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Exploring the latest in intellectual property law
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Can’t patent idea of using asynchronous data streams during web conferencing

by | Feb 5, 2026 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s dismissal of a patent infringement suit, holding that the asserted web conferencing claims were directed to an abstract idea, lacked any inventive concept, and were therefore not patent eligible under 35 U.S.C. Section 101. US Patent No. 7,679,637 LLC v. Google LLC, Case No. 24-1540 (Fed. Cir. Jan. 22, 2025) (Moore, CJ.; Hughes, Stoll, JJ.)

The patent owner accused Google of infringing a patent that describes systems for web conferencing that allow users to view and manipulate multiple data streams asynchronously, for example by reviewing earlier content while a live presentation continues. The representative claims recited client applications for presenting and observing participants, and some claims recited a server application and a “time scale modification component” to maintain audio quality at different playback speeds. Google moved to dismiss, arguing that the claims were ineligible under Section 101. The district court agreed and denied leave to amend on the rationale of futility. The patent owner appealed.

Reviewing de novo, the Federal Circuit applied the two-step Alice framework. At step one, the Court concluded that the claims were directed to the abstract idea of allowing users to manipulate and review data streams in a web conferencing environment. The Court found that the claims recited desired results, such as asynchronous viewing, without explaining how those results were achieved or identifying any specific technological improvement. The patent owner argued that the claims were not result oriented because they recited two client applications, but the Court found that the claims still failed to describe any technical mechanism for performing the claimed functions.

The patent owner also pointed to alleged “functional claiming” in Google’s own patents, but the Federal Circuit noted that the eligibility of unrelated patents was irrelevant. The Court further rejected the notion that the mere existence of factually distinguishable Google-owned patents somehow amounted to a sweeping concession by Google that all patents involving functional claiming approaches were necessarily patent eligible.

Turning to step two, the Federal Circuit concluded that the claims lacked an inventive concept. The specification described the client applications and the time scale modification component as conventional components performing their ordinary functions. The patent owner largely repeated its step one arguments, which the Court found insufficient to supply an inventive concept.

Finally, the Federal Circuit rejected the patent owner’s argument that dismissal at the pleading stage was premature. Because the asserted patent was ineligible as a matter of law and the patent owner identified no factual allegations that could alter the Section 101 analysis, any amendment would have been futile.



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Expert had firm grip on Rule 702

by | Jan 29, 2026 |

The US Court of Appeals for the Federal Circuit reversed an exclusion of expert testimony and grant of judgment as a matter of law, finding that the district court improperly conflated admissibility with credibility and weight of the evidence. Barry v. DePuy Synthes Companies, et al., Case Nos. 023-2226; -2234 (Fed. Cir. Jan. 20, 2026) (Prost, Taranto, Stark, JJ.) (Prost, J., dissenting).

Mark Barry owns patents covering surgical techniques and tools for treating spinal deformities. Barry sued DePuy alleging that DePuy induced surgeons to infringe the patents. The patents describe tools and methods, including levers, for applying force to vertebrae to realign the spinal column. Two of the patents required the presence of a “handle means,” which the district court construed as “a part that is designed especially to be grasped by the hand.”

At trial, Barry relied on two experts. His infringement expert, Dr. Walid Yassir, testified that DePuy’s accused tools could be assembled and used in infringing configurations and that certain components (or linked assemblies) constituted the claimed “handle means” under the court’s construction. Barry also offered expert testimony from Dr. David Neal, who conducted a surgeon survey to estimate how often DePuy’s tools were used in infringing configurations, which in turn supported Barry’s damages case.

Although the district court had denied DePuy’s pretrial Daubert motions regarding Barry’s experts, it reversed course mid-trial. The court excluded Yassir’s testimony on the ground that he contradicted the court’s claim construction by equating “handle means” with parts that must be grasped during assembly. The court also excluded Neal’s survey testimony, concluding that methodological flaws, such as nonprobability sampling and alleged defects in question design, rendered the survey unreliable. Having excluded both experts, the court granted DePuy judgment as a matter of law. Barry appealed.

