Preliminary Injunction Vacated Due to Claim Construction Errors
In Socket Solutions, LLC v. Import Global, LLC, Appeal No. 25-1121, the Federal Circuit held that a preliminary injunction cannot stand when the likelihood-of-success analysis relies on erroneous claim constructions.
Socket Solutions, LLC (“Socket Solutions”) sued Import Global, LLC (“Import Global”), alleging that Import Global’s Neat Socket® product infringed Socket Solutions’ U.S. Patent No. 9,509,080 (the “’080 patent”), which relates to electrical outlet covers. The district court granted Socket Solutions a preliminary injunction barring Import Global from manufacturing, using, selling, offering to sell, or importing into the United States its Neat Socket® product. Import Global appealed, arguing that the district court incorrectly construed the claim terms “backplate” and “pin” when evaluating likelihood of success on the merits.
The Federal Circuit agreed. First, it held that the district court improperly construed “backplate” to require a spatial relationship to the claimed “frontplate.” The Federal Circuit construed “backplate” with a focus on “cover” thickness to align with the specification and the principle articulated in Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005), that “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.”
Second, the Federal Circuit held that the district court incorrectly construed “pin” as a means-plus-function term under 35 U.S.C. § 112(f). The claim term “pin” does not use the word “means,” so there is a rebuttable presumption that § 112(f) does not apply. Socket Solutions argued that § 112(f) should apply, despite “pin” being a structure, because it is a structural element that is best defined by its function. The Federal Circuit disagreed, noting that “[n]ot everything that ‘physically and electrically connects the electrical wires to the corresponding electrical prongs’ is a ‘pin,’” so a purely functional definition would be overly broad. Socket Solutions did not overcome that presumption because “pin” is a structural term understood by skilled artisans and described structurally in the specification. The Federal Circuit held that § 112(f) does not apply and that “pin” should be given its plain and ordinary meaning.
Because the district court’s likelihood-of-success analysis depended on these erroneous claim constructions, the Federal Circuit vacated the preliminary injunction and remanded for further proceedings.
Written Description Support Required for Prior Art to Rely on Provisional Filing Date
In Dental Monitoring Sas v. Align Technology, Inc., Appeal No. 25-1752, the Federal Circuit held that a patent or published patent application is entitled to the filing date of a provisional application for prior art purposes under AIA § 102(d)(2) only if the provisional application provides written description support for at least one claim of the patent or published application.
Align Technology brought an IPR challenging a patent owned by Dental Monitoring. Align asserted that the challenged patent was obvious over three prior art references, including a U.S. patent publication to Carrier. Align argued that Carrier qualified as prior art because it was entitled to the filing date of its provisional application 35 U.S.C § 102(d)(2). Dental Monitoring argued that Carrier was not entitled to the provisional application’s filing date because the provisional did not provide written description support for any of the claims in the Carrier publication. The PTAB rejected Dental Monitoring’s argument and found that Carrier’s provisional application need only describe the subject matter relied upon by Align for provisional’s filing date to apply under section 102(d)(2).
The Federal Circuit vacated and remanded. The court held that 35 U.S.C. §§ 102(d)(2) and 119(e)(1) require compliance with the written description requirements of section 112(a) to obtain the benefit of a provisional filing date for prior art purposes. Thus, Align must show that Carrier’s provisional application provides written description support for at least one claim recited in the Carrier publication. Because the PTAB had not made that determination, the court remanded for further proceedings.
Money Can’t Buy Everything: Organizations Cannot “Spend Their Way” Into Standing by Diverting Resources to Educate Members
In US Inventor, Inc. v. Squires, Appeal No. 24-2378, the Federal Circuit held that an organization cannot create Article III standing by diverting resources to educate its members about a challenged government action, and associational standing still requires identifying a member who faces a real and immediate threat of future injury.
Three inventor-advocacy groups sued the Patent and Trademark Office (“PTO”) under the Administrative Procedure Act. The groups contended that the “right to exclude” language printed by the PTO on the cover of every patent is misleading because, after eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), obtaining a permanent injunction against patent infringers is not automatic but governed by a four-factor test. The groups sought to compel the PTO to undertake rulemaking to revise the language, and maintained they had organizational and associational standing to seek such relief. The district court dismissed the complaint for lack of standing and denied leave to amend as futile.
