when an apparatus claim depends on functioning claim to describe the apparatus, what the device does and how it does it are highly relevant to understanding what the device is
Sung-Hoon Kim | October 22, 2025
ROTHSCHILD CONNECTED DEVICES INNOVATIONS, LLC v. COCA-COLA COMPANY
Date of Decision: October 21, 2025
Before: Prost (author), Lourie, and Stoll
Summary:
The CAFC agreed with the decision of the district court and affirmed the summary judgement of noninfringement because by looking at the claim language and the specification, the claimed communication module must be configured to perform its steps in the order in which they are written, thereby allowing a narrow claim construction.
Details:
Rothschild Connected Devices Innovations, LLC (“Rothschild”) owns U.S. Patent No. 8,417,377 (“the ’377 patent) and sued Coca-Cola Co. (“Coca-Cola”) for infringing the ’377 patent in the U.S. District Court for the Northern District of Georgia, which granted summary judgement of noninfringement.
At issue is an independent claim 11, which reads as follows:
A beverage dispenser comprising:
at least one compartment containing an element of a beverage;
at least one valve coupling the at least one compartment to a dispensing section configured to dispense the beverage;
a mixing chamber for mixing the beverage;
a user interface module configured to receive an[] identity of a user and an identifier of the beverage;
a communication module configured to transmit the identity of the user and the identifier of the beverage to a server over a network, receive user generated beverage product preferences based on the identity of the user and the identifier of the beverage from the server and communicat[e] the user generated beverage product preferences to controller; and
the controller coupled to the communication module and configured to actuate the at least one valve to control an amount of the element to be dispensed and to actuate the mixing chamber based on the user gene[r]ated beverage product preferences.
At issue in this appeal is whether the claimed communication module must be configured to perform its steps in the order in which they are written:
(1) “transmit the identity of the user and the identifier of the beverage to a server over a network”;
(2) “receive user generated beverage product preferences based on the identity of the user and the identifier of the beverage from the server”; and
(3) “communicat[e] the user generated beverage product preferences to controller.”
The district court held that the communication module must be configured to perform these steps in that particular order.
The CAFC agreed with the decision of the district court and affirmed the summary judgement of noninfringement.
The CAFC applied a two-part test for determining if steps that do not otherwise recite an order “must nonetheless be performed in the order in which they are written.”
First, the CAFC look at the claim language to determine if, as a matter of logic or grammar, they must be performed in the order written.
Second, if not, the CAFC review the specification to determine whether it directly or implicitly requires such construction.
If not, the sequence in which such steps are written is not a requirement.
In this case, the CAFC held that as a matter of logic or grammar, the communication module must be configured to perform its steps in the order in which they are written – to a server and from the server.
In particular, the CAFC noted that the use of “based on” indicates that the first step precedes the second step.
Furthermore, the CAFC noted that the specification clearly contains language and figures (the below Fig. 5) describing this order and does not contain any suggestion as to Rothschild’s contrary claim interpretation.
Rothschild argued that independent claim 11 is an apparatus claim, and therefore the claim does not require ordered steps (this apparatus claim covers what a device is, not what a device does).
The CAFC noted that while apparatus claims focus on the structure instead of the operation or use, when an apparatus claim depends on functioning claim to describe the apparatus, what the device does and how it does it are “highly relevant to understanding what the device is.”
Accordingly, the CAFC affirmed the summary judgement of noninfringement.
Takeaway:
- Functional claim language matters even for apparatus claims. When an apparatus claim depends on functioning claim to describe the apparatus, what the device does and how it does it are relevant to understanding what the device is.
- In order to obtain broad coverage of functional claim language, the specification should include several embodiments and figures describing broad functional coverage.
Functional Limitation, Claim Construction, and Obviousness: Bayer v. Mylan
Bo Xiao | September 24, 2025
BAYER PHARMA AKTIENGESELLSCHAFT, v. MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS USA, INC., INVAGEN PHARMACEUTICALS INC.
Date of Decision: September 23, 2025
Before: MOORE, Chief Judge, CUNNINGHAM, Circuit Judge, and SCARSI, District Judge.
Summary
The Federal Circuit affirmed in part, vacated in part, and remanded the Patent Trial and Appeal Board’s decision invalidating claims of Bayer Pharma AG’s patent. The court upheld the invalidation of claims 1-4 but vacated and remanded with respect to claims 5-8.
