. Smith & Nephew addressing the Appointments Clause as applied to IPR proceedings, the case was remanded to permit Director review. While proceedings were ongoing, Implicit sought correction of inventorship under 35 U.S.C. § 256 to add Carpenter as a co-inventor. The United States Patent & Trademark Office (USPTO) granted the request and issued certificates of correction in August 2022. The Federal Circuit remanded the case to the Board to determine what impact, if any, the corrections had on the prior final written decisions. The Board concluded that equitable doctrines, including forfeiture, precluded Implicit from relying on the corrected inventorship to advance a new antedating theory. Implicit appealed.

The appeal presented two principal questions:

Whether the retroactive effect of a correction of inventorship under § 256 forecloses application of forfeiture principles in an IPR proceeding.
Whether the Board abused its discretion in finding that Implicit forfeited its right to assert a new antedating theory based on corrected inventorship.

Implicit argued that § 256 contains no temporal limitation and that corrections operate retroactively, requiring the Board to revisit its unpatentability determinations once Carpenter was added as an inventor. Sonos and the USPTO countered that Implicit had litigated the IPRs on a single inventorship theory and waited until after adverse final written decisions to change course.

The Federal Circuit affirmed on both grounds.

First, the Federal Circuit found that forfeiture principles may apply notwithstanding the retroactive effect of § 256. Although [...]

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