Federal Circuit Update (February 2025)
Client Alert | March 10, 2025
This edition of Gibson Dunn’s Federal Circuit Update for February summarizes the current status of petitions pending before the Supreme Court and recent Federal Circuit decisions concerning exclusion of expert testimony, collateral estoppel, and patent-eligible subject matter under 35 U.S.C. § 101.
Federal Circuit News
Noteworthy Petitions for a Writ of Certiorari:
There were a few potentially impactful petitions filed before the Supreme Court in February 2025:
- Koss Corp. v. Bose Corp. (US No. 24-916): The question presented is: “When a district court grants a Rule 12(b)(6) motion to dismiss but does so without prejudice and with leave to amend, may that non-merits determination be given collateral-estoppel effect on the theory that it merged into a later with-prejudice dismissal stipulation?” The respondent waived its right to respond. The Court will consider this petition during its March 21, 2025 conference.
- Converter Manufacturing, LLC v. Tekni-Plex, Inc. (US No. 24-866): The questions presented are: “ Whether the patent challenger always has the burden of proving that the disclosures in an asserted prior art patent or printed publication are enabling of the claimed subject matter under Sections 102 and 103 of the Patent Act. 2. Whether the standard for proving a prior art patent or printed publication enables claimed subject matter under Sections 102 and 103 of the Patent Act is the one set forth in this Court’s holding in Seymour v. Osbourn, 11 Wall. 516, 555 (1870). 3. Whether this Court’s Loper Bright Enterprises v. Raimondo decision prohibits the Federal Circuit from deferring to the USPTO’s interpretation of the law of prior art enablement by silently adopting that interpretation using Fed. R. App. P. 36.” A response is due April 16, 2025.
We provide an update below of the petitions pending before the Supreme Court, which were summarized in our January 2025 update:
- In Brumfield v. IBG LLC, et al. (US No. 24-764), two amicus curiae briefs have been filed. The response is due March 20, 2025. In Celanese International Corp. v. International Trade Commission (US No. 24-635), one amicus curiae brief has been filed. The response is due March 24, 2025.
- In Lighting Defense Group LLC v. SnapRays, LLC (US No. 24-524), after SnapRays waived its right to respond, the Court requested a response, which was filed on February 10, 2025. In Parker Vision, Inc. v. TCL Industries Holdings Co., et al. (US No. 24-518), after the respondents waived their right to respond, the Court requested a response, which was filed February 14, 2025. Nine amicus curiae briefs have been filed. The Court will consider both petitions during its March 21, 2025 conference.
- The Court denied the petitions in DISH Network L.L.C. v. Dragon Intellectual Property, LLC, et al. (US No. 24-726) and Provisur Technologies, Inc. v. Weber, Inc. (US No. 24-723).
Upcoming Oral Argument Calendar
The list of upcoming arguments at the Federal Circuit is available on the court’s website.
Key Case Summaries (February 2025)
Trudell Medical International Inc. v. D R Burton Healthcare, LLC, Nos. 23-1777, 23-1779 (Fed. Cir. Feb. 7, 2025): Trudell sued D R Burton alleging infringement of a patent directed to portable devices for performing oscillatory positive expiratory pressure therapy, which loosens secretions from airways to improve respiration. In accordance with the district court’s scheduling order, Trudell submitted expert reports before the discovery deadline, but D R Burton did not. Instead, D R Burton filed an expert declaration on noninfringement with its opposition brief to Trudell’s motion for summary judgment on infringement. Trudell moved to exclude D R Burton’s expert testimony, which the court denied. The jury returned a verdict of no infringement.
The Federal Circuit (Moore, C.J., joined by Chen, J. and Stoll, J.) affirmed-in-part, reversed-in-part and remanded. The Court concluded that the district court abused its discretion in allowing D R Burton’s expert to testify regarding noninfringement at trial, because D R Burton failed to timely disclose its expert’s opinions in an expert report as required by Fed. R. Civ. P. 26 without any explanation for why such failure was either “substantially justified or harmless.” Additionally, the Court determined that to the extent the expert declaration filed with D R Burton’s opposition brief could be considered an expert report, the expert’s trial testimony exceeded the scope of his declaration and was unreliable because it was “untethered” from the district court’s claim constructions. The Court therefore vacated the jury’s verdict and remanded for a new trial.
