Radio Silence Alone Doesn’t Prove Equitable Estoppel Defense
The US Court of Appeals for the Federal Circuit reversed a district court’s summary judgment grant based on an equitable estoppel defense, finding that the accused infringer failed to show that the patent owner’s silence or inaction influenced the decision to migrate to the accused system. Fraunhofer-Gesellschaft v. Sirius XM Radio Inc., Case No. 23-2267 (Fed. Cir. June 9, 2025) (Lourie, Dyk, Reyna, JJ.)
In 1998, Fraunhofer licensed patents related to satellite radio to WorldSpace International Network. This license was exclusive, with the right to sublicense. However, Fraunhofer also began a collaboration with XM Satellite Radio to develop satellite radio and required that XM obtain a sublicense from WorldSpace. XM ultimately launched a “high-band” satellite radio system. In 2008, XM joined Sirius Satellite Radio, to form Sirius XM (SXM). Sirius Satellite Radio had its own “low-band” system. The low- and high-band systems were incompatible, so SXM investigated which system it would use eventually, and it ultimately decided to shift toward the high-band system.
Meanwhile, WorldSpace filed for bankruptcy in 2008. In 2010, Fraunhofer, in its view, terminated its licensing agreement with WorldSpace. In 2011, XM formally merged with SXM. It is disputed whether SXM was licensed to the asserted patents after these events, but regardless, Fraunhofer remained silent until 2015, when it notified SXM that it believed that because its agreement with WorldSpace was supposedly terminated in 2010, the rights in the asserted patents had reverted to Fraunhofer, and thus SXM was not licensed and was infringing. Fraunhofer filed suit. However, the district court found that because of Fraunhofer’s silence, Fraunhofer was equitably estopped from bringing the patent infringement claims against SXM. Fraunhofer appealed.
The Federal Circuit reversed. There are three requirements for a successful equitable estoppel defense:
The patentee must engage in misleading conduct leading the accused infringer to reasonably infer that the patentee does not intend to assert its patent against the accused infringer.
The accused infringer must rely on that conduct.
As a result of that reliance, the accused infringer must be in a position such that it would be materially prejudiced if the patentee was allowed to proceed with its infringement action.
The Federal Circuit agreed with the district court that Fraunhofer’s refusal to raise the issue of potential infringement from 2010 until 2015, despite asserting that it reacquired the rights to the asserted patents in 2010, was misleading conduct. Fraunhofer knew that SXM’s product may have infringed the asserted patents and had previously required SXM to obtain a license to those patents. Fraunhofer also had built allegedly infringing features. Thus, it was reasonable for SXM to infer that Fraunhofer would not bring a claim against SXM.
However, the Federal Circuit disagreed with the district court on the issue of reliance. To show reliance, the Court explained that SXM must have established “that it at least considered Fraunhofer’s silence or inaction and that such consideration influenced its decision to migrate to the accused high-band system.” The evidence did not indisputably establish influence over SXM’s decision making. Instead, the record suggested that the decision to proceed with the migration was made for unrelated reasons, primarily that the high-band system had a higher adoption rate and was therefore easier to migrate toward.
The Federal Circuit agreed with the district court that SXM, were it able to establish that it relied on Fraunhofer’s misleading conduct, would be prejudiced by that reliance. Given that SXM had access to a viable non-infringing alternative (the low-band system), the evidence was sufficient to establish prejudicial reliance. However, because the Court disagreed on reliance, it reversed the summary judgment grant.
CRISPR Clarity: Enablement Is Analyzed Differently Under §§ 102 and 112
In a decision underscoring the distinct standards governing enablement under §§ 102 and 112, the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that a prior art reference was enabling for purposes of anticipation, even in the absence of working examples. Agilent Technologies, Inc. v. Synthego Corp., Case Nos. 23-2186; -2187 (Fed. Cir. June 11, 2025) (Prost, Linn, Reyna, JJ.)
The case centers on CRISPR, the gene-editing technology that has reshaped the frontiers of biology and biotechnology. Agilent owns patents that claim chemically modified guide RNAs (gRNAs) designed to improve stability and performance in CRISPR-Cas systems. Synthego filed an inter partes review (IPR) petition asserting that the patents were unpatentable. The Board found all claims unpatentable, relying on a 2014 publication by Pioneer Hi-Bred that disclosed similar modified gRNAs. Agilent appealed.
Agilent challenged the Board’s finding that the prior art was enabling, arguing that Pioneer Hi-Bred merely proposed a research plan without demonstrating which specific modifications would yield functional gRNAs. Agilent emphasized that the reference lacked working examples and disclosed numerous nonfunctional sequences, contending that a skilled artisan would not have been able to identify a successful embodiment without undue experimentation. It also argued that the nascent state of CRISPR technology in 2014 compounded the unpredictability, making the reference non-enabling. In support, Agilent relied heavily on the Supreme Court’s 2023 decision in Amgen v. Sanofi, where the Supreme Court invalidated a broad genus claim for failing to enable its full scope.
The Federal Circuit was not persuaded. The Court drew a clear distinction between enablement under § 112 (which governs patent validity) and enablement under § 102 (which governs anticipation). The Court explained that the bar is lower for the latter, and that a prior art reference need only enable a single embodiment within the scope of the claim. While Amgen involved § 112, the Court emphasized that this case turned on § 102, where the standard is less demanding.
The Federal Circuit grounded this distinction in both the statutory text and the underlying purpose of the respective provisions. Statutorily, § 112 requires that a patent specification enable a person of ordinary skill in the art to “make and use” the invention. Section 102, by contrast, contains no such requirement. This divergence reflects a difference in purpose: § 112 ensures that the patentee does not claim more than they have taught, thereby preventing overbroad monopolies. As the Supreme Court explained in Amgen, “[t]he more a party claims, the broader the monopoly it demands, the more it must enable.” But the Federal Circuit emphasized that the Supreme Court’s reasoning in Amgen was rooted in the patentee’s burden to support the full scope of a genus claim under § 112. That concern, the Court explained, does not apply in the § 102 context, where the question is not how much the prior art claims, but whether it teaches enough for a skilled artisan to practice at least one embodiment without undue experimentation.
Applying that standard, the Federal Circuit credited the Board’s application of the Wands factors governing the “undue experimentation” analysis, noting that the chemical modifications in question were well known, the synthesis techniques (such as click chemistry) were established, and the field had matured significantly by the 2014 priority date. The fact that Pioneer Hi-Bred disclosed many inoperable examples didn’t doom it. Instead, what mattered was that a skilled artisan could, without undue experimentation, make and use at least one embodiment that fell within the claims. Accordingly, the Court affirmed that the prior art enabled at least one embodiment and therefore anticipated the claims.
Practice Note: This decision, when read alongside the Federal Circuit’s recent ruling in Regents of the Univ. of Cal. v. Broad Inst., reflects a consistent theme: enablement and conception are judged by what a skilled artisan can do without undue experimentation. In Regents, the Court clarified that inventors need not appreciate the success of their invention at the time of conception. In Agilent, it confirmed that prior art need not demonstrate success to be enabling. Together, these decisions reaffirm that the touchstone for disclosure – whether in conception or anticipation – is not certainty or completeness, but the capacity of a skilled artisan to fill in the gaps using routine techniques and reasonable effort.
