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When is a word too common to trademark? Asking for a four-letter friend

by Sarah Bro | Sep 4, 2025 | Trademarks

In response to artist and entrepreneur Erik Brunetti’s ongoing efforts to register FUCK as a trademark for various goods and services, the US Court of Appeals for the Federal Circuit vacated the Trademark Trial & Appeal Board’s refusal to register the term but agreed with the Board’s position on the registrability of widely used “all-purpose words.” The Court ordered the remand because it found the Board’s reasoning insufficiently clear and lacking a coherent standard. In re Brunetti, Case No. 23-1539 (Fed. Cir. Aug. 26, 2025) (Dyk, Reyna, JJ.) (Lourie, J., dissenting).

Brunetti filed four intent-to-use applications to register FUCK as a trademark for goods, including sunglasses, jewelry, and backpacks, and services such as retail store offerings. The US Patent & Trademark Office (PTO) refused registration, asserting that the term failed to function as a trademark under Sections 1, 2, 3, and 45 of the Lanham Act and citing its widespread use as a commonplace expression conveying varied sentiments.

The Board affirmed the PTO’s decision, concluding that FUCK was “arguably one of the most expressive words in the English language” and that consumers were accustomed to seeing it used by various sources on similar goods. The Board reasoned that such ubiquity rendered the term incapable of serving as a source identifier. It rejected Brunetti’s constitutional arguments and distinguished the Supreme Court’s prior decision in Iancu v. Brunetti, which invalidated the PTO’s refusal to register the mark FUCK on grounds of immorality. Brunetti appealed.

The Federal Circuit agreed that the Board had properly considered third-party use and the expressive nature of the term. However, the Court found the Board’s decision wanting in clarity and consistency. It criticized the Board’s failure to articulate a workable standard for when “all-purpose word marks” such as FUCK can function as trademarks, especially in light of other registrations for similarly ubiquitous terms such as LOVE and even FUCK itself for snow globes and gummy candies.

The Federal Circuit emphasized that the Board must engage in reasoned decision-making under the Administrative Procedure Act and provide sufficient guidance for future cases. The Court therefore vacated the decision and remanded for further proceedings.

Despite the remand, the Federal Circuit dismissed Brunetti’s argument that the PTO had retaliated against him for his prior Supreme Court victory in Iancu v. Brunetti. Brunetti claimed that the timing of the refusals (following his successful challenge to the PTO’s immoral/scandalous bar) suggested retaliation. The Court found this argument unpersuasive, noting that Brunetti offered no evidence beyond timing, and that the Board’s analysis remained viewpoint-neutral and focused on whether the mark functioned as a source identifier.

Judge Lourie dissented, arguing that the Federal Circuit should have affirmed the Board’s refusal on grounds that the term FUCK is too ubiquitous and expressive to function as a source identifier for the goods and services in question. He emphasized that the word’s widespread use across varied emotional contexts prevents consumers from associating it with a specific brand. From Judge Lourie’s perspective, FUCK on its own [...]

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Standing: Don’t get owned by incorrect trademark ownership

by Jolie B. Schenerman | Sep 4, 2025 | Trademarks

The US Court of Appeals for the Second Circuit affirmed a district court’s dismissal of a trademark and unfair competition suit, ruling that the plaintiff did not own the asserted trademark. The Court also held that the owner of the trademark failed to ratify the action and therefore the plaintiff did not have standing to assert unfair competition claims. Ripple Analytics Inc. v. People Ctr., Inc., Case No. 24-490 (2d Cir. Aug. 26, 2025) (Park, Nathan, Perez, JJ.)

In March 2018, the US Patent & Trademark Office granted Ripple Analytics a federal trademark for RIPPLE in connection with human resources software. The following month, Ripple assigned all rights to its intellectual property to co-founder Noah Pusey via an assignment agreement. Around the same time, People Center applied to register RIPPLING for similar software. It later abandoned the application but continued to operate under the Rippling name.

