- Adnexus 24-1551.pdf
Materials considered on a Rule 12(b)(6) motion in this posture.: On de novo review of a Rule 12(b)(6) dismissal, the court may consider documents attached to the complaint (and central/referenced documents), and factual allegations within those attachments that are incorporated into the complaint must be credited at the motion-to-dismiss stage.
- Akamai 24-1571.pdf
- Alivecor 23-1512.pdf
- Alnylam Pharma 23-2357.pdf
- Ancora 23-1674.pdf
Whether the Board’s rejection of license evidence for lack of nexus was supported by substantial evidence.: A nexus finding is not supported by substantial evidence where the Board applies an unduly exacting legal standard and misreads the license record (e.g., treating an exhibit as listing licensed patents when it lists excluded patents), necessitating vacatur and remand for proper nexus evaluation and reweighing against the prima facie case.
- Apex Bank 23-2143.pdf [NEEDS_REVIEW]
Appellate standard of review for TTAB likelihood-of-confusion decisions.: Likelihood of confusion is a legal conclusion reviewed de novo, but each DuPont factor is an underlying factual finding reviewed for substantial evidence; legal error in the Board’s factor framework warrants vacatur and remand notwithstanding deference to factfinding.
- Apple 23-1501.pdf
Whether claim 4 would have been obvious once the properly-submitted evidence is considered, and the proper appellate remedy.: When the record, including improperly-ignored testimony, leaves no reasonable dispute that a person of ordinary skill would have been motivated to adopt the claimed arrangement (fixing components to maintain necessary overlap) and only one factual finding is permissible, the Federal Circuit may reverse rather than remand.
- Barrette Outdoor Living 24-1231.pdf
Whether a patentee may argue on appeal that “projection” differs in scope from “boss.”: A party cannot adopt on appeal a claim-construction position inconsistent with the one presented to the district court; having argued “boss” meant a “projection or protrusion,” the patentee forfeited a later attempt to distinguish “projection” from “boss.”
- Bearbox 23-1922.pdf [NEEDS_REVIEW]
Whether the district court abused its discretion by striking an untimely supplemental expert report served after the close of expert discovery without leave or consent.: A district court may exclude a late supplemental expert report that introduces new theories/opinions in violation of a scheduling order, particularly where the proffered justification is unpersuasive and the Pennypack factors (prejudice, inability to cure, disruption, bad faith/willfulness, and limited importance) support exclusion.
- Broad Institute 22-1653.pdf
Whether conception requires inventors to know the invention will work or to have proven functional success.: Conception does not require knowledge that the invention will work; requiring proof or certainty of operability improperly conflates conception with reduction to practice.
Whether the PTAB may treat inventors’ contemporaneous doubts and experimental difficulties as dispositive of lack of a “definite and permanent idea” without analyzing the nature of any subsequent changes.: In applying the “definite and permanent idea” test, the factfinder must distinguish general uncertainty in experimental science from factual uncertainty that undermines definiteness, including by considering whether post-conception activity involved substantive modifications to the inventor’s original idea rather than routine confirmatory work.
Whether the PTAB may disregard ordinary-skill/routine-techniques evidence and third-party successes when assessing conception.: Conception requires that only ordinary skill be needed to reduce the invention to practice without extensive experimentation; evidence about routine methods and third-party successes or failures is relevant to that inquiry and cannot be categorically disregarded.
- Bullshine Distillery 23-1682.pdf [NEEDS_REVIEW]
- CQV 23-1027.pdf
Substantial-evidence review in light of record evidence that detracts from the agency’s conclusion.: Substantial-evidence review requires examination of the record as a whole, including evidence that detracts from the agency’s conclusion; a decision is not supported where the tribunal’s opinion does not reveal how it evaluated significant contrary evidence on a dispositive factual question.
- Canatex Completion 24-1466.pdf
Role of prosecution history and extrinsic evidence in deciding judicial correction and indefiniteness here.: Judicial correction is foreclosed if prosecution history suggests another meaning, but absent such indication—and where expert testimony provides no extra-patent facts—claim interpretation and judicial correction based on intrinsic evidence are reviewed and decided de novo.
