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Chill out: Numerical claim terms properly limited by industry standards

by Kyle Sorenson, PhD | May 21, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed a noninfringement finding, concluding that a claim limitation reciting a pH range having only a lower limit referred to pH measured at standard temperature in the art. The Court also found that prosecution history estoppel and the disclosure-dedication rule foreclosed reliance on the doctrine of equivalents to capture a pH below the express lower limit. Actelion Pharms. Ltd. v. Mylan Pharms. Inc., Case No. 24-1641 (Fed. Cir. May 13, 2026) (Reyna, Taranto, Stoll, JJ.)

Actelion owns patents covering lyophilized epoprostenol formulations used to treat cardiovascular disease. Epoprostenol is unstable in water because acidic conditions catalyze its degradation. The patents sought to improve stability by manufacturing highly basic bulk solutions, thereby producing freeze-dried formulations that remained stable after reconstitution in typical intravenous fluid. The asserted claims recite bulk solutions having a pH “of 13 or higher” or “greater than 13.”

Mylan sought approval to market a generic version of Actelion’s Veletri® product and was sued under 35 U.S.C. § 271(e)(2). The district court construed “a pH of 13 or higher” to mean “a pH of 12.98 or higher.”

It was undisputed that Mylan’s bulk solution measured below a pH of 12.98 at standard temperature (25±2°C). Actelion nevertheless contended that infringement existed because the solution exceeded pH 13 at lower temperatures during refrigerated manufacturing.

The district court disagreed, finding that the claim term “a pH of 13 or higher” referred to a pH measured at a temperature standard in the field, and that therefore Mylan did not literally infringe. The district court further ruled that Actelion was barred from asserting and had not proved infringement under the doctrine of equivalents. Actelion appealed.

The Federal Circuit agreed with the district court that a person of ordinary skill would interpret the claimed pH values as measurements taken at standard temperature, absent an express indication otherwise. Although the claims did not specify measurement conditions, the specification consistently treated pH values as standard-temperature measurements. The Court emphasized that the specification compared results across pH levels without suggesting temperature-dependent variation and described an “alkaline environment” as “pH > 7,” a statement accurate only at standard temperature.

The Federal Circuit found that extrinsic evidence reinforced that understanding. The United States Pharmacopeia and expert testimony established that, in pharmaceutical formulations, pH is ordinarily measured at 25±2°C unless otherwise specified. The Court found no clear error in the district court’s factual findings on industry practice.

Because Mylan’s product failed to meet the pH limitation under that standard, the Federal Circuit affirmed the finding of no literal infringement.

The Federal Circuit also rejected Actelion’s doctrine of equivalents theory. During prosecution, Actelion amended the claims from “greater than 12” to “a pH of 13 or higher” after the examiner recognized unexpected results at pH 13 but not at pH 12. The Court found that this narrowing amendment gave rise to prosecution history estoppel, barring Actelion from recapturing lower pH values through equivalence.

Separately, the Federal Circuit applied the disclosure-dedication rule. The patents [...]

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Appellate deference: Reinforcing limits on reweighing evidence

by Ian J. Howard | May 21, 2026 | Patents

Clarifying the proper scope of appellate review, the US Court of Appeals for the Federal Circuit affirmed an International Trade Commission final determination in full. The Court upheld the scope of the exclusion of only certain accused products and permitted importation of redesigned versions, concluding that the Commission correctly viewed the evidence and claim terms. Bissell, Inc. v. ITC, Case No. 24-1509 (Fed. Cir. May 11, 2026) (Moore, Taranto, Stoll, JJ.)

Bissell initiated a Section 337 investigation alleging that Tineco Intelligent imported wet/dry surface-cleaning devices that infringed Bissell’s patents. Following an evidentiary hearing, the administrative law judge (ALJ) found infringement of Tineco’s original products and recommended exclusion but concluded that Tineco’s redesigned products did not infringe and therefore fell outside the scope of relief.

The Commission affirmed the ALJ’s determination, which resulted in a limited exclusion order directed to the infringing products only. Both parties appealed.

