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Code, copies, and consequences: $185 million verdict uninstalled!

by Jodi Benassi | Mar 26, 2026 | Patents

Addressing patent eligibility, infringement, willfulness, enhanced damages, and the limits of patent damages tied to foreign software sales, the US Court of Appeals for the Federal Circuit vacated a $185 million jury award after finding that damages based on foreign sales were improperly included because the accused software copies were made and installed abroad. Trs. of Columbia Univ. v. Gen Digital Inc., Case No. 24-1243 (Fed. Cir. Mar. 11, 2026) (Dyk, Prost, Reyna, JJ.)

The Trustees of Columbia University sued Gen Digital, the Norton software brand marketer, for infringement of patents directed to detecting anomalous program execution in antivirus software. A jury found willful infringement and awarded approximately $185 million in damages, including more than $94 million attributable to foreign sales of Norton software products based on findings that the infringing product sold to foreign customers was made in and distributed from the United States. The district court denied Gen Digital’s post-trial motions, enhanced the damages, and awarded attorneys’ fees. Gen Digital appealed.

Patent eligibility: Abstract at Alice step one

The Federal Circuit determined that the asserted claims are directed to an abstract idea at step one of the Alice framework. The Court explained that the claims, at their core, involve comparing data (function calls) to a model – created using multiple computers – to identify anomalous behavior, which is a long-standing abstract concept in the context of virus detection. Although Columbia argued that the claims improved computer functionality through efficiency gains and the use of distributed models, the Court found that those purported improvements were either themselves abstract or not required by the claim language. The Court agreed with Columbia that factual disputes remain as to whether certain claimed features – particularly the “model of function calls” – were well-understood, routine, and conventional, precluding resolution of step two of the Alice framework. The Court remanded for further proceedings to perform an Alice step two analysis.

Willfulness: Affirmed by substantial evidence

The Federal Circuit found that substantial evidence supported a finding that Gen Digital knew or should have known of the asserted patents, including evidence that its personnel were aware of the underlying technology and related patent applications prior to issuance. The Court rejected Gen Digital’s argument that its litigation defenses precluded willfulness, explaining that post hoc reasonable defenses do not negate willfulness absent evidence that the defendant relied on those defenses at the time of the accused conduct. Because the record supported a finding that Gen Digital failed to adequately investigate potential infringement despite being aware of the patents, the Federal Circuit found no basis to disturb the district court jury’s willfulness determination.

No domestic infringement for foreign-made software copies

The Federal Circuit reiterated the general rule that US patent law does not apply to products made and sold abroad. Although the jury was instructed that damages could include foreign sales if the infringing product was “made in or distributed from the United States,” the Court found this instruction legally incorrect. The Court further explained that 35 U.S.C. § [...]

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Virtually displayed: USPTO updates guidance for computer-generated interfaces and icons

by Taylor MacDonald | Mar 26, 2026 | Patents

To address evolving digital technologies, the United States Patent and Trademark Office (USPTO) issued supplemental guidance for examining design patent applications directed to computer-generated interfaces and icons. The guidance expands flexibility for applicants – particularly in projection, hologram, and virtual and augmented reality (PHVAR) contexts – while maintaining the statutory requirement that claimed designs be tied to an article of manufacture.

The USPTO first sought public input in 2020 on how the “article of manufacture” requirement under 35 U.S.C. § 171 should apply to emerging digital designs. Although many commenters urged recognition of PHVAR designs, subsequent guidance issued by the USPTO in 2023 did not fully address those technologies. The latest supplemental guidance responds to continued stakeholder feedback, particularly regarding the limitations imposed by prior drawing requirements.

Traditionally, applicants seeking protection for computer-generated icons or graphical user interfaces (GUIs) were required to depict a physical article of manufacture, such as a display screen, in solid or broken lines in the drawings. This requirement ensured that the claimed design was not merely a “transient or disembodied” image but was instead tied to a statutory article of manufacture.

The updated guidance removes the requirement that drawings depict a display panel or other physical article, provided that the title and claim clearly identify the relevant article of manufacture (e.g., a computer, computer display, or computer system). In such cases, the article need not appear in the drawings, so long as the application, taken as a whole, makes it clear that the claimed design is “for” an article of manufacture and not merely an abstract or disembodied image. For example, phrases such as “interface for a computer system” or “icon for a display panel” are sufficient to establish that the design is tied to a qualifying article.

