The US Court of Appeals for the Federal Circuit affirmed a district court dismissal, finding that a patent license implicitly licensed all parents and continuations that disclosed the same invention as the explicitly licensed patent. Cheetah Omni LLC v. AT&T Services, Inc., Case No. 19-1264 (Fed. Cir. Feb. 6, 2020) (Lourie, J).
Executive Summary
2019 was another important year in intellectual property law that resulted in hundreds of decisions by the courts and Patent Trial and Appeal Board (PTAB) that may affect your company’s litigation, patent prosecution or business strategy. This special report on patents discusses some of the most important cases from 2019 from the US Supreme Court, the US Court of Appeal for the Federal Circuit and the PTAB.
On January 22, 2019, the Supreme Court addressed in Helsinn Healthcare S.A. v Teva Pharmaceuticals, USA, Inc. the question of whether, under the America Invents Act (AIA), an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention. In a unanimous decision authored by Justice Clarence Thomas, the Supreme Court concluded that such a sale qualifies as prior art.
On 14 January 2020, the German Federal Ministry of Justice published a draft act to modernize German patent law. Among other things, the draft addresses the fact that patent infringement trials proceed much quicker than parallel invalidity proceeding (which, under German law, are conducted separately). Hence, an injunction may be issued in first instance infringement proceedings before a decision on the validity of the patent in suit can be obtained; the resulting time gap between infringement and invalidity decision is called the “injunction gap” in German patent litigation. The draft modernization act seeks to improve the coordination between infringement and invalidity proceedings by having the Federal Patent Court provide a preliminary assessment of patent validity quickly. In view of such preliminary assessment, an infringement court may then stay infringement proceedings until a decision in the parallel invalidity proceedings.
Addressing the issue of obviousness, the US Court of Appeals for the Federal Circuit affirmed the district court’s finding that a patent was invalid based on inherency because the claim limitation was necessarily present in the prior art. Hospira, Inc. v. Fresenius Kabi USA, LLC, Case Nos. 19-1329, -1367 (Fed. Cir. Jan. 9, 2020) (Lourie, J).
The patent at-issue is directed to premixed pharmaceutical compositions of dexmedetomidine that do not require reconstitution or dilution prior to administration and remains stable and active after prolonged storage. Hospira makes and sells dexmedetomidine products, including a ready-to-use product called Precedex Premix covered by the patent at-issue. Fresenius filed an Abbreviated New Drug Application (ANDA) seeking approval by the Food and Drug Administration (FDA) to market a generic ready-to-use dexmedetomidine product. Hospira brought suit alleging infringement under the Hatch-Waxman Act.
A divided panel decision of the US Court of Appeals for the Federal Circuit affirmed a summary judgment of noninfringement, finding no disputed issues of material fact to preclude summary judgement. Plastic Omnium Advanced v. Donghee America, Inc., Case No. 2018-2087 (Fed. Cir., Nov. 21, 2019) (Reyna, J) (Clevenger, J, dissenting).
Plastic Omnium filed suit against Donghee for patent infringement of patents generally relating to manufacturing plastic fuel tanks formed by blow molding. A portion of this process, as claimed, requires “cutting and opening an extruded parison of closed cross section.” The primary dispute on appeal is the meaning of the claim term “parison.” In its claim construction order, the district court found the patentee had acted as its own lexicographer, defining the key disputed term “parison” as “referring to a plastic tube with a closed cross section that is shaped by—and has reached the end of—a die and is split either immediately upon exiting the die or at some point thereafter.” Following claim construction, the district court granted Donghee’s motion for summary judgment of noninfringement as to the asserted claims. Plastic Omnium appeals the grant of summary judgment under both literally infringement and infringement under the doctrine of equivalents.
The US Court of Appeals for the Federal Circuit affirmed the district court’s grant of summary judgment of noninfringement of a means-plus-function claim element, emphasizing that a patentee must compare the accused product to the entire disclosed structure, not just a selected subset. Genuine Enabling Tech. v. Sony Group Corp., et al., Case No. 24-1686 (Fed. Cir. Feb. 19, 2026) (Dyk, Taranto, Chen, JJ.)
Genuine Enabling Technology (GET) sued Sony for patent infringement, alleging that Sony’s PlayStation 3 and 4 infringed its patent related to synchronizing data streams from multiple input devices. The district court ruled in favor of Sony, granting summary judgment of noninfringement and excluding the infringement conclusion of GET’s expert. GET appealed.
The Federal Circuit affirmed. The parties agreed that the term “encoding means” for synchronizing two separate streams, present in each asserted claim, was a means-plus-function limitation under 35 U.S.C. § 112(f). Neither party disputed that the corresponding structure consisted of the entirety of a logic block disclosed in the patent specification.
GET’s expert focused solely on the bit-rate clock appearing in the logic block, neglecting most of the other disclosed components, and did not provide an explanation for these omissions in his “way” analysis. The Federal Circuit explained that this approach failed to satisfy the function-way-result test for structural equivalence, which requires demonstrating that the accused product is equivalent to the disclosed structure by showing that both the accused and corresponding disclosed structures perform the identical function in substantially the same way to achieve substantially the same result. The Court clarified that while a component-by-component examination is not necessary, the analysis must consider all components of the identified structure or justify any omissions. GET’s expert did not meet the burden of describing the “way” the “encoding means” structure in the patent performed its function.
GET’s expert attempted to simplify structural equivalence to “anything that synchronizes to a clock.” The Federal Circuit explained that this approach improperly reduced the function-way-result test to function-result alone, contradicting the patent’s specific synchronization scheme. Because of the lack of analytical support for the expert’s structural-equivalence conclusion, the Federal Circuit upheld the district court’s exclusion of the expert’s opinion.