The Federal Circuit agreed that expert opinion that contradicts a court’s claim construction would not be helpful to a jury and should be excluded under Rule 702. The Court found, however, that Yassir did not contradict the court’s construction but instead applied it in a manner a reasonable factfinder could accept or reject – a disputed application that DePuy challenged on cross-examination. However, DePuy did not object to Yassir’s direct testimony despite having secured a pretrial ruling barring evidence inconsistent with the claim construction.

The Federal Circuit concluded that Yassir’s testimony did not contradict the court’s claim construction but rather exposed areas of tension and potential weakness in how Yassir applied that construction to the accused devices. The Court explained that DePuy’s questioning elicited testimony about what could constitute a “handle means” that went to the credibility and persuasiveness of Yassir’s opinions, not their admissibility. The Court rejected the district court’s reliance on isolated testimonial snippets divorced from their surrounding explanations, noting that ordinary ambiguities and concessions revealed through adversarial questioning are for the jury to evaluate and do not convert an expert’s application of a claim construction into an impermissible contradiction warranting exclusion under Rule 702.

The Federal Circuit likewise held that the district court abused [...]

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USPTO elevates precedential and informative decisions on discretionary institution in IPR/PGR

by | Jan 22, 2026 |

The United States Patent and Trademark Office (USPTO) designated four decisions as precedential and nine decisions as informative, all highlighting the factors the USPTO will consider in determining whether to deny a petition for inter partes review (IPR) or post-grant review (PGR) based on discretionary considerations.

Although the individual outcomes differ among the four precedential decisions (two granting institution and two denying), the decisions provide insight on how the USPTO will exercise its discretion to institute and deny America Invents Act (AIA) trials based on timing, copycat petitions and joinder, sequential petitions, and policy preference for PGR availability. The USPTO designated the following decisions precedential:

The USPTO designated the following decisions as informative, illustrating the types of factual scenarios that may support either discretionary denial of a petition or, conversely, a decision to consider the petition on the merits.

Together, these informative decisions provide concrete, real‑world examples of how the Director is likely to applies discretion under 35 USC §§ 314(a) and 324(a), ranging from circumstances where institution is disfavored (e.g., parallel litigation dynamics, petition quality, procedural posture) to situations where the USPTO [...]

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USPTO launches SEP Working Group aimed at strengthening patent enforcement

by | Jan 15, 2026 |

The United States Patent and Trademark Office (USPTO) announced the formation of the Standard-Essential Patent (SEP) Working Group, which will report directly to USPTO Director John A. Squires. The initiative aims to examine policy issues related to patents incorporated into technical standards and provide guidance on enforcement and licensing practices.

Background

Technical standards underpin many modern technologies, including telecommunications, automotive systems, and artificial intelligence. These standards often include patented technologies, which represent significant investment by inventors. Concerns have emerged about the predictability of remedies and the treatment of patent holders within the SEP ecosystem.

Historically, injunctions in SEP disputes have been difficult to obtain in the United States because SEP patents are typically subject to fair, reasonable, and non-discriminatory (FRAND) commitments. FRAND obligations are intended to ensure broad access to standardized technologies, but they often create uncertainty around enforcement and limit the availability of injunctive relief. This tension has led to debates over whether SEP holders can effectively prevent infringement when licensing negotiations fail.

Recent USPTO actions

The USPTO’s announcement follows its recent involvement in cases addressing patent remedies, in which the USPTO argued that injunctions should be available for SEP patents. In Radian Memory Systems v. Samsung Electronics, the USPTO filed a statement emphasizing the role of injunctions in protecting patent rights. Similarly, in an International Trade Commission investigation involving dynamic random-access memory (DRAM) devices, the USPTO commented on the public interest in enforcing valid patents. Both of these cases involved the assertion of SEP patents.

Objectives of the SEP Working Group

The working group will focus on three areas:

  1. Clarifying enforcement standards: Reviewing approaches to ensure strong and predictable remedies for SEP holders.
  2. Encouraging broader participation: Exploring ways to enable small and medium-sized enterprises to engage in standards development.
  3. Stakeholder engagement and transparency: Creating dialogue with patent holders, implementers, and standards organizations to identify challenges and develop resources for licensing predictability.

USPTO Deputy General Counsel Nicholas Matich and Senior Legal Advisor Austin Mayron will co-chair the working group. The group will seek input from stakeholders across the innovation ecosystem.