- Ceramtec 23-1502.pdf [NEEDS_REVIEW]
Review of TTAB evidentiary assessments and treatment of experimental testing.: The TTAB, as factfinder, may discount experimental results where supported expert criticism shows methodological flaws or incompleteness relative to the scope of the claimed feature, and such credibility/weight determinations are upheld if supported by substantial evidence.
- Coda Development 23-1880.pdf
Definiteness requirement for identifying an asserted trade secret for adjudication.: A plaintiff must define the asserted trade secret with sufficient particularity to permit evaluating protectability and determining appropriation; broad, vague, function- or component-lists that do not identify the protectable design/development information are not sufficiently definite.
Proof of unauthorized use of a claimed combination trade secret.: Evidence that the defendant used only a few elements of an asserted multi-element trade secret, coupled with conclusory expert assertions and without competent proof of substantial, non-public use of the claimed secret, is insufficient as a matter of law to establish unauthorized use.
- Colibri Heart Valve 23-2153.pdf
Standard of appellate review for JMOL and prosecution history estoppel in this procedural posture.: On appeal from a district court in the Ninth Circuit, JMOL is reviewed under the regional circuit’s standard, but prosecution history estoppel is a question of law reviewed de novo under Federal Circuit law.
- Dollar Financial Group 23-1375.pdf [NEEDS_REVIEW]
How to review and sustain TTAB likelihood-of-confusion findings under DuPont.: Likelihood of confusion is a legal determination reviewed in light of subsidiary factual findings on the relevant DuPont factors, which are upheld if supported by substantial evidence; the Board need consider only factors relevant and of record.
- Duke Univ. 24-1078.pdf
Reversal of a jury verdict on written description under JMOL standards: A JMOL overturning a no-invalidity verdict is warranted when, viewing the evidence favorably to the patentee and without weighing credibility, the only reasonable conclusion is that invalidity for lack of written description was proven by clear and convincing evidence.
- Ecofactor 23-1101.pdf
Rule 702 requires the proponent to show the expert’s key factual premise is supported by sufficient facts/data; contrary unambiguous documentary evidence renders the opinion inadmissible.: A damages expert’s opinion that prior licenses establish a per-unit royalty is inadmissible under Rule 702(b) when the licenses’ unambiguous text does not support (and may expressly disclaim) the asserted per-unit royalty basis, and the expert’s premise is therefore untethered to the relied-upon evidence.
Scope of evidence for assessing sufficiency of an expert’s factual basis under Rule 702(b).: In evaluating whether an expert’s testimony is “based on sufficient facts or data,” the court focuses on the facts/data the expert actually relied upon; other record evidence not relied on cannot cure an insufficiency in the expert’s stated basis for the opinion being offered.
- Egenera 23-1428.pdf
Preservation and standard of review for new-trial challenges based on evidence/argument.: Under regional-circuit law, denial of a new trial is affirmed absent abuse of discretion; unobjected-to alleged violations during trial (including closing argument) are reviewed only for plain error, and pretrial in limine rulings may require renewed, context-specific objections at trial to preserve challenges to testimony.
- Escapex IP 24-1201.pdf
Whether appellate deference depends on how long the transferee district court handled the case or whether the merits were fully litigated.: Abuse-of-discretion review applies to § 285, Rule 59(e), and § 1927 rulings without adjustment based on the duration of the district court’s involvement, and a district court may base a fee award on issues not fully adjudicated on the merits so long as the exceptional-case determination is supported under the governing standards.
- Eye Therapies 23-2173.pdf
- FMC 24-2335.pdf
- Finesse Wireless 24-1039.pdf
Whether ambiguous “pivot” testimony can cure an expert’s express mapping that makes infringement impossible under the claim requirement (sampling signals that exist only downstream of sampling).: A jury cannot reasonably infer satisfaction of a claim limitation from vague or confusing expert assertions that do not expressly and coherently identify the accused structure/function meeting the limitation, particularly where the expert repeatedly maintains an impossible mapping.
- Fintiv 23-2312.pdf
Standard of review for § 112 ¶ 6/indefiniteness determinations in claim construction.: Whether claim language invokes § 112 ¶ 6 and the resulting claim construction are reviewed de novo when based on intrinsic evidence, while any underlying factual findings based on extrinsic evidence are reviewed for clear error.
