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Why IPR Decisions Don’t Preclude District Court Litigation

December 16, 2025

An Illustration from Life of Issue Preclusion

The kids are fighting over something and bring it to me to resolve. I don’t really want to get involved in whatever they’re arguing about. Instead of just telling them to knock it off, I agree to hear them out on one condition: if they’re going to drag me into this, they have to accept my decision and move on.

Each kid is convinced he’s absolutely right, so they agree. After listening to both number 1 and number 2’s arguments, I decide number 2 was wrong. I tell him that number 1 is right and that he needs to apologize. They both leave, number 1 looking smug and number 2 pouting.

Five minutes later, number 2 comes back. He starts making the same arguments again, insisting I must not have understood the first time. I stop him right there and remind him that this issue has already been decided. He agreed to accept the judgment.

This is the basic legal principle of “issue preclusion”. Once a court has finally decided a specific issue of fact or law, the parties can’t re-litigate that same issue in a later case. This is true even if later case involves different claims.

Why Patent Cases Often Have Two Battles: PTAB vs. District Court

Issue preclusion comes up frequently in patent cases. These cases often involve two sequential proceedings: an Inter Partes Review (IPR) at the Patent Trial and Appeal Board, followed by district court litigation.

An IPR may cancel some claims. After that, the patentee often amends the lawsuit to assert similar—but not identical—claims in court. The accused infringer naturally argues that the PTAB has already decided the relevant issues. They claim the patentee should not get another bite at the apple.

The Federal Circuit’s Take: Different Standards, Different Outcomes

The Federal Circuit has generally rejected that argument. Invalidity in an IPR is decided under the lower preponderance of the evidence standard. Invalidity in district court must be proven by clear and convincing evidence. Because of this difference, the two proceedings do not resolve the “same issue” for purposes of issue preclusion. In short, what counts as “already decided” in an IPR often isn’t “already decided” in court.

Number 2 would certainly approve.

Some articles related to patent litigation: Discovery Gamesmanship Backfires: A Lesson in Playing Fast and Loose

The Impact of Third-Party Litigation Funding on Patent Disputes

Summary of Causam Enterprises, Inc. v. International Trade Commission (Fed. Cir. Oct. 15, 2025)

November 6, 2025

Wow, the Federal Circuit seriously narrowed the scope of some patent assignments.

Continuation-in-Part Applications Not Covered in Assignments

The Federal Circuit held that a 2007 patent assignment did not cover continuation-in-part (CIP) applications.
The assignment referenced “divisions, reissues, continuations, and extensions,” but did not mention CIPs.
Relying on standard contract principles, the court refused to insert terms the parties did not include.

The Distinction Between Continuation and Continuation-in-Part Applications

The panel emphasized that continuations and CIPs are distinct under long-settled patent law. Continuations cannot add new matter, while CIPs can. That difference carries real legal and practical consequences for ownership and recordation.

The Singular Exception in UNM v Knight

The court contrasted its decision with University of New Mexico v. Knight (2003). In Knight, similar language was held to include CIPs. The panel distinguished that case because additional agreements transferred “all related patents.”

Potential Gamesmanship of the Decision

Some commentators described the analysis as clear but overly formalistic. They argued it ignored functional concerns, including potential gamesmanship. A drafter could add minimal new material, file a CIP, and shift ownership.

In the end, the ownership dispute did not matter. A companion IPR proceeding had already invalidated the relevant patent claim for obviousness.

For additional information on Continuation and Continuation-in-Part patent applications, see our FAQ section on Patent Prosecution, with the questions addressed towards the bottom of the page.

Automated Telephone Line Open

November 6, 2025

We just opened up a new service: a telephone line: (949) 943-8311 . You can call and get answers to basic Intellectual Property questions. We have text FAQs available on our website. We also have a text chatbot available too that uses a personalized Chat GPT. The Chatbot accesses information from the FAQs and Bob’s books: White Space Patenting, and Green Fields Patenting.
But if you want to ask the questions with voice rather than text them, this might be the option for you.
The new Voice line can be accessed at (949) 943-8311.

