Federal Circuit May 2025 Decisions

Subject: Review of Key Federal Circuit Decisions, May 2025

I. Executive Summary

Decisions from the Federal Circuit in May 2025 addressed issues including claim construction, patent eligibility (Section 101), damages, infringement analysis, and IPR estoppel. These cases provide valuable guidance on the court's current thinking and strategic considerations for practitioners. Key takeaways include the paramount importance of the intrinsic record in claim construction, the continued challenges in establishing patent eligibility for software-related inventions, strict scrutiny of damages expert methodologies, the limitations of Section 271(e) remedies, and the careful delineation of IPR estoppel.

II. Key Cases and Themes

A. Claim Construction: The Dominance of Intrinsic Evidence and Enablement Limitations

• Case: Acufloor, LLC v. EvenTile, Inc., Forpac, LLC (May 28, 2025)

• Core Issue: Interpretation of "edge" in "edge-to-subfloor contact" and "majority of an area" in tile leveling patents.

• Key Takeaways:Prosecution History as a Double-Edged Sword: The court's majority relied heavily on the prosecution history to define "edge" narrowly as "the very edge," noting that Acufloor "repeatedly distinguished their invention from the prior art based specifically on whether mortar could reach the very edge of the tile." This included using "annotated diagram[s]" and video demonstrations explicitly showing distinction "right at the very edge." This highlights how "every statement, every exhibit like those videos can come back to define or limit your claim scope later."

• Applicant Control Over Claim Language: For "majority of an area," the court overturned the district court, emphasizing the plain language "majority of an area of tile to mortar to subfloor contact." Crucially, the court gave "weight to the language the applicants chose and got out, not the examiner's unadopted idea." This underscores the "huge" importance of "applicant control" over the final claim language.

• Power of "Comprising": The court clarified that "comprising" (an open-ended transition) permits unlisted elements, allowing comparison of the claimed notches' contact area to contact areas from any other openings within the base, not just solid portions. This "created the necessary context for that majority comparison."

• Strategic Implication: Patent drafters and litigators must meticulously review prosecution histories for unintended claim limitations. The language ultimately adopted by the applicant, especially regarding functional results, is paramount.

• Case: Stylwan v. Stress Engineering Services, Inc. (May 27, 2025)

• Core Issue: Interpretation of "program" terms, particularly "autonomous" functionality and the use of specific equations, in non-destructive material integrity patents.

• Key Takeaways:Intrinsic Record Reigns Supreme: The court affirmed a narrow construction, emphasizing that "the intrinsic record is king, queen, and the whole court when it comes to claim construction." Consistent use of terms like "autonomous" (appearing in four of six patent titles) and description of "the fundamental operation" as performed by "these specific identifier equations" in the specification limited the claim scope.

• Enablement as a Claim Scope Limit (Magsil Principle): The court invoked the Magsil principle: "Your claim scope cannot be broader than what your specification actually enables someone to make and use." Because Stylwan only "enabled the use of any formulas other than those three specific ones they disclosed in detail," the claims could not be construed more broadly.

• Strategic Implication: Patentees must ensure their specification enables the full breadth of their claims. Describing specific embodiments too narrowly without broader enablement can lead to a constricted claim construction under the Magsil doctrine. For challengers, a narrow enablement disclosure is a powerful tool for arguing for a narrow construction.
  

B. Patent Eligibility (Section 101): Abstract Ideas and Insufficient Inventive Concept

• Case: Aviation Capital Partners LLC v. SH Advisors LLC (May 6, 2025)

• Core Issue: Patent eligibility of claims for determining taxability status of vehicular assets under Alice Section 101.

• Key Takeaways:Routine Data Processing as Abstract Idea: The claims were found abstract, directed to "obtaining traffic control system info...detecting a gap...computing...taxability status." This falls into the "collect data, analyze data, apply result" category frequently deemed abstract.

• PTO Allowance Not Binding at Motion to Dismiss: STR's argument that the district court should treat the PTO's allowance as a factual finding of practical application was rejected. The court reiterated that "you can't just point to the issued patent. You need to plead specific facts found by the examiner if you want the court to consider them at the 12b stage for the Alice inquiry. The legal conclusion of patentability isn't enough."

• Strategic Implication: For software and business method patents, "focus on articulating the technical improvement, the non-conventional aspects right there in the specification and claims." Patentees cannot rely solely on PTO allowance to overcome 101 challenges at the motion to dismiss stage.

• Case: Geoscope Technologies v. Google & Apple (May 21, 2025)

• Core Issue: Patent eligibility of claims related to determining mobile device location.

• Key Takeaways:Rule 12(c) De Novo Review: The Federal Circuit conducts a de novo review of Rule 12(c) judgments on the pleadings for Section 101, taking "a fresh look."