- Focus Products 23-1446.pdf
’088 patent construction and adequacy of summary-judgment infringement analysis for “projecting edge” vs “outer circumference.”: Adopting a construction consistent with the specification does not excuse an unexplained infringement mapping; at summary judgment the court must articulate, with reference to the construed terms and intrinsic record, how it identifies the complete “outer circumference” and then what structure, if any, “projects from” it as a “projecting edge,” especially where intrinsic embodiments suggest the accused structure may lack that feature.
- Fraunhofer-Gesellshaft 23-2267.pdf [NEEDS_REVIEW]
- Future Link 23-1056.pdf
- Game Plan 24-1407.pdf
Whether the TTAB properly refused to consider materials filed with summary judgment papers but not introduced during the testimony period.: In TTAB trials, documents attached to pleadings or motions (including summary-judgment filings) are not evidence unless properly made of record during the trial/testimony period (e.g., via notice of reliance or testimony); the Board does not abuse its discretion by excluding or disregarding such materials.
- Global Health 23-2009.pdf
Effect of the Board’s erroneous focus on who conceived first.: Although it is error in an AIA derivation proceeding to frame the dispute as who was first to conceive, the error is harmless where the Board’s finding that the respondent conceived earlier necessarily establishes independent conception and thus defeats derivation.
- HD Silicon 23-1397.pdf
- Heritage Alliance 24-1155.pdf [NEEDS_REVIEW]
Sufficiency and weight of limited declaration evidence to prove acquired distinctiveness.: The Board may give little weight to conclusory, form declarations—especially from non-random or interested individuals and without context about the relevant market—when the record does not support an inference that the declarations reflect marketplace consumer perception.
- Honeywell 23-1354.pdf
Whether expert testimony can constitute substantial evidence when it is plainly inconsistent with the record or conclusory.: The court must disregard expert testimony that is plainly inconsistent with the record, and conclusory expert assertions do not amount to substantial evidence supporting the Board’s findings.
- IGT 23-2262.pdf
- Immunogen 23-1762.pdf
Appellate review of obviousness after bench trial.: On appeal from a bench trial, the ultimate obviousness conclusion is reviewed de novo, while motivation to combine and reasonable expectation of success are factual determinations reviewed for clear error, with deference where the trial court’s account of the evidence is plausible on the full record.
- In re Bayou Grand Coffee 24-1118.pdf [NEEDS_REVIEW]
Whether a term that names a specific good can be generic for retail/restaurant-type services featuring broader categories of goods absent evidence the specific good is offered.: To find a term generic for retail/food-service services on a “key aspect of the genus” theory, substantial evidence must show the named good is actually a key aspect/feature of the identified services; mere evidence that the public understands the term to name a particular product is insufficient if there is no evidence the services sell or feature that product.
Whether the mark was merely descriptive of cafés and coffee shops based on the mark’s meaning as a specific Kashmiri green tea.: A term is not merely descriptive of services unless the record supports that it immediately conveys a quality/feature/characteristic of those services; where there is no evidence the services offer the named product, the PTO’s descriptiveness conclusion lacks substantial evidence.
- In re Brunetti 23-1539.pdf [NEEDS_REVIEW]
Whether the Board’s decision satisfied APA reasoned-decisionmaking and provided a sufficiently clear standard to permit substantial-evidence review of its failure-to-function finding.: Under the APA and Chenery/State Farm principles, the Board must articulate a coherent, adequately explained rationale and sufficiently precise findings to enable meaningful appellate scrutiny; where the Board fails to specify the operative standard and the evidence needed to meet or rebut it (instead suggesting an “I know it when I see it” approach), vacatur and remand are required.
- In re Foster 23-1527.pdf [NEEDS_REVIEW]
What is the relevant time for assessing “false suggestion of a connection” under Lanham Act § 2(a) in an ex parte refusal-to-register proceeding?: In a refusal-to-register proceeding, § 2(a) false-connection registrability is assessed as of the time of examination, so the Board may consider evidence that comes into existence during the examination process up through the Board’s final decision on reconsideration.
Whether the Board erred by considering evidence post-dating the application filing date in its § 2(a) false-connection analysis.: The Board does not err by relying on evidence that post-dates the filing date when that evidence exists during the examination window; the applicant must show reliance on evidence beyond the proper examination endpoint to establish timing error.
Standard of review for § 2(a) false-suggestion determinations.: Whether a mark falsely suggests a connection is a legal question reviewed de novo, based on underlying factual findings reviewed for substantial evidence.