No Blank Check: Vendor Can’t Claim Declaratory Judgment From Customer Lawsuits Alone
The US Court of Appeals for the Federal Circuit affirmed a district court’s dismissal of a declaratory judgment action, explaining that declaratory judgment jurisdiction does not “arise merely on the basis that a party learns of the existence of a patent owned by another or even perceives such a patent to pose a risk of infringement, without some affirmative act by the patentee.” Mitek Sys., Inc. v. United Servs. Auto. Ass’n, Case No. 23-1687 (Fed. Cir. June 12, 2025) (Taranto, Schall, Chen, JJ.)
Mitek develops a mobile image capture software development kit called MiSnap. United Services Automobile Association (USAA) sent letters to and filed infringement claims against several of Mitek’s bank customers. Mitek sought a declaratory judgment that it and its customers did not infringe four USAA patents related to mobile check deposits, arguing that it had standing based on a reasonable apprehension of suit and indemnity demands from its customers. The district court dismissed the declaratory judgment action, which Mitek appealed. The Federal Circuit vacated and remanded the district court’s dismissal, finding that the decision lacked adequate explanation and support.
On remand, the district court again analyzed Mitek’s two jurisdictional bases for its declaratory judgment action: potential liability for infringement and alleged demands for indemnity made by licensees after USAA sent letters seeking to license USAA patents. The district court again dismissed the case, determining that Mitek could not establish a case or controversy between USAA and Mitek as to infringement, and determining that indemnification agreements and USAA’s letters to Mitek customers did not create a reasonable potential for Mitek’s indemnification liability. Even if it had jurisdiction, the district court stated that it would exercise its discretion to decline jurisdiction, because the best means by which Mitek could defend the MiSnap software used by the banks was to intervene in a future litigation brought by USAA against a Mitek customer regarding the asserted patents. Mitek again appealed.
The threshold question for declaratory judgment jurisdiction is “whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”
Regarding Mitek’s infringement basis, the Federal Circuit found that Mitek did not establish a reasonable potential of the suit for infringement. The Court’s consideration also included post-filing events, including settlements of related customer suits and Patent & Trial Appeal Board decisions invalidating asserted patent claims. These developments further undermined any ongoing controversy. The Court then addressed the allegations of direct infringement, induced infringement, and contributory infringement:
Direct Infringement. Mitek admitted that MiSnap alone did not perform all elements of any asserted claim. USAA also never accused MiSnap of satisfying every limitation of an asserted claim. Instead, MiSnap’s “unadulterated” software implemented by third-party banks failed to meet certain elements of the asserted claims. And although Mitek stated that it evaluated the complete mobile deposit system, Mitek could not have had a reasonable apprehension of suit based on testing its complete mobile deposit system. This was never alleged in the complaint, and USAA asserted it was unaware of Mitek’s alleged testing of the complete mobile deposit system.
Induced Infringement. The Federal Circuit found that USAA had not alleged that Mitek encouraged or instructed customers to infringe. Mitek’s reliance on USAA’s allegations at a Mitek customer’s trial was insufficient to establish a reasonable potential for inducement claims. Suits against customers do not automatically give rise to case or controversy regarding induced infringement. USAA never alleged that MiSnap met every element of every asserted claim, nor did it cite to Mitek documentation in its claim charts as evidence of the same.
Contributory Infringement. USAA expressly stated that MiSnap had substantial non-infringing uses, such as customizing features in a non-infringing manner to have manual image capture instead of auto-capture. The Federal Circuit emphasized that substantial non-infringing use defeats contributory infringement claims.
Regarding Mitek’s indemnification basis, the Federal Circuit found that Mitek could not establish a reasonable potential of indemnification liability. The Court explained that a software supplier does not have a right to bring a declaratory judgment action solely due to a suit brought against customers. The Court distinguished a situation where a supplier would have standing to bring suit if the supplier had an obligation to indemnify customers, because the supplier had a legal obligation to indemnify and would stand in the shoes of the customers and represent their interests. The Court explained that each Mitek agreement contained carve-outs that precluded this reasonable potential for indemnification liability. Many involved third-party service providers that had separate indemnification agreements with end-user banks, and Mitek did not establish a case or controversy between these services providers (the indemnitees) and USAA.
Finally, the Federal Circuit saw no abuse in the district court’s discretionary dismissal. The Court disagreed with Mitek’s arguments that the district court failed to address certain issues related to whether Mitek could intervene in such actions and if intervention would provide adequate relief. The Court explained that Mitek would have an opportunity to file a motion to intervene on a permissive basis at a minimum in a future lawsuit against a Mitek customer similarly alleging that MiSnap meets certain patent claim limitations.
Shraddha Khirwadkar, a summer associate in the New York office, also contributed to this case note.
Tennessee Governor Signs Bill Expanding Student-Athlete NIL Compensation
On May 1, 2025, Governor Bill Lee signed into law legislation (SB 536/HB194) that expands Tennessee’s Intercollegiate Athlete’s Name, Image, or Likeness Law (“student-athlete NIL statute”). Under the law, Tennessee student-athletes will have no limits on NIL compensation unless the limitations are expressly prohibited or limited by federal law, a valid court order, or determined to be exempt from antitrust law.
Quick Hits
Tennessee amended its student-athlete NIL statute to allow unlimited NIL compensation for Tennessee student-athletes, unless prohibited by federal law, a valid court order, or determined to be exempt from antitrust law.
The student-athlete NIL statute may conflict with the recent NIL compensation restrictions detailed in the approved House v. NCAA settlement.
The amendments shield Tennessee universities from NCAA sanctions related to player pay and shift liability to the NCAA for any legal repercussions arising from student-athletes related to their pay.
Tennessee’s Student-Athlete NIL Law
In 2022, Tennessee adopted its student-athlete NIL statute, which prohibited institutions or their agents from being involved in actions that compensate student-athletes for their NIL. This included prohibiting institutions from facilitating NIL deals by working with third parties (often termed “collectives”). The law was later amended to state that an institution and its agents can be involved in NIL compensation as long as they do not coerce, compel, or interfere with the student-athlete’s decision to earn compensation.
The amendments that Governor Lee recently signed expand this law to allow unlimited NIL compensation for Tennessee student-athletes unless such limits are expressly prohibited or limited by federal law, a valid court order, or determined to be exempt from antitrust law. Tennessee institutions do not have to follow any National Collegiate Athletic Association (NCAA) rules that lessen, or tend to lessen, full and free competition in trade or commerce affecting the state of Tennessee. The recent amendments also shield Tennessee institutions and collectives from liability related to NIL compensation by shifting liability to the NCAA if the NCAA rules are deemed unlawful and by stating that the NCAA will hold the state, its institutions, and intercollegiate athletes harmless from any damages related to NIL compensation.