Ripple sued People Center in 2020 for trademark infringement and unfair competition. During discovery, Ripple produced the assignment agreement. People Center responded by moving to amend its answer, seeking dismissal for failure to prosecute in the name of the real party in interest and requesting summary judgment.

The district court found that Pusey, not Ripple, was the real party in interest and dismissed the case because Pusey had not ratified the action under Federal Rule of Civil Procedure 17. It also dismissed the unfair competition claims for lack of standing and denied Ripple’s motion to amend the complaint as futile. Ripple appealed.

The Second Circuit affirmed the dismissal, finding that Ripple had “unambiguously” assigned all intellectual property rights, including the trademark at issue, to Pusey, making him the real party in interest. The Court emphasized that the assignment agreement transferred all of Ripple’s “claims, causes of action, and rights to sue,” regardless of when those claims arose. Ripple argued that Pusey satisfied Rule 17 by ratifying the pleadings and agreeing to be a plaintiff. The Court rejected this argument, noting that Pusey’s declaration stating his involvement in the case and strong interest in its outcome did not amount to an agreement to be bound by the suit, a requirement for ratification.

The Second Circuit determined that Ripple’s Lanham Act unfair competition claims failed because they were based on the inaccurate assertion that Ripple owned the RIPPLE mark. The Second Circuit also upheld the district court’s denial of Ripple’s motion to amend its complaint, explaining that the assignment agreement expressly barred Ripple from bringing suit.

Practice note: Before initiating trademark litigation, practitioners should conduct thorough due diligence on ownership to avoid standing issues. Defendants should consider initiating early discovery on ownership of the rights being asserted.

On repeat: Separate accrual rule doesn’t apply to continuing harm from infringing act

by Amol Parikh | Aug 28, 2025 | Copyrights

The US Court of Appeals for the First Circuit affirmed a district court’s dismissal of a copyright lawsuit as time barred, finding that the separate accrual rule does not apply to continuing harm from a single infringing act. Foss v. Eastern States Exposition, Case No. 24-1360 (1st Cir. Aug. 21, 2025) (Montecalvo, Kayatta, Aframe, JJ.)

In 2016, Spencer Brewery commissioned graphic designer Cynthia Foss to create a room-sized artwork for its exhibition space at an annual fair hosted by Eastern States Exposition. Foss retained copyright ownership and specified that the installation be displayed exclusively in person to paying patrons of the fair. During the fair, Eastern produced a marketing video featuring Foss’s work without attribution. Foss applied for copyright registration on April 19, 2017, and it was subsequently granted.

In early 2018, Foss filed a copyright infringement lawsuit against Eastern, which the district court dismissed without prejudice. Rather than amending her initial complaint, Foss filed a second suit in July 2018, which was also dismissed without prejudice. In December 2020, she submitted an amended complaint, which was again dismissed. Foss appealed, and the First Circuit reversed and remanded the case, instructing the district court to determine whether the dismissal should have claim preclusive effect because of the prejudice caused to Eastern by Foss’s failure to meet the precondition to sue.

On remand, Eastern moved to dismiss, arguing that permitting Foss to proceed would be prejudicial and that the statute of limitations barred the suit. The district court agreed on both grounds. Foss appealed.

Foss contended that the district court misinterpreted when Eastern’s alleged violations ceased for purposes of the statute of limitations and misunderstood when she was legally permitted to seek relief.

The First Circuit affirmed the dismissal, concluding that the statute of limitations barred the claim.

Foss argued that the district court failed to apply the separate accrual rule, asserting that the infringing video constituted a continuing display until it was removed. Because Eastern had not established when the video was taken down, Foss claimed that the limitations period had not begun. The First Circuit rejected this argument and clarified that continuing harm from a single infringement does not equate to separately accruing acts. The Court explained that Foss’ contention (that Eastern’s posts remained infringing displays until they were removed) reflected a theory of continuing harm stemming from a single act of infringement, rather than a series of discrete violations that would trigger the separate accrual rule.

