5 in ’25: Appellate

The U.S. Court of Appeals for the Federal Circuit had another busy docket in 2025. Here, we cover five key decisions that will shape the practice of intellectual property law going forward.

Federal Circuit sits en banc to address admissibility of damages expert testimony

In May 2025, the Federal Circuit issued a rare en banc opinion in EcoFactor, Inc. v. Google LLC, 137 F.4th 1333 (Fed. Cir. 2025), addressing district courts’ gatekeeping role in evaluating the reliability of expert testimony. The court had not taken up a utility patent issue en banc since 2018.

In EcoFactor, the Federal Circuit held that (1) the district court abused its discretion by failing to provide any analysis when ruling that EcoFactor’s damages expert’s testimony was admissible and (2) denial of Google’s motion to exclude the expert was an abuse of discretion because the expert’s testimony was “not based upon sufficient facts or data.” Id. at 1338.

The broader impact of EcoFactor on patent litigation remains uncertain. As of publication, only fourteen judicial opinions have cited the case: twelve from district courts and two from the Federal Circuit. Most citations appear in the legal standards section without substantive discussion. One exception is notable. In Jiaxing Super Lighting Elec. Appliance, Co. v. CH Lighting Tech. Co., 146 F.4th 1098, 1110-12 (Fed. Cir. 2025), the Federal Circuit relied on EcoFactor when remanding for a new trial on damages. Though EcoFactor was not the reason for remand, the court reiterated that district courts must provide a reasoned analysis — one sufficient for appellate review — when resolving Daubert motions. Id. at 1111.

For more information about EcoFactor, see our detailed summary in “En Banc Federal Circuit Grants Google a New Trial in EcoFactor Case.”

2. Federal Circuit upholds judgment as a matter of law of no damages despite liability verdict

In October 2025, the Federal Circuit affirmed a district court’s exclusion of a patent owner’s damages expert and upheld the reduction of a $10 million jury award to nominal damages of $1. Rex Medical, L.P. v. Intuitive Surgical, Inc., 156 F.4th 1289 (Fed. Cir. 2025). The Rex Medical decision applies the requirement that patent damages evidence be sufficiently apportioned to the value of the asserted patent and clarifies when a district court may enter judgment of no damages notwithstanding a liability verdict.

The district court excluded Rex’s damages expert shortly before trial after finding that his reliance on a prior lump-sum portfolio license failed to apportion the value of the asserted patent from other licensed patents. Although the jury later found infringement and awarded $10 million in damages, the district court concluded on post-trial motions that the record contained insufficient evidence from which a reasonable royalty could be calculated and entered judgment as a matter of law of no damages.

The Federal Circuit affirmed, holding that speculative reliance on an unapportioned portfolio license cannot support a reasonable royalty award and that Section 284 requires at least some evidentiary basis from which a factfinder can derive a royalty. The Federal Circuit further agreed that, where a patentee fails to carry its burden of proving damages, a district court may deny a new damages trial and enter judgment of no damages.

The decision’s confirmation of a district court’s authority to enter a post-trial judgment of no damages where the evidentiary record is insufficient has the potential to impact damages theories in 2026 and beyond. Stakeholders will be watching to see how district courts implement the Federal Circuit’s guidance and how litigants alter their approaches to presenting damages theories.

For more information about Rex Medical, see our detailed summary in “Federal Circuit Provides Important Guidance on Patent Damages in Rex Medical v. Intuitive Surgical.”

3. Federal Circuit expands expenditures relevant to establishing domestic industry in ITC investigations

In March 2025, the Federal Circuit expanded the types of expenditures upon which complainants may rely to establish domestic industry in proceedings before the International Trade Commission (ITC). In Lashify, Inc. v. International Trade Commission, the court held that sales, marketing, warehousing, quality control, and distribution expenses qualify as investments in domestic industry under Section 337(a)(3)(B), rejecting the Commission’s longstanding practice and decision to the contrary in the underlying investigation: “There is no exclusion from labor when the human activity employed is for sales, marketing, warehousing, quality control, or distribution, which are common aspects of providing goods or services.” 130 F.4th 948, 959 (Fed. Cir. 2025).

