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The Federal Circuit’s recent decision in Canatex Completion Solutions, Inc. v. Wellmatics, LLC is a good example of the courts’ ability to correct obvious errors in patent claims through claim construction. Indeed, the panel’s reversal of the lower court’s ruling demonstrates that judicial correction of evident errors in patent claims — even when the error appears multiple times throughout the patent document — is available to patentees when only one reasonable correction exists.

The Technology and the Typographical Trap

The technology at issue in U.S. Patent No. 10,794,122 centers around a releasable connection device used in oil and gas well operations. More specifically, the two-part downhole tool allows operators to disconnect components when the lower part of the tool becomes stuck in the wellbore, thus enabling retrieval of the upper part while leaving the stuck component for later recovery. The claimed connection device includes a “first part” (further downhole in the wellbore) with an external connection profile and a “second part” (closer to the surface) containing a releasable engagement profile that internally engages the first part’s connection profile. Claim 1 of the ʼ122 patent reads as follows:

1. A releasable connection for a downhole tool string, comprising

a first part comprising an external connection profile; and

a second part comprising:

an outer housing;

a releasable engagement profile which internally engages the connection profile of the first part and which is configured to expand radially to release the connection profile of the first part;

a locking piston positioned within an internal cavity of the second part, the locking piston configured to move axially along the second part between a locking position that directly constrains the releasable engagement profile into engagement with the connection profile of the first part and a release position that permits the releasable engagement profile to expand radially to release the connection profile of the second part;

an expansion chamber in fluid communication with the locking piston; and

a source of fluid pressure in communication with the expansion chamber, wherein, upon activation, the source of fluid pressure is configured to apply fluid pressure to move the locking piston from the locking position toward the release position.

The remaining two independent claims also contain the italicized language in claim 1 above that dictates how a locking piston moves between positions to control the connection between the first and second part. In the release position, the piston “permits the releasable engagement profile to expand radially to release the connection profile of the second part.” The problem is that the claims never previously mentioned any “connection profile of the second part” — only a “connection profile of the first part.”

The District Court’s Indefiniteness Determination

Boring down on this antecedent basis problem during claim construction, defendants Wellmatics and GR Energy Services argued the claims were invalid for indefiniteness due to “the connection profile of the second part” lacking any prior reference in the claim. Canatex acknowledged the error but contended it had a simple, obvious correction: changing “second” to “first” so the phrase would refer to “the connection profile of the first part” — the only connection profile actually described in the claims.

The District Court for the Southern District of Texas disagreed and held all asserted claims of the ʼ122 patent invalid for indefiniteness. The court reasoned that the error was not evident from the patent’s face because it appeared pervasively throughout the ʼ122 patent — in all three independent claims, in the abstract, and twice in the written description. This pervasiveness suggested “an intentional drafting choice and not an error at all.” In fact, the court speculated that the drafter may have intended to provide an antecedent basis for a connection profile of the second part, making the error the use of “the” instead of “a.” The court also took issue with Canatex’s failure to seek correction from the USPTO under 35 U.S.C. § 255, which suggested the error was “neither minor nor evident.”

The Federal Circuit’s Reversal: A Rigorous Standard Met

Applying the demanding standard for judicial correction of claim errors, the appellate panel reversed the district court. The opinion articulates several necessary requirements for judicial correction via claim construction:

  1. The error must be evident from the patent’s face — obvious from the perspective of one skilled in the art;
  2. The correction cannot be subject to reasonable debate based on the claim language, specification, and prosecution history; and
  3. The correction must involve only obvious minor typographical or clerical errors.

The demanding standard for judicial correction serves multiple purposes. First, it respects the public notice function of patents by ensuring corrections are limited to situations where relevant readers would constructively understand the intended meaning. Second, it distinguishes judicial correction from USPTO correction under Section 255, which covers broader classes of errors and operates only prospectively because it can result in claim scope different from what readers would have understood. The panel’s opinion emphasized that while the standard is exacting, it was clearly satisfied here.

Why the Error Was Evident

The Federal Circuit found the error obvious on multiple grounds. Starting with the claim language itself, the panel explained that a skilled artisan would immediately recognize that the phrase “the connection profile of the second part” requires but lacks an antecedent. No connection profile of the second part appears anywhere earlier in the claim. In addition, the reference to the second part in this context was not deemed to make any functional sense. The claim structure requires the second part’s “releasable engagement profile” to engage with the first part’s connection profile by embracing it internally. Upon activation, the locking piston moves to a release position that permits the releasable engagement profile to expand radially. According to the appellate panel, the idea that this expansion would release an unidentified component of the second part itself — rather than the first part’s connection profile that it embraces — is “jarringly anomalous.”

Turning to the specification of the ʼ122 patent, the appellate panel found that it confirmed the error’s obviousness. In particular, the figures lack a “connection profile” in the second part. In addition, a portion of the written description states that the locking piston “locks releasable engagement profile 26 into engagement with connection profile 16 of the first part, and a release position… that permits releasable engagement profile 26 to release connection profile 16 of second part 14.” This portion both correctly identifies connection profile 16 as belonging to the first part and incorrectly attributes it to the second part — making the error undeniable to a relevant reader.

Why Only One Reasonable Correction Exists

The panel found that changing “second” to “first” in the phrase at issue was the only reasonable correction because the claim language and specification both show that what gets released through radial expansion is the connection profile of the first part — the very component the releasable engagement profile embraces in the connected state. In this regard, the Federal Circuit rejected the proposed alternative corrections from defendants as unreasonable. For example, one proposed correction from the defendants echoed the district court’s view that the device contains an unnamed “connection profile” on the second part, so the claim could be corrected by changing “the” to “a” or adding antecedent language. In making this proposal, defendants pointed to “tubing connector 22” as a possible connection profile of the second part. The panel found this proposal to be illogical given that tubing connector 22 sits at the far proximal end of the second part and serves to connect the device to the wireline extending to the surface, and not to connect or disconnect the device’s two parts. The panel likewise dismissed defendants’ expert’s opinion that the varying language across instances (sometimes adding figure reference numbers) suggested deliberate drafting rather than copy-paste error, noting the variations merely added figure labels without changing component understanding. Defendants remaining proposed alternatives were deemed by the panel to not be reasonably debatable alternatives to the simple, logical change of one word because each would substantially alter claim scope and meaning beyond what the claims and specification clearly describe.

Key Takeaways

The case now returns to the district court for further proceedings with the corrected claim construction. With “second” properly read as “first,” the parties can now address infringement and any remaining validity issues on the merits. Regardless of how it turns out, this decision reinforces some key takeaways for navigating claim construction and adjacent validity challenges:

Correction Must Be Textually Simple

The correction here changed a single word without altering claim structure or adding new limitations. More complex corrections that significantly revise claim language or add substantial new text will not qualify as “minor” corrections even if otherwise appropriate.

Pervasive Errors Do Not Preclude Correction

The district court’s conclusion that repeated errors suggest intentional drafting was rejected by the Federal Circuit. While obviously not optimal, consistent copy-paste errors throughout a patent document do not transform an obvious mistake into deliberate language choice. A court should focus on whether the error and its correction are evident to skilled artisans, not on how many times the error appears.

Functional Context Reveals Errors

The Federal Circuit emphasized how the claim’s functional description made the error obvious. When claim language describing mechanical interactions makes no physical or logical sense as written, a simple correction to restore coherent meaning consistent with the specification might be the answer instead of invalidation under 35 U.S.C. § 112.

Specification Passages Can Confirm Errors

Self-contradicting specification language — such as the passage correctly identifying a component as belonging to the first part while later attributing it to the second part — provides strong evidence that similar claim language contains the same error.