The Amendments’ Implications, Considering the House v. NCAA Settlement
On Friday, June 6, 2025, the U.S. District Court for the Northern District of California approved the House v. National Collegiate Athletic Association settlement that pays nearly $2.8 billion in back pay to former athletes over the next ten years. This historic settlement also establishes a revenue-sharing framework that provides a permissive cap of around $20 million for institutions to use to cover all athlete NIL compensation across varsity sports. The revenue-sharing cap is not limited to sports that generate revenue for the institution. Further, collectives that were paying NIL directly to student-athletes have other restrictions and limitations under the settlement. Particularly, NIL deals over $600 will undergo a “market value” analysis to ensure they are in direct relation to what an individual player brings to the team.
The amendments to Tennessee’s student-athlete NIL statute leave several unanswered questions in light of the approved House v. NCAA settlement. There is an open question related to whether the House v. NCAA court’s “Order Regarding Order Granting Motion for Final Approval of Settlement Agreement” would constitute a valid court order expressly limiting NIL compensation under Tennessee’s student-athlete statute. In the event it does not, Tennessee institutions and collectives may choose not to adhere to the House v. NCAA settlement’s NIL compensation restrictions under Tennessee’s Student-Athlete NIL statute.
Key Takeaways
Pursuant to Tennessee’s amended student-athlete NIL statute, Tennessee institutions and collectives are allowed to pay unlimited NIL compensation to Tennessee student-athletes. In theory, if Tennessee institutions and collectives do not comply with the House v. NCAA settlement’s restrictions on NIL compensation, they risk sanctions from the NCAA. While there is a risk of sanctions from the NCAA, under the amended student-athlete statute, Tennessee institutions and collectives may be shielded from any liability from lawsuits related to NIL compensation, and any such liability will be shifted to the NCAA.
Beyond Copyright: Reddit’s Lawsuit Against Anthropic
On June 4, 2025, Reddit, Inc. (“Reddit”) filed suit against Anthropic, PBC (“Anthropic”) in the Superior Court of California, alleging that Anthropic scraped and commercially exploited Reddit user data—including deleted posts—without consent or compensation.[1] Unlike recent enforcement efforts that have centered on establishing copyright infringement liability, Reddit’s complaint brings five causes of action—breach of contract, unjust enrichment, trespass to chattels, tortious interference, and unfair competition—reflecting a strategic choice to deploy contractual and privacy-based claims to address Anthropic’s allegedly unauthorized scraping of Reddit data.[2]
Reddit alleges that Anthropic trained its AI models (e.g., Claude) on public Reddit posts and comments scraped between December 2021 through October 2024.[3] Public statements by Anthropic researchers identify Reddit subreddits—such as r/explainlikeimfive, r/changemyview, and r/WritingPrompts—as “good samples” for fine-tuning training inputs.[4]
According to the complaint, Reddit grants licensed AI partners conditional access to its archive only through a designated “Compliance API” which alerts licensees when content has been deleted by users.[5] AI partners are then contractually required under their licenses with Reddit to cease ongoing use of such material, thereby respecting users’ privacy rights.[6] Anthropic, however, allegedly refused to enter such an agreement yet nevertheless continued unauthorized access to the Compliance API, using the data for commercial purposes, in violation of Reddit’s license terms.[7] Despite Reddit’s technological controls, including robots.txt directives and IP rate limits, Anthropic’s bots are alleged to have bypassed these defenses, generating over 100,000 unauthorized API calls and imposing significant server-capacity costs on Reddit.[8] These documented costs allegedly quantify the tangible economic injury to Reddit’s infrastructure, forming the basis for its claims for trespass to chattels, breach of contract, and unfair competition.[9] At the heart of Reddit’s breach-of-contract claim is Anthropic’s alleged violation of key provisions in the Reddit User Agreement—specifically, the prohibition on “commercially exploit[ing]” Reddit content, the restriction on unauthorized scraping, and the improper access and use of Reddit’s Compliance API to continue using deleted or restricted content without permission.[10]
Reddit’s strategy appears designed to highlight the consequences of using data without a license, while sidestepping unsettled copyright defenses in AI contexts.[11] According to Reddit’s complaint, without a license, Reddit cannot enforce deletion requests, monitor privacy compliance through its Compliance API, or restrict sensitive data (e.g., sexually explicit content) from being included in AI training sets—in contrast to the clear operational boundaries enforced with licensed partners.[12]
While Reddit did not include copyright claims in its complaint, Anthropic could still argue that Reddit’s non‑copyright claims are preempted by the Copyright Act because they concern how Anthropic allegedly “used” and “reproduced” user-generated content, which closely aligns with the exclusive rights of reproduction and distribution federal copyright law.[13] Under the copyright preemption doctrine, state-law claims are invalid if they rest on rights equivalent to those protected by copyright—meaning that breach-of-contract, unjust enrichment, and unfair-competition allegations tied to content use may fail.[14] Tortious interference, however, typically survives preemption because it addresses improper disruption of contractual or business relationships, not copying itself.[15]
For content creators, social platforms, and rightsholders, Reddit’s lawsuit illuminates a crucial reality: that technical restrictions alone may not reliably prevent scraping, commercializing, or misuse of data. While tools like API gating, robots.txt, and rate-limiting are essential and recommended, determined actors may still evade defenses. As a result, platforms should complement technical controls with legally enforceable terms and conditions, formal licensing arrangements (including compliance obligations and takedown mechanisms), real-time-monitoring of API access and usage, documentation of server impact to demonstrate tangible harm, and embedded privacy controls to respect user deletions and data rights. Moreover, having a clear escalation plan—up to litigation—ensures those protections are not just theoretical. As the legal framework for AI training continues to evolve, this case offers unique insight into the importance of proactive governance, technical diligence, and contract-backed enforcement mechanisms to preserve platform integrity and safeguard user trust.
FOOTNOTES
[1] Complaint, Reddit, Inc. v. OpenAI, Inc., No. CGC-25-625892 (Cal. Super. Ct. S.F. Cnty. June 4, 2025), https://redditinc.com/hubfs/Reddit%20Inc/Content/PDFs/Docket%20Stamped%20Complaint.pdf.
[2] See id.
[3] Complaint supra Note 1.
[4] Amanda Askell et al., A General Language Assistant as a Laboratory for Alignment, arXiv (Dec. 9, 2021), arXiv:2112.00861, at 35.
[5] Complaint supra Note 1.
[6] Id.
[7] Id.
[8] Id.
[9] See id.
[10] Complaint supra note 1.
[11] Id.
[12] Id.
[13] See id.
[14] See 17 U.S.C. § 301 (2023).
[15] Id.
Chandler Lawn also contributed to this article.
Federal Circuit Narrows Scope of IPR Estoppel, Resolving District Court Split
The Federal Circuit recently clarified in Ingenico Inc. v. IOENGINE, LLC that inter partes review (IPR) estoppel does not extend to physical systems described in prior art patents or printed publications.
In doing so, the Federal Circuit resolved a long-standing district court split by confirming that system prior art defenses are viable post-IPR, even if those systems were described in prior art patents and printed publications that could have been raised in the underlying IPR proceeding.