This ruling makes the ITC a viable and attractive venue for more complainants to seek redress when imports infringe upon their intellectual property.

For more information about Lashify, see our detailed summary in “Lashify’s Early Impacts at the ITC.”

4. Federal Circuit rejects the Board’s overly narrow conception standard requiring inventors to know inventions would work

In May 2025, the Federal Circuit clarified the legal standard for showing conception in Regents of the University of California v. Broad Institute, 136 F.4th 1367 (Fed. Cir. 2025). This appeal arose from the Patent Trial and Appeal Board’s (Board) final decision in a pre-America Invents Act (AIA) interference proceeding. The Board’s decision concluded that the Broad Institute, Massachusetts Institute of Technology, and the President and Fellows of Harvard College (collectively, Broad) had priority of invention over the Regents of the University of California, University of Vienna, and Emmanuelle Charpentier (collectively, Regents) with respect to a single RNA CRISPR-Cas9 system that functions in eukaryotic cells. The Board found that Broad, the senior party, reduced such a system to practice by October 5, 2012, and rejected Regents’s assertion of an earlier date of conception.

The Federal Circuit vacated the Board’s analysis of Regents’s assertion of earlier conception. In the court’s view, the Board erred by requiring Regents to show that its scientists knew their invention would work and by nearly exclusively considering statements by the scientists expressing experimental difficulties, doubts about success of their experiments, and suggestions to modify their CRISPR-Cas9 system. The court found that the Board failed to consider whether these statements actually led to changes to the scientists’ original idea. Moreover, the Federal Circuit determined that the Board should have considered other evidence, including:

1. whether a person of ordinary skill in the art “could have reduced the invention to practice” notwithstanding the scientists’ statements of uncertainty,
2. whether the scientists “described routine methods or skill in their disclosures at asserted conception dates, and whether they used routine methods or skill in subsequent, purportedly successful experiments,” and
3. whether the scientists “described the use of routine methods or skill at asserted conception dates or later used routine methods or skill to successfully edit eukaryotic DNA.”

Id. at 1380-82. The court thus highlighted the range of evidence material to the conception inquiry.

By making clear that conception does not require that the inventor know that the invention will work, the Federal Circuit reinforced the distinction between conception and reduction to practice.

5. Federal Circuit harmonizes use of published patent applications in IPR challenges

In January 2025, the Federal Circuit allowed the use of published patent applications that were filed before — but published after — the filing date of patents challenged during inter partes review (IPR) in Lynk Labs, Inc. v. Samsung Electronics Co., 125 F.4th 1120 (Fed. Cir. 2025).

Before the Board, the parties disputed the prior art status of the Martin application, which was filed 10 months before the priority date of the challenged patent, but published eight months after the priority date. The Board held that the Martin application could serve as prior art and found that the challenged claims were unpatentable in light of Martin and at least one other reference.

The Federal Circuit affirmed the Board’s final written decision. Applying pre-AIA law, the Federal Circuit explained that Congress created a “special rule for published patent applications” in 35 U.S.C. § 102(e), which states (in relevant part):

§ 102(e) (emphasis added). Thus, a “published patent application—this specific type of ‘printed publication’—is deemed prior art as of its filing date.” Lynk Labs, 125 F.4th at 1127 (original emphasis).

Although Lynk Labs applies pre-AIA law, its logic applies to post-AIA § 102(a)(2), which states that “[a] person shall be entitled to a patent unless . . . (2) the claimed invention was described . . . in an application for patent published or deemed published under section 122(b), in which the . . . application . . . names another inventor and was effectively filed before the effective filing date of the claimed invention.” § 102(a)(2) (emphasis added).

This decision harmonizes district court and IPR proceedings, expanding the scope of art available before the Board to match what is available at the district court, thus expanding the avenues for hidden prior art to potentially invalidate a patent.

For more information about Lynk Labs, see our detailed summary in our 2024 Post-Grant Annual Report.