Failure to Seek USPTO Correction Is Not Dispositive

The district court gave weight to Canatex’s failure to pursue Section 255 correction before litigation. The Federal Circuit’s reversal indicates this factor should not preclude judicial correction when the demanding standard is otherwise met. Indeed, Canatex did seek USPTO correction during the appeal, which the PTO denied — but this did not prevent the Federal Circuit from making the correction judicially.

Prosecution History Matters But Was Absent Here

The court confirmed that prosecution history can preclude correction if it suggests a different claim interpretation. However, neither party identified anything in the prosecution suggesting the disputed language should be read other than with the obvious correction. This distinguishes the case from Chef America, Inc. v. Lamb-Weston, Inc. where prosecution history confirmed the patentee’s claim language was problematic.

In short, Canatex demonstrates that the claim construction process remains flexible enough to correct obvious mistakes when doing so gives effect to the meaning skilled artisans would clearly understand from the patent as a whole. Accused infringers considering indefiniteness arguments should carefully evaluate whether claimed errors are genuinely ambiguous or merely typographical before getting too comfortable relying on this type of invalidity challenge. More promising indefiniteness challenges will involve claim language where multiple reasonable interpretations exist or where the specification provides no clear resolution.

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In a pair of recently issued companion decisions, the Federal Circuit awarded Causam Enterprises, Inc. a victory on patent ownership (Causam v. ITC (ITC appeal)) only to pull the rug out from under the company by declaring the very patent claims at issue unpatentable (Causam v. ecobee (IPR appeal)). Unfortunately for Causam, this is a shining example of winning the battle but losing the war.

The saga centers on U.S. Patent No. 10,394,268, which relates to demand response functionality for electric power grids designed to help utilities balance supply and demand. Causam filed a complaint with the International Trade Commission alleging that respondents Resideo Smart Homes Technology, its domestic affiliate Ademco, Inc., and other respondents imported smart thermostats that infringed the ʼ268 patent. At the same time, ecobee Technologies, which also had been named as a respondent in the ITC complaint, petitioned for inter partes review of the patent claims before the Patent Trial and Appeal Board (PTAB) (IPR2022-01339). The two proceedings wound their way through the system in parallel, ultimately landing before the Federal Circuit on the same day for oral argument.

Causam has asserted the patent against a range of smart thermostat and energy management companies, including ecobee Technologies ULC and Resideo Smart Homes Technology (Tianjin).

Round One: The ʼ268 Patent Ownership Drama

In the ITC proceeding, the respondents challenged whether Causam even owned the ʼ268 patent — a threshold question intended to defeat Causam’s standing to even bring the ITC case. The ownership dispute turned on a series of agreements involving inventor Joseph Forbes. In 2007, Forbes assigned the ancestor application (the ʼ909 application) to America Connect, which later became Consert. That assignment covered “all divisions, reissues, continuations and extensions thereof” but conspicuously omitted continuation-in-part applications.  

So, here is where it gets interesting. The ʼ268 patent claimed priority to the ʼ909 application through a continuation-in-part — the ʼ761 application, which was filed in 2012. A 2013 settlement between Forbes and Consert listed the ʼ761 application as an “Excluded Patent.” Forbes then assigned the ʼ268 patent to Causam in 2014.

Despite the lack of any reference to continuation-in-part applications in the 2007 assignment to Consert, the administrative law judge (ALJ) ruled that the assignment to Consert from Forbes covered “all progeny” and, thus, Causam could not and did not own the ʼ268 patent.  The ALJ also found that accused smart thermostats did not infringe the asserted claims of the ʼ268 patent. The full commission adopted the ALJ’s infringement finding, but punted on the ownership issue.

On appeal, the Federal Circuit addressed whether Causam had Article III standing to challenge the commission’s decision — which required determining if Causam actually owned the patent. The court held that at this stage (after a full evidentiary record), Causam needed to provide evidence of ownership, not just assert it. Citing its tandem decision in the IPR appeal, the appellate panel explained that the burden is “the same as that of a plaintiff moving for summary judgment in the district court.”

The panel then dove right in to contract interpretation. Despite intervenors arguing that “continuations” in the 2007 assignment should be read to include continuations-in-part, the Federal Circuit explained that continuations and continuations-in-part are “widely understood to be different” and have been treated separately in the Manual of Patent Examining Procedure since 1948. Critically, a continuation may not add new matter to the parent application, while a continuation-in-part does include new matter. Indeed, an inventor “might well wish to assign away continuations of an invention and keep the rights to continuations-in-part (and the included new matter).”

The panel further opined that reading “continuations” to include continuations-in-part would amount to “insert[ing] words into the contract that the parties never agreed to.” On this basis, the court concluded that the 2007 assignment unambiguously excluded the ʼ761 application, so Forbes had good title when he assigned the ʼ268 patent to Causam in 2014. Victory for Causam, right? Well, not so fast.

Round Two: The IPR Appeal Delivered the Knock-Out Punch

While Causam won on the ownership issue, the holding in the companion IPRappeal mooted the noninfringement issue in the ITC appeal. In this aspect, the panel declined to address Causam’s challenge to the commission’s noninfringement determination in the ITC appeal based on its affirmation of the PTAB’s holding that all challenged claims of the ʼ268 patent — including claim 1 (the only claim at issue in the ITC appeal) — were unpatentable as obvious in the IPR appeal. Claim 1 reads as follows:

  1. A method for managing an electric power flow within an electric power grid, comprising:

a client device receiving a power control message from a load management server, the power control message indicating at least one of an amount of electric power to be reduced and an identification of at least one controllable device to be instructed to disable the electric power flow to at least one associated power consuming device;

the client device issuing a power management command to the at least one controllable device, the power management command causing the at least one controllable device to disable the electric power flow to the at least one associated power consuming device to provide a reduction in consumed power; and

generating measurement and verification data corresponding to the reduction in consumed power.  

The italicized claim limitation was front and center in the IPR appeal. During the IPR, Causam argued this required generating data during the demand response event. But, the PTAB disagreed, construing the limitation to encompass both actual measurements during the event and estimates based on device power usage measured before the event. 

The Federal Circuit sided with the PTAB explaining that the claim language itself imposed no temporal restriction and that adopting Causam’s narrow construction would exclude embodiments disclosed in the specification. For example, one embodiment described a system that determines “the amount of steady-state power each device consumes when turned on” and uses that known consumption data when deciding which loads to turn off during high-demand periods.  Those “known” power-consumption loads are estimates obtained before any demand response event occurs — directly contradicting Causam’s proposed limitation. Another embodiment described accessing a database after a power savings event ends to find “the actual amount (or average amount) of power that would have been used” during the event. With the panel’s finding that claim 1 of the ʼ268 patent had been properly construed by the PTAB, Causam’s obviousness challenge collapsed and the PTAB’s unpatentability determination stood.

Because Section 337 — the basis for the ITC action — requires infringement of a “valid and enforceable” patent, Causam had no right to an exclusion order. The panel thus proceeded to dismiss the ITC appeal as moot, leaving Causam with nothing but an empty victory on the ownership question.

The Takeaways

Parallel proceedings can create strategic nightmares. Causam fought hard to establish ownership in the ITC case, only to watch the patent claims evaporate in the IPR. The company ended up with clear title to an unpatentable patent — a trophy nobody wants. However, these companion appeals at least offer several drafting lessons:

  • Be careful what you disclose in your specification. Causam’s broad embodiments — using estimates and measurements taken before or after demand response events — undermined its attempt to narrow the claims during litigation. The Federal Circuit will not let you exclude what you have already clearly described as within the scope of the invention without something more in the prosecution history.
  • When preparing assignment agreements, be specific. The distinction between continuations and continuations-in-part matters, and courts will not read one term to include the other. If you want comprehensive coverage, say so explicitly. 
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The Federal Circuit’s recent decision in Apex Bank v. CC Serve Corp. serves as a pointed reminder to the Trademark Trial and Appeal Board (TTAB) that it must maintain consistency across its DuPont factor analysis. While the appellate panel affirmed the TTAB’s finding that the parties’ services were highly similar, it vacated and remanded the TTAB’s analysis of two critical factors after finding the board applied inconsistent standards for determining what constitutes “similar” services.