Background
Bayer owns the ’310 patent (U.S. Patent No. 10,828,310), which claims methods for reducing the risk of cardiovascular events in patients with coronary artery disease (CAD) and/or peripheral artery disease (PAD) through administration of rivaroxaban and aspirin.
Independent claim 1 recites administration of rivaroxaban and aspirin in clinically proven amounts. Independent claim 5 recites once-daily administration of a first product comprising rivaroxaban and aspirin and a second product comprising rivaroxaban. Claims 1 and 5 are listed below with emphasis added:
1. A method of reducing the risk of myocardial infarction, stroke or cardiovascular death in a human patient with coronary artery disease and/or peripheral artery disease, comprising administering to the human patient rivaroxaban and aspirin in amounts that are clinically proven effective in reducing the risk of myocardial infarction, stroke or cardiovascular death in a human patient with coronary artery disease and/or peripheral arterial dis-ease, wherein rivaroxaban is administered in an amount of 2.5 mg twice daily and aspirin is administered in an amount of 75-100 mg daily.
5. A method of reducing the risk of myocardial infarction, stroke or cardiovascular death in a human patient with coronary artery disease and/or peripheral artery disease, the method comprising administering to the human patient rivaroxaban and aspirin in amounts that are clinically proven effective in reducing the risk of myocardial infarction, stroke or cardiovascular death in a human patient with coronary artery disease and/or peripheral arterial disease, wherein the method comprises once daily administration of a first product comprising rivaroxaban and aspirin and a second product comprising rivaroxaban, and further wherein the first product comprises 2.5 mg rivaroxaban and 75-100 mg aspirin and the second product comprises 2.5 mg rivaroxaban.
Mylan, Teva, and InvaGen filed substantively identical IPR petitions, arguing that a 2016 journal article by Foley (summarizing a trial which includes its dosing regimen of 2.5 mg rivaroxaban twice daily and 100 mg aspirin once daily without disclosing the trial results) and a 2014 journal article by Plosker (disclosing a dosing regimen of 2.5 mg rivaroxaban twice daily, co-administered with 75-100 mg aspirin) anticipated or rendered the claims obvious. The Board agreed and held all challenged claims unpatentable. Bayer appealed.
Discussion
The Federal Circuit addressed four disputes.
The first dispute is related to the phrase “clinically proven effective.” The Board had treated it as non-limiting or inherently anticipated. Bayer argued that the phrase should operate as a substantive limitation on the claims. According to Bayer, the language required that the claimed dosages of rivaroxaban and aspirin be supported by actual clinical trial evidence of efficacy, which in turn distinguished the claims from prior art references such as Foley. Bayer emphasized that Foley disclosed dosing regimens but did not provide trial results demonstrating that the regimens were effective and therefore could not anticipate or render the claimed methods obvious.
The Federal Circuit rejected this position, explaining that it did not decide whether the phrase “clinically proven effective” was a limiting element in claims 1-8. Even assuming it was limiting, the court reasoned that the phrase would not affect patentability because it merely described a characteristic of the treatment regimen rather than altering the steps of the claimed method. The court emphasized that the claims already specify the exact dosages of rivaroxaban and aspirin to be administered, and those dosages remain unchanged regardless of whether clinical trials later demonstrate efficacy. Accordingly, the limitation was deemed functionally unrelated to the claimed method and insufficient to distinguish the claims from the prior art.
The second dispute concerned the proper construction of the phrase “first product comprising rivaroxaban and aspirin” in claim 5. The Board had construed this language broadly to encompass circumstances where rivaroxaban and aspirin were provided in separate dosage forms and administered together, not limited to a single dosage form, and, if administered separately, the dosage forms could be administered simultaneously or sequentially.
The Federal Circuit disagreed with that interpretation. Relying on both the plain language of the claim and the description in the specification, the court concluded that “a first product comprising rivaroxaban and aspirin” required a single dosage form containing both ingredients. The court emphasized that the specification describes that “combination therapy may be administered using separate dosage forms for rivaroxaban and aspirin, or using a combination dosage form containing both rivaroxaban and aspirin.” The court agreed with Bayer that “first product comprising rivaroxaban and aspirin” corresponds to the latter, which narrows the term.
Therefore, the Federal Circuit remanded for further consideration so that the Board’s analysis of the obviousness arguments would be under the correct construction of the “first product” term.