The USPTO reiterated that the guidance “does not constitute substantive rulemaking and hence does not have the force and effect of law.” Examiners will continue to evaluate applications under all applicable patentability provisions, including §§ 102, 103, and 112.

Overall, the updated guidance provides applicants with greater flexibility in claiming and depicting computer-generated designs while reaffirming that such designs must remain tied to a qualifying article of manufacture.

Absent a client waiver, attorney-client relationship survives conflict

by Connor M. Larson | Mar 26, 2026 | Patents

Reversing a district court order requiring the disclosure of attorney-client communications and holding a law firm in civil contempt, the US Court of Appeals for the Federal Circuit ruled that an attorney’s conflict of interest does not automatically terminate the attorney-client privilege and that an invalid order could not support civil contempt. Trs. of Columbia Univ. in City of New York v. Gen Digital Inc., Case No. 24-1243, (Fed. Cir. Mar. 11, 2026) (Dyk, Prost, Reyna, JJ.)

The Trustees of Columbia University sued Gen Digital, the Norton software brand marketer, for infringement of two patents and to correct the inventorship of one of the patents. Norton owned the patent on which inventorship correction was sought, and a Norton employee, Dr. Dacier, was listed as the sole inventor. Columbia alleged that two Columbia professors invented the subject matter.

On the inventorship issue, Norton and Dr. Dacier were both represented by Quinn Emanuel Urquhart & Sullivan. Dr. Dacier was deposed and testified about the development of the invention, including activities involving the Columbia professors. Dr. Dacier did not attribute any inventive contributions to the Columbia professors, but Columbia argued – and the district court agreed – that his testimony supported Columbia’s inventorship theory.

Before the district court, Columbia argued that this representation created an improper conflict of interest, particularly because Dr. Dacier had allegedly expressed views critical of Norton’s litigation positions. In Columbia’s view, Quinn Emanuel had improperly prevented Dr. Dacier from testifying at trial in support of Columbia’s inventorship claims. The district court agreed, finding that Quinn Emanuel’s representation of Dr. Dacier raised a conflict, and ruled that Quinn Emanuel’s current representation of Norton automatically terminated its representation of Dr. Dacier. The district court ordered Quinn Emanuel to release its communications with Dr. Dacier. Quinn Emanuel had previously asserted a claim of privilege over these communications. Quinn Emanuel refused the production order, and the district court found Quinn Emanuel in civil contempt. As a sanction, the district court imposed a negative evidentiary inference that Dr. Dacier would have testified to improper conduct by Quinn Emanuel – supporting Columbia’s motion for enhanced damages and attorneys’ fees in a companion case. Quinn Emanuel appealed.

On appeal, Quinn Emanuel argued that the district court’s order requiring the disclosure of communications with Dr. Dacier was invalid because it improperly compelled production of privileged communications and that the contempt finding should be reversed. Columbia argued that the disclosure order was proper because Norton did not raise the privilege issue response to Columbia’s motion for an order to show cause, Quinn Emanuel failed to request in camera review, Quinn Emanuel did not contact Dr. Dacier to determine if he wanted to assert privilege, and Dr. Dacier waived the privilege by emailing both Columbia’s counsel and Quinn Emanuel disclosing that he had been in contact with Columbia’s counsel.

The Federal Circuit rejected all four arguments, holding that there was “no question that Dr. Dacier retained Quinn [Emanuel] to represent him and that he did not terminate the relationship [...]

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Corresponding disclosed structure? Only what’s necessary to perform a recited function

by Tyler Jackson | Mar 26, 2026 | Patents

The US Court of Appeals for the Federal Circuit held that the disclosure of an added function in the specification of a patent should not affect the structure necessary to meet the recited function in a Section 112(f) claim element. Gramm v. Deere & Co., Case No. 24-1598 (Fed. Cir. Mar. 11, 2026) (Lourie, Reyna, Cunningham, JJ.)

Richard Gramm exclusively licensed Reaper Solutions rights to a patent directed to an apparatus for keeping the header of a crop harvester at a certain height above the ground as the harvester moves across a field. Gramm and Reaper sued Deere & Co., alleging that specific Deere header sensor kits infringed the patent. Deere challenged the validity of the patent in a partially successful inter partes review (IPR) proceeding, leaving one independent claim and some of the dependent claims asserted.