Background: A Tale of Two ASPIRE Marks

CC Serve Corp. has owned the registered trademark ASPIRE for credit card services since 1998, with a priority date of October 1996. The company partners with banks to issue ASPIRE-branded credit cards, with CC Serve and its affiliates handling account servicing.

Apex Bank, a Tennessee retail bank with 18 branch locations, filed intent-to-use applications in August 2019 for ASPIRE BANK word and design marks covering “banking and financing services.” Apex Bank planned to use these marks for a new internet banking venture under a different brand. Notably, Apex does not currently offer credit cards. Despite CC Serve’s letters of protest during prosecution, the examining attorney at the USPTO approved Apex Bank’s marks for publication. 

CC Serve promptly filed an opposition in February 2020, alleging likelihood of confusion with its ASPIRE mark. 

The Federal Circuit’s Analysis: When Similar Isn’t Similar Enough

An opposition requires the TTAB to determine whether registration of the opposed mark should be refused on the basis that “confusion is likely because of concurrent use of the marks of an applicant and a prior user on their respective goods.” Likelihood of confusion is a question of law “based on findings of relevant underlying facts, namely findings under the [13] DuPont factors.” The TTAB is not required to consider all 13 DuPont factors; rather, it must only consider those DuPont factors that are relevant and of record. Here, the TTAB held that the sixth DuPont factor did not weigh in favor of Apex and the first and second DuPont factors weigh in favor of CC Serve. On this basis, the TTAB concluded that consumer confusion was likely and sustained the opposition under Section 2(d) of the Lanham Act.

On appeal, Apex argued that the TTAB erred in its analysis, specifically with respect to these three factors. While the appellate panel affirmed the TTAB’s analysis of the second DuPont factor, which assesses similarity of goods and services, it was troubled by the inconsistencies in the TTAB’s approach to the remaining factors.

Second DuPont Factor – Services Similarity: Affirmed

The Federal Circuit found no error in the TTAB’s analysis of the second DuPont factor, which assesses similarity of goods and services. Indeed, the appellate panel found that the TTAB had carefully examined the relationship between credit card services and banking/financing services, ultimately determining they were “legally identical, in part.” The board noted that dictionary definitions of “banking” and “finance” encompass extending credit through credit card issuance, and supported this finding with third-party registrations covering both types of services.

Sixth DuPont Factor – Third-Party Use: The Inconsistency Problem

The sixth DuPont factor considers the number and nature of similar marks used on similar goods or services. Evidence of widespread third-party use can demonstrate that a mark is weak and entitled to only narrow protection, as consumers become more adept at distinguishing between similar marks in crowded fields.

Here’s where the board stumbled. Apex had submitted evidence of 42 third-party marks using “Aspire” in connection with various financial services. However, the TTAB narrowed its analysis to consider only nine marks specifically related to credit card services, dismissing the broader financial services marks as “essentially irrelevant.” The appellate panel found this approach legally flawed and emphasized that, if the board determined in its analysis of the second DuPont factor that the parties’ services are highly similar — even “partially legally identical” — then the board must maintain that same scope of similarity when analyzing other DuPont factors.

First DuPont Factor – Mark Similarity: Collateral Damage

The Federal Circuit also vacated the TTAB’s analysis of the first DuPont factor (similarity of marks in appearance, sound, connotation, and commercial impression) because the reconsideration of third-party use evidence under the sixth factor could affect the determination of the mark’s commercial strength or weakness, which, in turn, influences the overall commercial impression analysis.

Key Takeaways

  • Consistency Across Factors Is Non-Negotiable – While the TTAB has considerable discretion in weighing DuPont factors, that discretion must be exercised within a coherent analytical framework. Inconsistent application of similarity standards across factors may result in flawed likelihood-of-confusion analyses that cannot withstand appellate scrutiny.
  • Interconnected Analysis – The DuPont factors do not exist in isolation. Changes to the analysis for one factor can have cascading effects on others, particularly when commercial strength and overall commercial impression are involved.
  • Third-Party Use Evidence Deserves Broader Consideration – When analyzing market conditions under the sixth DuPont factor, practitioners should compile comprehensive third-party use evidence across the full spectrum of related goods and services, not just those that are most directly competitive. In crowded trademark fields, demonstrating that consumers are accustomed to distinguishing between similar marks can be crucial to avoiding likelihood-of-confusion findings.

The Road Ahead

While this remand doesn’t guarantee success for Apex Bank, the remand certainly gives it another chance that it did not have before the Federal Circuit took issue with the TTAB’s lack of rigorous, consistent analysis in its likelihood-of-confusion determinations. The TTAB will now need to reconsider whether CC Serve’s ASPIRE mark is entitled to broad protection or whether the crowded field of “Aspire” marks in financial services warrants a narrower scope of protection.

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Intellectual property (IP) is one of the most important assets many technology companies will ever own. Patents are a key part of a company’s IP portfolio. Investors often view a company’s patent portfolio as a signal of innovation, defensibility, and long-term value. Yet patent strategy is rarely at the top of a founder’s to-do list in the early stages of product development.  Understandably, the focus often is on getting a product to market, finding customers, and raising capital. Seeking patent protection can fall down priority lists. But overlooking patents and other IP assets can leave a technology company exposed, sometimes fatally so, if competitors copy a product or if disclosures prevent future patent protection.

This post outlines some of the fundamental decisions every tech company should understand, including whether to start with a provisional or non-provisional patent application, how to weigh patents against trade secrets, and the practical cost and timing considerations that shape a technology company’s IP strategy.

Provisional vs. Non-Provisional Applications

For technology companies, this decision often ties directly to product roadmaps and investor timelines. A provisional can align with beta releases or funding rounds, while non-provisionals may be timed to coincide with major product launches or strategic partnerships.

An early-decision technology companies may face is whether to begin with a provisional patent application or jump directly to a non-provisional filing.

A provisional application is often compared to planting a flag in the ground. It can be prepared relatively quickly, entails less formality, and requires far less expense. By filing a provisional application, a tech company secures a priority date, the all-important timestamp in patent law that establishes who invented something first. Provisionals allow companies to mark products as “patent pending” and give them a 12-month window to test the market, refine prototypes, or secure funding before deciding whether to invest in the full non-provisional application.

A non-provisional application, by contrast, is the complete application that gets examined by the U.S. Patent and Trademark Office (USPTO). It must include formal claims, supporting drawings, and a thorough written description. If granted, it confers enforceable rights for up to 20 years from the filing date.  In addition, a patent’s term is measured from the earliest non-provisional filing date. That means filing a provisional can extend the ultimate life of a patent, and it defers some of the cost until non-provisional filing. This gives technology companies financial breathing room, especially during their startup phase.

Timing is critical. Public disclosures, product launches, and even investor presentations disclosing an invention can start the one-year statutory clock to file a patent application. If a provisional or non-provisional is not filed within that year, the invention may be barred from patent protection altogether. For technology companies moving quickly, it is often better to file a lean but adequate provisional than risk losing rights entirely.

Patent vs. Trade Secret

Technology companies should carefully consider how customer-facing versus backend innovations are protected. For example, user interface features may be better suited for patent protection, while algorithms and data processing methods may be more valuable kept as trade secrets.

Not every innovation should be patented. Some are better kept as trade secrets. The distinction often comes down to one question: Can your competitors reverse engineer it?

Patents are powerful because they create a legal monopoly. For up to 20 years, no one else can make, use, or sell your invention without your permission. They allow owners to license and commercialize the patent to others. But the tradeoff is disclosure: The patent application must explain the invention in enough detail that someone skilled in the field could replicate it. Once that information is published, competitors can learn from it — even if they wait until the patent expires.

