Opinions — Tuesday, April 21, 2026

The Federal Circuit denied a petition for writ of mandamus seeking to overturn the District of New Jersey's disqualification of petitioners' counsel in an inventorship correction action under 35 U.S.C. § 256 concerning U.S. Patent No. RE46,823. The district court found that Banner & Witcoff and Saiber, whose fees were paid by non-party Lincoln Diagnostics (assignee of petitioners' patent rights), violated New Jersey Rules of Professional Conduct 1.7 and 1.8(f) by allowing Lincoln to influence litigation decisions, creating an unwaivable conflict of interest that materially limited counsel's loyalty to petitioners.

The court applied Third Circuit law governing mandamus petitions and review of disqualification orders, emphasizing that such decisions are committed to the district court's sound discretion and are disturbed only for clear abuse. The court held that petitioners failed to demonstrate the district court clearly and indisputably erred in adopting the magistrate judge's findings that the assignment agreement's terms subordinated petitioners' interests to Lincoln's and that Lincoln had directed counsel's professional judgment, including rejection of settlement offers contrary to Lincoln's interests. The court found the district court reasonably balanced the relevant factors, including petitioners' ability to retain substitute counsel in a limited-scope case and prejudice partially self-inflicted by delayed disclosure of Lincoln's involvement.

The Federal Circuit dismissed as moot In re Hybir, Inc.'s appeal from a district court judgment holding claims 3, 4, 7, 16, 17, and 20 of U.S. Patent No. 8,051,043 ineligible under 35 U.S.C. § 101. After the district court granted defendant Veeam Software Corp.'s Rule 12(b)(6) motion, the parties entered a settlement under which Hybir licensed other patents to Veeam, Veeam agreed not to participate in any appeal, and Veeam retained an option to add the '043 patent to the license for $100 after resolution of the appeal. Hybir appealed alone, but the court ordered disclosure of the settlement terms and concluded no live case or controversy remained.

Applying Allflex USA, Inc. v. Avid Identification Systems, Inc., 704 F.3d 1362 (Fed. Cir. 2013), the court held that the $100 option constituted a "side bet" on the appeal's outcome rather than a sum tethered to the actual value of the issues at stake, rendering the controversy moot. The court rejected Hybir's argument that the optionality of Veeam's licensing decision distinguished this case from Allflex, characterizing Hybir's speculation that Veeam would forgo the $100 license and relitigate invalidity as insufficient to establish a real and imminent injury. The court dismissed without disturbing the district court's eligibility determination and required Hybir to bear its own costs.

The Federal Circuit affirmed three PTAB final written decisions holding claims 1–33 of U.S. Patent No. RE38,806 and claims 1–15 of U.S. Patent No. 6,352,879 unpatentable as obvious over Mostafazadeh in combination with other references. The patents at issue disclose miniaturized semiconductor devices with chip-size packages featuring vertically stacked semiconductor chips bonded using "adhesion layers" formed on wafers before dicing, purportedly avoiding overflow and underfill problems associated with conventional potting and thermo-compression sheet methods. Katana Silicon Technologies challenged only the Board's claim construction of "adhesion layer," arguing it required "a pre-formed layer that is adhered" rather than the Board's adopted construction of "a layer that adheres."

The court conducted de novo review of the claim construction, finding the plain claim language supported the Board's broader construction because "adhesion" functioned as an adjective specifying the layer's type or purpose, not requiring a fully pre-formed solid sheet. Rejecting Katana's attempt to import limitations from the specification's two preferred embodiments (both using thermo-compression sheets), the court applied the principle that absent clear lexicography or disavowal, courts should not depart from plain claim meaning even when only a single embodiment is disclosed. The court found particularly significant that the specification used "adhesive agent" and "adhesion layer" interchangeably and that the described solution—forming the adhesion layer "in advance" at the wafer stage before dicing—solved overflow problems regardless of whether the adhesive required later curing.