In connection with claim construction during the IPR proceeding, Reaper and Deere disputed the meaning of “control means” in the independent claim. At issue was whether the specification’s discussion of the “head controller 20” was sufficiently definite corresponding disclosed structure for the (§112(f)) means-plus-function claim element to satisfy the definiteness requirement of §112 (b). The function of the claimed “head controller” was to provide electrical control signals to another feature in the claimed apparatus to control the lateral position of the corn header and its height above the ground or soil. Deere argued that “head controller 20” was not sufficiently definite since it amounted to a general-purpose computer or processor, thus requiring disclosure of code or an algorithm to avoid being indefinite.

In 1997, the patent’s priority date, there were only three commercially available head controllers used in Deere combines: Dial-A-Matic Versions #1, #2, and #3. Deere argued that only Versions #2 and #3 could constitute corresponding structure for the “head controller 20,” as only those versions could control both header height and lateral position. Because Versions #2 and #3 used microprocessors to control header height, Deere argued that the patent specification was required to disclose an algorithm for performing the claimed function. In the alternative, Deere argued that the district court should hold Reaper to its argument in the IPR proceeding that the corresponding disclosed structure was the specific controller incorporated into Deere’s Dial-A-Matic Version #1, which “controlled header height through a series of diodes, switches and integrated circuits rather than a microprocessor.”

The district court found the independent claim indefinite and reasoned that the specification’s reference to Dial-A-Matic Versions #2 and #3 triggered the need for a disclosure of a general-purpose computer or microprocessor that the patent failed to satisfy. The district court accepted Deere’s argument that the specification did not disclose Dial-A-Matic Version #1 as a corresponding structure because it could not perform the function of controlling the lateral position of the corn header. Reaper appealed.

The Federal Circuit agreed with Reaper that the district court erred by identifying a corresponding structure for “control means” beyond what was necessary to perform the claimed function, leading the district court to incorrectly [...]

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Too late to help: Inventorship fix fails to revive forfeited argument

by Amit Kumar Saha, PhD | Mar 19, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board, concluding that the retroactive effect of a correction of inventorship under 35 U.S.C. § 256 does not bar the application of forfeiture principles in inter partes review (IPR) proceedings, and that a patent owner that fails to timely raise an antedating theory during an IPR may forfeit reliance on a later corrected inventorship to resurrect that theory. Implicit, LLC v. Sonos, Inc., Case Nos. 20-1173; -1174 (Fed. Cir. Mar. 9, 2026) (Taranto, Stoll, Cunningham, JJ.)

Implicit owns patents directed to content rendering that originally named Edward Balassanian and Scott Bradley as co-inventors. Sonos filed IPR petitions against both patents, asserting unpatentability under 35 U.S.C. §§ 102 and 103, primarily based on Janevski, which had an effective prior art date of December 11, 2001.

To avoid Janevski as prior art, Implicit argued that the inventions were conceived and reduced to practice before December 11, 2001. It contended that Balassanian and Bradley conceived of the inventions and collaborated with another engineer, Guy Carpenter, to implement the invention prior to December 2001. Implicit argued that Carpenter’s work inured to the benefit of the named inventors, thereby antedating Janevski. The Board rejected Implicit’s argument and found the challenged claims unpatentable as anticipated or obvious over Janevski. The Board found Implicit’s evidence insufficient to establish conception and communication of the invention by Carpenter in a manner that would support an earlier reduction to practice.

Following the Federal Circuit’s and Supreme Court’s decisions in Arthrex v. Smith & Nephew addressing the Appointments Clause as applied to IPR proceedings, the case was remanded to permit Director review. While proceedings were ongoing, Implicit sought correction of inventorship under 35 U.S.C. § 256 to add Carpenter as a co-inventor. The United States Patent & Trademark Office (USPTO) granted the request and issued certificates of correction in August 2022. The Federal Circuit remanded the case to the Board to determine what impact, if any, the corrections had on the prior final written decisions. The Board concluded that equitable doctrines, including forfeiture, precluded Implicit from relying on the corrected inventorship to advance a new antedating theory. Implicit appealed.

The appeal presented two principal questions:

Whether the retroactive effect of a correction of inventorship under § 256 forecloses application of forfeiture principles in an IPR proceeding.
Whether the Board abused its discretion in finding that Implicit forfeited its right to assert a new antedating theory based on corrected inventorship.

Implicit argued that § 256 contains no temporal limitation and that corrections operate retroactively, requiring the Board to revisit its unpatentability determinations once Carpenter was added as an inventor. Sonos and the USPTO countered that Implicit had litigated the IPRs on a single inventorship theory and waited until after adverse final written decisions to change course.