Background
On March 23, 2018, IOENGINE, LLC sued Ingenico Inc. in the District of Delaware for infringement of various patents, including US Patent Nos. 9,059,969 (’969 patent) and 9,774,703 (’703 patent). The asserted patents are directed to technologies including a computer portable device, such as a USB thumb drive. Ingenico challenged IOENGINE’s asserted patents by filing IPR petitions at the Patent Trial and Appeal Board (PTAB). The PTAB found most claims of the ’969 and ’703 patents to be unpatentable. At summary judgment, the district court held Ingenico to be estopped from introducing prior art evidence in the form of “DiskOnKey Upgrade” software documents unless the documents were part of a grounds that could not have been reasonably raised in the IPRs.
At trial, Ingenico introduced a prior art DiskOnKey device and its software application Firm Upgrader. Ingenico argued the DiskOnKey device invalidated the claims because it was “on sale” or “in public use” under 35 U.S.C. § 102(a) (pre-America Invents Act), grounds that could not have been reasonably raised during IPR. While the jury found infringement, it also found the claims to be invalid as either “on sale” or “in public use.”
IOENGINE appealed the jury’s finding that the DiskOnKey device was either “one sale” or “in public use” and argued in the alternative for a new trial, claiming Ingenico should have been estopped from presenting its documentary prior art evidence under 35 U.S.C. § 315(e). IOENGINE reasoned that IPR estoppel barred Ingenico’s evidence because it was “entirely cumulative and substantively identical” to DiskOnKey user guide publications that could have been raised during the IPR. IOENGINE further argued it was entitled to a new trial because the district court provided incorrect jury instructions.
The Federal Circuit disagreed and held that IPR estoppel does not prevent parties from presenting system or product prior art (such as the DiskOnKey device) in district court, even if supporting prior art evidence in the form of related patents or publications could have been raised in during IPR. The court further explained the scope of IPR estoppel under 35 U.S.C. § 315(e)(2) is limited to “grounds” of the claimed invention based on patents or printed publications under U.S.C. §§ 102 or 103. In so doing, the court clarified “grounds” are different from “prior art evidence itself.” Lastly, the Federal Circuit found no error in the district court jury instructions.
Practical Considerations
Before Ingenico, district courts disagreed on whether system prior art, shown through technical documents, publications, and patents, was subject to IPR estoppel. Ingenico resolves this long-standing split, confirming that system prior art defenses are viable post-IPR, even if those systems were described in prior art patents and printed publications that could have been raised in the underlying IPR proceeding.
While the Ingenico decision provides clarity on the scope of IPR estoppel, it also exposes patent owners to continued validity challenges and may undermine the efficiency and finality that the IPR process was intended to provide. The ability to use system prior art in district court, even when related materials could have been raised in IPR, preserves important invalidity defenses but at the cost of increased litigation complexity and uncertainty. The decision highlights a tension between statutory interpretation and policy objectives and may prompt further legislative or judicial clarification in the future.
Navigating Declaratory Judgment: Mitek’s Bid to Head Off USAA’s Patent Claims
This case [1] addresses declaratory judgments of non-infringement in relation to subject-matter jurisdiction and the district court’s refusal to exercise discretionary jurisdiction.
Background
In June 2020, Mitek Systems, Inc. (“Mitek”) filed a declaratory judgment action in the Eastern District of Texas, asking the court to declare that its MiSnap software did not infringe United Services Automobile Association’s (“USAA”) U.S. Patents Nos. 8,699,779; 9,336,517; 9,818,090; and 8,977,571. MiSnap is a software development kit used by banks to capture check images in their mobile apps. Mitek pointed to USAA’s campaign of letters and its suit against Wells Fargo as evidence of a credible threat of infringement or indemnity claims.
The district court dismissed the declaratory judgment case for lack of subject-matter jurisdiction, finding no actual controversy, and declined to exercise its discretion. On first appeal, the Federal Circuit vacated both rulings and remanded for “finer parsing” of the facts—explicitly instructing the district court to categorize any 12(b)(1) challenge as facial or factual and to revisit Mitek’s two bases for standing: threat of direct/indirect infringement and potential indemnity liability.
On remand, after extensive briefing and fact finding, the district court again concluded that Mitek had no reasonable apprehension of suit—MiSnap did not itself practice all claim elements, USAA never pointed to Mitek documentation showing inducement, and MiSnap had substantial non-infringing uses. It also held that no indemnity agreements exposed Mitek to likely liability. Even if jurisdiction existed, the court would decline declaratory relief, urging Mitek instead to intervene in any future USAA suit against a customer. Mitek timely appealed.
Issue(s)
Whether the district court erred in finding no subject-matter jurisdiction over Mitek’s declaratory judgment action and whether it abused its discretion in declining to exercise jurisdiction.
Holding(s)
The Federal Circuit held that Mitek failed to establish a case or controversy, as it lacked a reasonable apprehension of infringement and no real risk of indemnity liability. The Federal Circuit also held that the district court did not abuse its discretion in refusing to hear the case, given better remedies available through intervention.
Reasoning
For infringement, the Federal Circuit noted that MiSnap—a toolkit, not a complete banking app—cannot satisfy every element of USAA’s asserted claims, and USAA never alleged otherwise. On inducement, nothing in USAA’s claim charts or MiSnap documentation showed affirmative steps by Mitek to encourage full claim performance. For contributory infringement, the record confirmed that MiSnap had substantial non-infringing uses and USAA never argued otherwise. After Mitek filed suit, USAA settled its Wells Fargo case, further undermining any “ongoing” controversy.
On indemnity, the Federal Circuit reviewed the actual contracts and found carve-outs shielding Mitek from likely payment obligations. Mitek could not simply point to the existence of indemnity clauses; it had to show a reasonable potential for liability, which it could not.
Finally, even assuming jurisdiction, the Federal Circuit approved the district court’s discretionary decision. Intervention in an actual infringement suit against a bank customer would allow full airing of factual disputes—customer-specific use, customization, and knowledge—that a standalone declaratory judgment action could not resolve.
In conclusion, Mitek Systems v. USAA underscores the high bar for patent declaratory judgment jurisdiction. Suppliers must show a genuine, immediate threat of suit or clear indemnity exposure, not merely fear or customer-targeted enforcement. District courts retain broad discretion to decline declaratory relief when better avenues—such as intervention—exist. Parties facing indirect or contributory claims should ensure their products, documentation, and indemnity provisions are carefully aligned to avoid such jurisdictional roadblocks.
Footnotes
[1] Mitek Systems, Inc. v. United Services Automobile Association, 2023-1687 (Fed. Cir., June 12, 2025)
USPTO Discontinuing the Accelerated Examination Program for Utility Applications
On 10 June 2025, the US Patent and Trademark Office (USPTO) published a Final Rule announcing the discontinuation of the Accelerated Examination program for utility applications beginning 10 July 2025. The change affects the avenues available for applicants to receive expedited examination and modifies the grounds upon which a petition to make special is granted.
