IQE, PLC v. Newport Fab, LLC, Appeal No. 2024-1124 (Fed. Cir. Oct. 15, 2025)

Our Case of the Week this week is barely a patent case.  It is largely a case involving alleged trade secrets misappropriation in the semiconductor manufacturing space.  But the case raises procedural issues concerning the final judgment rule, the collateral order doctrine, and the First Amendment privilege to file patent applications.

IQE shared Information with defendants (referred to as “Tower” in the opinion) under an NDA in the aid of a potential collaboration.  Around the same time,  Tower filed patent applications that related to the subject matter of the information that was shared.  In addition to a list of state and federal causes of action relating to the alleged theft of trade secrets, IQE also included a claim for correction of inventorship on the patents.  Many of the state law claims concerned the filing of the patent application.

Tower moved to dismiss the complaint for failure to state a claim.  But it also moved to strike two of the causes of action under California’s Anti-SLAPP statute.  Anti-SLAPP refers to “Strategic Lawsuit Against Public Participation” lawsuits.  California is one of many states to enact such statutes, which are meant to clamp down on lawsuits filed that are based on the defendant’s petitioning or free speech activities that are protected by the First Amendment.  This includes, for example, defamation cases, which are based on statements made by the defendant.  Under California’s Anti-SLAPP statute, defendant can file a ”special motion to strike” such a claim, which shifts the burden to the plaintiff to establish that there is a probability that it will prevail on the claim.  To the extent the plaintiff cannot establish that at the preliminary stage, the case (or cause of action) is stricken, and the plaintiff is ordered to pay the attorney fees to the prevailing defendant.

While there has been some debate about whether federal courts should recognize anti-SLAPP legislation, with some arguing that it conflicts with the Federal Rules of Civil Procedure, the Ninth Circuit has affirmed that it is applicable in federal courts—but only for state law causes of action.  In federal courts, the standard for evaluating an anti-SLAPP motion is generally the Rule 12(b)(6) standard.  But, as noted, unlike a Rule 12(b)(6) motion, prevailing on an anti-SLAPP motion in California results in a mandatory attorney fee award to the defendant.

In this case, Tower filed a special motion to strike the intentional interference and state trade secret misappropriation claims.  Those claims were based on Tower’s use of the information to file the patent applications, which Tower argued was petitioning activity protected by the First Amendment.  The district court denied the motion to strike.

Tower then appealed to the Ninth Circuit.  The Ninth Circuit transferred the case to the Federal Circuit, finding that the cause of action for correction of inventorship (though not at issue in the appeal) fell under the exclusive jurisdiction of the Federal Circuit.

As a matter of first impression, the Federal Circuit first considered whether it had jurisdiction to hear the interlocutory appeal.  The Ninth Circuit has held that denials of anti-SLAPP motions to strike are immediately appealable under the collateral order doctrine.  The Federal Circuit held that Federal Circuit law, and not Ninth Circuit law, applied to this issue.  Nonetheless, it came to the same conclusion.  The Court considered the three factors that allow departure from the final judgment rule: the decision by the district court must “(1) conclusively determine the disputed question; (2) resolve an important issue completely separate from the merits of the action; and (3) be effectively unreviewable on appeal from a final judgment.”

As to the first factor, the Federal Circuit agreed with Ninth Circuit precedent that denial of an anti-SLAPP motion conclusively determines the disputed question because, if it is granted, the suit is over and the defendant is entitled to attorney fees.  Thus, the district court’s denial of the motion conclusively determined that the anti-SLAPP statute did not apply.

For the second factor, the motion to strike resolves an important issue separate from the merits—i.e., it touches on the right not to be dragged through the courts on a meritless claim after exercising a constitutional right.  And as for the third factor, the purpose of the anti-SLAPP motion (avoiding litigation altogether) would have been rendered futile if the defendant had to proceed through the litigation before they could appeal.

Having found that the collateral order doctrine applied, the Court then considered the district court’s decision in this case, and concluded that it erred.  Consideration of an anti-SLAPP motion is a two-step process.  First, the court must consider whether it impacts Constitutionally protected activity.  Second, it must consider whether the allegations are meritless.  In this case, the district court erred at step one, by collapsing the two steps.  The Federal Circuit found that the activity at issue—filing a patent application—clearly fit within the ambit of the anti-SLAPP statute.  It thus remanded the case for the district court to consider whether plaintiff can establish a probability of success on the claims.

