35 USC § 101 Archives

35 USC § 101

Settlement dispute not arising under patent law doesn’t “survive” Federal Circuit jurisdiction

by Tyler Jackson | Sep 17, 2026 | Patents

The US Court of Appeals for the Federal Circuit concluded that it lacked appellate jurisdiction over a contract dispute arising from a patent settlement agreement because resolving the dispute did not necessarily require deciding a substantial question of patent law. The Court transferred the appeal to the Fifth Circuit. T-Mobile US, Inc. v. KAIFI LLC, Case No. 25-1006 (Fed. Cir. Aug. 28, 2026) (Taranto, Schall, Chen, JJ.)

KAIFI sued T-Mobile in the US District Court for the Eastern District of Texas, alleging infringement of a patent directed to Wi-Fi calling technology. T-Mobile subsequently requested ex parte reexamination (EPR) of the patent. While the EPR remained pending, the parties settled the infringement action.

Under the settlement agreement, T-Mobile received a license to the patent, made an initial payment, and agreed to make an additional contingent payment if any “Asserted Claim survives the EPR.” The agreement defined the asserted claims as the patent claims KAIFI had accused T-Mobile of infringing and included a covenant by T-Mobile not to challenge the validity or enforceability of the licensed patents. Texas law governed the agreement.

The United States Patent & Trademark Office (USPTO) later issued a Reexamination Certificate confirming the patentability of multiple asserted claims without amendment. T-Mobile nevertheless declined to make the contingent payment and filed a declaratory judgment action. T-Mobile argued that a claim “survived” reexamination only if it retained sufficient scope to support KAIFI’s previously asserted infringement theory. T-Mobile also asserted frustration of purpose and lack of mutual assent. KAIFI counterclaimed for breach of contract.

The district court granted summary judgment for KAIFI, concluding that the settlement agreement was unambiguous and that an asserted claim “survives” an EPR if the USPTO confirms the claim as patentable in the Reexamination Certificate. The court ordered T-Mobile to make the additional payment under the agreement. T-Mobile appealed to the Federal Circuit.

The Federal Circuit independently considered its jurisdiction under 28 USC § 1295(a)(1). Because KAIFI’s breach of contract claim arose under state law, Federal Circuit jurisdiction depended on whether the claim fell within the “special and small category” of state-law claims satisfying the Supreme Court’s four-part test of Gunn v. Minton (2013). That test assesses whether a federal issue is:

Necessarily raised;
Actually disputed;
Substantial; and
Capable of resolution in federal court without disrupting the federal-state balance.

The Federal Circuit concluded that the first Gunn requirement was not satisfied because KAIFI could prevail on its contract claim without resolving any patent-law issue. One permissible interpretation of “survives the EPR” was its ordinary meaning, which is that an asserted claim survives when the USPTO confirms its patentability rather than cancels it. That interpretation required only consideration of the agreement and the Reexamination Certificate, not resolution of claim construction, prosecution disclaimer, inequitable conduct, or another issue of substantive patent law.

The Federal Circuit rejected T-Mobile’s argument that determining whether the claims “survived” necessarily required analyzing whether KAIFI altered the scope of the claims through positions taken during reexamination. The Court explained that T-Mobile’s theory was [...]

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No venue, no problem: Improper venue doesn’t bar district court from deciding validity challenge

by Vincent Li, PhD | Sep 10, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court’s dismissal on both improper venue and patent eligibility grounds, finding no abuse of discretion in the district court’s decision to decide a Rule 12 (b)(6) patent eligibility challenge after first determining that venue was improper. AML IP, LLC v. Bath & Body Works Direct, et al., Case No. 2025-1280 (Fed. Cir. Aug. 28, 2026) (Prost, Bryson, Reyna, JJ.)

AML IP sued Bath & Body Works Direct in the US District Court for the Eastern District of Texas, alleging infringement of a patent directed to e-commerce methods. The defendants moved to dismiss under Federal Rule of Civil Procedure 12(b)(3) for improper venue and Rule 12(b)(6) for failure to state a claim, arguing that the asserted patent claims were ineligible under 35 USC § 101. The district court first determined that AML had failed to establish proper venue under 28 USC § 1400(b), concluding that “[f]or this reason alone, the case should be dismissed.” It nevertheless proceeded to the defendants’ Rule 12(b)(6) arguments and concluded that the asserted claims were patent ineligible under § 101. AML appealed.

AML did not challenge the merits of either ruling. Instead, it argued that once the district court determined that venue was improper, it should have stopped and dismissed the case solely on that basis rather than addressing patent eligibility.

Because AML’s challenge concerned the district court’s docket-management authority (an issue not unique to patent law), the Federal Circuit applied Fifth Circuit law and reviewed the district court’s decision for abuse of discretion. The Federal Circuit emphasized that AML did not contend that the district court lacked authority to decide the Rule 12(b)(6) motions after finding venue improper. Rather, AML argued only that the district court should have declined to do so.

The Federal Circuit rejected AML’s reliance on cases stating that venue motions should receive “top priority.” Those cases, the Court explained, generally require a district court to address venue before proceeding to substantive matters, but they do not necessarily restrict what a district court may do after determining that venue is improper. The district court here complied with that principle by resolving venue first and even staying the litigation while the dismissal motions were pending.

The Federal Circuit also noted that the “top priority” principle is intended primarily to protect a party challenging venue from being forced to litigate substantive issues in an objectionable forum. Here however, it was AML – the plaintiff that had selected the Eastern District of Texas – that sought to invoke the priority principle, rather than the defendants that had challenged venue.