- In re Kostik 23-1437.pdf
Appellate review and reach of alternative PTAB grounds.: When the Board sustains multiple independent rejections, affirmance on one independently sufficient ground (here, the § 251(d) broadening bar) allows the court to decline to reach the merits of an alternative obviousness rejection.
- In re PT Medisafe Tech. 23-1573.pdf [NEEDS_REVIEW]
Substantial-evidence support for finding the color generic and for discounting survey/declaration evidence.: Substantial evidence supported the Board’s finding that the dark green color was so commonly used for chloroprene medical examination gloves that it could not identify a single source, and the Board acted within its factfinding role in giving little or no weight to non-representative declarations and a methodologically flawed, counsel-administered survey.
- In re Vetements Group 23-2050.pdf [NEEDS_REVIEW]
Standards of review for TTAB refusals based on genericness/translation likelihood.: The court reviews legal standards (including the correct test for genericness) de novo, but reviews the Board’s factual determinations—including whether consumers would translate and whether the term is generic—for substantial evidence.
- In re Xencor 24-1870.pdf
- Incyte Pharma 23-1300.pdf
- Ingenico 23-1367.pdf
Effect of a general jury verdict finding invalidity on multiple alternative theories.: A general verdict of invalidity must be affirmed if substantial evidence supports any one of the alternative invalidity theories submitted to the jury, so the appellate court need not reach other theories once one is adequately supported.
- Inland Diamond 24-1106.pdf
What is required for a district court to grant summary judgment of invalidity on remand after vacatur for improper issue preclusion.: Any summary judgment of anticipation or obviousness must rest on the record made in court and must show that no reasonable jury could fail to find, by clear and convincing evidence, invalidity of the asserted claim as a whole; the court may not deem facts established merely because the Board found them.
- Iqris 23-2062.pdf
Effect of erroneous claim construction on summary judgment of noninfringement (literal and DOE).: When a summary judgment of noninfringement depends on an erroneous claim construction that improperly narrows claim scope, the judgment should be vacated and the infringement issues reconsidered under the correct construction.
- Janssen Pharma 25-1228.pdf
- Jiaxing Super 23-1715.pdf
Whether excluding a substitute witness offered solely to authenticate preidentified documents (absent a rule requiring advance identification of the authenticating witness) is an abuse of discretion warranting a new trial on invalidity.: A district court abuses its discretion by excluding a competent substitute witness from authenticating previously identified documents based on a nonexistent requirement to pre-designate which witness will authenticate them, where the exclusion causes the underlying documents to be excluded and prejudicially impairs an invalidity defense.
- Kroy IP 23-1359.pdf
- Lab. Corp. 23-2350.pdf
JMOL standards applied to jury infringement verdicts.: On JMOL, even viewing evidence favorably to the verdict, judgment must be entered for the movant where the record lacks substantial evidence from which a reasonable jury could find infringement under the properly construed claims.
- Magema Tech. 24-1342.pdf
Harmless-error review where jury returned a general verdict after an improper/unsound theory was presented.: Under Fifth Circuit law, when a case is submitted on a general verdict and one theory was improperly submitted, reversal for a new trial is required unless the reviewing court is totally satisfied or reasonably certain the verdict was not based on the improper theory.
Abuse of discretion in denying a new trial despite acknowledging improper and prejudicial argument.: A district court abuses its discretion in denying a new trial where pervasive improper and prejudicial argument may have affected the verdict and the appellate court cannot discern the verdict’s basis from a general verdict form, making the error not harmless.
- Mondis 23-2117.pdf
Whether the district court properly denied JMOL upholding a jury verdict of no invalidity for written description.: Under JMOL review, where the only relevant evidence is the patent itself (which lacks the disclosure) and even the patentee’s expert concedes the specification does not expressly recite the challenged limitation, no reasonable jury could find adequate written-description support; JMOL of invalidity is required.
- Odyssey Logistics 23-2077.pdf
Whether Arthrex constituted the sort of intervening change in law that excuses forfeiture or requires reopening.: A change-in-law exception to forfeiture applies only when controlling precedent previously precluded the objection; because Odyssey was free to raise an Appointments Clause challenge earlier, Arthrex did not mandate setting aside forfeiture or compel reconsideration.