Discovery Gamesmanship Backfires: A Lesson in Playing Fast and Loose

September 29, 2025

The ol’ “Switcheroo”: One Argument in Discovery, the Opposite in Trial

Every so often, the Federal Circuit hands down a decision that’s less about patents and more about human nature. Magēmā (pronounced: Maggie-May) Technology v. Phillips 66 is one of those cases.

In the initial trial, Phillips convinced the magistrate during discovery that Magēmā didn’t need actual test data. It would be “too dangerous” to obtain the test data, so formulas would be good enough. Then, once trial rolled around, Phillips told the jury the exact opposite: no test data, no infringement.

Magēmā objected but the district court overruled, and the jury came back with a broad-brush “no infringement.”

The Appellate Judge Notices the Discrepancy

But on appeal, the Federal Circuit said, hold on a second. When a party spends the whole trial hammering on a theory it promised wasn’t necessary in discovery, you don’t get to call that “harmless error.” Judge Bumb, sitting by designation, had the perfect metaphor: this wasn’t pepper sprinkled here and there — the whole trial was marinated in it.

Phillips 66 is Forced to Play by Its Initial Argument

So, new trial. Phillips’ gamesmanship, instead of locking in a win, ended up boomeranging right back at them.
Magēmā also tried to raise a claim construction issue under O2 Micro, but that one fizzled. You can’t complain about claim scope being left to the jury if you never asked the court to construe the terms in the first place.

Because I hate litigation gamesmanship, I am very happy to see this outcome. Unfortunately it is allowed way too often. But at least this time, the party playing the games didn’t profit.

Some related articles on court shenanigans: Generic Drug Label Doesn’t Induce Patent Infringement Just by Listing Optional Refrigeration

Mission Impossible: Trademarking the US SPACE FORCE

March-In Madness: Harvard, Bayh-Dole, and the Trump Administration

September 25, 2025

When politicians get involved in patent law, things usually get messy — and the latest spat between the Trump Administration and Harvard over the Bayh-Dole Act is no exception.

What Is the Bayh-Dole Act and Why It Matters

The 1970s Patent Problem: Why Congress Passed Bayh-Dole

Back in the 1970s, the U.S. government had a problem: it was sitting on a mountain of patents — roughly 28,000 of them — generated from taxpayer-funded research. Fewer than 5% of those patents were ever licensed, let alone commercialized. Why? Because government ownership meant non-exclusive licenses, bureaucratic hurdles, and no incentive for anyone to put serious money into development.

How the Bayh-Dole Act Changed University Patent Ownership

Enter the Bayh-Dole Act of 1980. Congress flipped the script: universities, nonprofits, and small businesses could now keep the patents from federally funded research, provided they played by certain rules. It was a win-win: researchers got the chance to commercialize, investors got certainty, and the public (in theory) got products instead of dusty patent files.

Understanding March-In Rights Under Bayh-Dole

But Congress also built in a big stick — the “march-in” rights* If an institution wasn’t doing its job, the government could “march in” and force licensing of the invention.

The Four Legal Triggers for Federal March-In Authority

The statute lists four triggers:

No practical application.
Health or safety needs not being met.
Public use requirements not satisfied.
Failure to substantially manufacture in the U.S.

Why No Administration Has Ever Exercised March-In Rights

Sounds dramatic, right? Except here’s the kicker: in over forty years, no administration has ever actually marched in. Plenty of petitions, lots of noise — zero follow-through.

Harvard and the Trump Administration: A Bayh-Dole Showdown

According to reports, the Trump Administration dusted off those march-in provisions and pointed them at Harvard. Commerce sent a letter accusing the university of failing to comply with Bayh-Dole. Harvard fired back, calling the move political payback for its defense of academic freedom.