Foss further argued that her claims accrued only after she obtained copyright registration and could legally file suit. The First Circuit dismissed this argument, citing Supreme Court precedent that infringement claims accrue when the infringing act occurs, not upon registration or the ability to sue.

Accordingly, the First Circuit concluded that Foss’s December 2020 complaint was untimely and affirmed the district court’s dismissal.

No specifics, no case? DTSA trade secret disclosure timing differs from CUTSA

by Jodi Benassi | Aug 21, 2025 | Trade Secrets

The US Court of Appeals for the Ninth Circuit found that a district court abused its discretion by striking several of the plaintiff’s trade secrets, concluding that the court improperly relied on Rule 12(f) and failed to support dismissal as a discovery sanction under Rule 37. The Court emphasized that the fact-specific question of “reasonable particularity” in Defend Trade Secrets Act (DTSA) cases is generally reserved for summary judgment or trial, not for resolution at the discovery stage. Quintara Biosciences, Inc. v. Ruifeng Biztech, Inc., et al., Case No. 23-16093 (9th Cir. Aug. 12, 2025) (VanDyke, Johnstone, JJ., Christensen, Dist. J.)

Quintara and Ruifeng are DNA sequencing analysis companies that engaged in a business arrangement. The relationship soured when Quintara alleged that Ruifeng locked Quintara out of its office, took possession of its equipment, and hired Quintara employees. Quintara sued Ruifeng under the DTSA for misappropriating nine trade secrets.

During discovery, Ruifeng moved for a protective order to pause proceedings until Quintara identified its trade secrets with reasonable particularity, as required by the California Uniform Trade Secrets Act (CUTSA), Cal. Civ. Pro. Code § 2019.210, the California version of the DTSA. The district court agreed with Ruifeng and ordered Quintara to disclose each allegedly misappropriated trade secret with reasonable particularity. Quintara filed an amended trade secret disclosure, but Ruifeng found it deficient and again moved to halt discovery. To resolve the impasse, the district court gave Ruifeng a choice: either accept the disclosure and proceed with discovery, or move to strike the disclosure, withhold discovery, and risk consequences if the motion failed. Ruifeng chose the latter and moved to strike Quintara’s trade secrets in the disclosure under Fed. R. Civ. Pro. 12(f).

Citing its broad discretion over discovery and Fed. R. Civ. Pro. 16, the district court granted Ruifeng’s motion, holding that Quintara failed to comply with § 2019.210. As a result, the court struck nine of the 11 trade secrets from the disclosure, effectively dismissing Quintara’s misappropriation claims as to those trade secrets. Quintara appealed.

The question before the Ninth Circuit was when in the litigation, and with what level of particularity, a plaintiff under the DTSA must identify its alleged trade secrets. The Court began by noting that CUTSA requires a plaintiff to identify the alleged trade secret with “reasonable particularity” before discovery begins. In contrast, the federal DTSA imposes no such requirement regarding the timing or scope of trade secret identification. Instead, DTSA cases proceed under the Federal Rules of Civil Procedure, which do not require plaintiffs to specify their trade secrets with particularity at the outset of the case. The Court explained that under the DTSA, a plaintiff must demonstrate that the claimed trade secret is described with sufficient particularity to distinguish it from general knowledge in the industry or from the specialized knowledge of those skilled in the trade. At an early stage of litigation, particularly when no discovery has yet occurred, it is not fatal to a plaintiff’s claim if the trade secret disclosure [...]

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Feel the burn: Mechanical improvement is patent eligible under § 101

by Dexter Hamilton | Aug 21, 2025 | Patents

The US Court of Appeals for the Federal Circuit reversed a district court’s partial dismissal of the plaintiff’s patent claims under 35 U.S.C. § 101, finding that the claims were not directed to an abstract idea under Alice step one. PowerBlock Holdings, Inc. v. iFit, Inc., Case No. 24-1177 (Fed. Cir. Aug. 11, 2025) (Taranto, Stoll, Scarsi, JJ.)