Bissell challenged the finding that Tineco’s redesigned products did not literally infringe a limitation requiring that “the battery charging circuit is disabled” during the “self-cleaning mode . . . and remains disabled during the . . . cleanout cycle.” Tineco modified its products so that some battery charging did occur during a “self-cleaning mode,” but battery charging was disabled for most of the cleaning cycle. Before the ALJ, Bissell’s expert opined that infringement of this claim essentially only required a period in which self-cleaning occurred and while the battery charger was disabled. The ALJ rejected Bissell’s theory, determining that the claim required the battery charger to “remain[] disabled during the . . . cleanout cycle.”

According to Bissell, the ALJ’s conclusion amounted to improper claim construction. The Federal Circuit disagreed, finding that the ALJ had merely applied the plain and ordinary meaning of the claim term. As Bissell had not disputed that the ALJ’s findings were supported by substantial evidence, the Federal Circuit affirmed these findings.

Tineco cross-appealed the ALJ’s determination that Bissell’s domestic industry products satisfied the disabled battery limitation. According to Tineco, the evidence was inadequate to support the ALJ’s determination because the source code that Bissell’s expert relied on was never produced during the Commission trial.

The Federal Circuit found that Bissell’s expert testimony was sufficient under Federal Rule of Evidence 703, which permits experts to rely on facts or data they have been made aware of or personally observed, even if those materials are not themselves admissible, as long as they are of a type reasonably relied upon in the field. The Court emphasized that neither party disputed that experts in this context routinely rely on source code to assess infringement. The Court further concluded that substantial evidence supported the ALJ’s determination, highlighting that:

The source code had been produced during discovery.
The expert’s opinions were not conclusory.
Tineco did not meaningfully test the testimony through cross-examination or offer competing expert analysis.
The ALJ’s findings were independently corroborated by a Bissell internal document admitted at trial.

Practice note: Where the Commission uses the “face of the claim to [...]

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Shocking: Fifth Circuit affirms disgorgement award based on willful infringement

by Tyler Jackson | May 21, 2026 | Trademarks

The US Court of Appeals for the Fifth Circuit affirmed a finding of trademark infringement and unfair competition under the Lanham Act and Texas law, upholding an award of profits based on willful infringement. The Court vacated and remanded the permanent injunction as overbroad, however. Trojan Battery Co., L.L.C. v. Golf Carts of Cypress, L.L.C., Case No. 25-20243 (5th Cir. May 8, 2026) (Jones, Barksdale, Stewart, JJ.)

Trojan Battery has sold deep-cycle batteries, including batteries commonly used in golf carts, under the TROJAN mark for decades. It owns multiple federal registrations covering the Trojan name and related marks, including TROJAN for use on electric storage batteries; TROJAN BATTERY SALES for use in connection with retail and wholesale store services and wholesale distributorships; and the following graphic mark for use on electric storage batteries, deep-cycle electric storage batteries, and lithium-ion batteries:

Golf Carts of Cypress (GCC) and Trojan EV (collectively, defendants), both owned by Federico Nell, entered the golf cart market between 2019 and 2020. Trojan EV marketed carts under the “Trojan-EV” name, and GCC sold those carts (bearing the below logo mark) alongside carts containing authentic TROJAN batteries.

Trojan Battery sued for trademark infringement and unfair competition. Following a five-day bench trial, the district court found liability, awarded disgorgement of defendants’ profits, and entered a permanent injunction. Defendants appealed.

Defendants challenged the district court’s likelihood-of-confusion analysis. The Fifth Circuit rejected that challenge, emphasizing that the district court did not clearly err in concluding that confusion was likely under the Fifth Circuit’s multifactor test. The Fifth Circuit acknowledged that the district court overstated the evidence of actual confusion. A single misdirected inquiry and several additional instances over more than two years were insufficient, standing alone, to show meaningful marketplace confusion. Nonetheless, the absence of convincing evidence on that factor was not dispositive.

Critically, the Fifth Circuit upheld the district court’s finding of intent. The trial court discredited Nell’s testimony that he was unaware of Trojan Battery’s marks and reasonably inferred that defendants adopted TROJAN-EV to capitalize on the senior mark’s goodwill. That finding weighed heavily in favor of confusion and supported the ultimate liability determination. Considering the record as a whole, the Court concluded that most factors favored Trojan Battery and affirmed the infringement finding.