• Method Claims and Abstractness: While details on the specific abstract idea were not fully provided, the case reinforces the court's scrutiny of method claims involving data collection, processing, and application to determine location, often seen as abstract without a clear inventive concept.

• Strategic Implication: Similar to Aviation Capital, claims must clearly articulate a technical solution beyond a generalized method of information processing.
  

C. Damages and Expert Testimony: Scrutiny of Unreliable Methodologies

• Case: EcoFactor, Inc. v. Google LLC (May 21, 2025)

• Core Issue: Reliability of EcoFactor's damages expert's opinion based on prior lump-sum licenses to establish a $6 per unit royalty rate.

• Key Takeaways:Insufficient Factual Basis for Damages: The Federal Circuit found the district court abused its discretion by admitting the expert's testimony. The three lump-sum licenses, "whether you look at them alone or altogether were insufficient to back up his claim that the prior licences agreed to that $6 right calculation."

• Plain Language of Licenses is Key: The court reviewed the license agreements de novo and found their plain language "provided no basis for Kennedy's opinion that the parties agreed the lump sum came from a six dollars per unit calculation. In fact, they found it suggested the opposite." Recitals stating EcoFactor's belief in a $6 rate, especially those with explicit disclaimers from the licensee (e.g., "Nothing in this clause should be interpreted as agreement by Schneider that $6 per unit is a reasonable royalty"), were deemed insufficient.

• Expert Testimony Must Be Grounded in Evidence: The dissenting judge argued the CEO's testimony (stating licenses "agreed to the calculation") provided sufficient support for the jury, but the majority found the expert's methodology unreliable.

• Strategic Implication: Damages experts must ensure their opinions are "supported by sufficient facts or data." Simply reciting an agreement to a rate in a "whereas" clause is not enough if the operative provisions of the license contradict it or include disclaimers.
  

D. Infringement Analysis: Element-by-Element Scrutiny and Future Acts

• Case: Fintiv v. Apple (May 27, 2025)

• Core Issue: Summary judgment of non-infringement of a mobile wallet patent due to incomplete infringement analysis.

• Key Takeaways:Element-by-Element Infringement Required: The district court initially construed "widget" but failed to analyze if Apple's products met all the limitations of the claimed system, including whether "this widget correspond[ed] to the contactless card outlet" and was "retrieved and provisioned in the way the claims described." The Federal Circuit remanded because the district court "stopped at is there a widget and didn't analyze if that potential widget met these other limitations."

• "Every limitation in the claim must be met."

• Strategic Implication: Infringement analysis must be thorough, addressing every single claim limitation. A finding that one element is present is insufficient if the full scope of the claim, including its functional or structural relationships, is not met.
  

E. Hatch-Waxman and Remedies: Scrutiny of Injunctions and 271(e) Scope

• Case: Jazz Pharmaceuticals v. Avadel CNS Pharmaceuticals (May 6, 2025)

• Core Issue: Scope of permanent injunctions under Section 271(e)(4) and general Section 283, specifically whether filing an NDA for a new indication constitutes infringement under 271(e)(2).

• Key Takeaways:Limits on 271(e)(4) Remedies: For 271(e)(2) infringement (filing an ANDA/NDA), remedies are "strictly limited by section 271E4." This means a court "cannot enjoin the filing of the application itself," as it would be "an improper de facto patent term extension." Remedies are typically delayed FDA approval and damages for past commercial acts.

• Unresolved Question: 271(e)(2) Scope for Non-Orange Book Patents: The court vacated and remanded the injunction against applying for IH approval, noting a "major unresolved question" whether "submitting this 505B2 NDA for IH for a drug claimed in the 782 patent, which isn't orange book listed for Jazz's drugs, actually constitutes infringement under section 271E2." This is "absolutely critical" and has "huge" long-term implications for 505(b)(2) litigation.

• Causal Nexus for Section 283 Injunctions: Even under a general Section 283 injunction (if 271(e)(4) doesn't apply), one must show the enjoined "non-infringing activity" (like submitting an NDA) is "necessary to prevent actual infringement." The district court's focus on market harm to Jazz if the drug got approved was "too speculative" and lacked the "clear causal nexus" between the act (applying) and the harm (infringement market entry).

• Strategic Implication: For drug developers, filing an NDA for a new indication might not automatically trigger 271(e)(2) infringement if the asserted patent is not Orange Book listed. This could reduce immediate litigation risk at the filing stage. For patent holders, obtaining injunctions against pre-commercial activity requires a strong causal link to actual infringement harm.

• Case: Incyte Corporation v. Sun Pharmaceutical Industries, Ltd. (May 7, 2025)

• Core Issue: Clear error in finding irreparable harm for a preliminary injunction in a pharmaceutical case.

