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USPTO Director IPR institution discretion survives APA challenge

by Amol Parikh | Feb 26, 2026 | Patents

The US Court of Appeals for the Federal Circuit concluded that the United States Patent and Trademark Office’s (USPTO) framework for discretionary denials of inter partes review (IPR) is a general statement of policy, not a substantive rule, and therefore is exempt from the Administrative Procedure Act’s notice‑and‑comment requirements.

The USPTO Director issued a trio of related instructions to the Patent Trial & Appeal Board for its exercise of delegated non-institution authority, addressing the common situation where the IPR petitioner and the patent owner are already involved in a district court litigation over the patent at issue. Two of the instructions were in the form of precedential Board decisions, which set forth six exclusive factors, weighing in favor or against institution, that the Board must assess. These instructions are generally referred to as the NHK-Fintiv instructions that, as Board precedent, bind only the Board and not the USPTO Director.

Several IPR petitioners argued that the Director’s instructions to the Board effectively bind the USPTO as an agency and thus should have been promulgated through formal rulemaking.

The Federal Circuit disagreed, emphasizing that institution decisions rest ultimately with the USPTO Director. The Court explained that while the NHK-Fintiv framework provides guidance on how that discretionary authority may be exercised, the Director retains the ability to depart from the framework in any given case. To that end, the guidance does not carry the force and effect of law and does not impose legally binding obligations on the agency or the public.

Practice note: The decision reinforces the Federal Circuit’s post‑Arthrex theme that the Director enjoys broad and largely unreviewable discretion at the IPR institution stage.

Tied up: Federal Circuit affirms antitrust verdict in patent case

by Kassandra DiPietro | Feb 26, 2026 | Antitrust, Patents

The US Court of Appeals for the Federal Circuit affirmed a jury verdict finding that Ingevity engaged in unlawful tying under the Sherman Act by conditioning licenses to its patent on customers’ purchase of its unpatented products that were staple items of commerce. Ingevity Corp. v. BASF Corp., Case No. 24-1577 (Fed. Cir. Feb. 11, 2026) (Lourie, Prost, Cunningham, JJ.)

Ingevity sued BASF for patent infringement. BASF denied infringement, challenged the patent’s validity and enforceability, and asserted counterclaims for unlawful tying under federal antitrust law, alleging that Ingevity conditioned licenses to the patent on customers’ agreement to purchase Ingevity’s unpatented products. The district court granted summary judgment of invalidity and denied motions for summary judgment on BASF’s antitrust claims.

At trial, the jury found that Ingevity unlawfully tied licenses for the patent to sales of its unpatented products and awarded BASF antitrust damages. Ingevity moved for judgment as a matter of law or, alternatively, for a new trial, arguing that its conduct was protected under the Patent Act because its unpatented products were “nonstaple goods” (i.e., goods lacking substantial non-infringing uses) and that its actions were immune under the Noerr-Pennington doctrine. The district court denied those motions, and Ingevity appealed, challenging the jury’s tying liability finding, the rejection of Ingevity’s immunity defenses, and the damages award.

The Federal Circuit first addressed Ingevity’s statutory patent misuse defense under 35 U.S.C. § 271(d), which permits patentees to control nonstaple goods lacking substantial noninfringing uses. The Court concluded that substantial evidence supported the jury’s finding that Ingevity’s unpatented products were staple articles of commerce because the record showed actual and substantial noninfringing uses in air-intake systems. Business records, customer purchases, and technical evidence provided a sufficient basis for the jury to find that the products had recurring, practical noninfringing applications, defeating Ingevity’s reliance on § 271(d).

The Federal Circuit also rejected Ingevity’s immunity arguments. The Court determined that Ingevity forfeited its reframed immunity theory on appeal because it differed materially from the argument presented in the case below. In the alternative, the Court explained that conditioning patent licenses on the purchase of staple goods constitutes commercial tying conduct beyond mere patent enforcement communications and is not protected by either the Patent Act or the Noerr-Pennington doctrine. Accordingly, immunity did not shield Ingevity from antitrust liability.

The meaning is plain as day: Just follow the grammar

by Tyler Jackson | Feb 26, 2026 | Patents

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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Here’s an abstract idea: Patent eligibility depends on what is claimed, not unclaimed disclosure

by Hannah Hurley | Feb 19, 2026 | Patents

The US Court of Appeals for the Federal Circuit reversed a district court’s rejection of Netflix’s 35 U.S.C. § 101 challenge, finding that claims directed to tailoring content specifications for wireless devices were patent ineligible. GoTV Streaming, LLC v. Netflix, Inc., Case Nos. 24-1669; -1744 (Fed. Cir. Feb. 9, 2026) (Prost, Clevenger, Taranto, JJ.)