- Optics Cellular 22-1925.pdf
Admissibility of a large Apple–Qualcomm settlement agreement (not covering the asserted patents) and related expert “ballpark/check” testimony in a FRAND reasonable royalty trial.: Under Rule 403, settlement agreements with minimal probative value due to materially broader scope and litigation-settlement context, and where the expert does not meaningfully account for those differences, should be excluded when repeatedly presenting the large figure risks unfair prejudice by skewing the jury’s damages horizon, even if offered only as a reasonableness check.
- Powerblock 24-1177.pdf
- Regeneron 24-1965.pdf
- Regeneron Pharma 24-2351.pdf
Role of extrinsic evidence in construing whether separately listed claim elements can overlap.: If intrinsic evidence clearly supports separateness, a court need not rely on extrinsic evidence to alter that meaning; considering extrinsic evidence “for completeness” is permissible, and factual determinations about what the extrinsic record shows are reviewed for clear error.
- Rex Med. 24-1072.pdf
Admissibility of expert reasonable-royalty methodology relying on a portfolio settlement/license: When an expert relies on a lump-sum license covering multiple patents (and other rights) as a comparable, the methodology must reliably apportion the license consideration to the asserted patent(s); failure to allocate or otherwise tie value to the asserted patent renders the testimony unreliable and subject to exclusion.
- Sage Products 23-1603.pdf
- Sierra Wireless 23-1059.pdf
- Smartrend 24-1616.pdf
- Steuben Foods 23-1790.pdf
- Sunkist Growers 24-1212.pdf [NEEDS_REVIEW]
Whether substantial evidence supported the TTAB’s finding that applicant marketed KIST to convey a “kiss” commercial impression based on a lips image.: A Board finding about a mark’s commercial impression must be supported by record evidence tied to the mark as applied-for and to consumer perception; reliance on a non-mark graphic appearing inconsistently in internal/limited marketing materials, without evidence of consumer exposure, cannot support a distinct commercial-impression finding.
- Top Brand 24-2191.pdf
Sufficiency of evidence for Lanham Act trademark infringement verdict (likelihood of confusion).: A trademark infringement verdict cannot stand without substantial evidence of likely confusion, including evidence that the accused term was used as a source identifier rather than merely descriptively, and de minimis or untethered instances of confusion are insufficient.
- Trudell Medical 23-1777.pdf
Whether the district court satisfied its gatekeeping duty under Fed. R. Evid. 702 for noninfringement expert testimony.: Expert opinions that are methodologically unsound—e.g., untethered from the court’s claim constructions or resting on interpretations the court rejected—are unreliable under Rule 702, and admitting such testimony without proper gatekeeping is an abuse of discretion.
- US Inventor 24-1396.pdf
- US Synthetic 23-1217.pdf
- USAA 23-1639.pdf
Whether the Federal Circuit may reach Alice step two when the district court stopped at step one.: Because patent eligibility is a legal question reviewed de novo, the appellate court may address Alice step two even where the district court decided only step one.
Whether material fact disputes about conventionality preclude summary judgment on § 101.: Section 101 may be resolved on summary judgment when the record shows no genuine dispute of material fact as to whether the claimed components/steps are conventional; asserted disputes fail where record evidence and precedent establish the elements (e.g., OCR and image capture/processing) were well-known and routine.
- Wonderland Switzerland 23-2043.pdf
Whether excluding an internal email chain under Rule 403 warranted a new trial on willfulness.: Excluding highly probative evidence bearing on willfulness is an abuse of discretion where the stated Rule 403 concerns are based on clear legal/factual errors (e.g., treating notice evidence as hearsay or invoking privilege without basis) and where prejudice/confusion could be mitigated through redaction or limiting instructions; when the exclusion likely affected the verdict, a new trial on willfulness is required.
- Wuhan Healthgen 23-1389.pdf
Appellate review of conflicting record evidence regarding whether aggregation could increase during storage/shipping.: Under substantial-evidence review, the Federal Circuit affirms the Commission’s factual finding if it is reasonable and supported by the record as a whole, even when some evidence could support a contrary inference; the appellant must show the record compels the opposite result.
- Aortic Innovations 24-1145.pdf
Appellate jurisdiction after PTO cancellation of asserted claims.: When the PTO cancels the asserted claims of a patent, there is no longer an actual case or controversy over that patent, and an appeal regarding it must be dismissed as moot for lack of Article III jurisdiction.