The opinion can be found here.

By Nika Aldrich

ALSO THIS WEEK

Barrette Outdoor Living, Inc. v. Fortress Iron, LP, Appeal Nos. 2024-1231, -1359 (Fed. Cir. Oct. 17, 2025)

In a patent case involving fastener-less fence assemblies, the Federal Circuit affirmed the lower court’s judgment of no indefiniteness and non-infringement.  Patentee Barrette claims fencing assemblies using pivoting, sliding connectors with integral “bosses” that allow fast, fastener-less installation.  During prosecution, Barrette had distinguished its designs from prior art using separate pivot pins, which it argued made installation faster and simpler compared to the screw/bolt couplings used previously.  The court construed certain terms (“boss,” “projection,” and “nub”) to implicate integral, fastener-less structures, based on the patents’ language and history.   Barrette conceded it couldn’t prove infringement under the court’s constructions, and after the court rejected defendant Fortress’s indefiniteness arguments on terms like “sliding” and “causes,” Fortress dropped its invalidity claims.  Both parties appealed the court’s subsequent entry of judgment.

Barrette made a number of objections and assignments of error relating to the district court’s claim constructions.  While the Federal Circuit found certain errors, it concluded that regardless of the correctness of the court’s constructions, the question of disclaimer ultimately resolved the non-infringement issue.  The district court had been correct in finding that Barrette disclaimed non-integral bosses because Barrette explicitly distinguished prior art (a “loose pin member”) from its recited “integral boss” during prosecution, clearly limiting its claim scope.  Although Barrette later abandoned that prosecution argument, the Court held that Barrette’s statements amounted to a clear and unmistakable disclaimer of non-integral bosses.  Subsequent claim cancellations and filings did not undo its disclaimer, and the disclaimer applied to related earlier patents as well.  Because Barrett had stipulated that Fortress’s accused products did not contain integral bosses, the Federal Circuit affirmed the district court’s judgment of non-infringement.

Regarding Respondents’ cross-appeal on indefiniteness of various terms that included the word “sliding,” the district court had found the claims were not indefinite because the specification and claim language provided sufficient guidance for a skilled artisan to understand the scope of the terms.  The specification included detailed examples and descriptions showing how the sliding mechanism operates, allowing someone skilled in the art to reasonably determine whether a product falls within the claims.  The Court rejected Fortress’s argument that expert testimony showed ambiguity requiring more precise information, explaining that definiteness does not require mathematical precision.  Similarly, the Court held that the “causes” term, though somewhat narrower than its common usage, was clarified during prosecution and in the specification so that its scope could be reasonably ascertained.  Thus, the district court correctly concluded the claim terms were not indefinite.

The opinion can be found here.

By Jason Evans

Inland Diamond Products Co. v. Cherry Optical Inc., Appeal No. 2024-1106 (Fed. Cir. Oct. 15, 2025)

In an appeal from summary judgment finding asserted patent claims invalid as obvious, the Federal Circuit vacated and remanded. The lawsuit concerns alleged infringement of claims in Inland Diamond’s patents directed to eyeglass lenses. At summary judgment, the district court relied on factual findings in inter partes review decisions concerning the asserted claims to find issue preclusion and obviousness. The Federal Circuit found that the court erred in its application of issue preclusion, because the PTAB decisions regarding unpatentability applied a less demanding standard that the standard required in district court. Citing two recent decisions, the Federal Circuit explained that the PTAB’s findings of fact, which apply the lower standard of proof of a preponderance of evidence, do not have an issue preclusive effect in district court proceedings where the facts must be proven under the higher standard of clear and convincing evidence. See ParkerVision, Inc. v. Qualcomm Inc., 116 F.4th 1345 (Fed. Cir. 2024); Kroy IP Holdings, LLC v. Groupon, Inc., 127 F.4th 1376, 1379 (Fed. Cir. 2025). The Court therefore remanded for further proceedings to determine whether the patent challenger carried its burden of proof based on the evidence and argument presented to the district court.

The opinion can be found here.

