Federal Circuit IP

Ingenico v. Ioengine

By Francisco Almeida Published May 22, 2025

Ingenico v. Ioengine  

CAFC Opinion No. 23-1367, Decided May 7, 2025; (Hughes, Dyk, Prost); (Precedential) 

Overview: Circumstantial evidence (e.g., emails, press releases, website) can demonstrate that publicly downloadable software was actually used and IPR estoppel covers only grounds that could have been raised in the IPR. 

Facts/Procedural Posture: 

  • Ingenico filed a DJ action (6/1/18) concerning PayPal’s accused products alleged to infringe Ioengine’s patents covering portable device (USB token) authentication of web transactions. 
  • Ingenico filed IPR petitions challenging the ’969 (3/25/19) and ’703 (4/4/2019) patents; IPR instituted only on printedpublication grounds failed to invalidate the claims. 
  • At trial (7/11/22), Ingenico relied on the 2002 “DiskOnKey” USB drive and its downloadable Firmware Upgrader software as public use prior art; the jury found the patents invalid. 

 Issues on Appeal:  

  • Was there substantial circumstantial evidence that would allow a reasonable jury to conclude that a user downloaded and actually used the software the DiskOnKey device?  
  • Did estoppel bar Ingenico from asserting productbased prior art that couldn’t have been raised in the earlier IPR?   

 Holding: Affirmed.  

  • Substantial circumstantial evidence (emails, press release, website) demonstrated Firmware Upgrader software was actually used and therefore “public use” prior art.  
  • IPR estoppel (§ 315(e)(2)) covers only grounds that could have been raised in the IPR (i.e.,102 or 103 unpatentability based on patents and printed publications)—not physicalproduct, onsale, or publicuse art. 

 Takeaways: 

  • Resolved split among D. Cts. regarding the proper interpretation of the term “grounds” used in § 315(e)(2).
  • Publicly downloadable software can qualify as “public use” prior art even if there’s no direct evidence of anyone downloading it.  

 

Fintiv v. PayPal  

CAFC Opinion No. 232312, Decided April 30, 2025; (Prost, Taranto, Stark); (Precedential) 

 Overview:  Functional language without disclosed algorithms risks invalidation. 

 Facts/Procedural Posture: 

  • Fintiv sued PayPal in W.D. Tex. for infringing various patents, which cover a cloudbased transaction system. 
  • “a payment handler service operable to use [application programming interfaces (“APIs”)] of different payment processors including one or more APIs of banks, credit and debit cards processors, bill payment processors.” 
  • “a payment handler configured to use APIs . . .”  
  • D. Ct. held that paymenthandler terms invoked § 112 ¶ 6 and that the specifications disclosed no corresponding structure, rendering the claims indefinite (Judge Albright entered final judgment). 
  • Fintiv appealed arguing that the terms imparted software structure and that, even if § 112 ¶ 6 applied, the patents described an adequate twostep algorithm. 

 Issues on Appeal:  

  • Do the “payment handler” terms invoke § 112 ¶ 6 despite omitting the word “means”? 
  • If § 112 ¶ 6 applies, do the specifications disclose adequate structure (e.g., an algorithm) to perform the claimed functions of (i) using APIs of different payment processors and (ii) exposing a common API? 

 Holding: Affirmed.  

  • § 112 ¶ 6 applies.  Found “payment handler” to be a generic “blackbox” substitute for “means,” providing no structural guidance to a POSITA.  
  • Prefixes like “payment” merely describe function, and connecting words (“configured to,” “operable to”) do not impart structure. 
  • No corresponding structure → indefiniteness.  The specifications “merely recite the desired result” without any algorithm; therefore, the claims are indefinite under § 112 ¶ 6. 

 Takeaways: 

  • Terms such as handler, manager, engine, module are structural only if the specification (or established usage) couples them to concrete algorithms or hardware.
  • For computerimplemented functions, include flowcharts or stepwise logic—merely stating what the software “does” won’t satisfy § 112 ¶ 6.  

  

University of California et al. (“Regents”) v. The Broad Institute et al. (“Broad”)  

CAFC Opinion No. 23-1367, Decided May 12, 2025; (Reyna, Hughes, Cunningham); (Precedential) 

Overview: (Pre-AIA) A definite and permanent idea such that only ordinary skill is needed to reduce it to practice completes conception—proof that an inventor(s) idea will work is not required. 

Facts/Procedural Posture: 

  • By early 2012 it was understood that Type II CRISPR system edits DNA with three components, tracrRNA, crRNA, and Cas9, which form a “CRISPRCas9 complex.” 
  • Regents then linked the two RNAs into a singleguide RNA (“sgRNA,” chimera A) and showed invitro DNA cleavage, believing this greatly simplified retargeting.  
  • Regents sought the benefit of PROVs “P1” (filed May 25, 2012) & “P2” (filed October 19, 2012).

Decision in Interference: 

  • PTAB found both PROVs lacked written description and granted benefit only of PROV “P3” (January 28, 2013). 
  • Broad reduced to practice by October 5, 2012, and rejected Regents earlier conception/reduction dates relying on Regents’ scientists’ expressions of doubt.  
  • Regents appealed the PTAB’s determinations on conception and written description support. 

Issues on Appeal:  

  • Did Regents’ May 2012 (P1) provisional application satisfy § 112 written description requirement for a singleguideRNA CRISPRCas9 system in eukaryotes? 
  • Did the PTAB err in finding that Regents had not conceived the invention before Broad’s reduction to practice?  

 Holding: Affirmed inadequate § 112 written description; and the conception finding was vacated and remanded.  

  • Regents’ P1 application lacked adequate written description, agreeing that in a “highly unpredictable” art more detail was required to show possession of a eukaryotic CRISPR Cas9 system. 
  • An inventor need not know the invention will work to complete conception.  
  • PTAB conflated conception with reduction to practice, only ordinary skill is needed to reduce it to practice, and relied too heavily on statements of doubt. 

 Takeaways: 

  • Conception requires a definite and permanent idea such that only ordinary skill is needed to reduce it to practice; inventor(s) subjective believe that invention will work is not necessary. 
  • For complex biotech/chem inventions, simply listing components and asserting functionality may be insufficient; applicants should provide working data or concrete guidance that “reasonably conveys possession.”