The Federal Circuit affirmed on both grounds.

First, the Federal Circuit found that forfeiture principles may apply notwithstanding the retroactive effect of § 256. Although [...]

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USPTO signals new emphasis on US manufacturing in IPR and PGR institution decisions

by Lauren Hong | Mar 19, 2026 | Patents

The United States Patent and Trademark Office (USPTO) issued a Memorandum on March 11, 2026, signaling that the Patent Trial & Appeal Board may place increased weight on domestic manufacturing activity and the interests of small businesses when deciding whether to institute inter partes review (IPR) or post grant review (PGR).

The America Invents Act (AIA) established IPR and PGR proceedings as mechanisms for challenging the validity of issued patents before the Board. In establishing the framework for institution decisions, the statute directs the USPTO Director to consider broader policy concerns, including the impact on the US economy, the integrity of the patent system, and the efficient administration of the USPTO.

The Memorandum highlights concerns regarding the decline of US manufacturing, particularly in the electronics and computer sectors. Citing government studies, the USPTO notes that the offshoring of key industries has contributed to economic and national security vulnerabilities. According to the USPTO, these developments bear directly on the Director’s statutory obligation to consider the economic effects of Board institution decisions.

While some stakeholders contend that IPR and PGR proceedings protect US manufacturers and small businesses from weak patents, the USPTO observed that many of the most frequent petitioners are large companies that report little domestic manufacturing activity and have not made meaningful investments in US production. According to the Memorandum, this data prompted the USPTO to question whether the current discretionary institution framework adequately accounts for the interests of companies that do invest in domestic manufacturing.

As a result, the USPTO announced that certain factors related to US manufacturing and small businesses may now inform discretionary institution determinations. The USPTO encourages parties to address these considerations explicitly in their discretionary briefing.

When evaluating whether to institute an IPR or PGR, the Director may consider:

Whether the products accused of infringement in parallel litigation are manufactured in the United States or tied to domestic manufacturing investments.
Whether the patent owner produces competing products in the US.
Whether the petitioner qualifies as a small business that has been sued for patent infringement.

The Memorandum clarifies that manufacturing considerations are not limited to final assembly but may also encompass the production of components and situations in which products manufactured domestically are later processed abroad. For method claims, the relevant product for this analysis will be the device used to perform the claimed method.

These considerations apply to all to all IPRs and PGRs in which the due date for a patent owner discretionary brief has not yet elapsed.

Separately recited structures must be separately present in accused device

by Ashley K. Justice | Mar 19, 2026 | Patents

The US Court of Appeals for the Federal Circuit explained (again) that when a claim separately recites multiple structural limitations, infringement requires separate corresponding structures. A single component that sequentially or multifunctionally performs the claimed functions is not enough. Magnolia Medical Technologies, Inc. v. Kurin, Inc., Case No. 24-2001 (Fed. Cir. Mar. 6, 2026) (Lourie, Hughes, Freeman, JJ.)

Magnolia Medical sued Kurin for infringement of two patents directed to devices designed to reduce contamination of blood samples by skin microbes during venipuncture. The claimed devices divert the initial portion of blood, which is most susceptible to contamination, into a separate reservoir before collecting the remainder of the sample. Kurin manufactures the Kurin Lock, which separates the initial blood sample from the remaining sample using a porous plug. That plug initially functions as a vent, allowing air to escape, and then expands as it absorbs blood, closing its pores and forming a seal.

The representative claim of one of the asserted patents recites a device comprising a fluid reservoir “at least partially defined by a seal member and a vent.” The representative claim of the other patent recites a “diverter.”

During claim construction, the district court construed “diverter” as a means‑plus‑function term under § 112(f). Because the Kurin Lock lacked a corresponding diverter structure, the parties stipulated noninfringement of that patent.

The district court did not expressly construe the “seal” and “vent” limitations of the other patent at Markman. At trial, however, the jury found that Kurin infringed that patent.

Kurin moved for judgment as a matter of law (JMOL), arguing that it did not infringe because the Kurin Lock did not include separate seal and vent structures. Instead, a single porous plug performed both functions at separate times. The district court agreed and granted JMOL of no infringement. Magnolia appealed.

The Federal Circuit affirmed, rejecting Magnolia’s argument that the district court had improperly adopted a new claim construction at the JMOL stage. While courts may not introduce a materially different construction after trial, they may elaborate on what is inherent in the plain and ordinary meaning of a claim. The Federal Circuit reiterated its prior holdings that when a claim separately lists structural limitations, the plain and ordinary meaning requires separate corresponding structures. Here, the district court merely clarified that requirement, it did not change the construction.