• Key Takeaways:No Irreparable Harm if Patentee Not First to Market: The district court's core finding that "but for Sun's Laqueli, Incyte's 335 patent would provided with the ability to bring a deuterated ruxal tentip AA treatment first to market" was found "clearly erroneous." Sun's product was already FDA-approved and set for launch, while Incyte's competing product was "still in development."

• Inevitability of Market Entry: The court acknowledged the "stickiness" of pharmaceutical patients (unlikely to switch therapies) but found that the "inevitable entry" of the accused infringer's product, even if the patentee's product was delayed, negated the irreparable harm argument.

• Strategic Implication: Injunctions, especially preliminary ones, are difficult to obtain if the patentee cannot realistically demonstrate they would be "first to market" or that the injunction would prevent truly irreparable harm that cannot be compensated by money.
  

F. IPR Estoppel: Defining "Ground" and Preserving District Court Options

• Case: IOENGINE v. Ingenico (May 7, 2025)

• Core Issue: Interpretation of "ground" for IPR estoppel under Section 315(e)(2) and its application to public use/on-sale bar arguments in district court.

• Key Takeaways:"Ground" Defined by Statutory Basis: The court clarified that "ground" refers to the "statutory basis for challenging validity under section 102 or 103." Anticipation is a ground, obviousness is a ground.

• IPRs Limited to Patents/Printed Publications: IPRs are "explicitly limited to grounds based on prior art consisting of patents or printed publications." This means "public use" or "on sale bar" arguments cannot be the "basis for an IPR challenge."

• No Estoppel for Non-IPR Grounds: Ingenico's "public use" and "on sale bar" arguments in district court, even if they used documents also available in the IPR (like a readme file), were not estopped because "those specific statutory grounds...cannot be the basis for an IPR challenge." "Using the readme file to prove public use in court is different from using the readme file to prove anticipation by printed publication in an IPR."

• Strategic Implication: IPR petitioners retain the ability to challenge patents in district court based on non-patent/publication prior art (e.g., public use, on-sale bars), even if they lost an IPR. For patent owners, this means preparing to defend against these other types of prior art in court.
  

G. Procedural Issues: Plausible Pleading and Leave to Amend

• Case: Yoldas Askan v. FARO Technologies, Inc. (May 12, 2025)

• Core Issue: Dismissal of a pro se infringement complaint with prejudice for failure to plausibly allege infringement.

• Key Takeaways:Plausible Allegations Required: The court affirmed dismissal where the pro se plaintiff "basically conceded that to make a plausible claim for one patent, he'd need to reverse engineer Pharaoh's product. And for the other, he absolutely needed Pharaoh's confidential source code."

• Failure to Amend After Warning: The district court's decision to dismiss with prejudice after the plaintiff failed to "Comply with the order. Comply with the rules" after being given a second chance, was upheld.

• Strategic Implication: Even for pro se litigants, clear and plausible allegations of infringement are necessary. Courts will not allow repeated amendments if the plaintiff admits they lack the necessary information to plead plausibly.
  

III. Overarching Themes for Practitioners

• Precision in Drafting and Prosecution: The Acufloor and Stylwan cases powerfully demonstrate that every word in the specification, every argument during prosecution, and even the titles of patents can critically define or limit claim scope. The Magsil principle (enablement limits claims) demands that patent applications enable the full desired claim scope.

• Challenges for Software/Business Method Patents: Aviation Capital and Geoscope reinforce the high bar for patent eligibility under Section 101, especially for claims involving data processing. Focus on specific technical improvements beyond generic computer implementation.

• Evidentiary Rigor in Litigation:Damages: EcoFactor highlights the need for robust, factually supported damages methodologies. Simply relying on "recitals" or "beliefs" in license agreements is insufficient.

• Infringement: Fintiv underscores the necessity of a granular, element-by-element infringement analysis that accounts for the full scope of each limitation.

• Strategic Nuances in Pharma Litigation: Jazz Pharmaceuticals and Incyte demonstrate the complexities of Hatch-Waxman, remedies, and preliminary injunctions. The unresolved 271(e)(2) scope question for non-Orange Book patents is a significant development.

• IPR and District Court Interplay: IOENGINE provides welcome clarity on the scope of IPR estoppel, confirming that non-patent/publication prior art grounds remain viable in district court.
  

IV. Conclusion

These decisions from May 2025 offer important insights into the Federal Circuit's approach to recurring issues in patent law. They serve as valuable reminders for patent drafters to be meticulous in crafting specifications and claims, for prosecutors to be precise in their arguments, and for litigators to adhere to strict evidentiary and procedural standards in challenging and defending patents. The ongoing evolution of areas like Section 101 and Hatch-Waxman remedies demands continuous attention to these detailed judicial interpretations.