The third dispute concerned whether the Board adequately explained a skilled artisan’s motivation to combine the prior art references with a reasonable expectation of success. The Federal Circuit agreed with the Board’s decision and found it supported by substantial evidence. The court noted that the Board identified both an overlap in the disclosed dosage ranges and the established practice of administering aspirin within that range. The court further found that Foley and Plosker described similar motivations for combining rivaroxaban with aspirin in patients with cardiovascular risk, which supported the Board’s conclusion that a skilled artisan would have had reason to combine the references with a reasonable expectation of success. Accordingly, the Federal Circuit affirmed the Board’s determination of obviousness as to dependent claims 3-4 and 6-7.
The fourth dispute concerned Bayer’s argument that its own clinical trial provided clinical proof of efficacy was an unexpected result. The Federal Circuit rejected this position, holding that there was no nexus between the asserted unexpected property and the claimed invention. The court explained that the asserted results were tied only to the “clinically proven effective” limitation, which it had already deemed functionally unrelated to the actual treatment method. Without that nexus, the secondary consideration of unexpected results could not support nonobviousness.
Takeaways
- Claim language that merely recites a property or result, without further defining the claimed steps or structure, may be deemed functionally unrelated and insufficient to establish distinction over the prior art.
- Secondary considerations require a demonstrated nexus between the evidence presented and the claimed invention as construed.
The Federal Circuit’s First AIA Derivation Case
John Kong | September 10, 2025
Global Health Solutions LLC v. Selner
Date of Decision: August 26, 2025
Before: Stoll, Stark, Circuit Judges. Goldberg, District Judge.
Summary:
The Federal Circuit addressed a derivation proceeding under the AIA for the first time. While derivation issues arose in pre-AIA interference proceedings, AIA derivation does not require a showing of who is first-to-conceive. Independent conception by an accused inventor overcomes the derivation accusation.
Procedural History:
Global Health Solutions (GHS) petitioned for an AIA derivation proceeding against Selner. The Patent Trial and Appeal Board (“Board”) granted the petition because GHS identified at least one claim in GHS’ application that is (i) the same or substantially the same as Selner’s claimed invention and is also (ii) the same or substantially the same as the invention disclosed to Selner. After the derivation proceedings, the Board ruled in Selner’s favor. GHS appealed to the Federal Circuit.
Background:
In 2013, Selner and Burnam worked together, although unsuccessfully, to make and sell a novel emulsifier-free wound treatment ointment. Burnam later left and formed GHS. GHS and Selner each filed a patent application on a wound treatment ointment and method for making it, resulting in permanently suspended nanodroplets without the use of an emulsifier that can irritate a patient’s skin. Selner is the first-filer, and GHS is the second-filer. An AIA derivation proceeding provides a limited opportunity for a first-inventor second-filer to obtain a patent despite another person filing an application first (first-filer) in the situation where the first filer derived the invention from the second-filer. During the derivation proceedings, the Board found that Burnam conceived the invention and communicated it to Selner, but the Board also found that Selner proved conception earlier the same day Burnam contacted him.
Decision:
Pre-AIA case law involving derivation often arose in the context of an interference to determine who was the first to invent under the previous first-to-invent law. However, when the AIA eliminated interferences and transformed 35 USC 135 from a law governing interferences to one governing derivation proceedings, Congress did not specify what a second-filer inventor must prove to show that the first-filer inventor derived the claimed invention from the second-filer inventor. However, the court concludes that “the required elements of a derivation claim have not changed other than to the extent necessary to reflect the transition from a first-to-invent to a first-to-file system of patent administration.”
Derivation in an AIA case requires the petitioner to “produce evidence sufficient to show (i) conception of the claimed invention, and (ii) communication of the conceived invention to the respondent prior to respondent’s filing of that patent application.” In a footnote, the Court sidestepped any decision regarding whether a party’s burden of proof in an AIA derivation proceeding is by a preponderance of evidence or by clear and convincing evidence (in pre-AIA interferences, proof of derivation was by clear and convincing evidence) since neither party raised this issue. But, a “respondent can overcome the petitioner’s showing by proving independent conception prior to having received the relevant communication from the petitioner.”