PowerBlock sued iFit for allegedly infringing its patent related to dumbbells. IFit moved to dismiss the claims under § 101. The district court found that the challenged claim was broadly directed to the idea of automated weight stacking, and that it purported to cover any system having a few basic components for selecting and adjusting weights, rather than describing a specific method or design for how the system actually worked. Applying the Supreme Court’s two-step framework for determining patent eligibility, the district court determined that all but one claim of the asserted patent were ineligible under § 101. PowerBlock appealed.

The Federal Circuit reversed, finding that the district court erred in its Alice step one analysis under § 101. The Court explained that the crux of the district court’s incorrect determination was that the challenged claim was directed to the abstract idea of automated weight stacking, which in turn led to misplaced preemption concerns. The Court found instead that the claim was limited to a specific implementation of a technological improvement – namely, a particular type of selectorized dumbbell featuring nested left and right weight plates, a handle, a movable selector, and an electric motor operatively connected to the selector that adjusts the weight based on user input.

Distinguishing the challenged claim from prior cases in which claims were found ineligible, the Federal Circuit emphasized that the claim was directed to an “eligible mechanical invention” and “focused on a specific mechanical improvement,” not merely an abstract or generalized concept. The Court also rejected iFit’s argument that limitations should be discounted simply because they appear in the prior art. The Court reiterated that it is inappropriate to dissect claims into old and new elements and then ignore the old when assessing eligibility under § 101. Rather, under Alice, the “step one inquiry involves consideration of the claims ‘in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.’” The Court cautioned against conflating the patent eligibility inquiry under § 101 with the separate questions of novelty and nonobviousness under §§ 102 and 103.

Wrestling with prevailing defendant’s post-trial fee request in copyright dispute

by Christian Tatum | Aug 21, 2025 | Copyrights, Trademarks

The US Court of Appeals for the Fifth Circuit affirmed a district court’s denial of attorneys’ fees to the defendant after it prevailed at trial in a copyright infringement suit, concluding that the district court adequately addressed the Supreme Court’s Fogarty factors and did not abuse its discretion. Booker T. Huffman v. Activision Publ’g, Inc., et al., Case No. 22-40072 (5th Cir. Aug. 6, 2025) (Richman, Elrod, Oldham, JJ.) (Oldham, J., dissenting) (nonprecedential).

Booker Huffman, a retired professional wrestler, alleged that Activision’s “Prophet” character in Call of Duty: Black Ops IV infringed his G.I. Bro comic book poster. The case proceeded to trial, and the jury returned a verdict in favor of Activision. Activision then sought attorneys’ fees under 17 U.S.C. § 505, arguing that Huffman’s claims were frivolous, objectively unreasonable, and brought in bad faith, citing a lack of supporting evidence and substantial proof of independent creation. The district court found that the claims involved unsettled areas of law and were neither frivolous nor objectively unreasonable. Applying the factors the Supreme Court outlined in Fogarty v. Fantasy (1994), the district court concluded that an award of attorneys’ fees was not warranted. Activision appealed.

Activision argued that the district court failed to follow Fifth Circuit precedent, which holds that fee awards are “the rule rather than the exception” for prevailing parties in copyright actions. Activision contended that Huffman’s claims were meritless due to a lack of evidence establishing access, striking similarity, or causation. The Fifth Circuit rejected these arguments, emphasizing that there is no automatic entitlement to fees and that the district court’s six-page Fogerty analysis was more thorough than in other cases in which the Fifth Circuit has sustained lower court fee decisions. The Fifth Circuit highlighted that the district court carefully analyzed whether Huffman’s claims were objectively unreasonable, noting that the case implicated areas of unsettled law. The panel emphasized the district court’s denial of Activision’s pretrial motions, the evidence supporting Huffman’s access and similarity, and the district court’s evaluation of the evidentiary record.