Next steps

The USPTO intends for this initiative to formalize its recent policy efforts and provide a structured approach to SEP-related issues. Stakeholders are encouraged to participate in discussions as the group begins its work.



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Bond order doesn’t qualify for immediate appeal

by | Jan 8, 2026 |

The US Court of Appeals for the Federal Circuit reaffirmed strict limits on interlocutory review, finding that a bond order, even one imposing significant financial obligations, is not directly appealable. Micron Technology, Inc., et al. v. Longhorn IP LLC, Case No. 23-2007; Katana Silicon Technologies LLC v. Micron Technology, Inc., et al., Case No. 23-2095 (Fed. Cir. Dec. 18, 2025) (Lourie, Schall, Stoll, JJ.)

Idaho’s Bad Faith Assertions of Patent Infringement Act allows targets of bad faith patent assertions to seek equitable relief, damages, fees, and punitive damages. It also authorizes courts to require the party asserting patent infringement to post a bond equal to estimated litigation costs and potential recovery.

Micron, a semiconductor manufacturer headquartered in Boise, Idaho, faced infringement claims from Katana Silicon in the Western District of Texas based on three expired patents. Micron counterclaimed under the Idaho act, alleging bad faith. After transfer of the case to the District of Idaho, Idaho intervened to defend the act’s constitutionality. Micron also sued Longhorn IP (alleged to control Katana) in Idaho state court under the act, seeking a $15 million bond. Longhorn removed that case to federal court. Both Katana and Longhorn moved to dismiss on preemption grounds. Both motions to dismiss were denied, and the district court imposed an $8 million bond on Katana and Longhorn pursuant to the act’s bond provision. Katana and Longhorn directly appealed the bond order.

Since there was no final judgment, the threshold question was jurisdiction. Katana and Longhorn raised three theories under which the Federal Circuit had jurisdiction on the direct appeal.

First, Katana and Longhorn argued that jurisdiction existed under 28 U.S.C. § 1292, which provides appellate jurisdiction on interlocutory orders granting, continuing, modifying, refusing, or dissolving injunctions. Katana and Longhorn argued that the bond order was “injunctive in nature” and posed irreparable harm. The Federal Circuit disagreed, concluding that a bond is not an injunction and does not meet the criteria for interlocutory appeal. The Court found that Katana and Longhorn could seek modification or waiver in district court and that no serious hardship or inability to challenge later was shown.

Second, Katana and Longhorn argued that the Federal Circuit had jurisdiction under the collateral order doctrine, which is “a narrow exception whose reach is limited to trial court orders affecting rights that will be irretrievably lost in the absence of an immediate appeal.” To fall under this exception, an order must satisfy at least the following conditions:

  • Conclusively determine the disputed question.
  • Resolve an important issue completely separate from the merits of the action.
  • Be effectively unreviewable on appeal from a final judgment.

The Court concluded that, at a minimum, the second and third conditions were not met. The Court explained that the bond issue was intertwined with the ultimate merits question of the bad faith claims because the same factors that can demonstrate bad faith in the motion to dismiss analysis implicate whether to impose a bond. The Court also explained that nothing prevented Katana [...]

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Direct injection fuel dispute fizzles

by | Jan 8, 2026 |

The US Court of Appeals for the Federal Circuit affirmed three Patent Trial & Appeal Board final written decisions finding claims of three related patents unpatentable as obvious and reiterated that challenges to the Board’s authority to institute inter partes review (IPR) proceedings are largely insulated from appellate review under 35 U.S.C. § 314(d). Ethanol Boosting Systems, LLC, et al. v. Ford Motor Co., Case Nos. 2024-1381; -1382; -1383 (Fed. Cir. Dec. 23, 2025) (Chen, Clevenger, Hughes, JJ.)

Massachusetts Institute of Technology (MIT) owns three related patents directed to fuel management systems for spark-ignition engines, which it exclusively licensed to Ethanol Boosting Systems (EBS). The patents disclose systems using both port fuel injection and direct injection to suppress engine knock by injecting an anti-knock agent, with increasing use of direct injection at higher torque levels.

EBS sued Ford for patent infringement. During claim construction, EBS and Ford disputed the meaning of claim terms related to “direct injection” fuel. EBS proposed the plain and ordinary meaning and no constraints on the term. Ford proposed terms requiring a fuel that is different from fuel used in port injunction systems and contains an anti-knock agent other than gasoline. While claim construction was pending, Ford filed IPR petitions using EBS’s proposed claim construction.