Kroy IP Holdings, LLC v. Groupon, Inc., No. 23-1359 (Fed. Cir. Feb. 10, 2025): Kroy sued Groupon alleging Groupon infringed certain claims of its patents directed to providing incentive programs over a computer network. Groupon challenged the asserted claims in inter partes review (IPR) proceedings, and the Patent Trial and Appeal Board (Board) determined all the challenged claims were unpatentable. After the IPR filing deadline passed, Kroy amended its complaint to allege infringement of additional claims that were not included in Groupon’s IPR petitions. Groupon moved to dismiss arguing that the Board’s prior unpatentability determinations collaterally estopped Kroy from asserting the additional claims. The district court granted the motion, reasoning in part that the claims challenged in the IPR were not materially different from the newly asserted claims, and thus, the issues were “identical” for purposes of collateral estoppel.
The Federal Circuit (Reyna, J., joined by Prost and Taranto, JJ.) reversed and remanded. The Court held that a prior final written decision of invalidity from the Board reached under a preponderance of the evidence standard could not collaterally estop a patentee from asserting unadjudicated claims of related patents in a parallel district court litigation, where invalidity must be proven under a higher clear and convincing evidence standard.
US Synthetic Corp. v. International Trade Commission, No. 23-1217 (Fed. Cir. Feb. 13, 2025): US Synthetic Corp. (USS) filed a complaint with the ITC alleging that certain companies (the Intervenors) violated 19 U.S.C. § 1337 by importing and selling products that infringed USS’s patents claiming a composition known as a polycrystalline diamond compact (PDC), which is used in oil drilling tools and machinery. The patent specification discloses certain parameters of PDC, including dimensional information, and certain properties of PDC, including coercivity, magnetic saturation, and permeability. The patent claims are directed to the composition of matter as defined by those parameters and properties. After the ITC initiated its investigation, the Intervenors challenged the asserted claims as ineligible under Section 101. The administrative law judge (ALJ) held that the claims were ineligible under Section 101 in part because the claims recited magnetic properties that the ALJ determined were “merely unintended results or effects of the manufacturing process and thus abstract.” USS petitioned for Commission review, and the Commission affirmed.
The Federal Circuit (Chen, J., joined by Dyk and Stoll, JJ.) reversed-in-part, affirmed-in-part, and remanded. The Court held that the claims were patent eligible under Section 101. The Court reasoned that the claims were not directed to an abstract idea; rather, they were directed to a specific composition of matter—a PDC—that is defined by its constituent elements, particular dimensional information, and quantified material properties (such as coercivity, magnetic saturation, and permeability). The Court further explained that the recited magnetic properties, which the ITC concluded made the claims abstract, correlated to structural or physical aspects of the claimed PDC and therefore were not directed to an abstract idea.
Gibson Dunn’s lawyers are available to assist in addressing any questions you may have regarding developments at the Federal Circuit. Please contact the Gibson Dunn lawyer with whom you usually work, any leader or member of the firm’s Appellate and Constitutional Law or Intellectual Property practice groups, or the following authors:
Blaine H. Evanson – Orange County (+1 949.451.3805, bevanson@gibsondunn.com)
Audrey Yang – Dallas (+1 214.698.3215, ayang@gibsondunn.com)
Appellate and Constitutional Law:
Thomas H. Dupree Jr. – Washington, D.C. (+1 202.955.8547, tdupree@gibsondunn.com)
Allyson N. Ho – Dallas (+1 214.698.3233, aho@gibsondunn.com)
Julian W. Poon – Los Angeles (+ 213.229.7758, jpoon@gibsondunn.com)
Intellectual Property:
Kate Dominguez – New York (+1 212.351.2338, kdominguez@gibsondunn.com)
Josh Krevitt – New York (+1 212.351.4000, jkrevitt@gibsondunn.com)
Jane M. Love, Ph.D. – New York (+1 212.351.3922, jlove@gibsondunn.com)
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