Legal Background
The Accelerated Examination program allows for an application to be advanced out of turn for examination if the applicant files a petition to make special under the program. To be granted accelerated examination status, an applicant must meet several requirements, including completing a pre-examination search and limiting his or her invention to 20 total claims.1 Under current rules, all other petitions to make special, except those based on an applicant’s health or age, must fulfill these same requirements.2 Petitions to make special based on an invention enhancing the quality of the environment, contributing to the development or conservation of energy resources, or countering terrorism do not require an additional fee under the program.3
Alternative avenues for expedited examination outside of the Accelerated Examination program include the Patent Prosecution Highway program and the Prioritized Examination Program, often referred to as “Track One.”
Rule Change
The Final Rule takes the position that the Accelerated Examination program is unnecessary for utility applications considering the availability of the Track One program. Track One provides the ability to advance any utility or plant application, regardless of subject matter, by paying a fee and without an applicant having to meet several of the requirements of the Accelerated Examination program, such as the pre-examination search.
After the Accelerated Examination program is discontinued, applicants can still receive expedited examination of their applications with the Track One program. If an applicant seeks to petition to make special on a basis other than age or health, the applicant must now comply with the Track One requirements under 37 C.F.R. § 1.102(e) instead of the Accelerated Examination program. To reflect this change, the Final Rule removes 37 C.F.R. § 1.102(c)(2) to indicate that the advancement of an examination on the grounds of environmental quality enhancement, conservation of energy resources, or countering terrorism is no longer available without a fee.
Age and health will remain grounds for a petition to make special. However, the Final Rule amends the language of 37 C.F.R. § 1.102(c) to state that the inventor’s or joint inventor’s age or health may be a ground to file a petition to make special without a fee. Previously, the rule stated that a petition to make special may be filed without a fee based on the applicant’s age or health.
This change clarifies that it is the inventor’s age or health that is relevant to receiving expedited examination, not the applicant’s.
Looking Forward
The Final Rule will take effect 10 July 2025. Any petition or request for reconsideration of a petition to make special under the Accelerated Examination program filed with a utility patent on or after this date will not be granted, irrespective of the filing date and time of any prior Accelerated Examination petition and without regard to the USPTO’s determination that an applicant was afforded an opportunity to correct a prior deficient Accelerated Examination petition under the program.
We acknowledge the contributions to this publication from our summer associate Nav Murthy.
Footnotes
1 MPEP 708.02(a).
2 Id.
3 37 C.F.R. § 1.102(c)(2).
The Court Can Wait; The Patent Office Cannot
In a set of astonishing identical Director Review decisions, the Acting USPTO Director discretionarily denied five IPR petitions whose proceedings would have concluded over seven months before the underlying patent infringement suit would have gone to trial. The Acting Director reasoned that the petitioner waited too long to file its IPR petitions because, even though it knew about the patents years earlier, the petitioner waited until after the patent owner sued for infringement to file the petitions. Never mind that the patent owner waited almost as long to sue the petitioner after the petitioner’s products received FDA approval.
The Litigation
The Patents Issued Before the Petitioner Went Into Business
In requesting discretionary denial of the five petitions, the patent owner spent the first 28 pages of its 36-page brief attacking the merits, including arguing the petitioner’s allegedly unclear grounds for IPR institution; the petitioner’s allegedly unclear claim construction; the petitioner’s overreliance on expert testimony; and the petitioner’s alleged reliance on non-prior art documents. The patent owner spent the last six pages arguing other Fintiv factors that govern the exercise of discretion. In between all this, the patent owner argued that the petitioner’s knowledge of the patents at least as early as 2013 required discretionary denial because of the patent owner’s expectations that no one was going to challenge the validity of the patents.
The Petitioner Was in Business Long Before the Patent Owner Sued
In opposing discretionary denial, the petitioner filed a 38-page brief, spending the first 32 pages opposing the patent owner’s first several arguments attacking the merits, and the last five pages arguing other Fintiv factors; and a little over a page arguing that the parties’ “expectations” were not settled, because the patent owner did not attempt to enforce of any of the patents until 2024, despite the petitioner’s products receiving their first FDA approval in 2012. The petitioner argued that its own “expectations” were that it did not need to worry about the patents unless and until the patent owner tried to enforce them, which it finally did in 2024.
The Acting Director Bought the Arguments in the Middle
In a very brief decision, the Acting Director acknowledged that the IPRs would be done before the district court trial; that the parties had not yet invested very much in the district court case; and that there was a high likelihood that the district court would stay the litigation upon institution. Normally, these are very strong arguments for institution of an IPR. The Director also dismissed the patent owner’s arguments about overreliance on expert testimony, a circumstance which could favor discretionary denial.
Nevertheless, the Acting Director accepted the patent owner’s argument that the length of time that the petitioner waited to file the IPRs created a settled expectation for the patent owner that its patents would be free from attack. The Acting Director relied on this factor, apparently far more than any other, in discretionarily denying the petitions. There was no mention of the patent owner’s waiting years to file the lawsuit which justified the cost of the IPR petitions, and that the patent owner’s delinquent enforcement of the patents would have created the opposite expectation for the petitioner, that is, that the patents would not be enforced.
What About the Cost of “Early Review”?
The petitioner did not explain the length of time that the patent owner should have known that the petitioner was in a competing business. However, the patent owner touted itself as a market pioneer; in contrast, at the time the patents began to issue, the petitioner was not yet in business. The petitioner was still just a startup by the time the most recent patent issued.
It may have been relevant that the petitioner did not cite to any documentary evidence substantiating its date of entry into the competing business. Further, the petitioner did not emphasize that the cost involved in an early challenge of the patents was not justified in the absence of patent infringement litigation, which the patent owner waited a very long time to initiate.
Indeed, for a relatively young startup company, the cost of unilateral action would have been prohibitive. The USPTO fees alone for the five IPR petitions would have been at least $120,000, and as much as $200,000. The attorneys’ fees and expert witness fees would have been some fair multiple of that. Moreover, the startup would also have had to spend money to determine, of all the patents that may be considered potentially relevant to a product, which patents should be the subject of IPR, not necessarily limited to the patent owner’s patents here.
What About the Delay in Filing a Lawsuit?
The petitioner mentioned its own expectation that, having gone several years in business without being sued, the patent owner was not going to take any action.
It is common for patent owners to wait to sue a company until there are substantial damages to recover. With the lower likelihood of injunctive relief in recent years, threat of significant damages can be the best lever to get a competitor out of the business.
In the litigation, the patent owner charged the petitioner with willful infringement. The petitioner moved the court successfully to have the willful infringement charges dismissed. Accordingly, in an amended complaint, filed in February 2025 (two months after the petitioner filed the IPR petitions), the patent owner added a fifth patent, but deleted the charges of willful infringement.
The court’s order to remove the willful infringement charges gives rise to a very reasonable conclusion that the petitioner was right to wait for litigation to seek to have the patents declared invalid. The petitioner’s opposition to the discretionary denial request did not come until over two months after the second amended complaint. The petitioner could have mentioned the court’s order, but for some reason did not.