AML separately relied on district court decisions in which courts resolved venue motions without deciding pending merits motions. The Federal Circuit found those decisions distinguishable. They reflected the “common-sense principle” that district courts ordinarily should decide venue first when transfer may be appropriate so that the transferee court can resolve substantive issues. No transfer was at issue here. The district court dismissed for improper [...]

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Shared function sufficient for a proper Markush group

by Anisa Noorassa | Sep 10, 2026 | Patents

In a recently designated informative decision, the Patent Trial & Appeal Board reversed an examiner’s rejection of claims reciting structurally distinct microRNAs (miRNAs) as an improper Markush group. The Board found the claimed alternatives sufficiently related because they performed similar functions in the context of the invention. Ex parte Chowdhury, Appeal No. 2025-002261 (PTAB Feb. 5, 2026) (Flax, Katz, Hardman, A.P.JJ.) (designated informative Aug. 25, 2026).

The patent application at issue concerns methods for assessing and treating radiation-induced damage using levels of particular miRNAs in a patient’s serum. The claims recited groups of different miRNAs whose measured levels could be used to assess radiation damage and inform treatment decisions.

The examiner rejected the claims as containing improper Markush groupings. The examiner found that the recited miRNAs did not share substantial structural similarity because each had a different nucleotide sequence. Their only structural similarity was that each comprised nucleotides. The examiner also found that the miRNAs did not belong to a recognized chemical class that would have been expected to behave similarly or to be interchangeable for achieving the same result.

The Board reversed. It explained that a proper Markush group generally requires the listed alternatives to belong to a recognized physical or chemical class or to be sufficiently related by a common property or function. In assessing that requirement, however, the relevant inquiry is whether the alternatives are interchangeable for the purposes of the claimed invention.

The Board found that the claimed miRNAs satisfied that standard. Although the individual miRNAs were structurally different and did not necessarily perform the same biological function, the claims did not depend on those biological functions. Instead, each miRNA served the same claimed purpose: its serum level could be quantified and used as an indicator relevant to radiation-induced damage and treatment.

As the Board explained, the listed miRNAs did not need to function biologically in the same manner or produce the same biological result. They needed only to be quantifiable and interchangeable as markers for the purposes of the claimed method. Because the specification described the recited miRNAs as performing that common function, the Board found that they constituted a proper Markush grouping.

Result-oriented claims fail to pass § 101 muster; industry standards may prove individual claim limitations

by Courtney Seams | Sep 10, 2026 | Patents

The US Court of Appeals for the Federal Circuit concluded that claims broadly directed to optimizing signal constellations for a particular result were patent ineligible, but upheld claims directed to specific constellations. The Court also confirmed that industry standards may be used on a limitation-by-limitation basis to prove infringement. Constellation Designs LLC v. LG Electronics Inc., et al., Case No. 24-1822 (Fed. Cir. Aug. 31, 2026) (Stoll, Lourie, JJ.; Oetken, District J., sitting by designation).

Constellation Designs sued LG for infringement of four patents directed to digital communication systems using signal constellations to transmit and decode data. Constellation accused LG televisions compatible with the ATSC 3.0 over-the-air television broadcast standard, specifically its A/322 protocol. The asserted claims fell into two groups: claims reciting geometrically spaced symbol constellations optimized for capacity using parallel decode (PD) capacity (optimization claims) and claims reciting specific non-uniform constellations (constellation claims).

The district court granted Constellation summary judgment that all asserted claims were patent eligible under 35 USC § 101. Following trial, a jury found that LG willfully infringed the asserted claims and awarded Constellation about $1.68 million in damages. The district court denied LG’s post-trial motions challenging infringement and damages, and entered an ongoing royalty of $6.75 per television. LG appealed.

Addressing patent eligibility, the Federal Circuit distinguished between the optimization claims and the constellation claims. At step one of the Alice framework, the Court concluded that the optimization claims were directed to the abstract idea of optimizing a constellation for PD capacity. The claims recited a desired result (improved capacity at a reduced signal-to-noise ratio) but did not recite how to achieve that result. The Court analogized the claims to the result-oriented claims found ineligible in other cases, explaining that the claims broadly covered essentially all ways of optimizing a constellation for PD capacity.

Although the specification described techniques for performing the optimization, the claims did not recite those details. The Federal Circuit explained that the § 101 inquiry focuses on the claim language and that technical details disclosed only in the specification cannot be imported into the claims to establish eligibility. At Alice step two, the Court found no inventive concept because Constellation’s alleged inventive concept (optimizing non-uniform constellations based on PD capacity) was the abstract idea itself. The Court therefore vacated the district court’s summary judgment of eligibility as to the optimization claims.

The Federal Circuit reached a different conclusion as to the constellation claims. Those claims did not broadly claim optimization but instead recited specific constellations developed using techniques described in the patents. The Court found that this distinction “makes all the difference” because the constellation claims recited a concrete implementation of a technological improvement directed to overcoming limitations in constellation capacity. The Court therefore affirmed the district court’s finding that those claims were patent eligible.

The Federal Circuit also affirmed the denial of LG’s motion for judgment as a matter of law of noninfringement. At trial, Constellation relied on the ATSC 3.0/A/322 standard to establish that the accused device met [...]

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Data Processing Software Checks Out as Patent Eligible

by Jodi Benassi | Jan 3, 2020 | Patents

PATENTS / SUBJECT MATTER ELIGIBILITY / ABSTRACT IDEA

Addressing an issue of software subject matter eligibility, the US Court of Appeals for the Federal Circuit reversed the district court’s judgment on the pleadings under 35 USC § 101, finding claims related to error checking patent eligible. Koninklijke KPN N.V. v. Gemalto M2M GMBH et al., Case Nos. 18-1862, -1864, -1865 (Fed. Cir. Nov. 15, 2019) (Chen, J).
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