Since GET did not seek discovery of the accused product’s Bluetooth schematics until the end of fact discovery, GET’s expert never examined the internal design of the accused Bluetooth modules. Instead, his infringement theory relied solely on assumptions about generic Bluetooth behavior, which the Federal Circuit found to be conclusory, legally insufficient, and inconsistent with the patent’s detailed circuitry disclosed in the specification. The Federal Circuit affirmed the district court’s partial exclusion of GET’s expert’s testimony.
Practice note: When litigating means-plus-function claims under 35 U.S.C. § 112(f), an opining expert must address the entirety of the corresponding structure disclosed in the specification. Selectively focusing on only one or two elements without explaining omissions can be fatal.
The US Court of Appeals for the Federal Circuit reversed and vacated a decision by the Patent Trial & Appeal Board, explaining that the Board failed to consider common textual modifier language when applying the plain meaning to a disputed claim term. Netflix, Inc. v. DivX, LLC, Case No. 24-1541 (Fed. Cir. Feb. 13, 2026) (Moore, C.J.; Dyk, Taranto, JJ.)
DivX sued Netflix for infringing its patent directed to systems and methods for streaming partly encrypted media content. The patent uses encryption/decryption, a Digital Rights Management (DRM) technique, to protect streams of media content from unauthorized access or copying. This technique requires that cryptographic information be relayed to the playback device for users to watch streamed media content. The patent explains that encrypting parts of streamed media decreases the resources needed for encryption/decryption and provides the playback device with information on the portions that are encrypted and “common” decryption information.
Netflix petitioned for inter partes review (IPR) of all claims on the basis of obviousness. The Board rejected DivX’s proposed construction of limitation [l] of the representative claim: “locating encryption information that identifies encrypted portions of frames of video within the requested portions of the selected stream of protected video.” DivX’s argued that the “encryption information” must be located “within the requested portions of the selected stream of protected video.” The Board deemed DivX’s proposed claim construction as “too restrictive,” concluding that the claim suggested that the encryption information just needed to identify encrypted portions of frames that themselves were “within the requested portions of the selected stream of protected video.”
In its final written decision, the Board agreed with Netflix that a person of skill in the art would have been motivated to combine the asserted prior art but held that the artisan would not have reasonably expected success in combining the prior art and that therefore Netflix did not establish obviousness of the challenged claims.
The Federal Circuit vacated the Board’s decision on appeal and remanded the matter. On remand, the Board again concluded that Netflix did not demonstrate obviousness but this time accepted DivX’s originally proposed claim construction. Netflix appealed.
The Federal Circuit found the Board’s construction of limitation [l] was erroneous, agreeing with Netflix that limitation [l] was taught by the asserted prior art combination. Using the plain language doctrine, the Court found that limitation [l] was susceptible to two interpretations: “the modifier ‘within the requested portions of the selected stream of protected video’ could modify either ‘encrypted portions of frames of video’ or ‘encryption information.’” Accordingly, the Court relied on the principle that where commas or other textual signals are not used, it is presumed that the modifier is tied to the nearest available semantically plausible modificand. The Court determined that only the “encrypted portions of frames of video” needed to be “within the requested portions of the selected stream of protected video.” The Federal Circuit also determined that the context of the claim itself, the specification, and the prosecution history supported the construction that [...]
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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:
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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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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The US Court of Appeals for the Federal Circuit vacated a summary judgment finding claims invalid, on grounds that the district court erred in applying issue preclusion based on factual findings in an inter partes review (IPR) that held other claims invalid. Inland Diamond Products Co. v. Cherry Optical Inc., Case No. 24-1106 (Fed. Cir. Oct. 15, 2025) (Prost, Reyna, Chen, JJ.)
In 2020, Inland Diamond filed a patent infringement suit against Cherry Optical asserting dependent claims of two patents. A year prior, in 2019, the Patent Trial & Appeal Board had determined that the independent claims on which the asserted dependent claims depended were unpatentable in two IPRs. During these 2019 IPRs, the Board determined that the claims now asserted at the district court were not unpatentable. The Board decision was not appealed.
The district court granted Cherry’s motion for summary judgment that the asserted claims were invalid for obviousness. The district court concluded that issue preclusion applied, so Cherry did not have to perform an independent invalidity analysis for limitations of what the district court termed unpatentable claims contained in the asserted claims. The district court’s analysis focused on limitations added by the asserted claims. The district court permitted Inland to defend the asserted claims’ validity because those claims had been adjudicated as not unpatentable in the 2019 IPRs.
Relying on issue preclusion and Cherry’s asserted prior art, the district court granted summary judgment that the asserted claims were invalid for obviousness. Inland appealed.
The Federal Circuit reversed, explaining that the district court erred in applying issue preclusion based on two 2024 decisions, ParkerVision and Kroy. In both decisions, the Federal Circuit reversed the district court’s holding for erroneous application of issue preclusion based on the Board’s factual findings. The Federal Circuit explained that facts proven under the Board’s then-lower standard of proof for unpatentability (preponderance of the evidence) cannot have issue-preclusive effects under the district court’s clear and convincing standard. The Federal Circuit distinguished cases where a claim has already been found unpatentable or invalid; in those situations, issue preclusion bars the assertion of those claims.
Applying this principle, the Federal Circuit reasoned that since the prevailing standard of proof for challenging patentability in 2019 in an IPR was lower and Inland’s asserted claims had never been determined invalid or unpatentable, the district court erred in giving issue-preclusive effect to the Board’s 2019 findings. To grant summary judgment, a district court must find that the patent challenger carried its burden under the clear and convincing standard separate from the Board’s factual findings. The Federal Circuit noted that to meet the higher standard, the evidence may be the same or similar to the evidence that led the Board to find that certain claims were unpatentable by a preponderance of the evidence.
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