The Federal Circuit found that the asserted claim required separate structures. The use of “comprising,” the introduction of “a” before both “seal” and “vent,” and the use of “and” between them all pointed to distinct components. The specification further reinforced that the seal and vent were described as separate structures.

The Federal Circuit also affirmed the district court’s construction of “diverter” as a means plus function limitation. Although the claim did not use the word “means,” Kurin successfully showed that the term failed to recite sufficient structure, triggering § 112(f).

Practice note: This case is a reminder that when multiple structural elements are separately recited in a claim, courts are likely to require [...]

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Not so fast, Daubert: Expert report OK after all

by Dexter Hamilton | Mar 19, 2026 | Patents

The US Court of Appeals for the Federal Circuit reversed a district court’s exclusion of the plaintiff’s damages expert, finding that a proffered royalty base tied to unaccused products may be permissible when supported by a causal connection to the accused technology. The Federal Circuit vacated the resulting orders denying discovery and granting summary judgment for lack of a remedy. Exafer Ltd. v. Microsoft Corp., Case No. 24-2296 (Fed. Cir. Mar. 6, 2026) (Moore, Taranto, Stoll, JJ.)

Exafer sued Microsoft for patent infringement based on features of Microsoft’s Azure platform. After Exafer served its expert reports, Microsoft filed a Daubert motion, and the district court excluded Exafer’s damages expert because she used unaccused virtual machines as the royalty base. Exafer moved to reopen fact and expert discovery to present an alternative theory, which the district court denied. The district court subsequently granted Microsoft’s motion for summary judgment based on the absence of a remedy. Exafer appealed all three orders.

Exafer argued that the district court erred in excluding its damages theory, which relied on Microsoft’s virtual machine pricing rate to estimate the value Microsoft placed on the accused features. Exafer contended that the district court misapplied the Federal Circuit’s 2018 decision in Enplas Display Device v. Seoul Semiconductor by effectively creating a categorical bar against considering noninfringing activities in a reasonable royalty analysis.

The Federal Circuit agreed, explaining that in Enplas the unaccused products had no causal connection to the accused infringing products. Here, by contrast, the Court found such a connection: Microsoft’s own documents showed that Exafer’s royalty base was tied to a causal connection between the accused Azure features and the operation of virtual machines. The Court concluded that Exafer’s damages expert valued the accused features based on the incremental virtual machines Microsoft could host because of those efficiency gains.

The Federal Circuit rejected Microsoft’s argument that Enplas categorically precluded applying a royalty rate to sales of unaccused products to prevent a patent owner from “expanding its patent monopoly to unpatented products.” The Court explained that the analysis must be conducted on a case-by-case basis to determine how the parties would value the accused technology in the hypothetical negotiation. As an example, the Court noted that claims directed to methods of manufacture commonly use the unaccused product produced by the claimed method as the royalty base.

German Federal Court of Justice reinforces strict willing licensee standard in SEP litigation

by Dr. Henrik Holzapfel and Dr. Laura Katharina Woll, LL.M. | Mar 19, 2026 | EU Update, Patents

The German Federal Court of Justice (FCJ) established requirements for a fair, reasonable, and nondiscriminatory (FRAND) defense against injunction claims based on standard-essential patents (SEPs). VoiceAge v. HMD, Case No. KZR 10/25 (FCJ Jan. 27, 2026) (Rol-off, Deichfuß, Tolkmitt, Vogt-Beheim, Kochendörfer, JJ.)

Consistent with its earlier decisions, the FCJ adopted an approach that imposes strict procedural and substantive obligations on implementers in FRAND licensing negotiations. This approach reinforces a demanding framework for implementers. The FCJ rejected the implementer’s FRAND defense in this case.

The case attracted considerable attention because the European Commission, acting as the EU competition law authority, intervened by submitting an amicus curiae brief and presenting oral argument before the FCJ. The Commission’s participation underscored the ongoing de-bate over the proper interpretation of FRAND obligations under Article 102 TFEU and, more particularly, the framework established by the Court of Justice of the European Union (CJEU) in Huawei v. ZTE.