In particular, Selner need not prove that he was the first-to-conceive. Although the Board erred in focusing on whether Selner or Burnam was the first-to-invent or first-to-conceive, that was harmless error. “[A] first-to-file respondent like Selner need only prove that his conception was independent.” While the Board erroneously reached its decisions predicated on Selner being the first-to-conceive, the Board, in doing so, also indirectly determined that Selner independently conceived, and therefore, did not derive his invention from Burnam.
GHS argued that the Board erred by not requiring Selner to corroborate his inventorship with evidence independent of himself. The court found no such error. First, a “rule of reason test is used to determine whether an alleged inventor’s testimony is sufficiently corroborated.” Second, “the Board must consider ‘all pertinent evidence’ and then determine whether the ‘inventor’s story’ is credible.” More importantly, “[d]ocumentary or physical evidence that is made contemporaneously with the inventive process provides the most reliable proof that the inventor’s testimony has been corroborated.” Here, the corroboration was achieved through emails retrieved by Selner’s attorney’s law clerk from Selner’s AOL email account that were generated contemporaneously with the inventive process. And, such emails, whose authenticity was not challenged by GHS, do not require independent corroboration. In addition, the metadata generated by the web-based email server is independent of Selner’s own testimony and documents. Accordingly, the Board had substantial evidence for its findings of fact and there was no reversible error.
GHS argued that Selner did not show reduction to practice to prove conception. The court agreed with the Board that conception can occur without reducing the invention to practice. “Selner’s conception was complete at the point at which he was ‘able to define [the Invention] by its method of preparation’ or when he had formed ‘a definite and permanent idea of the complete and operative invention.’”
GHS argued that Burnam should be named as a co-inventor on Selner’s application. The court refused because GHS did not properly present this request to the Board and is thus forfeited. 37 CFR 42.22 requires a contested request for correction of inventorship in a patent application to be made in a separate motion, including a “statement of the precise relief requested” and a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” No such separate motion was made to the Board, nor was any detailed explanation supporting joint inventorship and material facts relating thereto provided.
Takeaways:
In this case, even though the second-filer showed conception and communication of the invention to the first-filer, the first-filer’s independent conception was a complete defense over the derivation accusation. Unfortunately for Burnam (because GHS did not file a separate motion for correcting inventorship in Selner’s application), the “independent” nature of Selner’s conception was never really challenged despite all the interactions between him and Selner.
This case also provided good reminders that reduction to practice is not required for showing conception, and that contemporaneously generated evidence can corroborate the inventor’s story.
Fumika Ogawa | August 27, 2025
Presumption of Validity Does Not Protect a Patent from Invalidity for Lack of Adequate Written Description
Case Name: MONDIS TECHNOLOGY LTD. v. LG ELECTRONICS INC.
Decided: August 8, 2025 (Precedential)
Panel: Taranto, Clevenger, and Hughes, Circuit Judges
Summary
The CAFC held that Mondis’s patent is invalid for lack of adequate written description for a claim limitation introduced by amendment to overcome a prior art rejection during prosecution, where the prosecution history itself clearly suggested a lack of written description so that Mondis could not rely solely on the presumption of validity; expert testimony on infringement issues did not provide substantive evidence of validity; and although the amendment was allowed by the Examiner, allowance alone did not prove written description compliance, where the prosecution history indicated contrary.
Details
Mondis owns U.S. Patent No. 7,475,180. The ’180 patent basically describes a technology using matching of identification information to prevent unauthorized control of a display unit by an external computer sending video signals to the display unit. For example, the patent’s specification describes an embodiment where one or more ID numbers are stored in the display unit’s database and the external computer is assigned a unique ID number. The computer’s ID number is compared against the display unit’s database and the computer is allowed to control the display unit only when there is a match between the ID numbers.
As originally filed, the underlying application recited the following claim language:
…
a memory in which at least display unit information is stored, said display unit information including an identification number for identifying said display unit and characteristic information of said display unit; and … .
During prosecution, the above claim language was amended by the applicant adding a phrase “at least a type of” to overcome an art-based rejection, to read:
…
a memory in which at least display unit information is stored, said display unit information including an identification number for identifying at least a type of said display unit and characteristic information of said display unit; and
… .
The Examiner allowed the application over the prior art in response to the amendment, including the above claim language—referred to as “the type limitation”—which is set forth in claim 14 of the resulting patent. The prosecution record includes the Examiner’s Interview Summary stating that the above amendment was proposed by the applicant during the interview so as “to more clearly specify identification number as a ‘type’ of display unit which examiner agree[d] will read over the previous art applied regarding … the claims.”