Trade secrets work differently. Trade secret laws (e.g., the Defend Trade Secrets Act of 2016) protect confidential information that gives a company a competitive edge, so long as it remains secret. Crucially, this protection can last indefinitely. Examples include formulas, algorithms, or manufacturing methods. Coca-Cola’s recipe and Google’s search algorithm are classic trade secrets. Unlike patents, trade secret protection can last forever. But there are risks: If someone independently develops the same idea, or figures it out through reverse engineering, the protection vanishes.

For technology companies, the decision often hinges on how the innovation reaches the market. If the product will be sold widely and its workings can be discovered, a patent may be the safer choice. If the innovation is embedded in internal processes or software code that is not publicly exposed, keeping it as a trade secret might make more sense.

Timeline and Cost Considerations

For technology companies, budgeting for IP protection is often weighed against software development, cloud infrastructure, and customer acquisition costs. Integrating patent filings into overall financial planning ensures that IP does not become an afterthought but a deliberate part of the growth strategy.

Every technology company operates with limited resources, and patent strategy must be realistic about cost, especially early on. A provisional can often be prepared in a matter of days and filed for a few thousand dollars. This makes it attractive when a company is racing toward a demo day, fundraising pitch, or product launch and needs to secure rights quickly.

A non-provisional, however, represents a much larger commitment. The initial filing may cost tens of thousands of dollars, and the prosecution process, which can stretch three to five years, involves additional attorney fees and USPTO charges. Periodic maintenance fees must be paid once the patent issues. If a company plans to seek patents internationally, the costs multiply.  Managing those expenses while still funding product development presents a challenge for early technology companies.

Still, a thoughtful IP strategy pays dividends. Even pending applications can increase valuation during fundraising or provide leverage in partnerships. For companies considering acquisition, patents can be the crown jewels that make the deal attractive. The key is to align patent spending with business milestones — file provisionals to protect early concepts, convert to non-provisionals as funding allows, and prioritize inventions most central to the company’s competitive edge.

Final Thoughts

Ultimately, technology companies that view IP as an integrated part of their technology strategy, not just a legal checkbox, are best positioned to leverage patents and trade secrets for competitive advantage.

Patents and trade secrets are tools, not ends in themselves. The best strategy depends on a company’s product, business model, and growth trajectory. File too late, and rights may be lost forever.  File too broadly or too often, and scarce startup resources may be drained with little return. The companies that succeed are the ones that treat IP as a business asset, not just a legal requirement.

These are only some of the important issues technology companies may face when protecting their innovations, and every situation is different. Technology companies can navigate these challenges by working with legal counsel experienced in protecting IP rights in their technology. By understanding the basics and working with legal counsel to plan ahead, technology companies can protect their innovations, attract investors, commercialize their IP, and build long-term value around their ideas. In short, patents matter, and for a technology company, the right patent strategy can be just as important as the right product or the right team.

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The Federal Circuit’s recent decision in Future Link Systems, LLC v. Realtek Semiconductor Corporation offers important guidance on what it means to be a “prevailing party” and the standards for awarding attorney fees, costs, and sanctions in patent litigation. This ruling, which vacated in part, affirmed in part, and remanded the district court’s decisions, is particularly instructive when compared to other recent Federal Circuit cases addressing exceptionality and litigation misconduct.

Background

Future Link Systems, LLC filed two patent infringement suits against Realtek Semiconductor Corporation in the Western District of Texas, alleging Realtek’s integrated circuit products infringed U.S. Patent Nos. 8,099,614 and 7,685,439. The litigation involved electronic circuitry technology, a complex procedural history, including motions to dismiss, requests for sanctions, and discovery disputes.

Some of the conduct argued by Realtek to be egregious included Future Link’s agreement with third party MediaTek, Inc., where MediaTek would pay Future Link a lump sum amount if Future Link filed a lawsuit against Realtek. Notably, after Future Link voluntarily dismissed both cases, the district court converted those dismissals to dismissals with prejudice as a sanction for litigation misconduct by Future Link. However, the district court declined to find Realtek a prevailing party and, as a result, denied Realtek’s motion for attorneys’ fees under 35 U.S.C. § 285 in one case and fees and costs under 28 U.S.C. § 1927 in both cases.

Prevailing Party Status: The Gateway to Fees and Costs

A central issue on appeal was whether Realtek qualified as a “prevailing party” entitled to attorney fees under 35 U.S.C. § 285 and costs under Federal Rule of Civil Procedure § 54(d)(1). According to Supreme Court precedent:

[t]he touchstone of the prevailing party inquiry must be the material alteration of the legal relationship of the parties.

[and]

[w]hen a plaintiff secures an enforceable judgment on the merits… that plaintiff is the prevailing party because he has received a judicially sanctioned change in the legal relationship of the parties.

To be clear though, securing an enforceable judgment on the merits is not a predicate for achieving prevailing party status. Rather, Supreme Court precedent emphasizes that a party prevails when it successfully rebuffs the opposing party’s claims, regardless of whether the case is resolved on the merits or through procedural means.In this aspect, the court cited cases such as CRST Van Expedited, Inc. v. EEOC and B.E. Technology, L.L.C. v. Facebook, Inc., reinforcing that a defendant can prevail even if the dismissal is for reasons such as mootness or lack of standing. Here, Realtek’s success in converting the dismissals to “with prejudice” ensured that Future Link could not reassert the same claims. On this basis, the Federal Circuit found that the district court’s conversion of the voluntary dismissals to dismissals with prejudice (even if not intending to do so) constituted a judicially sanctioned change in the legal relationship between the parties making Realtek a prevailing party.

While Realtek was deemed a prevailing party by the appellate panel, the Federal Circuit remanded the case for the district court to determine whether the case was “exceptional” under § 285, which is a prerequisite for awarding attorney fees. On remand, the district court will surely consider other Federal Circuit decisions, such as OneSubsea, IP v. FMC Technologies, Inc. and United Cannabis Corp. v. Pure Hemp Collective Inc., when deciding whether the case was exceptional under § 285. Federal Circuit precedent makes it clear that aggressive litigation tactics or hard-fought disputes between competitors do not, by themselves, make a case exceptional. Instead, exceptionality requires litigation misconduct or a case that “stands out” due to its substantive weakness or unreasonable conduct. Indeed, the court must find something more — such as objectively baseless claims or clear litigation misconduct — to warrant exceptionality under § 285.

Sanctionable Conduct: Not Enough Bad Behavior Here

The Federal Circuit also addressed Realtek’s requests for Rule 11 sanctions, which was denied by the district court. The panel found that Future Link’s pre-filing investigation met the minimum requirements for a reasonable inquiry with a reminder that “testing of an accused product is not necessarily a required part of an adequate pre-filing investigation.” Because Future Link performed a comparison of the claims against the accused products prior to filing suit, the panel held that the district court did not abuse its discretion in finding that Future Link’s infringement claims were sufficiently factually supported. Moreover, the panel explained that “[i]f a reasonably clear legal justification can be shown for the filing of the paper in question, no improper purpose can be found and sanctions are inappropriate.”

Key Takeaways for Patent Litigants

  • Prevailing Party Status – A defendant can be a prevailing party entitled to fees and costs even if the case is dismissed with prejudice for reasons other than a merits determination.
  • Exceptionality Standard – Attorney fees under § 285 require more than just aggressive litigation; there must be clear evidence of misconduct or a case that is objectively baseless.
  • Sanctions – Rule 11 sanctions are reserved for egregious conduct, not for mere litigation losses or strategic decisions.

The Future Link decision reinforces the Federal Circuit’s consistent approach: While courts will not hesitate to sanction true litigation misconduct, they will not penalize parties simply for vigorously defending their interests in complex patent disputes. This clarity benefits both patent owners and accused infringers by setting predictable standards for fee-shifting and sanctions in federal court.