The Fifth Circuit also rejected Activision’s argument that the district court abused its discretion by failing to analyze each of the Fogerty factors separately, finding that the judge recited the parties’ arguments for the relevant factors and that it could be inferred that the district court did not find Activision’s arguments persuasive. Throughout its analysis, the Court emphasized that a district court’s attorneys’ fees decision is reviewed only for abuse of discretion and not to relitigate the merits.

Judge Oldham dissented, concluding that Huffman’s claims were “speculation piled on fantasy piled on a pipe dream” and that overwhelming evidence of independent creation made the suit clearly unreasonable. Judge Oldman would have awarded fees to compensate Activision for defending against what he characterized as a baseless $32 million claim and to deter similarly unmeritorious lawsuits in the future.

Identical or not? Jury can’t decide issues of claim construction

by Cecilia Choy, PhD | Aug 21, 2025 | Patents

The US Court of Appeals for the Federal Circuit reversed a district court’s denial of a motion for judgment as a matter of law (JMOL) of noninfringement, finding that the jury’s infringement findings were unsupported by sufficient evidence and that the district court had improperly delegated claim construction to the jury. Laboratory Corp. of America Holdings v. Qiagen Sciences, LLC, Case No. 23-2350 (Fed. Cir. Aug. 13, 2025) (Lourie, Dyk, Cunningham, JJ.)

Laboratory Corp. of America Holdings (LabCorp) holds two patents with substantially overlapping specifications, both generally directed to methods for preparing DNA samples for sequencing and enrichment techniques aimed at enabling whole-genome sequencing. LabCorp initiated litigation alleging that various Qiagen Sciences kits containing materials used in DNA sample preparation for sequencing infringed its patents. During claim construction, the district court construed several patent terms as follows:

In the first patent, “second target-specific primer” means a single-stranded oligonucleotide with a 3’ portion that specifically anneals to a portion of the known target nucleotide sequence in the amplicon from step (b), and a 5’ portion identical to a second sequencing primer.
Also in the first patent, “second adaptor primer” refers to a nucleic acid molecule containing a sequence identical to part of the first sequencing primer and nested relative to the first adaptor primer.
In the second patent, “target-specific primer” is defined as a primer sufficiently complementary to the target to enable selective annealing and amplification, without amplifying non-target sequences in the sample.

The jury found that Qiagen infringed the first patent under the doctrine of equivalents and willfully and literally infringed the second patent. The jury awarded damages accordingly. The district court denied Qiagen’s renewed motion for JMOL to reverse the damages and the jury’s findings of infringement and validity, and its alternative request for a new trial. Qiagen appealed.

Qiagen raised two noninfringement arguments regarding the first patent, and the Federal Circuit agreed with both. First, the Court held that it was error to allow the jury to apply “plain meaning” and equate a sequence being “identical to another” with being “identical to a portion” of another. Specifically, Qiagen’s accused second target-specific primer (Sample Index Primer, or SIP) was 19 nucleotides long while the second sequencing primer (Read2 primer) was 34 nucleotides. The fact that they shared an overlapping sequence did not make them identical.

Although the district court had treated “identical” as a factual issue for the jury, the Federal Circuit, citing its 2008 decision in O2 Micro Int’l Ltd. v. Beyond Innovation Tech., found that this was a claim construction matter that should not have been left to the jury. The term “identical” must be given its full meaning under claim construction and cannot be interpreted as “identical to a portion.” The Court emphasized that the specification and claims distinguished between full and partial identity: The second target-specific primer must be “identical to” the second sequencing primer while the adaptor primer need only be “identical to a portion” of the first sequencing primer. This difference [...]