Willing licensee standard and the obligation to provide security

The FCJ found the implementer to be an unwilling licensee since it unduly delayed its responses to the SEP owner’s license offers and failed to provide adequate security in a timely manner. According to the FCJ, the implementer must promptly enter into negotiations with the SEP owner regarding licensing terms and submit a counteroffer, even if the SEP owner’s initial license offer was not FRAND-compliant. During licensing negotiations, the implementer should actively and constructively engage in efforts to conclude a FRAND-compliant license agreement.

Similar to the recent Statement of Interest by the US Department of Justice and the United States Patent and Trademark Office in US patent litigation between Collision Communications and Samsung, the FCJ underscored the importance of injunctive relief, including for nonpracticing entities (NPEs) and with respect to SEPs. According to the FCJ, only exclusive rights allow an invention to be subject to market processes, and the availability of damages claims does not alter this fundamental principle.

The FCJ cited case law from the Unified Patent Court (UPC) and from national courts in the Netherlands and the United Kingdom to support its reasoning. Taken together, these authorities demonstrate a growing consensus within the European judiciary toward interpreting FRAND obligations as establishing a high threshold for a successful FRAND defense. Consequently, FRAND jurisprudence is developing across Europe in a direction that is increasingly strict for implementers.

The FCJ emphasized that if the SEP owner rejects the counteroffer, the implementer must promptly provide adequate security. In this case, the implementer did not adequately do so because it did not even provide security corresponding to the royalties under its own relatively low counteroffer. However, the FCJ did not provide specific guidance on how to determine the required amount of security. The lower court relied on the amount of the SEP owner’s last offer, but the FCJ did not comment on this offer because the security that the implementer provided was too low.

Unlike lower instance courts, however, the FCJ emphasized in an obiter dictum that providing security is sufficient [...]

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Coiled in controversy: Summary judgment on Walker Process claim unwound

by Payton T. Thornton | Mar 12, 2026 | Patents

The US Court of Appeals for the Federal Circuit vacated a district court’s grant of summary judgment on inequitable conduct and a Walker Process antitrust claim arising from allegations that a patent owner withheld material prior art during patent prosecution and sought to enforce the patents against a competitor in the coiled tubing market. Global Tubing v. Tenaris Coiled Tubes, Case Nos. 23-1882; -1883 (Fed. Cir. Feb. 26, 2026) (Taranto, Hughes, Stark, JJ.)

Global Tubing filed a declaratory judgment action seeking a ruling that its coiled tubing product did not infringe Tenaris’ patents. After uncovering a document in discovery that it characterized as evidence that Tenaris attempted to withhold material information during patent prosecution, Global Tubing amended its complaint to assert inequitable conduct and Walker Process fraud, alleging that Tenaris sought to use fraudulently obtained patents to monopolize the market. Following the completion of discovery, the parties filed cross-motions for summary judgment. The district court granted summary judgment of inequitable conduct to Global Tubing and summary judgment of no liability for Walker Process fraud to Tenaris. As to the Walker Process fraud claim, the court determined that because Tenaris was such a small market player, Global Tubing could not prove it had the market power sufficient to achieve a monopoly. Both parties appealed.

The Federal Circuit determined that the district court erred in granting summary judgment to Global Tubing, finding that genuine disputes of material fact remained as to whether the single most reasonable inference was that the inventor acted with specific intent to deceive the United States Patent and Trademark Office (USPTO), making summary judgment on inequitable conduct inappropriate.

Addressing the Walker Process fraud claim, the Federal Circuit likewise vacated the district court’s grant of summary judgment in favor of Tenaris, finding that the record contained genuine disputes of material fact that precluded judgment as a matter of law. The Court explained that the evidence could support a finding that the inventor knowingly withheld a material prior art reference from the USPTO with intent to deceive, and that Global Tubing had raised a triable issue as to the first prong of its Walker Process claim: whether Tenaris obtained and enforced the patent through knowing and willful fraud on the USPTO.

Turning to the second prong of a Walker Process fraud claim (attempted monopolization), the Federal Circuit observed that the parties advanced competing definitions of the relevant market. The Court concluded that the district court erred by characterizing Tenaris as a small market participant with no dangerous probability of achieving monopoly power without first defining the relevant product and geographic markets or determining whether genuine disputes of material fact existed on those issues.

The Federal Circuit also concluded that genuine disputes of material fact remained as to whether Tenaris engaged in predatory or otherwise anticompetitive conduct. The Court noted that there may have been a triable issue regarding the appropriate date at which to measure Tenaris’ share of the relevant yet undefined market. Considering these unresolved factual questions, the Court [...]

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