While Ford’s IPR petitions were pending, the district court adopted Ford’s construction and entered summary judgment of noninfringement. EBS appealed, and the Federal Circuit vacated and remanded the district court’s decision. Before the Federal Circuit had decided the appeal, the Board denied institution on all three IPR petitions primarily because it, like the district court, construed the direct injection fuel terms to require fuel different from the fuel used in the port injector. After the Federal Circuit decision, the Board granted rehearing, instituted IPRs, and ultimately found the challenged claims unpatentable as obvious. EBS appealed the Board’s final written decisions.

Institution challenge barred under § 314(d)

EBS argued that the Board acted unlawfully by effectively “staying” its decision on Ford’s rehearing request for more than a year while awaiting the Federal Circuit’s ruling on the district court appeal, and that the resulting institution decisions should therefore be vacated.

The Federal Circuit rejected this argument, finding that it was, in substance, an impermissible challenge to the Board’s institution determinations. The Court explained that § 314(d) bars appellate review not only of institution decisions themselves, but also of challenges “closely related” to those determinations. Characterizing the Board’s delay as an ultra vires “stay” did not change the analysis, particularly since no statutory deadline governed the timing of rehearing decisions and no IPR had yet been instituted.

The Federal Circuit further noted that the narrow exceptions to § 314(d), such as colorable constitutional claims, did not apply because EBS failed to raise a viable due process or other constitutional argument.

Claim construction: District court rulings don’t control

EBS next argued that the Board was bound by the district court’s earlier claim construction (applied during the prior Federal Circuit appeal) requiring a non-gasoline anti-knock [...]

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Equivalents still requires all elements be met, injunctive relief still governed by eBay factors

by | Jan 8, 2026 |

The US Court of Appeals for the Federal Circuit issued a mixed ruling in a dispute over patents covering child car seat technology, explaining that infringement under the doctrine of equivalents requires an equivalent for each and every claim element, and that a grant of injunctive relief requires proof of all eBay factors. On the issue of willfulness, the panel majority held that the exclusion of exculpatory evidence was a reversable error. Wonderland Switzerland AG v. Evenflo Co., Inc., Case Nos. 23-2043; -2233; -2326 (Fed. Cir. Dec. 17, 2025) (Moore, Prost, JJ.) (Reyna, J., concurring in part and dissenting in part).

Wonderland owns two patents directed to convertible child car seats. Wonderland alleged that Evenflo’s four-in-one convertible seat models infringed its patents. A jury found infringement of one patent under the doctrine of equivalents and infringement of the other patent both literally and under the doctrine of equivalents. The district court entered judgment and permanently enjoined Evenflo from activities related to both patents. Evenflo appealed.

Evenflo challenged the finding of infringement under the doctrine of equivalents for the first patent, arguing that its accused seats lacked the claimed “locking mechanism for selectively detachably connecting” the seat back to the seat assembly. The Federal Circuit agreed, finding that no reasonable jury could find equivalence because the claim “plainly requires the seat back to include the components for selective detachability,” whereas Evenflo’s seats “simply include a stationary metal bar” and all locking components reside on the seat assembly. As a result, the Court concluded “there c[ould] be no equivalence as a matter of law.”

Evenflo also argued that the district court abused its discretion in permanently enjoining activities relating to both patents. Regarding the first patent, the Federal Circuit found that the district court abused its discretion in granting a permanent injunction because Wonderland expressly declined to request such relief. Wonderland argued the grant of a permanent injunction as to the first patent was harmless error because it had the same “practical effects” as the injunction for the second patent. The Court disagreed, explaining that the injunction could affect Evenflo’s release of other products, which may not necessarily infringe the second patent.

Regarding the second patent, the Federal Circuit concluded that the district court abused its discretion in granting a permanent injunction because it relied solely on speculative and conclusory evidence that Wonderland suffered, and would continue to suffer, irreparable harm or injury that could not be compensated with monetary damages. The Court explained that the district court failed to identify evidence that Wonderland’s partner lost sales or market share to Evenflo rather than other competitors, or that the partner’s reputation or product distinctiveness was harmed. The Court also noted that testimony that a lost car seat sale “naturally leads” to loss of other product sales was based on conjecture without supporting data. Finally, the Court found that statements that consumers “might think” technology problems existed if Evenflo’s product failed were deemed speculative and insufficient to establish irreparable harm.