The Fifth Circuit also affirmed the award of defendants’ profits. Applying the Lanham Act’s equitable framework, the Court found no abuse of discretion in awarding disgorgement as a deterrent against willful infringement. The Fifth Circuit endorsed the district court’s use of the Lanham Act’s burden-shifting approach to calculate profits, under which the plaintiff establishes gross sales and the defendant bears the burden of proving deductible expenses. Given the finding of willful infringement, the Court agreed that disgorgement was an appropriate remedy, particularly where injunctive relief alone might not deter future misconduct.

The Fifth Circuit reached a different conclusion as to the permanent injunction. Although injunctive relief [...]

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One frame is enough: Second Circuit narrows de minimis use, limits fair use at pleading stage

by Nicholas J. DiRoberto | May 14, 2026 | Copyrights

The US Court of Appeals for the Second Circuit affirmed in part and reversed in part a judgment on the pleadings, clarifying that the de minimis doctrine does not apply where the copyrighted work is identifiable in the secondary use – even if only a single frame is copied – and that fair use is unlikely to be resolved at the pleading stage when an entire copyrighted work is republished for commercial purposes. Richardson v. Townsquare Media, Inc., Case No. 25-291-CV (2d Cir. Apr. 23, 2026) (Lynch, Nardini, Menashi, JJ.)

Delray Richardson operates the YouTube channel “Straight Game TV.” In May 2015, he posted a 42 second video showing Michael Jordan intervening in a confrontation. The video gained widespread attention in July 2023 after the hip hop blog DailyLoud reposted it in full on X. Townsquare Media subsequently published an article reporting on the incident and embedded DailyLoud’s X post containing the entire video.

In a separate incident, Richardson recorded an interview with rapper Grandmaster Melle Mel in March 2023. Richardson posted a three-minute clip of the interview, in which Melle Mel made controversial statements about Eminem, to YouTube. The following day, Townsquare published an article discussing the interview and embedded the YouTube clip. The article’s header image included a screenshot taken from the Melle Mel video, depicting Melle Mel next to an image of Eminem. Two days later, Townsquare published a follow up article about rapper 50 Cent’s response and included a second screenshot from the same video, this time placed next to an image of 50 Cent.

Richardson sued Townsquare for copyright infringement based on Townsquare’s use of the Jordan video, the Melle Mel video, and the two screenshots. Townsquare moved for judgment on the pleadings, arguing that:

Its use of the Jordan video constituted fair use.
Its embedding of the Melle Mel video was authorized under YouTube’s terms of service.
The screenshots were de minimis.

The district court accepted each argument and dismissed the case in full. Richardson appealed.

The Second Circuit reversed the district court’s fair use ruling as to the Jordan video. Applying the four factors under 17 U.S.C. § 107, the Second Circuit disagreed with the district court’s analysis of the first, third, and fourth factors.

As to the first factor (the purpose and character of the use), the Second Circuit concluded that it was “debatable” whether Townsquare’s article added meaningful commentary, and even if it did, any transformative character was substantially offset by the use’s commercial nature.

On the third factor (the amount and substantiality of the portion used), the Second Circuit emphasized that Townsquare republished the entire video, rather than linking to or embedding it in a manner consistent with the original platform. That full reproduction weighed heavily against fair use at the pleading stage.

With respect to the fourth factor (the effect on the potential market), the Second Circuit concluded that Townsquare failed to carry its burden of showing that its use did not usurp a market for the [...]

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Transformative documentary use, work made for hire doctrine defeat copyright claims

by Lisette Donewald | May 14, 2026 | Copyrights

Elaborating on the application of the fair use doctrine in the documentary context, the US Court of Appeals for the Tenth Circuit affirmed summary judgment after determining that seven of the eight works at issue were works made for hire and that the defendant’s use of the eighth work constituted fair use under all four statutory factors. Whyte Monkee Productions, LLC v. Netflix, Inc., Case No. 22-6086 (10th Cir. Apr. 30, 2026) (Holmes, Hartz, Carson, JJ.)