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In today’s crowded tech marketplace, brand identity is one of a company’s most valuable assets.  A well-chosen trademark doesn’t just help consumers recognize your business – it also provides legal protection against copycats and builds long-term brand equity. When product lifecycles move quickly and competition is global, developing and protecting strong trademarks should be an early priority for technology companies.

Choosing a Strong Mark

To protect your brand, the first step is selecting a mark that is distinctive for your business.  United States trademark law recognizes a spectrum of distinctiveness:

  • Fanciful marks (e.g., completely invented words, like “Kodak”) and arbitrary marks (e.g., real words used in unrelated contexts, like “Apple” for computers) are the strongest.
  • Suggestive marks (e.g., implying qualities of the product, like “Netflix”) can also be protectable but may require more effort to enforce.
  • Descriptive terms (e.g., “CloudStore” for cloud-based data storage) often face hurdles during registration, as they directly describe an aspect of the product or service.
  • Generic terms (e.g., “Email App” for email software) are never protectable.

Tech startups often lean toward descriptive marks so that potential customers can easily understand their product offerings. However, descriptive marks can be difficult and expensive to defend. For example, you usually cannot stop other parties from using descriptive terms, so other companies can use a similar (or identical) mark, which can confuse consumers. Investing early in a distinctive name helps avoid future rebranding and strengthens your trademark rights. Companies should also monitor how their marks are used to prevent genericism, where a brand name becomes synonymous with a product category (e.g., “Google” as a verb for searching on the internet).

Searching for Your Mark

Before committing to a mark, tech businesses should conduct a trademark clearance search to uncover other trademark uses that could create a legal risk. In some circumstances, certain words or phrases become popular choices for tech companies selecting new trademarks, which can create a crowded trademark landscape with risks for infringement. A trademark clearance search can identify trademark applications or registrations and common law users (i.e., non-registered use) that could prevent registration of your mark and/or prevent a trademark infringement risk. For example, the U.S. Patent & Trademark Office (USPTO) can cite an existing trademark registration or application to reject your trademark application. Additionally, if you select a mark too similar to an earlier user’s mark, you could infringe on that user’s rights and face a trademark dispute. A thorough search helps avoid costly infringement disputes, refusal of registration, and forced rebranding after launch. For tech businesses planning rapid growth or fundraising, a clearance search provides confidence that branding investments won’t be undermined by legal challenges.

Name Trends Among Tech Companies

One common trend among consumer-facing businesses is selecting a mark that intentionally misspells a common word to create a new word based on a descriptive term. As an example, Takl, a now-shuttered, Nashville-based startup, choose a mark that intentionally misspelled the word “TACKLE” for home task gig-matching services. While these approaches can help avoid descriptiveness issues and strengthen trademark protection, companies should be aware that misspellings may still face descriptiveness challenges if the meaning remains clear to consumers.  Additionally, a misspelled mark won’t shield a company for trademark infringement if the misspelled mark is phonetically or visually similar to an existing, third-party mark.

Navigating Federal Registration: Benefits and Pitfalls

Federal trademark registration can be crucial for tech companies making fast moves into new, emerging industries. While trademark rights can be based on use of the mark in commerce (e.g., common law, non-registered use), federal registration with the USPTO offers critical advantages: nationwide priority, public notice of ownership, access to federal courts, and the ability to use a registration mark (®).

However, the trademark application can present some common pitfalls:

  • Issues with the description of goods and services – Once filed, the description of goods and services (i.e., the list of products and offerings under the mark) can be narrowed, but not expanded. Additionally, the USPTO requires specific, clear wording in the description, and amendments are commonly required for a trademark to register.
  • Incorrect dates of first use in commerce – Dates must reflect actual commercial use of the mark for each identified good and service, not pre-launch activity. The date of first use can be amended in some circumstances, but a trademark examining attorney can require additional information.
  • Specimen errors – The USPTO requires evidence of real-world use, such as product packaging or a website showing the mark in connection with the goods and/or services. Specimen standards are different for goods than for services. Submitting mock-ups or advertising material that doesn’t describe the goods and/or services are common mistakes. Additionally, for downloadable software, applicants are required to submit specimens showing the mark in connection with the software available for download (e.g., on the Apple App Store).
  • Ownership issues – Filing under the wrong entity (e.g., an individual founder instead of the operating company) can be a fatal error in certain circumstances.

While trademark applications can present hidden challenges, a well-prepared application can smooth the trademark prosecution process.

Scaling Globally: The Madrid Protocol Advantage

Tech companies often expand internationally faster than traditional industries, making international trademark protection essential. The Madrid Protocol offers a cost-effective path: a single trademark application through the USPTO can extend trademark rights to over 130 countries. While this system streamlines filings, local offices still examine applications individually, and applicants should anticipate jurisdiction-specific requirements. Additionally, the Madrid Protocol requires that applicants file a “basic” application in their home country, and if the basic application is successfully challenged and cancelled at home, the Madrid Protocol registration can be cancelled too. However, for companies moving and expanding fast, the Madrid Protocol offers an efficient route for obtaining protection in multiple jurisdictions.

Strategic Considerations for Early-Stage Tech Companies

  1. Start Early – A strong trademark strategy should be part of a startup’s early considerations, not an afterthought. Trademark clearance searches before launch can prevent conflicts and rebranding costs.
  1. Protect Core Brands First – Prioritize registration for company names, flagship product/service names, and logos. Companies with limited budgets often should apply for a word mark for the company name rather than a logo because protection for word marks can be broader than protection for a logo.
  1. Monitor and Enforce – Trademark law requires that tech companies, regardless of their size, enforce their trademarks or risk abandoning those rights. As a business grows and others take notice, it should monitor for infringing trademark use.
  1. Leverage Trademarks as Assets – Trademarks can enhance valuation during fundraising or acquisition negotiations by demonstrating brand strength and exclusivity.

Conclusion

In the fast-moving tech industry, trademarks are more than just names or logos – they’re strategic business tools that secure brand identity, open doors to new markets, and deter competition. By selecting a distinctive mark, carefully navigating the federal registration process, and planning for international expansion, technology companies can create a brand foundation as scalable and innovative as their technology.

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The Federal Circuit’s recent decision in Google LLC v. Sonos, Inc. (24-1097) offers a compelling look at the evolving doctrine of prosecution laches, the written description requirement, and the practical realities of patent enforcement in the tech sector where technology typically evolves much faster than other industries. The case, which pitted two giants of the smart speaker and media playback industry against each other, involved a lengthy prosecution resulting in claims that covered technology adopted by Google before issuance that, according to the appellate panel, did not rise to the level of egregious misuse required for a patent to be rendered unenforceable under the doctrine of prosecution laches.

Background: The Zone Scene and Direct Control Patents

Sonos’ asserted patents, the so-called “Zone Scene” patents (U.S. Patent Nos. 10,469,966 and 10,848,885) and the “Direct Control” patent (U.S. Patent No. 10,779,033), are directed to the orchestration of media playback across multiple devices. The Zone Scene patents describe and claim the ability to create and save overlapping groups of speakers — “zone scenes” — to play synchronized audio, while the Direct Control patent covers the use of a control device (like a smartphone) to transfer playback responsibility to a speaker.

The litigation began with Google seeking a declaratory judgment of noninfringement in the Northern District of California, followed by Sonos’ infringement suit in the Western District of Texas. After a different panel of the Federal Circuit chastised the Western District of Texas for trying to hang on to the dispute, the cases were consolidated in the Northern District of California.

A series of summary judgment motions and a jury trial set the stage for the second appellate review.  In this aspect, before trial, the district court found that the Direct Control patent was invalid as obvious over Google’s YouTube Remote system in combination with Google’s U.S. Patent No. U.S. Patent 9,490,998. As a result, only the Zone Scene patents were at issue at trial and factored into the more than $32.5 million damages verdict awarded to Sonos by the jury.