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Specification controls: Written description must be clear

by Taylor MacDonald | Aug 21, 2025 | Patents

The US Court of Appeals for the Federal Circuit reversed a district court’s decision upholding patent validity, finding that the subject patent’s specification clearly established that the written description failed to adequately support the full scope of the asserted claims (35 U.S.C. § 112). Mondis Technology Ltd. v. LG Electronics Inc., Case Nos. 23-2117; -2116 (Fed. Cir. Aug. 8, 2025) (Taranto, Clevenger, Hughes, JJ.)

Mondis sued LG for alleged infringement of a patent related to computer display technology. During prosecution, Mondis amended the claims to overcome prior art, changing a limitation from identifying a particular display unit to identifying a type of display unit (the type limitation). A jury found in favor of Mondis and awarded $45 million in damages. LG moved for judgment as a matter of law (JMOL), arguing that the patent was invalid due to a lack of written description supporting the type limitation. The district court denied the motion but granted a retrial on damages. The second jury awarded more than $14 million. LG appealed.

The Federal Circuit applied regional law standard (here, Third Circuit law) to review the district court’s denial of JMOL (i.e., assessing whether a reasonable jury could have reached the verdict). In evaluating patent validity under the written description requirement of § 112, the Court focused on whether the specification sufficiently demonstrated that the inventor possessed the claimed invention, including any amendments made during prosecution.

The Federal Circuit examined whether substantial evidence supported the jury’s finding of validity and concluded that LG did not need extrinsic evidence to challenge the patent’s validity but properly relied on the specification. The Court found that Mondis’ attempt to piece together fragments of testimony (primarily related to infringement) to argue for implicit support in the specification was insufficient because the specification’s plain language supported only the original unamended claim limitation, not the amended type limitation.

The Federal Circuit acknowledged that both parties presented expert testimony at trial. However, the Court found that even Mondis’ expert testimony, when considered alongside the specification’s plain meaning, failed to provide adequate support for the jury’s finding. While a jury may infer implicit support, Mondis did not present enough particularized testimony to justify such an inference.

Mondis also argued that the examiner’s allowance of the amended claim indicated sufficient support in the specification, and that the presumption of validity of an issued patent supported its position. The Federal Circuit rejected this argument, noting that the examiner’s focus was on overcoming prior art, not on evaluating written descriptions. Accepting Mondis’ position would effectively shield most patents from later invalidation, a result the Court deemed impractical.

Accordingly, the Federal Circuit reversed the district court’s ruling and found the asserted claims invalid for lack of written description.

From confidential to careless: The case of the unprotected customer list

by Jodi Benassi | Aug 14, 2025 | Trade Secrets

The US Court of Appeals for the Tenth Circuit affirmed a summary judgment dismissal of a trade secret misappropriation complaint, finding that the plaintiff failed to take reasonable measures to maintain the secrecy of a customer list. The Court also reversed the district court’s Daubert ruling, finding that it improperly exceeded the scope of Fed. R. of Evid. 702. John Snyder v. Beam Technologies Inc., Case No. 24-1136 (10th Cir. Aug. 5, 2025) (Matheson, Bacharach, Federico, C.J.)

John Snyder downloaded a national customer list containing more than 40,000 names from his former employer’s client-relationship management system. According to metadata analysis, Snyder last modified the file only three minutes after its creation, strongly suggesting that no meaningful changes or additions were made after the download. Snyder’s employment with the company ended in 2016. Following a two-year period of unemployment, he accepted a position with Beam in 2018.

Synder claimed that Beam induced him to join the company by promising compensation in exchange for customer information he obtained from his former employer. After beginning his employment at Beam, Synder created derivative documents containing subsets of the customer list. However, he inadvertently included the entire customer list as a separate tab in each of the documents he emailed to Beam employees. The documents were sent without any confidentiality markings or indications that they contained trade secrets. Snyder did not restrict access to the documents, apply password protection, or notify Beam that any of the content was proprietary or confidential.