The dispute arose from Netflix’s use of video footage in its documentary series Tiger King. The footage was filmed by Timothy Sepi, who later claimed copyright ownership through his company, Whyte Monkee Productions. Whyte alleged that Netflix infringed its copyrights by including eight videos in the series.

Netflix argued that the first seven videos were made for hire because Sepi created them while he was employed by the Greater Wynnewood Exotic Animal Park. The district court agreed, crediting evidence that filming was part of Sepi’s job responsibilities and noting significant inconsistencies between Sepi’s 2016 and 2021 deposition testimony regarding his employment and role in creating the footage.

The eighth video, which was the only one not created within the scope of Sepi’s employment, was a 24-minute recording of a funeral. Netflix used approximately 66 seconds of the funeral video in Tiger King. The district court agreed with Netflix that this was fair use. Whyte appealed.

Whyte advanced new arguments on appeal challenging the work made for hire status of the first seven videos. The new arguments differed meaningfully from those presented to the district court. The Tenth Circuit found that the new arguments were waived because Whyte failed to raise the theories below or argue for plain error on appeal. Thus, the Court declined to consider them and affirmed summary judgment as to the first seven videos.

The Tenth Circuit affirmed the district court’s ruling regarding the eighth video that all four fair use factors favored Netflix.

Factor one: Transformative use and justification

The Tenth Circuit’s analysis of the first factor (the purpose and character of the use) emphasized that the central question is whether the secondary use has a distinct purpose or character, not merely whether it adds new meaning. The Court explained that the original funeral video functioned as a memorial recording while Tiger King repurposed the footage to illustrate and comment on Joe Exotic’s personality, specifically his performative behavior and megalomania. That difference in purpose rendered the use transformative.

The Court clarified the role of “justification” and “targeting” in transformative use analysis. Where a secondary use has a sufficiently distinct purpose or character, no independent justification, such as parody or direct commentary on the original work, is required. Targeting the original work is necessary only where the secondary use does not otherwise establish meaningful transformativeness. This analysis tempers overly rigid interpretations of the Supreme Court’s Warhol v. Lynn decision and preserves flexibility for documentary and contextual uses.

The Court further determined that although Tiger King was a commercial [...]

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It’s not a trap: A shared copyright license can still be exclusive

by Keval Amin | May 14, 2026 | Copyrights

Addressing statutory standing under the Copyright Act, the US Court of Appeals for the Eleventh Circuit affirmed in part, vacated in part, and remanded, holding that a license is not rendered nonexclusive merely because the copyright owner retained certain rights or previously granted nonexclusive licenses. Great Bowery Inc. v. Consequence Sound LLC, Case No. 24-12482 (11th Cir. May 5, 2026) (Jordan, Newsom, Corrigan, JJ.)

In 2014, a photographer entered into an artist agreement granting Great Bowery the exclusive right to license and market certain photographs. The photographer retained the ability to provide those works to select third parties for limited projects. Around the same time, Condé Nast invited the photographer to shoot the cast and crew of new Star Wars films and obtained a nonexclusive license to publish the photographs in Vanity Fair magazine.

When photographs from Vanity Fair’s Star Wars feature later appeared on Consequence Sound’s website, Great Bowery sued Consequence Sound for copyright infringement.

During discovery, Great Bowery relied on a 2018 authorization letter from the photographer permitting Great Bowery to enforce her copyrights on her behalf. The district court denied Great Bowery’s untimely motion to amend the complaint to add the photographer as a coplaintiff and granted summary judgment for Consequence Sound. The district court concluded that Great Bowery lacked statutory standing under 17 U.S.C. § 501(b) because it did not hold an exclusive copyright interest. Great Bowery appealed.

The Eleventh Circuit affirmed the denial of leave to amend, explaining that while third party infringers generally may not challenge technical deficiencies in a copyright transfer, they are permitted to dispute whether a purported transfer actually conveyed any exclusive rights. Because Consequence Sound challenged the substance of Great Bowery’s alleged ownership rather than the adequacy of the writing, Great Bowery bore the burden of establishing standing, and Consequence Sound was entitled to contest it.