Mondis sued LG for infringement of the ’180 patent. In the district court proceeding, LG challenged the patent’s claim 14 and its dependent claim 15 as invalid for lacking written description for the type limitation. The jury determined that the ’180 patent was not proven invalid and was infringed by that LG’s accused products. Both parties appealed—Mondis dissatisfied with the district court vacating an original damages verdict and ordering retrial leading to a reduced damages award, and LG contesting the district court’s denial of its motion for judgment as a matter of law (JMOL) of invalidity and infringement, among other issues.
At issue on appeal is whether the type limitation complies with the written description requirement of 35 U.S.C. § 112, ¶ 1. The CAFC noted that the written description requirement is a question of fact, reviewed for substantial evidence. “Patents are presumed to be valid and overcoming this presumption requires clear and convincing evidence,” and the burden of persuasion was on LG.
Mondis conceded that there is no express support for the type limitation in the patent. Mondis’s main arguments were: (A) the presumption of validity frees it from the requirement to produce evidence of adequate written description support, and (B) substantial evidence of validity is provided by each of (B-1) Mondis’s expert testimony, (B-2) LG’s expert’s admissions, and (B-3) the patent’s prosecution history. The CAFC rejected each argument.
As to (A) the presumption of validity argument, the CAFC noted that some patents are “presumed valid at birth [such that] a patentee need submit no evidencein support of a conclusion of validity,” whereas others are themselves “clear enough that [the patent specification] establishes inadequacy of support in the written description for the full scope of the claimed invention unless there is contrary evidence.” The CAFC found that the ’180 patent falls under the second category, where the prosecution history made clear that the addition of the type limitation to overcome the art rejection changed the nature of the claimed ID number from one identifying a specific display unit to one identifying a type of display unit.
As to (B-1) Mondis’s expert testimony, the expert presented an infringement theory pointing to the patent’s disclosure of an embodiment where an ID number is sent from the display to a computer:
Namely, an ID number is sent to the computer 1 from the display device 6 so that the computer 1 identifies that the display device 6 having a communication function is connected and the computer 1 compares the ID number with the ID number registered in the computer 1.
The Mondis’s expert explained to the jury that the above passage to mean that “the communication function [disclosed in the specification] is an actual video format [such that] the ID number is defining what video format the display is capable of receiving.”
The CAFC noted that the above testimony was “about infringement rather than validity,” and that the plain words of the specification, read in the context of the surrounding disclosure, would convey that the patent discloses a specific display unit, as opposed to a specific type of display unit.
As to (B-2) LG’s expert’s admissions, Mondis asserted that LG’s noninfringement testimony provides substantial evidence that serial numbers could be used to identify a particular display unit, and could hypothetically be a type ID.
The CAFC noted that to meet the written description requirement, “it is the specification itself that must demonstrate possession.” Nothing in the patent specification describes a serial number that identifies any type of display unit, and the expert testimony—which was again about infringement rather than validity—does not address whether a skilled artisan would find support in the specification for the type limitation.
As to (B-3) the patent’s prosecution history, Mondis argued that the fact that the claim amendment was entered without objection led to “an especially weighty presumption of correctness,” citing Commonwealth Sci. & Indus. Rsch. Org. v. Buffalo Tech., Inc. (USA), 542 F.3d 1363, 1380 (Fed. Cir. 2008). That is, Modis argued that “when the examiners allowed the amendment, they agreed to the type limitation because they understood that it was supported by written description.”
The CAFC clarified that Commonwealth Science, while finding a “presumption of validity based on the PTO’s issuance of the patent despite the amendments,” “does not hold that the examiner’s allowance of claims by itself provides substantial evidence that the claims comply with the requirements of § 112.” “If it did, there would rarely be a situation where an issued patent could later be invalidated for lack of written description.”
Further, the CAFC pointed to the Examiner’s interview summary explaining the nature of the claim amendment as overcoming the art rejection, but silent as to whether the Examiner considered compliance with the written description requirement. As such, the prosecution history fell short of substantial evidence.
Takeaways
This case provides a reminder that allowance of claim amendments and presumption of validity of patents alone do not constitute substantial evidence that the claims comply with the written description requirement. Care should be taken when adding a claim limitation that is not expressly supported by the specification, even if the amendment would successfully overcome an art-based rejection.