Wonderland cross-appealed, asserting [...]

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Authentication approved: § 314(d) doesn’t bar review of IPR petition scope

by | Dec 18, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board inter partes review (IPR) decision, finding that:

  • § 314(d) does not bar review of an IPR petition’s scope.
  • Substantial evidence supported the Board’s findings that the prior art taught the disputed limitations.
  • The Board correctly distinguished similar but different claim elements.

International Business Machines Corp. v. Zillow Group, Inc., Case Nos. 24-1170; -1274 (Fed. Cir. Dec. 9, 2025) (Chen, Taranto, Stoll, JJ.)

IBM holds a patent related to systems and methods for single sign-on (SSO) operations, enabling users to create and access multiple accounts using a single set of login credentials. Rakuten petitioned for IPR, asserting an anticipation challenge under § 102 and three obviousness challenges under § 103. The Board instituted review and addressed three claim limitations central to the dispute.

The Board first addressed the “protected resources” limitation. It adopted IBM’s construction requiring URLs or URIs and ultimately found the anticipation challenge unmet, but not because Sunada prior art failed to disclose the limitation. Instead, Rakuten (the original IPR petitioner) expressly abandoned its § 102 anticipation ground at oral argument, and afterward the Board found that Rakuten had not carried its burden. However, the Board agreed that a prior art reference nonetheless satisfied the limitation because the Board concluded that a skilled artisan would understand Sunada’s express disclosure that “web applications” be identified by conventional URLs or URIs.

Next, the Board construed “identifier associated with the user” to mean information that uniquely identifies a user, adopting IBM’s preferred construction. The Board found that the prior art reference disclosed this limitation through its use of a “User ID.”

Finally, the Board determined that Rakuten failed to establish that the asserted prior art taught the limitation requiring the second system to send a request message to a first system “in response to a determination” during user account creation. The prior art disclosed sending such a request only to the user’s own computer (not to the first system) when additional user information was needed.

The Board held several challenged claims unpatentable and others not unpatentable based on the asserted prior art. IBM appealed regarding all the claims the Board found unpatentable, contending that the Board’s analysis of “protected resources” relied on a theory of patentability not raised in the reward company’s petition, and that the Board’s findings on “identifier associated with the user” lacked substantial evidence. Zillow cross-appealed with respect to all claims the Board held not unpatentable, arguing that the Board’s findings lacked substantial evidence.

The Federal Circuit affirmed the Board on both appeals. First, responding to Zillow’s reviewability challenge, the Court held that § 314(d) did not bar review of whether the Board stayed within the petition’s grounds. The Court explained that while institution decisions are unreviewable, courts routinely examine whether the final written decision relies on theories actually presented in the petition. Zillow argued that because IBM’s challenge was “closely tied” to the Board’s institution decision, § 314(d)’s bar on [...]

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Institution decisions off limits: Federal Circuit rejects mandamus petitions based on due process, “settled expectations”

by | Dec 18, 2025 |

The US Court of Appeals for the Federal Circuit denied mandamus relief to three petitioners after the United States Patent and Trademark Office (USPTO) denied inter partes review (IPR) institution. The Court explained that Congress insulated the Director’s discretion from judicial review by making IPR institution determinations final and nonappealable, and that 35 U.S.C. § 314(d) bars virtually all judicial oversight. In re Cambridge Industries USA Inc., Case No. 2026-101; In re Sandisk Technologies, Inc., Case No. 2025-152; In re HighLevel, Inc., Case No. 2025-148 (Fed. Cir. Dec. 9, 2025) (nonprecedential) (Prost, Chen Hughes, JJ.)

The Federal Circuit acknowledged that while “colorable constitutional claims” may present an exception to the no judicial review clause, no such claims were raised in these cases. The petitioners failed to identify the kind of property interests or retroactivity concerns that could support either a colorable due process claim or an alternative avenue for relief.