On the merits, however, the Eleventh Circuit vacated the grant of summary judgment, holding that the district court misapplied governing law on exclusive licenses. The district court had concluded that Great Bowery’s license was necessarily nonexclusive because the photographer retained certain usage rights and had previously granted Condé Nast a nonexclusive publication license. According to the Eleventh Circuit, that reasoning misunderstood the divisibility of copyright interests.

The Eleventh Circuit explained that copyright rights enumerated in 17 U.S.C. § 106, such as reproduction, distribution, and public display, are divisible and independently transferable. As a result, a copyright owner may retain or grant some rights while conveying others exclusively. The presence of retained rights or prior nonexclusive licenses does not categorically defeat exclusivity as long as the licensee possesses at least one exclusive § 106 right sufficient to confer standing under § 501(b).

Applying that principle, the Eleventh Circuit rejected the argument that Condé Nast’s preexisting nonexclusive license necessarily precluded Great Bowery’s exclusive rights. A nonexclusive license grants only permission to use copyrighted material and does not transfer ownership of any portion of the copyright. Thus, the photographer remained free to transfer exclusive ownership interests to [...]

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Words of approximation require more precision after narrowing amendments

by Amol Parikh | May 14, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed a judgment of indefiniteness, concluding that the use of the term “about” to define a critical pH limitation failed to inform skilled artisans of claim scope with reasonable certainty under 35 U.S.C. § 112. Enviro Tech Chemical Services, Inc. v. Safe Foods Corp., Case No. 24-2106 (Fed. Cir. May 4, 2026) (Lourie, Prost, Burroughs, JJ.)

Enviro Tech owns a patent that claims a method for treating poultry during processing to increase the weight of the poultry by using peracetic acid. Each claim in the patent requires the step of altering the pH of the peracetic-acid-containing water to “a pH of about 7.6 to about 10” by adding an alkaline source.

During claim construction, the district court concluded that the term “about” was indefinite, finding that the intrinsic evidence did not inform a skilled artisan as to the scope of the term “about” with reasonable certainty. Enviro Tech appealed.

The Federal Circuit has long held that words such as “about” and “approximately” may be appropriately used to avoid a strict numerical boundary to the specified parameter. However, when a word of approximation is used, the parameter’s range must be reasonably certain based on the “technological facts of the particular case” and considering the claims, specification, prosecution history, and extrinsic evidence.

Starting with the claims, the Federal Circuit found that they failed to provide meaningful guidance on how far below a pH of 7.6 or above a pH of 10 the peracetic-acid-containing water could fall and still satisfy the limitation. Although the parties agreed that “about” ordinarily means “approximately,” the Court concluded that substituting one term for the other does not clarify the permissible deviation from the claimed range or otherwise inform a skilled artisan of the scope of the claims.

The Federal Circuit next turned to the specification, finding that it also failed to define the scope of “about” with reasonable certainty because it provided inconsistent guidance on acceptable pH deviations. Although the specification disclosed experiments where Enviro Tech only proceeded when the measured pH was within 0.3 of the target, the specification also described instances where Enviro Tech continued experiments despite larger deviations, including a large scale poultry processing test with pH variances of up to 0.5. Given these unexplained exceptions (particularly in a commercially significant real world setting) the Court found that the 0.3 threshold could not be treated as a reliable boundary for “about.” Thus, the Court found that the specification’s conflicting examples left skilled artisans without clear notice of the claimed scope.

Turning to the prosecution history, the Federal Circuit found that Enviro Tech treated the term “about” inconsistently. For instance, in one office action response, Enviro Tech argued that “a peracetic acid solution at the lower end of the claimed range, pH 7.6,” would not have been obvious over the prior art, notably omitting the word “about.” Yet on the very next page, Enviro Tech asserted that “a step of adjusting the pH to the range [...]

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Lost in the constellation: Result-oriented claims miss the mark under § 101

by Keval Amin | May 7, 2026 | Patents

Addressing issues related to patent eligibility, infringement, and damages, the US Court of Appeals for the Federal Circuit vacated in part, affirmed in part, and remanded, finding that certain result-oriented claims were directed to an abstract idea, lacked an inventive concept, and were therefore not patent eligible. Constellation Designs, LLC v. LG Electronics Inc., et al., Case No. 24-1822 (Fed. Cir. Apr. 28, 2026) (Lourie, Stoll, Oetken, JJ.)