GoTV sued Netflix for direct and induced infringement of three related patents directed to server-based tailoring of content for wireless devices. The district court dismissed the induced infringement claims and rejected Netflix’s § 101 challenge. A jury found infringement of one of the asserted patents and awarded $2.5 million in damages. Netflix appealed.

The Federal Circuit reversed the district court’s indefiniteness ruling as to a key term of the representative patents and adopted GoTV’s proposed construction of that claim term: “discrete low level rendering command.” Based on its construction, the Court concluded that the asserted claims were directed to an abstract idea and lacked an inventive concept under Alice. The Court concluded that the claims merely recited the abstract idea of using a generic template tailored to a user’s device constraints and relied on conventional computer and network functions without specifying a concrete technological improvement. The Federal Circuit determined that the claims failed both steps of the Alice framework and were invalid under § 101.

Although its § 101 holding resolved the case in Netflix’s favor, the Federal Circuit vacated the district court’s summary judgment of no inducement and its denial of GoTV’s motion for a new trial on damages, explaining that GoTV had presented substantial arguments on those issues, before directing entry of final judgment for Netflix.

Practice note: The Federal Circuit noted that the ineligibility analysis depends on the claim language at issue, not whether there may be a patent eligible invention disclosed in the specification. Although the prosecution history may be intrinsic evidence for claim construction, recitation of the problems faced by the inventor and the inventive solution cannot be relied on to argue unclaimed details of the invention to render an abstract idea patent eligible.

Method steps must be done in order where there is logical dependency

by Art Dykhuis | Feb 12, 2026 | Patents

In a second appeal, the US Court of Appeals for the Federal Circuit affirmed a district court’s summary judgment of noninfringement based on an implicit ordering of steps in a method claim after disagreeing with the lower court on another basis for noninfringement. Sound View Innovations, LLC v. Hulu, LLC, Case No. 24-1092 (Fed. Cir. Jan. 29, 2026) (Chen, Prost, Wallach, JJ.)

At the district court, Sound View asserted an expired patent against Hulu’s use of a central content server connected to end users through intermediate edge servers. The asserted claim recites downloading streaming content from a buffer in a helper server to an end user while concurrently retrieving more streaming content from a content server.

The district court issued a decision in favor of Hulu, which Sound View appealed. In that first appeal, the Federal Circuit vacated and remanded the district court’s ruling, based on the district court’s negative claim construction.

On remand, the district court determined Hulu did not infringe, finding that the claimed method requires the steps of “receiving a request” and “allocating a buffer” to be performed in sequence. Since Hulu did not perform these claimed steps in order, the district court found there was no infringement. Sound View appealed.

The claim-at-issue recites:

Source: Sound View Innovations, LLC v. Hulu, LLC, Case No. 24-1092 (Fed. Cir. Jan. 29, 2026), Slip Op. at 4.

The Federal Circuit reasoned that the phrase “requested SM object” in the buffer-allocation step grammatically and logically depended on the prior step of “receiving a request,” because an object cannot be “requested” until a request has occurred. The Court explained that “‘requested’ is not only a grammatical descriptor, but also is a status indicator reflecting a completed action – the receiving of a request.”

The Federal Circuit applied precedent on implicit ordering of method steps and noted that “[o]ur caselaw on implicit ordering does not help Sound View, as it does not require a finding that the performance of the claimed steps would be inoperable if the steps are not followed in the order they appear in the claim” (emphasis added). The Court explained that the “logical” dependency between the method steps mandates that the request-receiving step precede buffer allocation. Because there was no dispute that the accused systems performed these steps in a different order, the Court affirmed summary judgment of noninfringement.

Relax, design patent claim scope doesn’t include functional elements

by Lisette Donewald | Feb 12, 2026 | Patents

Addressing the issue of functional versus ornamental features, the US Court of Appeals for the Federal Circuit affirmed the district court’s summary judgment of noninfringement, concluding that no reasonable juror could find the accused product’s design substantially similar to the patented design once functional features were properly excluded. Range of Motion Prods. v. Armaid Co., Case No. 23-2427 (Fed. Cir. Feb. 2, 2026) (Cunningham, Hughes, JJ.) (Moore, J., dissenting).

