Late yesterday, the Federal Circuit released a nonprecedential opinion in a patent case appealed from the Patent Trial and Appeal Board in an inter partes review proceeding. In this case, a majority of the panel found all relevant claims unpatentable. Notably, Judge Taranto concurred in part and dissented in part, taking the position that the panel should not have reversed the PTAB’s judgment on certain patent claims. This morning, the court released three nonprecedential opinions, one nonprecedential order, and two Rule 36 summary affirmances. One of the nonprecedential opinions comes in a patent case appealed from the Eastern District of Texas, one comes in a case appealed from the Merit Systems Protection Board, and one comes in a government contract case appealed from the Court of Federal Claims. The nonprecedential order comes in a veterans case appealed from the Court of Appeals for Veterans Claims. Here are the introductions to the opinions and the order as well as links to the summary affirmances.
Metrom Rail, LLC v. Siemens Mobility, Inc. (Nonprecedential)
Siemens Mobility, Inc., Hitachi Rail GTS USA Inc., Humatics Corp., and Piper Networks, Inc. (collectively, “petitioners”) jointly petitioned for inter partes review of U.S. Patent Nos. 9,043,131 (’131 patent) and 8,812,227 (’227 patent), both of which are owned by appellant Metrom Rail, LLC (“Metrom”). The Patent Trial and Appeal Board (“Board”) instituted review on both patents.
In the final written decisions, the Board determined that all claims of the ’227 patent and claims 1–16 of the ’131 patent are unpatentable as obvious and that claims 17–20 of the ’131 patent are not unpatentable as obvious over the prior art references cited in the petitions. Metrom appeals the Board’s unpatentability determinations as to all claims of the ’227 patent and claims 1–16 of the ’131 patent; the petitioners cross-appeal the Board’s determinations that claims 17–20 of the ’131 patent are not unpatentable.
With respect to the main appeal, we affirm the Board’s determination that all of the claims of the ’227 patent and claims 1–16 of the ’131 patent are unpatentable. As to the cross-appeal, we reverse the Board’s determination that claims 17–20 of the ’131 patent are not unpatentable.
Taranto, Circuit Judge, concurring-in-part and dissenting-in-part.
I join the court’s opinion except with respect to claims 17–20 of the ’131 patent, as to which I respectfully dissent. The court’s decision reversing the Board’s upholding of those claims rests on the court’s own claim construction of Claim 17’s disputed element (17C), a construction the court adopts based on its relationship to elements 17B and 17G. See Op. 14 (“critical error” is one of “construction”). But Siemens did not present or develop this construction in challenging the Board’s ruling on claims 17–20 in this court; indeed, it did not present a claim-construction argument at all, but only an argument that the Board misread the prior-art reference, Grisham. Siemens Cross-Appeal Br. at 3 (statement of issue), 64–70 (argument). Nor did Siemens urge the court’s claim construction before the Board. We should not be sua sponte deciding the cross-appeal on this basis, given the important principles of party presentation and adequate preservation. See Clark v. Sweeney, 607 U.S. 7, 9 (2025) (the court “transgressed the party-presentation principle by granting relief on a claim that [the appellant] never asserted and that [the appellee] never had the chance to address”); In re Google Technology Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020) (party forfeited claim-construction arguments by failing to present them to the Board).
Nesarikar v. Patent and Trademark Office (Nonprecedential)
Ashlesha, Anika, and Abhijit Nesarikar are named inventors on U.S. Patent Application No. 18/069,288 and at least five other applications filed earlier. When the Nesarikars filed the ’288 application in late 2022, they certified that they qualified as a “micro entity” under 35 U.S.C. § 123 and paid only the discounted application fees that come with such status. Micro-entity status is available only to an applicant who has not been named as an inventor on more than four earlier applications, but not counted against that limit are applications that the applicant is obligated to assign based on prior employment. See 35 U.S.C. § 123(a)–(b).
The Patent and Trademark Office informed the Nesarikars that their micro-entity certification appeared to be erroneous because they were named on more than four previous applications. The Nesarikars responded that the certification was correct because they were obligated to assign the earlier applications, and also the ’288 application itself, as a result of prior employment. But they did not provide a copy, or even quote the language, of the alleged obligation, and the Office refused to accept their representations as sufficient for micro-entity status for the ’288 application. The Office ceased examining the ’288 application until the correct fees were paid. The Nesarikars did not pay the requested fees, and the application became abandoned.
The Nesarikars then brought suit in the U.S. District Court for the Eastern District of Texas against the Office, challenging the denial of micro-entity status for the ’288 application, invoking the Administrative Procedure Act as one cause of action, and seeking injunctive relief. They attached to the complaint their statements to the Office that they were obligated to assign the ’288 application as a result of previous employment. The Office moved to dismiss for lack of subject-matter jurisdiction, arguing that the Nesarikars’ assignment-obligation representations meant they had not shown the injury necessary to establish theirArticle III standing to maintain the suit. The court agreed with the Office and dismissed the complaint without prejudice. Nesarikar v. United States Patent and Trademark Office, No. 4:25-cv-00423, 2025 WL 2795060 (E.D. Tex. Oct. 1, 2025) (Dismissal). The Nesarikars appeal, and we now affirm.
Perdue v. Merit Systems Protection Board (Nonprecedential)
Robert E. Perdue, a former carrier at the United States Postal Service (USPS), petitions for review of a final decision by the Merit Systems Protection Board (Board) dismissing his appeal to challenge his removal for lack of jurisdiction. See Perdue v. United States Postal Serv., No. AT-0752-25-0345-I-1, 2025 WL 994325, at 1 (M.S.P.B. Mar. 24, 2025) (Initial Decision). For the following reasons, we dismiss the appeal as untimely.
Anders Construction, Inc. v. United States (Nonprecedential)
The government appeals a judgment of the Court of Federal Claims (“Claims Court”) in a pre-award bid protest filed by Anders Construction, Inc. (“Anders”). The Claims Court enjoined the United States Army Corps of Engineers (“Army Corps”) from awarding a diving-services contract to anyone but Anders because the Claims Court found that the government arbitrarily determined that Anders’s proposal was technically unacceptable. We reverse the judgment of the Claims Court, vacate the injunction, and remand for further proceedings consistent with this opinion.
Malone v. Collins (Nonprecedential Order)
Dr. Harvey L. Malone appeals from a decision of the United States Court of Appeals for Veterans Claims that affirmed-in-part and remanded-in-part a decision by the Board of Veterans’ Appeals. See Malone v. McDonough, No. 23-2246, 2024 WL 1827133, at *10 (Vet. App. 2024). On appeal, the government suggests that a remand to the Veterans Court may be appropriate because the Veterans Court erred in declining to address any arguments related to clear and unmistakable error (CUE) on the basis that the Board did not address Dr. Malone’s CUE claim in its decision. Appellee Br. 15–17. We agree.