By Elizabeth Graves

Causam Enterprises, Inc. v. ITC, Appeal No. 2023-1769 (Fed. Cir. Oct. 15, 2025)

Causam Enterprises, Inc. v. Ecobee Technologies ULC, Appeal No. 2024-1958 (Fed. Cir. Oct. 15, 2025)

In a pair of appeals involving U.S. Patent No. 10,394,268 directed to “demand response” technology in power grids, the Federal Circuit held that a contested ownership question did not deprive purported patentee Causam of the Article III standing necessary to pursue its appeals.  One appeal was from an inter partes review in which the Patent Trial and Appeal Board had agreed with petitioner ecobee that all challenged claims were invalid as obvious, and the other was from a Section 337 investigation in which the ITC had found Causam did not own the patent and that it was not infringed by a respondent.  The Federal Circuit found that Causam in fact owned the ’268 patent, but also affirmed the PTAB’s finding of invalidity, and thus dismissed the ITC appeal as moot.

Causam asserted that the ’268 patent was infringed by makers and importers of internet-connected “smart thermostats” able to adjust power consumption in response to signals from the utility company.  Before the ’268 patent was acquired by Causam, its inventor, a Mr. Forbes, had assigned an ancestor application to another entity, including “all divisions, reissues, continuations and extensions thereof.”  In the ITC investigation, ecobee had argued that this encompassed the ’268 patent such that Mr. Forbes could not later have validly assigned it to Causam.  However, the chain of applications between the ’268 patent and its ancestor included a continuation-in-part application, and as a legal matter of contract interpretation, the Federal Circuit found in the ITC appeal that this was not included in the language of the assignment referring only to “continuations.”  Because Mr. Forbes had not assigned away his right to continuation-in-part applications, the Court agreed that he was able to and did later assign the ’268 patent to Causam.

Interestingly, in the appeal from the PTAB decision, Causam argued the Board erred by not resolving the ownership question, even though no party had directly contended in that proceeding that Causam did not own the patent.  The Federal Circuit rejected Causam’s argument that this violated the due process rights of—essentially—whoever ecobee contended the “actual” owner of the ’268 patent to be, as it was well established that litigants generally do not have standing to assert the rights of third parties.  The Court thus also did not purport to resolve the ownership question in that appeal (as it did in the ITC appeal), instead finding that Causam had Article III standing to appeal the PTAB’s decision because the ownership information of record was unrebutted in that proceeding.  Nonetheless, the Court affirmed the PTAB’s finding that all challenged claims were obvious.  Because the only claims asserted to be infringed were thus invalid, the Court dismissed Causam’s appeal from the ITC’s non-infringement finding.

The opinion in Appeal No. 2023-1769 (from the ITC proceedings) can be found here, and the opinion in Appeal No. 2024-1958 (from the IPR) can be found here.

By Jason Wrubleski

Brita LP v. ITC, Appeal No. 2024-1098 (Fed. Cir. Oct. 15, 2025)

In an appeal from the International Trade Commission, the Federal Circuit affirmed the ITC’s findings that Brita LP’s patent covering its “gravity” water filters is invalid for lack of written description and lack of enablement.

Brita owns U.S. Patent No. 8,167,141 directed to gravity water filter systems. The patent identifies several different types of filter media used to remove contaminants from water such as carbon-block, nonwovens, and mixed media. The ‘141 patent claims filter media with activated carbon and a “lead scavenger” which meets a Filter Rate and Performance Factor (FRAP) threshold of 350 or less. The FRAP performance metric is based on water flow rates, contaminant reduction, and the life of the filter. Brita filed a section 337 complaint with the ITC alleging that various companies imported water filters which infringed the ‘141 patent and asked them to block those products from being sold into the United States.

Initially, the administrative law judge agreed with Brita, finding infringement of the ‘141 patent. However, upon review of the decision, full Commission reversed, stating that (1) other than carbon-block filters, the claims were invalid as to any of the filter media meeting the FRAP requirement and (2) the claims didn’t enable non-carbon block filters. In addition, the ITC found the term “filter usage lifetime claimed by a manufacturer or seller of the filter” to be indefinite.

On appeal, the Federal Circuit agreed with ITC, finding that the asserted claims of the ’141 patent lacked adequate written description. The Court reasoned that the patent only included examples and descriptions for carbon-block filters that can meet the FRAP requirement and therefore did not satisfy the written description for any of the other types of filter media. The Court also affirmed ITC’s findings of lack of enablement, stating that the ‘141 patent requires undue experimentation by a skilled artisan to achieve the claimed FRAP factor with filter media outside of the carbon-block filters. The Court declined to address the issue of indefiniteness.

The opinion can be found here.

By Brittani Gambrell

This article summarizes aspects of the law and does not constitute legal advice. For legal advice with regard to your situation, you should contact an attorney.