The Federal Circuit affirmed. For organizational standing, the groups alleged they were harmed because they had to divert resources to educate members about the scope of patent rights post-eBay. The Federal Circuit held the groups’ diversion-of-resources theory was foreclosed by the Supreme Court’s decision in Food & Drug Admin. v. Alliance for Hippocratic Med., 602 U.S. 367 (2024), which established that an organization “cannot spend its way into standing” by expending money and resources to gather information and advocate against government action. For associational standing, the Federal Circuit held one group failed to identify any member facing a real and immediate threat of future injury because each member declarant admitted awareness of eBay and thus faced no risk of being misled by the patent-cover language. The Federal Circuit held the other two groups failed to plead associational standing, and such a theory would fail for the same reason as the first group’s. Finding these standing deficiencies incurable, the Federal Circuit affirmed the denial of leave to amend the complaint as futile.
Improper Venue: A First, But Not Last Ground for Dismissal
In Aml IP, LLC v. Bath & Body Works Direct, Inc., Appeal No. 25-1280, the Federal Circuit held that a district court may properly dismiss a case under Rule 12(b)(6) after concluding that venue is improper under Rule 12(b)(3).
AML IP sued Bath & Body Works for infringing AML’s e-commerce patent. Bath & Body Works moved to dismiss for (1) improper venue under Rule 12(b)(3); and (2) failure to state a claim under Rule 12(b)(6) because the asserted patent was patent-ineligible. The district court dismissed the case on both grounds. AML appealed and argued that the district court should not have ruled on the 12(b)(6) motion after determining venue was improper.
The Federal Circuit affirmed. The Federal Circuit held that improper venue (unlike a lack of subject-matter jurisdiction) does not limit a court’s power to dismiss for failure to state a claim. The Federal Circuit explained that even if courts resolve venue issues before the merits, they may still address additional grounds for dismissal after determining that venue is improper. Because the district court resolved the venue issue before the patent-eligibility issue, the Federal Circuit found no abuse of discretion. The Federal Circuit also noted that judicial economy favored deciding both issues at the same time to avoid piecemeal appeals.
In Law360 Article, Sean Murray and Jeremiah Helm Analyze Court Limitations on Patent Corrections
In the latest installment of their Law360 column on recent noteworthy Federal Circuit decisions, Knobbe Martens partners Sean Murray and Jeremiah Helm explore how the court addressed the issue of patent corrections in Enanta Pharmaceuticals Inc. v. Pfizer Inc.
The patent infringement dispute between the pharmaceutical companies centered on a patent directed to a compound and method of treating coronavirus, and a central issue in the case became an errant discrepancy between Enanta’s provisional application and issued patent. The Federal Circuit held that, while a court may judicially correct an obvious error in a patent, it may not correct an error in a provisional patent. The Federal Circuit therefore affirmed the district court’s decision that the patent was invalid over a prior disclosure because the typo prevented the patent from claiming priority to the provisional.
“Enanta ultimately lost, but its argument was worth making,” write Murray and Helm. The authors share that while a key takeaway from Enanta is the importance of careful proofreading during the entire patent application process, it highlights the value of prioritizing accuracy over speed when filing a provisional application.
Read the full article, “When Courts Can’t Correct Patent Errors”, in Law360.
PODCAST:The Biggest Patent Cases of 2026 So Far: The Federal Circuit Tackles Patentability
Following their discussion on the Supreme Court’s consequential decision in Hikma v. Amarin, Knobbe Martens partners Jeremiah Helm and Carol Pitzel Cruz continue their exploration of the biggest patent cases in 2026 so far in this episode of Knobbe IP+. Turning their attention to the Federal Circuit, Jeremiah and Carol offer a deep dive into recent case decisions that illustrate the tension among three key pillars in patent litigation: written description, obviousness, and enablement. Covering several cases across different industries, Jeremiah and Carol share what patent practitioners and in-house counsel can take away from the court’s jurisprudence on Section 112 patentability.
Listen to the episode or read the full transcript here.
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