Constellation sued LG for infringing its patents directed to communication systems employing non-uniform constellations, which are signal configurations designed to improve data transmission capacity compared to conventional uniform constellations. The accused products were LG televisions compliant with the ATSC 3.0 broadcast standard.

Constellation successfully moved for summary judgment in its favor on patent eligibility under 35 U.S.C. § 101. At trial, Constellation asserted nine claims across four patents, which the parties grouped into two categories: “optimization claims,” which recited constellations optimized for capacity, and “constellation claims,” which recited specific non-uniform constellation configurations. A jury found willful infringement and awarded damages. The district court denied LG’s motions for judgment as a matter of law (JMOL) of noninfringement and no damages. LG appealed.

On the patent eligibility issue, the Federal Circuit applied the two-step Alice framework and vacated the district court’s ruling as to the optimization claims. At step one, the Court found those claims directed to the abstract idea of optimizing a constellation for parallel decoding capacity. The Court emphasized that the claims were written in a result-oriented manner, reciting a constellation “optimized” for capacity without specifying how that optimization was achieved. Although the claims did not cover every possible optimization technique, they were broad enough to encompass all ways of optimizing a constellation for parallel decoding capacity. The Court rejected Constellation’s reliance on technical details in the specification and reiterated that the § 101 inquiry focuses on the claim language, not unclaimed implementation details. At step two, the Court found no inventive concept, explaining that Constellation’s alleged innovation was the abstract idea itself and that arguments based on novelty or nonobviousness do not satisfy § 101.

In contrast, the Federal Circuit affirmed the district court’s eligibility determination for the constellation claims. The Court explained that representative claims recited specific, concrete configurations (such as unequally spaced constellation points, distinct labeling, and overlapping point locations) amounting to a particular technological solution to a defined problem. Because those claims were not directed to an abstract idea, the Court did not proceed to step two.

On infringement, the Federal Circuit affirmed the denial of JMOL. The Court clarified that a patentee may rely on industry standard compliance to prove some claim limitations while using product-specific evidence for others, as long as the standard is sufficiently specific and either mandatory or shown to be implemented in the accused products. Applying that framework, the Court found that substantial evidence supported the jury’s verdict.

As for damages, the Federal Circuit affirmed the denial of LG’s JMOL motion and its challenge to the admissibility of Constellation’s damages expert. The Court [...]

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Missed delivery: Institution decision statutorily unreviewable

by Tyler Jackson | May 7, 2026 | America Invents Act, Patents

Addressing the scope of appellate review under the America Invents Act, the US Court of Appeals for the Federal Circuit determined that challenges grounded in 35 U.S.C. § 312(a)(2)’s real-party-in-interest requirement are unreviewable where they are closely tied to the Patent Trial & Appeal Board’s institution decision. Fed. Express Corp. v. Qualcomm Inc., Case No. 24-1236 (Fed. Cir. Apr. 29, 2026) (Hughes, Cunningham, Stark, JJ.)

FedEx owns a patent related to sensor-based logistics systems that provide shipment information and allow customized access controls. After FedEx sued Roambee for infringement in district court, Qualcomm (although not a party to that litigation) filed inter partes review (IPR) petitions challenging the FedEx patent. Qualcomm identified the Roambee litigation as a related matter but did not list Roambee as a real party in interest.

FedEx opposed institution, arguing that Qualcomm’s failure to identify all real parties in interest violated § 312(a)(2), which requires that a petition identify all such parties before it may be considered. The Board instituted review and later denied FedEx’s motion to terminate, explaining that it would not decide the real-party-in-interest issue because doing so was unnecessary to resolve the proceeding absent a time-bar or estoppel concern. In its final written decision, the Board declined to revisit the issue and held the challenged claims unpatentable as obvious. FedEx appealed.

On appeal, the Federal Circuit declined to review FedEx’s real-party-in-interest challenges. Relying on Supreme Court precedent and its own case law, the Federal Circuit explained that § 312(a)(2) is a statutory prerequisite “closely tied” to institution because a petition may be considered only if it identifies all real parties in interest. Thus, challenges asserting that the Board failed to properly apply § 312(a)(2) necessarily attack the institution decision itself and fall within § 314(d)’s bar on appellate review.