Settled expectations

The lead case, In re Cambridge Industries USA, addressed the USPTO’s use of the “settled expectations” factor as a basis for discretionary denial. The agency denied institution on two patents that had been in force for seven and nine years, respectively, concluding that the patent owner had developed “settled expectations” in those long-standing rights. The companion petition, In re Sandisk Tech., involved patents that had been in force for nine and 12 years, and the USPTO reached the same conclusion.

The Federal Circuit declined to disturb either decision. The Court held that the petitioners had not shown that the settled expectations factor exceeded the USPTO’s statutory authority or that the agency’s application of the factor was unreasonable. It also rejected the argument that the USPTO had effectively created a “maximum-patent-age cap” on institution. Emphasizing the narrow scope of mandamus review, the Court reiterated that it was not deciding whether the USPTO’s actions were correct or statutorily permissible, but only that the petitioners failed to establish a “clear and indisputable right” to relief in light of Congress’s limits on judicial review of institution decisions.

Efficiency

In HighLevel, a district court had already found the challenged patents ineligible under 35 U.S.C. § 101. The Patent Trial & Appeal Board nonetheless denied IPR institution, determining that instituting review would not be an efficient use of agency or party resources and that the “efficiency and integrity of the patent system” were best served by declining review. The USPTO denied Director review.

The Federal Circuit rejected HighLevel’s contention that this decision violated due process, holding that HighLevel’s “mere reliance on the PTO evaluating its petition without regard to efficiency concerns arising from parallel litigation” was insufficient to establish a colorable constitutional claim.



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Vague definitions deflate tire trade secret claims

by | Dec 18, 2025 | ,

The US Court of Appeals for the Federal Circuit affirmed a district court’s judgment as a matter of law (JMOL) that the plaintiff failed to prove misappropriation of five alleged trade secrets related to self-inflating tire (SIT) technology and separately rejected the plaintiff’s claim for correction of inventorship of defendant’s patent related to the alleged trade secrets. Coda Dev. S.R.O., et al. v. Goodyear Tire & Rubber Co., et al., Case No. 23-1880 (Fed. Cir. Dec. 8, 2025) (Lourie, Dyk, Cunningham, JJ.)

Coda sued Goodyear in the Northern District of Ohio, alleging that Goodyear misappropriated trade secrets disclosed during SIT-technology collaboration discussions and that Coda’s founder should be added as an inventor on Goodyear’s patent related to the same technology. A jury initially found for Coda on five trade secrets (TS 7, 11, 20, 23, and 24) and awarded more than $64 million in compensatory and punitive damages. The district court, however, granted Goodyear JMOL, holding that the asserted trade secrets were insufficiently definite, not secret, and/or never used or disclosed by Goodyear. It later denied Coda’s inventorship claim of a Goodyear patent related to the alleged trade secrets after a bench proceeding. Coda appealed.

Trade secret claims

TS 24 concerned the “optimal” pump location in a tire sidewall above the rim. The Federal Circuit found that Coda had already disclosed this placement in a 2007 PCT application and a 2008 Tire Technology article, both of which discussed pump placement in the sidewall. At trial, Coda confirmed that these publications described the same location. The Federal Circuit determined that because the information was public, it could not be a trade secret.

Coda’s attempt to narrow TS 24 post hoc by adding qualifiers such as “conventional tire sidewall” failed because those limitations did not appear in Coda’s interrogatory responses in compliance with the district court’s order to provide “a complete list of the trade secrets (with particularity).” The Federal Circuit rejected Coda’s attempt to belatedly introduce additional specificity into the trade secret based on trial testimony and attorney arguments.

The Federal Circuit similarly affirmed that TS 7, 11, and 20 (which described broad categories of SIT system components and functions) failed the definiteness requirement. Each trade secret identified a list of desired features but did not specify the underlying “design and development” knowledge Coda claimed to own. Without a concrete articulation of the claimed technical know-how, the Court found that the descriptions were too vague to distinguish trade secret information from general design concepts already known in the field.

TS 23 comprised a set of pump-pressure test results. At trial, Coda offered only a single 2009 email that mentioned one of the pressure values listed in TS 23. The Federal Circuit found that this partial overlap could not sustain a verdict of “use,” particularly when no evidence showed Goodyear had received or relied on the totality of the testing data. The Court also found that Coda’s arguments about Goodyear proceeding with its SIT project after the email failed to establish a [...]

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