- Apple 23-1501.pdf
Whether the PTAB may conduct an IPR on a patent that expired before the petition was filed.: The PTAB has jurisdiction to institute and decide IPRs on expired patents; expiration does not remove the proceeding from the public-rights framework recognized in Oil States, and the patent’s continuing consequences (e.g., past-damages exposure) support a live controversy.
- CQV 23-1027.pdf
Article III standing to appeal a PTAB final written decision by a PGR petitioner.: A petitioner establishes injury-in-fact sufficient for Article III standing when the patentee’s communications to the petitioner’s U.S. customers about infringement, coupled with the petitioner’s existing or required indemnity obligations and ongoing product sales, create a concrete and particularized risk of infringement liability/economic harm; no “magic words” or explicit infringement threat are required.
- Casam 23-1769.pdf
Whether a complainant/appellant must prove patent ownership to establish Article III standing when the case is on a developed evidentiary record.: When standing depends on patent ownership and the case has progressed beyond the pleading stage with an evidentiary record, a party’s bare assertion of ownership is insufficient; the appellant must establish injury in fact with evidence, and the court may resolve standing based on the record even if the ITC did not decide ownership.
- Causam 24-1958.pdf
- Curtin 23-2140.pdf
Whether Lexmark’s zone-of-interests and proximate-causation requirements govern entitlement to bring a Lanham Act § 1063 opposition.: Entitlement to oppose registration under 15 U.S.C. § 1063 is assessed under the Lexmark framework (zone of interests and proximate causation), and opposition and cancellation provisions (§ 1063 and § 1064) are construed consistently given their linguistic and functional equivalence.
Whether a consumer’s asserted interests fall within the zone of interests for opposing registration on genericness/descriptiveness/failure-to-function grounds.: For opposition grounds rooted in protecting competition and preventing monopolization of descriptive/generic terms, the zone of interests is commercial; a mere consumer’s interests in marketplace competition and product availability are not within the protected interests for those grounds.
Whether asserted consumer harms from registration satisfy Lexmark proximate causation for § 1063 opposition entitlement.: Alleged harms that are speculative and downstream of injuries first suffered by commercial actors (e.g., reduced competition, increased prices, chilled creation) are too remote and derivative to satisfy proximate causation required to invoke § 1063.
Role of Ritchie v. Simpson in determining entitlement to oppose under § 1063.: Ritchie does not control oppositions based on commercial-competition-related grounds (genericness/descriptiveness/failure to function); it is distinguishable because it addressed now-invalidated § 1052(a) immoral/scandalous matter and reputational disparagement interests, so Lexmark/Corcamore provide the governing analytical approach here.
- Dolby 23-2110.pdf
Whether 35 U.S.C. § 319’s authorization for a 'dissatisfied' party to appeal eliminates the need for Article III standing.: A statutory right to appeal under the AIA does not dispense with the constitutional requirement that the appellant show an injury in fact to invoke Federal Circuit jurisdiction.
Whether 35 U.S.C. § 312(a)(2)’s requirement that a petition identify all real parties in interest creates an informational right whose violation alone is an Article III injury.: The AIA’s RPI-identification requirement does not create a freestanding informational right analogous to public-disclosure statutes; failure to obtain an RPI adjudication in an IPR, without more, does not itself establish Article III injury in fact.
Whether speculative downstream harms from the PTAB’s refusal to adjudicate an RPI dispute constitute injury in fact when the patent owner prevailed on patentability.: Speculative allegations about possible license breaches, potential adjudicator conflicts, uncertain future estoppel application, or conjectural deterrence of future IPR filings are insufficient to establish a concrete and imminent injury in fact, particularly where the appellant does not seek to disturb a favorable merits outcome.
- Focus Products 23-1446.pdf
Standing to sue for trademark infringement of EZ ON mark at time of filing.: A Lanham Act plaintiff bears the burden to prove it owned the mark or otherwise had a protectable interest when suit was filed; ambiguous licensing provisions that do not unambiguously convey ownership, and a later assignment/registration occurring after filing, do not establish standing.