After realizing he had distributed the full list to multiple Beam employees, Snyder took no action to object to Beam’s use of the data or attempt to retrieve the documents. He also failed to inform Beam that he considered any of the materials to be trade secrets. Instead, Snyder appeared to ratify the disclosure, telling Beam’s chief executive officer that he had intentionally shared the customer list with the recipients. A few months later, Beam terminated Snyder for unexplained reasons.

Synder sued Beam for trade secret misappropriation and several state law claims. Beam moved for summary judgment on the trade secret claims, which the district court granted, finding that Synder failed to show that he owned the customer list. The district court denied Beam’s motion on Synder’s other claims.

Both parties filed motions to exclude expert witness testimony at trial. The district court granted Beam’s motion to exclude Snyder’s damages expert under Fed. R. of Evid. 702, ruling that the expert could not support Snyder’s claimed damages for the remaining causes of action.

The district court found that Synder failed to show that he could obtain lost wages damages on any of the surviving claims. Expanding the scope of its ruling, the district court excluded not only the expert testimony, but also all evidence and fact witnesses related to lost wages damages at trial. Following the court’s ruling, Snyder and Beam settled one of the claims and jointly moved to dismiss the remaining claims. Snyder then appealed.

Synder argued that the district court erredin [...]

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Claim construction misstep undoes injunction

by Joshua Revilla | Aug 14, 2025 | Patents

The US Court of Appeals for the Federal Circuit vacated and remanded a preliminary injunction (PI), finding that the district court improperly construed a claim term based on references cited in a provisional application but omitted from the asserted patents. FMC Corp. v. Sharda USA, LLC, Case No. 224-2335 (Fed. Cir. Aug. 21, 2025) (Moore, Chen, Barnett, JJ.)

FMC owns two patents claiming priority to a provisional application concerning insecticides and miticides compositions. The patents specifically cover formulations comprising bifenthrin and a cyano-pyrethroid. Sharda currently markets an insecticide product known as Winner, which contains both bifenthrin and a cyano-pyrethroid.

FMC sued Sharda for patent infringement on its two patents and sought a temporary restraining order (TRO) and a PI. The district court denied both motions but issued a claim construction for the term “composition.” Instead of applying the term’s plain and ordinary meaning, the district court interpreted “composition” narrowly to mean “stable compositions, rather than the well-known unstable compositions that produce ineffective results as discussed throughout the prosecution history.” In reaching this construction, the district court relied on statements made in the provisional application and disclosures found in a separate, non-asserted FMC patent that claimed priority to the same provisional application. However, these disclosures were absent from the asserted patents themselves, appearing only in the provisional application and the non-asserted patent.

FMC renewed its motion for a TRO, which the district court granted and later converted into a PI. In issuing the PI, the district court again relied on its narrow construction of the term “composition” as a key point in rejecting Sharda’s invalidity defenses. Sharda appealed.

Sharda argued that the district court erred in both its construction of “composition” and its determination that Sharda failed to raise a substantial question regarding the patents’ validity. The Federal Circuit first addressed Sharda’s challenge to the district court’s construction of the term “composition,” which had been limited to stable compositions based on disclosures in the provisional application and a non-asserted patent. The Court acknowledged that while the provisional application contained multiple references to “stability,” all such references were deliberately removed from the common specification of the two asserted patents. As a result, the specifications of the asserted patents did not simply carry forward the language of the provisional application but instead reflected a substantive evolution.

Citing its 2024 decision in DDR Holdings, LLC v. Priceline.com LLC, the Federal Circuit emphasized that such omissions are legally significant. The Court concluded that a person of ordinary skill in the art, considering the deliberate removal of all references to stability, would not interpret the term “composition” as limited to stable formulations. Because FMC chose to revise the asserted patents’ written descriptions to exclude any mention of stability, the district court erred in importing a stability limitation from the provisional application and non-asserted patent into the claims. Accordingly, the Federal Circuit held that the district court improperly grafted a “stability” requirement onto the term “composition.”

The Federal Circuit also found fault with the district court’s [...]

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