Conclusion – Do Not Shortcut Arguments Opposing Discretionary Denial
A key lesson for petitioners to take away is this: Never give discretionary denial arguments short shrift. There were some very interesting and helpful facts that petitioner could have substantiated here, including the patent owner’s court-ordered withdrawal of willful infringement allegations again the petitioner, which might have resulted in a different outcome.
It is surprising that the Acting Director appears to have based discretionary denial on about four percent of the total discretionary denial briefing, despite finding that a majority of the briefing (and a majority of the Fintiv material factors) favored letting the IPR petitions go forward. Equally surprising is the Acting Director’s “doubling down” on this position in her recent remarks before the Intellectual Property Business Congress (IPBC).
The Acting Director’s decision and subsequent comments essentially instruct prompt filing of petitions for IPR upon becoming aware of the existence of potentially relevant patents, irrespective of whether the company is a defendant in a patent infringement suit on that patent. This effective requirement would vitiate the one-year grace period afforded under § 315(b) for an accused infringer to go to the PTAB to invalidate a patent-in-suit. Moreover, because of the difficulty in predicting which patent owners might sue for patent infringement, potential defendants could be forced to file more IPRs rather than fewer, thereby undergoing even more expense, and increasing the PTAB’s workload still further. The effects of the USPTO’s position would appear to run counter to the Acting Director’s stated desire to reduce PTAB workload.
Moreover, the Acting Director’s instruction to potential petitioners does not take into account recent Federal Circuit decisions in Allgenesis, Platinum Optics, and Incyte, requiring a petitioner to have reasonable apprehension of potential infringement liability in order to have Article III standing to appeal a PTAB decision unfavorable to the petitioner.
Watch this space for continuing analysis of this new and rapidly developing area of PTAB practice.
China’s State Administration for Market Regulation Announces 7 Typical Cases of Trademark Administrative Enforcement for 2024
On June 10, 2025, China’s State Administration for Market Regulation (SAMR) announced the 7 Typical Cases of Trademark Administrative Enforcement for 2024 (市场监管总局公布7件商标行政执法典型案例). Administrative enforcement provides an alternative route to IP litigation and criminal prosecution but does not provide damages. Note that administrative enforcement is not mutually exclusive to litigation and criminal prosecution – all three mechanisms may be used and administrative enforcement cases are regularly referred for criminal prosecution.
Regarding the cases, SAMR explained that “in 2024, local market supervision departments carried out in-depth special law enforcement actions to protect intellectual property rights, equally protected the legitimate rights and interests of Chinese and foreign trademark rights holders, effectively safeguarded the legitimate rights and interests of consumers, and achieved positive results.”
As explained by SAMR:
Case 1: The Market Supervision Bureau of Changshu City, Suzhou City, Jiangsu Province investigated and dealt with Suzhou Kaidong Garment Accessories Co., Ltd. for producing and selling goods that infringed the exclusive right of the “YKK” registered trademark
In March 2024, the Market Supervision Bureau of Changshu City, Jiangsu Province investigated and dealt with the case of Suzhou Kaidong Clothing Accessories Co., Ltd. producing and selling goods that infringed the exclusive rights of the registered trademark “YKK”. The parties’ actions were suspected of constituting a crime and the case has been transferred to the public security organs for handling.
In January 2024, when investigating a case in which an online store opened by Suzhou Ziyin Clothing Co., Ltd. was suspected of selling infringing clothing, Changshu Market Supervision Bureau found important illegal evidence of upstream suppliers, and organized a team of personnel to investigate. On March 21, Changshu Market Supervision Bureau and the public security department inspected Suzhou Kaidong Garment Accessories Co., Ltd., and found 1,261 zippers with the “YKK” logo and more than 1.08 million zipper heads with the “YKK” logo on site. After identification by the right holder, they were all goods that infringed the exclusive right to use a registered trademark. Upon investigation, the illegal business volume of the party concerned was more than 1.5 million RMB. The party’s behavior violated the provisions of Article 57 (3) of the Trademark Law of the People’s Republic of China and was suspected of constituting a crime. In accordance with the provisions of Article 27, paragraph 1 of the Administrative Penalty Law of the People’s Republic of China and Article 3 of the Provisions on the Transfer of Suspected Criminal Cases by Administrative Law Enforcement Agencies, Changshu Market Supervision Bureau transferred the case to Changshu Public Security Bureau for handling.
This case involves many people, a wide geographical area, and a large amount of money. The criminals have a clear division of labor, forming a complete black industry chain of counterfeiting and selling fakes. The Changshu Municipal Market Supervision Bureau and the Municipal Public Security Bureau set up a special task force for the “YKK” series of cases to severely crack down on the black industry chain of counterfeiting and selling fakes, and protect intellectual property rights and consumer rights.
Case 2: Shanghai Yangpu District Market Supervision Bureau investigated and punished Shanghai Aidoujun Culture Communication Co., Ltd. for facilitating the infringement of others’ exclusive rights to registered trademarks
In September 2024, the Yangpu District Market Supervision Bureau of Shanghai imposed administrative penalties on Shanghai Aidoujun Culture Communication Co., Ltd. for the illegal act of facilitating infringement of the exclusive rights of others’ registered trademarks, imposed a fine of 660,000 RMB, and transferred relevant evidence of counterfeit sales to the local market supervision department.
In April 2024, when the bureau visited an Internet video platform, it learned that a number of videos promoting counterfeit sports shoes of internationally renowned brands such as Nike and Louis Vuitton had recently appeared. Although the platform had taken management measures such as video removal and account banning, it was unable to accurately locate and combat the dissemination chain because it had no direct communication channels with the trademark right holders. Law enforcement officers quickly contacted the relevant trademark right holders, and with the close cooperation of the trademark right holders and the platform operators, they locked the source of counterfeiting and the promotion and marketing industry chain behind it. Upon investigation, it was found that the party, as an advertising agent, provided traffic promotion services for 4 counterfeit videos without reviewing the video content, and collected a total of 330,000 RMB in promotion fees. The above-mentioned behavior of the party constituted an infringement as stipulated in Article 57 (6) of the Trademark Law of the People’s Republic of China and Article 75 of the Regulations for the Implementation of the Trademark Law of the People’s Republic of China, and the Yangpu District Market Supervision Bureau imposed administrative penalties in accordance with the law.
The sale of counterfeit goods through live streaming is highly concealed and has strong transmission power, and the production, promotion, and sales links are highly dispersed, which brings challenges to supervision. This case promptly cut off the chain of counterfeiters who spread the goods through online platforms and transferred the evidence to the local market supervision department to achieve a full-chain crackdown. After the case, the supervision department convened a meeting with e-commerce platforms and trademark rights holders to smooth the mechanism for exchanging evidence of illegal activity, deepen the cooperative relationship between trademark rights holders and platforms, and achieve win-win development.
Case 3: Guangdong Provincial Market Supervision Bureau organized an investigation into the production and sale of a series of cartoon card products that infringed the exclusive rights of the registered trademark “Kayou”
In 2024, the Dongguan Municipal Market Supervision Bureau of Guangdong Province imposed administrative penalties on 12 parties who produced and sold products that infringed the exclusive rights of a Zhejiang Cultural Communication Co., Ltd.’s “Kayou” registered trademark, including confiscation of the infringing products involved, confiscation of illegal gains, and fines.