On appeal, Sonos’ attempts to persuade the Federal Circuit that the district court was wrong about the invalidity of the Direct Control patent were unsuccessful. In fact, this was the only issue on appeal in which the Federal Circuit agreed with the district court. The other two challenges on appeal are discussed in a bit more detail below.

Written Description: Sounds Clear Enough

A central issue on appeal was whether Sonos’ Zone Scene patents were supported by adequate written description, particularly regarding the “overlapping” nature of zone scenes — where a single speaker could belong to multiple groups. The district court initially sided with Sonos on this issue but reversed course post-trial holding that the Zone Scene patents lacked written description for this feature and were thus invalid under 35 U.S.C. § 102. Wait, why § 102 you might ask? Well, the district court reasoned that, because Sonos’ 2019 amendment to the specification — which “clarified” the overlapping functionality — was a new matter not supported by the original 2006 and 2007 applications, the earliest filing date afforded the claims was after Google’s accused products were introduced and the claims were anticipated under § 102 by Google’s accused products.

The Federal Circuit disagreed with this approach by the district court procedurally and substantively. It thus treated the lower court’s invalidity ruling as arising under 35 U.S.C. § 112 —not 35 U.S.C. § 102 — and found that the original disclosure, particularly the descriptions accompanying Figures 3A and 3B, adequately conveyed to a person of ordinary skill that the inventors possessed the concept of overlapping zone scenes as early as 2007. The court emphasized that the written description requirement under 35 U.S.C. § 112 is satisfied if the disclosure, as a whole, reasonably conveys possession of the claimed invention. Here, the specification discussed multiple groups and scenes with overlapping room assignments, which was considered sufficiently descriptive of the overlapping nature of zone scenes. As such, the appellate panel reversed the district court’s invalidity judgment on this “ground.”

Prosecution Laches: Delay Does Not Make a Modern Submarine!

The other key issue on appeal was whether the Zone Scene patents were unenforceable under the doctrine of prosecution laches. After trial, the district court held the Zone Scene patents to be unenforceable under the doctrine of prosecution laches, finding that Sonos’ 13-year delay in claiming overlapping zone scenes was an “egregious misuse” of the patent system. In its reversal of the lower court’s ruling, the appellate panel drew heavily from the guidance in Hyatt v. Hirshfield where it is explained that prosecution laches may render a patent unenforceable where a patentee’s conduct constitutes an egregious misuse of the statutory patent system and set forth the two required elements:

  1. The patentee’s delay in prosecution must be unreasonable and inexcusable under the totality of circumstances; and 
  1. The accused infringer must have suffered prejudice attributable to the delay.

The panel found that Google had not suffered the requisite prejudice under the second prong and reversed the district court’s laches ruling. While the delay in claiming overlapping zone scenes by Sonos is certainly lengthy, the fact that the disclosure supporting the technology was published in 2013 — well before any purported investment by Google into the technology — weighed against any argument by Google that it had been caught unaware or that it invested in the technology in reliance on the absence of such claims. In this vein, the opinion includes a reminder that a patentee is free to pursue claims in a continuation application that encompass a competitor’s products as long as there is supporting disclosure. In fact, while “subject matter disclosed but not claimed is generally dedicated to the public, there is an exception for subject matter ‘claimed in a continuation or other application.’”

This fact pattern is easily distinguishable from the fact pattern in PMC v. Apple where PMC had filed hundreds of continuation applications, delayed prosecution for decades, and only surfaced its claims once the technology was widely adopted — classic submarine tactics. PMC’s calculated approach to keeping its claims underwater until after the technology was widely adopted was viewed by the Federal Circuit to be highly prejudicial to Apple because Apple had begun developing its technology in early 2000 and started to offer it commercially in 2003 — a decade before the asserted patent was issued. Indeed, there was no publication of the patent application prior to issuance as was the case here with the Zone Scene patents.

The “long con” strategies that once defined the era of submarine patents — strategies that were at the heart of the PMC v. Apple saga — simply did not exist here. This case demonstrates that mere delay, without concrete prejudice to competitors, is insufficient to trigger prosecution laches. The Federal Circuit’s insistence on actual prejudice, not just theoretical harm, marks a significant check on the reach of the prosecution laches doctrine.

Takeaways for Patent Prosecution and Enforcement

The opinion underscores several key lessons:

  • Written Description Still Matters – Even in complex, evolving technologies, the original disclosure must support later-claimed features. However, courts will read the specification as a whole and give credit where the invention is reasonably described.
  • Prosecution Laches Requires Prejudice – The doctrine is alive but slightly more cabined than before. Without evidence that a competitor invested in the technology before the claimed technology was disclosed, laches will not bar enforcement.
  • Strategic Prosecution Must Be Balanced – While continuation practice and claim amendments are legitimate, unreasonable and unexplained delays that prejudice others remain risky.

This decision puts serious limits on defendants who may want to invoke laches based on continuation applications – especially where they argue that the patent owner could have filed the claims earlier. While the failure to assert a claim in a timely manner can result in that claim being barred by laches under certain facts, prosecution delay alone is not enough to prevent a claim from being enforceable: It is up to the defendant to prove why that delay makes it unfair for the court to give relief, including a showing of prejudice by the accused infringer. In this aspect, this decision is helpful for patent owners to rely on when arguing a lack of prejudice to the accused infringer (providing that the later claimed technology was publicly available before the accused infringer started to develop and/or commercialize the technology).

In addition, this decision is a valuable reminder to companies and their respective patent counsel when performing clearance analyses to not just review issued claims in a patent family, but also consider the specification and other non-claimed technology if the family remains open.

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The Federal Circuit’s recent precedential decision in In re Erik Brunetti has surely raised some eyebrows in the trademark community (and beyond), not just for its subject matter (the attempted registration of a certain provocative word, which we will refer to here as the “F-bomb” for sensitive eyes and ears, for various goods and services) but also for its pointed critique of the Trademark Trial and Appeal Board’s (TTAB) reasoning and its implications for the “failure to function” doctrine. Let’s break down what happened, why it matters, and what practitioners should watch for as the case heads back to the TTAB.

Background: The Battle Over the Trademark at the USPTO

Erik Brunetti is no stranger to controversy or using the court system to his advantage. In 2019, the U.S. Supreme Court sent shockwaves through the trademark community in Iancu v. Brunetti when it held that the Lanham Act’s prohibition on registration of immoral or scandalous trademarks violates the First Amendment. That decision centered on Brunetti’s attempt to register the trademark “FUCT” in 2011, the TTAB’s refusal to register the mark based on the finding that the mark constituted “immoral or scandalous matter” under Section 1052(a) of the Lanham Act, and the ultimate reversal of the TTAB by the Supreme Court. Brunetti now has nine FUCT registrations in a variety of classes. As an aside, it will be interesting to see whether these marks are renewed because it looks as if the clothing brand has made some changes that might limit Brunetti’s choices for acceptable specimens of use (view here at your own risk).

After this huge win, Brunetti filed four intent-to-use applications to register the F-bomb for a range of goods (from sunglasses to jewelry to backpacks) and retail services.  The TTAB affirmed the examining attorney’s refusal to register the marks — not on the grounds of scandalousness since that avenue was unavailable to it — but because the mark allegedly “failed to function” as a trademark. In other words, the TTAB took the position that consumers would not perceive the F-bomb as indicating the source of the goods or services. It further explained that the word is a “commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.” The TTAB concluded that the word is so ubiquitous and expressive that it cannot serve as a source identifier.

The Federal Circuit’s Take: Choose Your Words Wisely TTAB

On appeal, a panel of the Federal Circuit vacated the TTAB decision and remanded for further proceedings, finding the TTAB’s reasoning lacking in clarity and precision.  While the court rejected most of Brunetti’s constitutional arguments (including claims of viewpoint discrimination and retaliation), it zeroed in on the need for “reasoned decision-making” under the Administrative Procedure Act (APA).