- Game Plan 24-1407.pdf
- In re Brunetti 23-1539.pdf [NEEDS_REVIEW]
Whether Iancu v. Brunetti (and First Amendment arguments) dictates registrability where the PTO refuses registration for failure to function.: A failure-to-function refusal turns on source-identification and is viewpoint neutral; Iancu v. Brunetti addressed a different statutory bar and does not control whether a different mark functions as a trademark, nor does prior registration of another mark guarantee registrability of the applied-for mark.
- In re Forest 23-1178.pdf [NEEDS_REVIEW]
- In re Gesture 25-1075.pdf
- Incyte Pharma 23-1300.pdf
Whether a PGR petitioner must show Article III standing to appeal an adverse PTAB final written decision.: A party may petition for and participate in a PGR without Article III standing, but must establish Article III standing (including injury in fact) to obtain Federal Circuit review of the Board’s decision; standing must exist at the time the notice of appeal is filed.
Whether potential infringement liability from future product development can establish injury in fact.: When relying on potential infringement liability, an appellant must show concrete, non-speculative plans for future activity that creates a substantial risk of infringement or is likely to prompt an infringement suit; speculative intentions contingent on overcoming development and regulatory hurdles are insufficient.
Whether conclusory declarations about intended dosage and product characteristics can establish concrete plans for infringement risk.: Conclusory assertions lacking supporting explanation or objective evidence (e.g., how a planned product would meet key claim limitations, including translating administration/dosing to claimed units and labeling/marketing that would drive infringement) are too speculative to establish injury in fact.
Whether competitor standing doctrine supplies injury in fact to appeal PTAB decisions upholding patent claims.: Competitor standing generally does not arise from the government’s action of upholding specific patent claims unless the challenger is currently practicing, or has non-speculative plans to practice, the claimed features; mere competitive proximity or benefit to the patentee is not enough without a concrete injury to the challenger.
- Mitek Systems 23-1687.pdf
Whether a supplier has declaratory-judgment jurisdiction to seek noninfringement based on a patentee’s enforcement against customers.: Under MedImmune’s all-the-circumstances test (as applied in DataTern), customer suits and general infringement allegations do not, without more, create an Article III controversy between patentee and supplier; the record must show a substantial, immediate, real dispute as to the supplier’s own potential infringement liability (direct or indirect).
Indemnity-based DJ standing for a supplier whose customers receive patentee licensing/infringement letters.: Indemnity-based standing requires a reasonable potential of actual indemnification liability under the specific agreements and an actual controversy involving the relevant indemnitee; the mere existence of indemnity demands or agreements is insufficient where carve-outs negate likely coverage or where a broken chain of indemnity/privity leaves no controversy between patentee and the putative indemnitee.
- Odyssey Logistics 23-2077.pdf
- Realtek 23-1187.pdf
- Shockwave Medical 23-1864.pdf
Article III standing to appeal an IPR result based on potential infringement liability.: An IPR petitioner has standing to appeal when it shows concrete plans for near-term product activity creating a substantial risk of future infringement and a likelihood of a patentee suit, including through advanced development/regulatory steps and the patentee’s expressed intent to enforce broadly.
- US Inventor 24-1396.pdf
Associational standing to challenge PTO denial of a petition for rulemaking concerning discretionary institution criteria for IPR/PGR.: An advocacy organization lacks associational standing where it fails to identify at least one member with an injury in fact that is concrete and imminent; a claimed “risk of cancellation” is insufficient when it depends on a speculative chain of future third-party actions (filing of a petition, meeting statutory thresholds, and discretionary institution decisions).
Standing based on alleged future injury requiring predictions about third parties’ conduct.: Courts may reject as overly speculative standing theories that rest on predictions of future events—especially future actions by independent third parties—because such allegations are not treated as “facts” establishing an actual or imminent injury.
Procedural-right standing for denial of rulemaking petition.: The grant of a procedural right (such as the ability to petition for rulemaking) does not itself establish Article III standing absent a threatened concrete interest that the procedure is designed to protect; a plaintiff must show a concrete stake independent of the asserted procedural injury.
Distinguishing repeat-player standing recognized in Apple Inc. v. Vidal.: Repeat-player standing based on a substantial risk of recurring harm requires specific allegations showing that the same plaintiff is likely to encounter the challenged policy again; generalized assertions that members have faced IPRs/PGRs do not substitute for showing that any particular member faces a non-speculative, imminent risk traceable to the challenged agency action.
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