On October 23, 2024, the Guangdong Provincial Market Supervision Bureau organized the Dongguan Municipal Market Supervision Bureau and the Dongcheng Branch of the Dongguan Municipal Market Supervision Bureau to carry out special law enforcement actions against 14 places located in Dongcheng Street, Dongguan City that were suspected of producing and selling anime card products that infringed the exclusive rights of the “Kayou” registered trademark of a certain Zhejiang Cultural Communication Co., Ltd. 14 business entities were inspected, and 3,448 boxes of suspected infringing anime cards and 3,884 infringing plastic films with the word “Kayou” were seized on the spot. The total value of the goods was 136,000 RMB, and 12 cases were filed.
Upon investigation, it was found that the party concerned, without permission, purchased boxed animation card products produced by the trademark right holder, made microholes in the sealed packaging bags of the cards in the boxes, observed them with an endoscope, identified high-grade rare cards, unpacked them, took out the high-grade rare cards, replaced them with ordinary cards, restored the packaging, and re-sealed them with unauthorized printed transparent packaging film with the “Kayou” logo before selling them, thus changing the original physical state of the product, damaging the reputation-bearing function of the right holder’s registered trademark, and violating Article 57, Paragraphs (3) and (7) of the Trademark Law of the People’s Republic of China, constituting an infringement of the exclusive right to a registered trademark.
In this series of cases, the parties’ method of unpacking and replacing the original products fully reflects the characteristics of trademark infringement and infringement of consumer rights in card products. The investigation and handling of this series of cases has significant guiding significance for the relevant law enforcement in this industry.
Case 4: Qingdao Municipal Market Supervision Bureau of Shandong Province investigated and dealt with the case of Shuohe Clothing Studio in the High-tech Zone infringing the exclusive right to use the registered trademark “ERDOS”
In December 2024, the Qingdao Municipal Market Supervision Bureau of Shandong Province investigated and dealt with the case of Shuohe Clothing Studio in the High-tech Zone producing and selling goods that infringed the exclusive rights of the registered trademark “ERDOS”. The parties’ actions were suspected of constituting a crime and the case has been transferred to the public security organs for handling.
At the end of October 2024, based on the report of the trademark owner, the Qingdao Municipal Market Supervision Bureau investigated the suspected production and sale of cashmere sweaters with the “ERDOS” logo and counterfeiting other people’s registered trademarks. On December 24, the Qingdao Municipal Public Security Bureau Shinan Branch jointly conducted an inspection on the parties. 28 cashmere sweaters and 1 pair of pants with the “ERDOS” logo were found on the scene, as well as a large number of counterfeit identification materials, including 2,100 collar labels, 6,880 washing labels, 977 zippers, and 11 mobile phones used for online business. The preliminary judgment was that the amount involved was more than 60,000 RMB. According to Article 27 of the “Administrative Penalty Law of the People’s Republic of China” and Article 3 of the “Regulations on the Transfer of Suspected Criminal Cases by Administrative Law Enforcement Agencies”, the case was transferred to the public security organs for handling in accordance with the law on the same day.
The parties published product information through well-known social platforms and directed traffic to WeChat for one-to-one transactions, which is a new type of illegal online sales behavior. The shipping address, payment address, actual return address, and the identity of the parties are all virtual, and the marketing methods are concealed. Law enforcement officers used “smart supervision” methods such as the Shandong Province Smart Market Supervision Integrated Platform, the Market Supervision Law Enforcement Case Handling System, and the WeChat platform operator evidence collection to crack the virtual identity and address set by the parties, accurately lock the scene, and fix the evidence involved in the case. The provincial, municipal, and county levels have their own division of labor and work together to form a powerful force to protect intellectual property rights.
Case 5: Shanxi Yangquan Market Supervision Bureau investigates and punishes Shanxi Mingjia Paper Co., Ltd. for infringing the exclusive right to use the registered trademark “维达” (Vinda)
In July 2024, the Yangquan Municipal Market Supervision Bureau of Shanxi Province investigated and dealt with the case of Shanxi Mingjia Paper Co., Ltd. producing and selling goods that infringed the exclusive rights of the “Vinda” registered trademark. The party’s behavior is suspected of constituting a crime, and the case has been transferred to the public security organs for handling.
On July 18, 2024, the Yangquan Municipal Market Supervision Bureau of Shanxi Province received case clues provided by Vinda Paper (China) Co., Ltd. The Municipal Market Supervision Comprehensive Administrative Law Enforcement Team, together with the Food and Drug Investigation Detachment of the Yangquan Municipal Public Security Bureau and the Pingding County Public Security Bureau, conducted inspections on the parties in accordance with the law. According to the identification of the right holder, the toilet paper, packaging film, packaging bags, and rolling rods piled in the factory of the party are all commodities that infringe the exclusive right of registered trademarks. After investigation, it was found that since March 2023, the company’s profit model has been to purchase toilet paper raw materials from other places to produce infringing “Vinda” toilet paper, and then sell it online through 4 online stores. A total of 3,580 bags of infringing toilet paper, 215 kg of packaging film and packaging bags, and 2,650 rolling rods were seized on site. Law enforcement officers started by reviewing the on-site production records, and at the same time retrieved the customer order data, delivery statistics, and refund summary data of multiple online stores. Combined with the statements of the parties, it was found that the total value of the goods was more than 3.12 million RMB.
The case involved a large number of goods and production tools, the parties were selling online, the orders were scattered, the authorized and infringing products were mixed, and the value of the goods was difficult to calculate. The key to ensuring that the case was properly investigated and dealt with was that law enforcement officers worked together at multiple levels in accordance with the law enforcement coordination regulations, unraveled the case, quickly found out the illegal facts, found out the amount involved, and transferred it to the public security organs.
Case 6: The Market Supervision Bureau of Qingchuan County, Guangyuan City, Sichuan Province investigated and dealt with a case in which He XX maliciously registered a trademark without the purpose of use
In October 2024, the Market Supervision Bureau of Qingchuan County, Guangyuan City, Sichuan Province imposed administrative penalties on He XX for the illegal act of maliciously registering a trademark without the purpose of use, and fined him 12,000 RMB.
In May 2024, the Market Supervision Bureau of Qingchuan County, Sichuan Province, received evidence from its superiors and launched an investigation into He’s suspected malicious trademark registration. After investigation, it was found that since 2021, the party He XX has registered a shell company (Lei Xiangsen Department Store, Xinluo District) and impersonated others (Jia XX) and other means to entrust a Henan agency across provinces to register 102 trademarks of well-known scenic spots such as “Cuiyun Corridor” and “Emei Mountain”, of which 36 were successfully registered. The characteristics of his behavior are as follows: the registration category has no connection with the business scope, the physical store has no actual operation for a long time, and there is a fact of trademark transfer for profit (illegal income of 4,000 RMB), which constitutes a typical malicious hoarding of trademarks. The law enforcement personnel’s cross-regional evidence collection is complicated, involving multiple parties such as Fujian cluster registration enterprises, Henan agencies, and Xiamen transferees. In response to this situation, the law enforcement personnel immediately launched a cross-provincial joint investigation mechanism, sent three letters to obtain key evidence in Longyan, Luoyang and other places, and locked the fact of shell registration.
