In re Forest, Appeal No. 2023-1178 (Fed. Cir. Apr. 3, 2025)
In an appeal from a Patent Office decision denying a patent that would have been expired upon issuance, the Federal Circuit dismissed. Applicant Forest had filed a string of patent continuation applications, culminating with a continuation application filed more than 20 years after the original application in the chain, claiming priority to the original application. Since patents have a 20-year term that dates from the priority application, this patent would have been expired upon issuance. In fact, the patent would have been expired even if it had been granted on the date the application was filed. The examiner rejected it based on obviousness and non-statutory double-patenting grounds—a decision that was affirmed by the Patent Trial and Appeal Board.
Forest appealed to the Federal Circuit, and the Patent Office moved to dismiss, arguing he had no standing to pursue an appeal because he had no personal stake in it, given that an expired patent has no rights associated with it.
Forest responded that an expired patent could still give rise to “Provisional Rights” under Section 154(d). Specifically, Section 154(d) grants a right to a reasonable royalty while an application is pending if certain requirements are satisfied—but only after the patent has issued. Thus, Forest asserted he was entitled to pursue a patent that would have no term, because he would still be able to claim the “Provisional Rights” up to that date of issuance.
The Federal Circuit rejected this argument and, given that Forest had no personal stake in the appeal, dismissed the appeal. The Court came to its conclusion after construing the relevant statute. Under no reasonable reading of the statute could “Provisional Rights” inure to a patent if it would issue after it was already expired, according to the Court. It noted that patents have “Exclusionary Rights” which inure once the patent has been granted, up to 20 years after the priority application; as well as “Provisional Rights” that may be invoked once the patent grants. It would be inconsistent with principles of statutory construction to allow “Provisional Rights” to issue where there would never be “Exclusionary Rights.”
The Court further noted that, under Forest’s reasoning, he could continue to seek “Provisional Rights” ad infinitum, filing yet another continuation application before the pending one issues, even though it, too, would be filed after any potential “Exclusionary Rights” would have expired. Thus, Forest might continue to obtain the right to seek reasonable royalties long after the conclusion of the 20-year statutory term.
Accordingly, patent applications appear to be moot on the 20-year mark of their priority application.
The opinion can be found here.
By Nika Aldrich
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In a second appeal from an Eastern District of Texas case, the Federal Circuit reversed in part, affirmed in part, vacated in part, and remanded. The lawsuit involved alleged misuse of confidential information that relates to ambient light sensors used in Apple products. The Court considered various overlapping issues concerning damages, disgorgement, exemplary damages, and attorneys’ fees for trade secret and contract claims under Texas and California law. (A previously dismissed patent claim was not before the Court, nor was any issue concerning liability.) Among other issues, the Federal Circuit panel rejected the defendant’s argument that a Texas statute precluded exemplary damages on the trade secrets claim, holding the argument to be waived for failure to have raised it during the prior appeal. Considering other arguments, the Court left the multimillion-dollar damages award largely undisturbed, but found some errors with regard to the amount, and remanded for further proceedings.
The opinion can be found here.
By Jason A. Wrubleski