Political Pressure or Legal Enforcement?

Now, whether you buy Harvard’s explanation or the Administration’s, the bigger point is this: a march-in threat is almost always more about leverage than law. It’s the sword hanging on the wall. Agencies wave it around when they want to pressure a university or company to fall in line.

Bayh-Dole Compliance Requirements for Federally Funded Research

Here’s the practical takeaway for innovators: if you’re working with federal funding, Bayh-Dole compliance isn’t optional. You need to file invention disclosures on time, elect title properly, and make sure your commercialization plans check the right boxes. Screw up the paperwork, and you give an agency an opening — political or not — to come knocking.

Why March-In Threats Matter for Startups and University Spin-Outs

And while Harvard can weather a march-in threat, a startup or small university spin-out might not. Investors don’t like uncertainty, and nothing says “uncertain” like the government hinting it could hand your patent to someone else.

March-In Rights: Bigfoot of Patent Law?

The Trump–Harvard drama is a reminder that Bayh-Dole’s march-in rights are the patent world’s version of Bigfoot: everyone talks about them, nobody’s seen them in the wild, but the threat alone can be enough to change behavior.

* There is a section on “march-in rights in the wikipedia article referenced for the Bayh-Dole Act. It’s about half way down the page.

For a related article on USPTO news concerning the Trump administration: The Trump-Lutnick Patent Tax

Call of Duty Lawsuit Ends Without Attorneys’ Fees for Activision

September 22, 2025

The Fifth Circuit just weighed in on a copyright fight between retired wrestler Booker T. Huffman and video game giant Activision. Huffman claimed that Activision’s Call of Duty: Black Ops IV “Prophet” character infringed his G.I. Bro comic book poster. A jury sided with Activision, but the company wanted Huffman to foot the bill for its legal fees—arguing the case was frivolous.

The district court said no, and the Fifth Circuit backed that decision. Relying on the Supreme Court’s Fogerty factors, the court found Huffman’s claims weren’t frivolous or objectively unreasonable, noting the case touched on unsettled areas of copyright law. The panel stressed that fee awards aren’t automatic, and the trial judge’s detailed six-page analysis showed no abuse of discretion.

Not everyone agreed. In a sharp dissent, Judge Oldham called the suit “speculation piled on fantasy piled on a pipe dream” and said Activision should have been compensated for defending a baseless $32 million claim.

At the end of the day, Activision won the battle but had to eat its own legal fees—reminding us that “winning” in court doesn’t always mean walking away richer.

Booker T Huffman from his wrestling days.

The G.I. Bro Comic Poster

Activision’s Call of Duty: Black Ops IV “Prophet” character

For more information on copyright infringement and litigation, see our FAQ section.

Secrets, Secrets Are No Longer Hard to Keep (in Court)

September 18, 2025

Previously, courts required trade secret plaintiffs to identify their trade secrets with particularity. That requirement applied before defendants had to respond to discovery. In practice, however, this rule created a familiar problem.

No matter how a plaintiff described its trade secrets, defendants often refused to respond. They argued that the identification was still not particular enough.

At the same time, courts typically declined to step in. They would not say whether the identification was sufficient. Nor would they explain what more was required. As a result, many trade secret cases stalled early. Some went nowhere at all.

That approach changes with Quintara Biosciences, Inc. v. Ruifeng Biztech, Inc. The court held that the Defend Trade Secrets Act (DTSA) imposes no early “reasonable particularity” requirement. A plaintiff need not fully define its trade secrets at the outset. Instead, the adequacy of the identification is addressed later. It is usually resolved at summary judgment or trial.

This rule differs, however, from California law. Cases under California’s Uniform Trade Secrets Act (CUTSA) still follow a stricter path. CUTSA requires plaintiffs to identify alleged trade secrets with “reasonable particularity.” That obligation applies at the very start of litigation.

You might also be interested in our article: When Inventors Leave: A Hard Lesson in Trade Secret Law