This case successfully investigated and dealt with a malicious registration chain spanning the three provinces of Sichuan, Henan and Fujian. It is a typical example of grassroots market supervision departments cracking down on malicious registrations and regulating the order of trademark registrations, and provides replicable law enforcement experience for cracking down on malicious trademark registrations.
Case 7: Market Supervision Bureau of Xunwu County, Ganzhou City, Jiangxi Province investigated and punished Mr. Feng for infringing the exclusive right to use the registered trademark “赣南 (Gannan) Navel Orange”
In January 2024, the Market Supervision Bureau of Xunwu County, Ganzhou City, Jiangxi Province, imposed administrative penalties on Feng XX for infringing the exclusive right to the registered trademark “Gannan Navel Orange”, ordered him to immediately stop the infringement and imposed a fine of 94,500 RMB.
In December 2023, the Market Supervision Bureau of Xunwu County, Ganzhou City, Jiangxi Province received a report that a navel orange fruit processing factory in a certain industrial park had passed off navel oranges produced in Fujian as Gannan navel oranges. After receiving the report, the bureau immediately conducted a law enforcement inspection on the fruit processing factory in conjunction with the county public security bureau. Since October 2023, Feng has purchased 150,000 kilograms of navel oranges from Yongchun County, Fujian Province and transported them to the fruit processing factory in Yangmeikeng Industrial Park, Xunwu County for processing. At the time of the incident, Feng had washed and graded 119,000 kilograms of “Fujian” navel oranges, and sold 10,000 kilograms at a price of 3.15 RMB per kilogram. The remaining 140,000 kilograms of “Fujian” navel oranges had not yet been packaged. When the party sold “Fujian” navel oranges, it affixed the “Gannan Navel Orange” logo on the packaging, infringing on the exclusive right to use the registered trademark of “Gannan Navel Orange”. The illegal business volume was 31,500 RMB, which was a trademark infringement violation as stipulated in Article 57 (2) of the Trademark Law of the People’s Republic of China.
This case aims to protect the legitimate rights and interests of the geographical indication “Gannan Navel Orange” and effectively combat geographical indication trademark infringement and counterfeiting. The case-handling department effectively regulates the market order and promotes the healthy development of geographical indication products through scientific research and timely disposal.
UK Data (Use and Access) Bill to Become Law
On June 11, 2025, the UK Data (Use and Access) Bill (the “DUA Bill”) successfully navigated its final parliamentary hurdle and will soon become law.
The DUA Bill’s journey has been anything but straightforward. Most recently it became entangled in debates over AI and copyright with the House of Lords persistently pushing to include transparency provisions related to AI models. These suggestions, however, were repeatedly overturned by the House of Commons, which maintained that such provisions should be tackled separately to avoid complicating the DUA Bill’s framework. In a bid for compromise, the DUA Bill now includes provisions requiring the Secretary of State to, amongst other things, draft legislation containing proposals to provide transparency to copyright owners regarding the use of their copyright works as data inputs for AI models.
The DUA Bill’s enactment arrives at a crucial time as the extension of the UK’s adequacy decision with the EU will expire in December 2025. The European Commission has indicated that a formal assessment of the UK’s legal framework will not commence until the DUA Bill is formally passed.
For a detailed overview of the legislative changes introduced by the DUA Bill, read our previous update.
Read more about the previously proposed AI transparency amendments
Speculation of Harm Isn’t Standing: Not Every Adverse Board Decision Is Ticket to Appeal
After assessing whether a patent owner had standing to appeal the Patent Trial & Appeal Board’s final written decision, the US Court of Appeals for the Federal Circuit found no injury in fact to support Article III jurisdiction and dismissed the appeal. Dolby Labs. Licensing Corp. v. Unified Patents, LLC, Case No. 23-2110 (Fed. Cir. June 5, 2025) (Moore, Clevenger, Chen, JJ.)
Dolby owns a patent covering a prediction method involving an in-loop filter. Unified Patents, claiming to be the sole real party in interest (RPI), filed an inter partes review (IPR) challenging several patent claims as anticipated and obvious. Dolby contested the challenge, identifying nine additional entities it argued should have been named as RPIs (alleged RPIs). The Board declined to rule on Dolby’s inclusion, however, and proceeded with Unified as the sole RPI.
In its final written decision, the Board found that Unified failed to establish the unpatentability of any challenged claims. Consistent with the US Patent & Trademark Office’s practice, it also declined to address the RPI dispute, finding it immaterial – there was no evidence the alleged RPIs were estopped from filing their own IPRs later or that Unified had advantageously or strategically omitted them. Dolby appealed.
The Federal Circuit explained that when it reviews final Board decisions, its jurisdiction is constrained by Article III’s “Cases” and “Controversies” requirement. To establish standing, an appellant must demonstrate:
A concrete and particularized injury in fact that is actual or imminent, not speculative.
A causal link between the injury and the appellee’s challenged conduct.
A likelihood that the injury will be redressed by a favorable ruling.
Dolby asserted standing to appeal the Board’s refusal to address the RPI dispute based on three grounds:
Its statutory right to appeal as a “dissatisfied” party under 35 U.S.C. § 319.
The denial of its right to information under 35 U.S.C. § 312(a)(2).
An injury in fact arising from potential breaches of license agreements by the alleged RPIs and possible conflicts of interest involving the Board’s administrative patent judges.
The Federal Circuit rejected Dolby’s argument that it had a right to appeal based solely on dissatisfaction with the Board’s decision. The Court explained that the right to appeal a Board decision under the America Invents Act (AIA) requires Article III standing. The Court also dismissed Dolby’s argument for a statutory right to RPI information, finding that the AIA does not create an informational right. The Court explained that unlike statutes such as the Federal Advisory Committee Act or the Federal Election Campaign Act, which expressly grant public access to information, the AIA lacks a public access provision and explicitly limits judicial review of IPR-related determinations, including RPI disclosures.
As to Dolby’s right to appeal the Board decision, the Federal Circuit found Dolby’s argument too speculative to establish standing, citing four key deficiencies:
Dolby failed to assert that any alleged RPIs were party to license agreements, undermining its claim of potential breach.
Dolby provided no evidence of conflicts of interest between the Board’s administrative patent judges and the alleged RPIs, nor any resulting harm.
Dolby could not demonstrate concrete harm from the Board’s refusal to adjudicate the RPI issue, as no litigation or estoppel-triggering event was pending.
Dolby’s claim that Unified might alter its litigation strategy if required to disclose its members was deemed speculative and insufficient to establish injury in fact.
Practice Note: Article III standing is a strict gatekeeper in appeals from the Board, notwithstanding the right of appeal granted by the AIA. Dissatisfaction with a Board decision or speculation regarding potential harm as a sequelae from the decision is insufficient to establish actual injury in fact.