The panel acknowledged that the Lanham Act requires a mark to function as a source identifier, and that “failure to function” is a valid ground for refusal. However, the panel found the board’s analysis lacking in several respects:

  • Lack of Clear Standards – The panel criticized the TTAB’s decision for “sound[ing] in fact very much as though it has taken an ‘I know it when I see it’ approach to failure-to-function refusals.” The panel found that the TTAB failed to articulate what evidence or circumstances would allow a widely used word like the F-bomb to be registered, or what would distinguish it from other registered marks consisting of common words (like “LOVE”). Further, the TTAB “determined that Mr. Brunetti failed to meet a standard, but it did not articulate what that standard would be.”
  • Inconsistent Treatment – The panel noted that the USPTO has, in fact, registered the F-bomb for other goods such as snow globes and gummy candies and has registered other all-purpose words. The TTAB’s refusal to grapple with these inconsistencies or explain what “contextual information” would make a difference was a key factor in the panel’s remand.
  • Third-Party Use and Source Identification – While the panel recognized the TTAB’s proper consideration of third-party use of the F-bomb on similar goods, it found that this alone does not establish a coherent standard for when a mark fails to function.

What’s Next at the TTAB?

To be clear for all you F-bomb lovers out there, the Federal Circuit’s remand is not a green light for Brunetti’s registration. But it is a clear directive to the TTAB to develop and articulate a rational, consistent standard for “failure to function” refusals, especially when dealing with so-called “all-purpose word marks.” The TTAB must explain what evidence would suffice to show that a term — even one as ubiquitous and expressive as the F-bomb — can or cannot serve as a source identifier.

This decision is likely to have ripple effects beyond this case. The “failure to function” doctrine has been invoked with increasing frequency in recent years, and the Federal Circuit’s demand for clarity and consistency will force the TTAB to sharpen its analysis and provide more guidance to applicants and practitioners.

Key Takeaways for Trademark Practitioners

  • Expect More Rigorous TTAB Analysis – Going forward, the USPTO will need to provide clearer explanations and standards in “failure to function” cases, especially for marks consisting of common or expressive words.
  • Past Registrations Matter — at Least for Consistency – While the USPTO is not bound by prior examining attorney decisions, the Federal Circuit has signaled that it cannot simply ignore inconsistencies or refuse to explain them.
  • Evidence of Source Identification Is Critical – Applicants should be prepared to submit evidence that consumers perceive their mark — even if it is a common or expressive word — as a source identifier for their goods or services.
  • The “I Know It When I See It” Era Is Over – The days of opaque, subjective refusals are likely numbered. The TTAB must now provide reasoned, transparent decision-making that can withstand appellate scrutiny.

The Federal Circuit’s remand in In re Brunetti is a wake-up call for the TTAB and a potential turning point in the application of the “failure to function” doctrine. As the TTAB revisits this issue, trademark owners and practitioners should watch closely for new guidance on what it takes for a mark — no matter how provocative or commonplace — to function as a trademark in the eyes of the law. 

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The Federal Circuit recently issued a significant decision in the ongoing patent litigation between Laboratory Corporation of America Holdings (Labcorp) and Qiagen Sciences, LLC, reversing a Delaware district court’s judgment that had found Qiagen liable for infringement of Labcorp’s patents-at-issue. In doing so, it vacated the $4.7 million damages award against Qiagen and ordered the district court to grant judgment as a matter of law (JMOL) of non-infringement.

Background

The patents-at-issue — U.S. Patent No. 10,017,810 and U.S. Patent No. 10,450,597 — cover methods for preparing DNA samples for sequencing, with a focus on “enrichment” techniques that allow researchers to selectively amplify regions of interest in a DNA sample.  Labcorp (as successor to ArcherDX and Massachusetts General Hospital) alleged that Qiagen’s DNA preparation kits infringed claims of both patents.

With respect to the ʼ810 patent, representative claim 16 reads as follows:

16. A method for preparing a nucleic acid for sequencing, the method comprising:

(i) ligating a universal oligonucleotide tail adaptor that comprises a first ligatable duplex end and a second unpaired end to a nucleic acid comprising a known target nucleotide sequence to produce a ligation product, the universal oligonucleotide tail adaptor comprising an amplification strand and a blocking strand, wherein a 3′ duplex portion of the amplification strand and a 5′ duplex portion of the blocking strand are substantially complementary and form the first ligatable duplex end;

(ii) amplifying the ligation product using a first target-specific primer that specifically anneals to the known target nucleotide sequence and a first adaptor primer having a nucleotide sequence identical to a first portion of the amplification strand; and

(iii) amplifying an amplification product of (ii) using a second target-specific primer that specifically anneals to the amplification product of (ii) and a second adaptor primer having a nucleotide sequence identical to a second portion of the amplification strand, wherein ligating in step (i) comprises performing an overhang ligation reaction, and wherein the universal oligonucleotide tail adaptor further comprises a barcode portion.

The district court construed the term “second target-specific primer” to mean “a single-stranded oligonucleotide comprising a 3′ portion comprising a nucleic acid sequence that can specifically anneal to a portion of the known target nucleotide sequence comprised by the amplicon resulting from step (b), and a 5′ portion comprising a nucleic acid sequence that is identical to a second sequencing primer.” The term “second adaptor primer” was construed to mean “a nucleic acid molecule comprising a nucleic acid sequence identical to a portion of the first sequencing primer and is nested with respect to the first adaptor primer.”

With respect to the ʼ597 patent, claim 1 was considered representative and reads as follows:

1. A method of preparing nucleic acids for analysis, the method comprising:

(a) contacting a first nucleic acid template comprising a sequence of a first strand of a double-stranded target nucleic acid with a complementary target-specific primer that comprises a target-specific hybridization sequence, under conditions to promote template-specific hybridization and extension of the target-specific primer;

(b) contacting a second nucleic acid template comprising a sequence of a second strand that is complementary to the sequence of the first strand of the double-stranded target nucleic acid with a plurality of different primers that share a common sequence that is 5′ to different hybridization sequences, under conditions to promote template-specific hybridization and extension of at least one of the plurality of different primers, wherein the different hybridization sequences have different 3′ ends, and wherein each primer of the plurality of different primers does not anneal to the same sequence of the double-stranded target nucleic acid as any other primer of the plurality of different primers,

wherein, following (a) and (b), an extension product is generated to contain both a sequence that is characteristic of the target-specific primer and a sequence that is characteristic of the at least one of the plurality of different primers; and

(c) subjecting the extension product to an amplification reaction comprising successive rounds of polymerase extension of i) a tail primer that comprises a 3′ sequence that specifically anneals to the complement of the common sequence and that comprises a 5′ tail sequence, and ii) a primer that specifically anneals to the complement of the target-specific hybridization sequence.

The term “target-specific primer” was construed to mean “a primer that has a level of complementarity between the primer and the target such that . . . the primer will anneal to and mediate amplification of the tar-get nucleic acid and will not anneal to or mediate amplification of non-target sequences present in a sample.” 

After a five-day trial, a Delaware jury found that Qiagen willfully infringed the asserted claims of both patents and awarded Labcorp $4.7 million in damages. The district court denied Qiagen’s post-trial motions for JMOL and for a new trial, prompting Qiagen’s appeal.

The Appeal

The Federal Circuit’s opinion focused on whether there was sufficient evidence to support the jury’s findings of infringement under the proper claim constructions. To cut to the chase, the panel found that there was insufficient evidence from which a reasonable jury could have found liability. The court’s analysis addressed both patents separately.

The ’810 Patent: “Identical” Does Not Mean “Identical to a Portion” and No Substantial Similarity

A central issue for the ’810 patent was the construction of the term “identical” in the context of a “second target-specific primer.” The district court had allowed the jury to decide whether a primer that was “identical to a portion” of another sequence could satisfy the claim requirement of being “identical.” The Federal Circuit panel found this was error, emphasizing that claim construction is a matter of law for the court, not a factual issue for the jury:

When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute.