The Federal Circuit rejected FedEx’s attempt to reframe its arguments as a challenge to the Board’s post-institution conduct, including the denial of FedEx’s motion to terminate. The Court explained that even when raised later in the proceeding, such arguments “boil down” to whether the Board should have instituted IPR in the first place. Because § 312(a)(2) operates as a prerequisite to institution, those challenges remain unreviewable.

Turning to the merits, the Federal Circuit vacated the Board’s obviousness determination as to several claims. The Board had found those claims obvious based on a combination of prior art because it believed FedEx had not contested that ground. Both parties agreed on appeal that this premise was incorrect: FedEx had in fact disputed the combination. Because the Board’s analysis rested on a mistaken understanding of the record and failed to address FedEx’s arguments or fully evaluate the prior art, the Court concluded that meaningful appellate review was not possible and vacated the Board’s obviousness determination.

The Federal Circuit declined FedEx’s request for outright reversal of the Board. The Court explained that reversal is appropriate only where the record supports a single outcome, but here unresolved factual issues remained, including whether the prior art satisfied the relevant claim [...]

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Expert rule: There are reviewable non-final agency actions

by Ian J. Howard | May 7, 2026 | Patents

In a decision addressing the scope of constitutional challenges to agency action, the US Court of Appeals for the District of Columbia Circuit affirmed a district court’s injunction barring an investigation by the US International Trade Commission premised on a protective order issued by an unconstitutionally appointed administrative law judge (ALJ). Sidak v. ITC, Case No. 23-5149 (D.C. Cir. Apr. 24, 2026) (Katsas, Rao, Walker, JJ.)

Gregory Sidak served as an expert witness in a 2017 Commission proceeding. During that proceeding, the presiding ALJ issued a protective order governing confidential information. At the time, ALJs were appointed unilaterally by the Commission’s chairman – a practice later called into question by the Supreme Court’s decision in Lucia v. SEC, which held that ALJs are “inferior officers” who must be appointed by the president, courts, or the “head” of a department. The Commission subsequently ratified the appointments of its ALJs but did not ratify their prior actions, including the protective order at issue.

Years later, the ITC initiated an investigation into whether Sidak violated that protective order. In response, Sidak filed suit in district court seeking to enjoin the investigation, arguing that the order was unenforceable because it had been issued by an improperly appointed ALJ and never ratified. The district court granted a permanent injunction, and the Commission appealed.

The DC Circuit affirmed, first addressing several threshold procedural issues. The Court determined that the district court had subject matter jurisdiction under 28 U.S.C. § 1331 because Sidak’s claim arose directly under the US Constitution. The Court explained that no applicable statutory review scheme displaced that jurisdiction for this type of claim, and that litigants may pursue equitable relief to enjoin unconstitutional agency action.

The DC Circuit also rejected the Commission’s argument that Sidak’s claim was unripe. Because the case presented purely legal questions regarding the enforceability of the protective order and Sidak faced a credible threat of sanctions, the dispute was both constitutionally and prudentially ripe. The Court further explained that final agency action is not required where a plaintiff brings an implied constitutional claim rather than a claim under the Administrative Procedure Act.

Turning to timeliness, the DC Circuit determined that Sidak had not forfeited his Appointments Clause challenge. Unlike a party that invokes an agency adjudication and seeks a ruling on the merits, Sidak was a third-party witness who neither initiated the underlying proceeding nor sought relief from the ITC. The Court emphasized that forfeiture principles apply differently in that context and that Sidak had no earlier opportunity or obligation to raise his claim.

On the merits, the DC Circuit affirmed the district court’s decision to enjoin the Commission’s investigation. The Commission did not dispute that the ALJ who issued the protective order had been improperly appointed or that the order had not been ratified. The DC Circuit concluded that the district court did not abuse its discretion by granting injunctive relief to prevent enforcement of an order lacking constitutional authority.

Finally, the DC Circuit rejected the Commission’s challenge [...]

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