The panel explained that “identical” means “the same,” not “identical to a portion,” and that, because the patent’s specification and claim language distinguished between “identical” and “identical to a portion,” conflating the two would render the claim language superfluous. Because Qiagen’s accused product only matched a portion of the claimed sequence, the court found that no reasonable jury could have found infringement under the correct construction.

Moreover, the Federal Circuit rejected the jury’s finding of infringement under the doctrine of equivalents, finding that Labcorp failed to provide the required “particularized testimony and linking argument” to show that Qiagen’s product performed substantially the same function, in the same way, to achieve the same result as the claimed invention. The court found that the accused primer in Qiagen’s kit did not enrich the target sequence or provide specificity as required by the claims of the ʼ810 patent, and thus could not be considered equivalent.

The ’597 Patent: “Target-Specific Primer” Requirement Not Met

For the ’597 patent, the court examined whether Qiagen’s “FP” primer met the claim requirement of a “target-specific primer.” The court found that the FP primer annealed to an artificial adaptor sequence common to all DNA fragments, not to the “nucleic acid to be analyzed” as required by the claims of the ʼ597 patent. The court also rejected Labcorp’s argument that the FP primer could satisfy the claim in combination with another primer, holding that the claim language required the “target-specific primer” to perform the function independently.

Takeaways

On remand, the district court is instructed to enter judgment of non-infringement in favor of Qiagen. The Federal Circuit’s opinion provides a clear reminder of the importance of careful claim drafting, rigorous claim construction, and the high evidentiary bar for proving infringement — especially under the doctrine of equivalents:

  • Claim Construction Is for the Court – Disputes over the meaning of claim terms must be resolved by the court as a matter of law, not left to the jury as factual questions.
  • Precision in Claim Language Matters – The Federal Circuit will generally enforce distinctions in claim language, such as “identical” versus “identical to a portion,” and broader interpretations that render claim terms superfluous will not be viewed favorably.
  • Doctrine of Equivalents Requires Specific Evidence – To prove infringement under the doctrine of equivalents, patentees must provide detailed, limitation-specific evidence showing substantial similarity in function, way, and result.
  • Independent Functionality Requirements – Where claims require a specific element to perform a function, patentees cannot rely on the combined action of multiple elements to satisfy that requirement.

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In a significant blow to Apple, the Federal Circuit recently vacated a summary judgment of noninfringement in the case of Taction Technology, Inc. v. Apple Inc. The dispute centers on Taction’s U.S. Patent Nos. 10,659,885 and 10,820,117, which Taction alleged that the Taptic Engine in Apple’s iPhone and Apple Watch products infringed the ʼ885 and ʼ117 patents.

Background

The ʼ885 and ʼ117 patents cover tactile transducers — devices that produce bass frequency vibrations for perception by touch, such as those used in haptic feedback systems in smartphones and smartwatches. Claim 1 of the ʼ885 patent was considered representative:

1. An apparatus for imparting motion to the skin of a user, the apparatus comprising:

a housing;

a plurality of coils capable of carrying electrical current;

a plurality of magnets arranged in operative proximity to the plurality of coils;

a moving portion comprising an inertial mass and the plurality of magnets;

a suspension comprising a plurality of flexures that guides the moving portion in a planar motion with respect to the housing and the plurality of conductive coils;

wherein movement of the moving portion is damped by a ferrofluid in physical contact with at least the moving portion; and

wherein the ferrofluid reduces at least a mechanical resonance within the frequency range of 40-200 Hz in response to electrical signals applied to the plurality of conductive coils.

Each asserted claim requires damping the moving portion. During claim construction, the district court concluded the asserted claims are limited to “transducers with highly damped output” based on the following statement made during prosecution of the parent of both the ’885 and ’117 patents: “Applicant’s invention, in contrast, is directed to transducers with highly damped output.” The district court had granted summary judgment of non-infringement in favor of Apple on two main grounds:

  1. Missing Element – The court adopted a construction of the claim term “highly damped output” that required the transducer to have 1) an output that is highly damped (i.e., substantially uniform or flat over the normal operating frequency range), 2) achieved by mechanical damping, and 3) a Q-factor of less than 1.5.  Based on this construction, the court found that Apple’s accused products, which have a Q-factor greater than 1.5, did not infringe the ʼ885 and ʼ117 patents.
  1. Stricken Expert Testimony –  The court struck the infringement opinions of Taction’s expert, Dr. James Oliver, finding that his opinions introduced a new theory not disclosed in Taction’s infringement contentions and that he improperly argued claim construction to the jury. Without this expert testimony, the court concluded that Taction lacked a viable claim of infringement against Apple.

The Appeal

The Federal Circuit found multiple errors in the district court’s approach, leading to a reversal and remand for further proceedings. With respect to the district court’s claim construction, the Federal Circuit addressed a few key aspects:

  • “Highly Damped Output” – The court agreed that the claims are limited to “transducers with highly damped output” based on a clear and unmistakable disclaimer made during prosecution of the parent of the patents-in-suit. Indeed, the disclaimer applies to patents in the same family when the disclaimer relates to the same subject matter as the claim language at issue. However, it rejected the district court’s further limitations. In this vein, the Federal Circuit found no basis in the intrinsic record to limit the claims to mechanical damping since the specification was broad enough to encompass other types of damping, and there was nothing in the intrinsic evidence that justified such a limitation.
  • Q-Factor Limitation – The district court had limited the claims to transducers with a Q-factor of less than 1.5 based on statements in the specification disparaging higher Q-factors. The Federal Circuit found that these statements were not sufficiently specific about the numeric value that would constitute a drawback and, thus, did not rise to the level of a clear and unmistakable disavowal. Moreover, related patents in the family included explicit Q-factor limitations, and reading such a limitation into the claims at issue would render those limitations superfluous.

With respect to the stricken expert testimony, the Federal Circuit held that the district court abused its discretion by striking Dr. Oliver’s infringement opinions. The district court had interpreted the local patent rules to require Taction to explain in its infringement contentions not just where but how each claim limitation is found in the accused Apple products. The Federal Circuit panel found no support for this requirement in the plain language of the local rules or in binding precedent and concluded that, as such, requiring adherence to such an unwritten requirement was arbitrary and an abuse of discretion by the district court. In addition, the panel found that, even if some paragraphs of Dr. Oliver’s report improperly argued claim construction, this did not justify striking his entire analysis regarding the “highly damped output” limitation, especially since his understanding of the term was consistent with the court’s own construction.

Takeaways

The Federal Circuit’s decision provides a valuable reminder on claim construction and guidance on the treatment of expert testimony and the proper application of local patent rules. 

  • Claim Construction Must Be Anchored in the Record – Limitations should not be read into claims absent clear lexicography or disavowal. The Federal Circuit remains vigilant against importing limitations from the specification into the claims without a strong basis.
  • Prosecution History Disclaimer – While clear and unmistakable disclaimers during prosecution can limit claim scope, such disclaimers must be closely tied to the claim language and subject matter at issue.
  • Expert Testimony – Courts should be cautious in striking expert opinions wholesale, especially where the expert’s understanding of claim terms aligns with the court’s own construction.
  • Strict Adherence to Local Rules – Courts should not impose unwritten requirements in local patent rules without clear notice to the parties. Striking expert testimony based on such requirements is likely to be reversed on appeal.

Now that the case returns to the district court, Taction gets an extra bite at Apple. As compared to Optis Cellular Technology, LLC v. Apple Inc. (22-1925), where the Federal Circuit vacated both the infringement and damages judgments against Apple in a patent case involving standard-essential patents (SEPs) related to Long-Term Evolution (LTE) technology, Apple’s outcome here was rotten.