Range of Motion Products (RoM) owns a design patent titled “Body Massaging Apparatus.” RoM sued Armaid Company, alleging that its Armaid2 product infringed RoM’s patent. Armaid owns an expired utility patent (prior art to the RoM patent) titled “Limb Massager” (Armaid1) that embodies elements of the Armaid2 design. The relevant drawings from the product and patents are below.

Source: Range of Motion Prods. v. Armaid Co., Case No. 23-2427 (Fed. Cir. Feb. 2, 2026), Slip Op. at 14.

The district court granted summary judgment in Armaid’s favor, concluding that after properly filtering out functional elements, no reasonable jury could find the Armaid2 design substantially similar to the RoM’s design patent. RoM appealed.

The Federal Circuit reviewed claim construction de novo, the underlying factual findings for clear error, and the summary judgment determination de novo. Applying the ordinary observer test as articulated in Egyptian Goddess, the majority found that several prominent features of the claimed design, most notably the clam shaped arms, were functional. The Court relied on RoM’s own marketing materials, which described the arm shape as providing leverage, and the fact that Armaid’s prior utility patent had claimed similar features.

After excluding those functional elements, the Federal Circuit assessed whether an ordinary observer familiar with the prior art would be deceived into believing the accused design was the same as the patented design based solely on their ornamental aspects. Consistent with post-Egyptian Goddess precedent, the analysis proceeded in two steps: determining whether the designs were “plainly dissimilar,” and if not, comparing the designs in light of the prior art.

The majority concluded that the designs were plainly dissimilar, citing differences in arm shape and the manner in which the fixed arm connects to the hinge. The panel majority further stated that even if the designs were not plainly dissimilar, a comparison against the prior art would yield the same result. The Federal Circuit therefore affirmed summary judgment of noninfringement.

The decision is notable for Chief Judge Moore’s dissent. The dissent argued that both the district court and the majority improperly usurped the jury’s role by resolving what should have been a fact question, which is whether the designs were substantially similar in overall appearance. More broadly, the dissent criticized the Federal Circuit’s evolution of the ordinary observer test, contending that Egyptian Goddess shifted the inquiry away from the Supreme Court’s substantial similarity framework established in Gorham Co. v. White [...]

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Can’t patent idea of using asynchronous data streams during web conferencing

by Dexter Hamilton | Feb 5, 2026 | Patents

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.

Skinny label: Supreme Court to weigh inducement claims against generics

by Anisa Noorassa | Jan 29, 2026 | Cert Alert

The Supreme Court granted certiorari to review whether a generic drugmaker that fully carves out a patented use from its label can nonetheless be held liable for induced infringement based solely on marketing its product as a generic version of a branded drug and referencing public information about the branded product, without promoting the patented use.

In Amarin Pharma v. Hikma Pharmaceutical USA, Case No. 23-1169 (Fed. Cir. June 25, 2024), the US Court of Appeals for the Federal Circuit concluded that Amarin adequately pleaded induced infringement based on allegations that Hikma marketed its product as a “generic” version of Vascepa and cited publicly available information about Vascepa, even though Hikma’s label carved out the patented indication pursuant to Section viii of the Hatch-Waxman Act.

In its petition to the Supreme Court, Hikma argued that the Federal Circuit’s ruling threatened the statutory balance struck by Hatch-Waxman by exposing skinny-label generic manufacturers to inducement liability based on conduct unrelated to the carved-out use. According to Hikma, permitting inducement claims under these circumstances would effectively nullify Hatch-Waxman Section viii by allowing plaintiffs to rely on generic marketing statements that do not instruct or encourage use of the patented method.

The questions presented are:

When a generic drug label fully carves out a patented use, are allegations that the generic drugmaker calls its product a “generic version” and cites public information about the branded drug (e.g., sales) enough to plead induced infringement of the patented use?
Does a complaint state a claim for induced infringement of a patented method if it does not allege any instruction or other statement by the defendant that encourages, or even mentions, the patented use?

Expert had firm grip on Rule 702

by Jodi Benassi | Jan 29, 2026 | Patents

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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All rise: Here comes the real judge

by Jolie B. Schenerman | Jan 22, 2026 | Trademarks

The US Court of Appeals for the Federal Circuit sustained the Trademark Trial & Appeal Board’s refusal to register trademark applications (over oppositions) for two character marks and a design mark based on the Board’s finding of likelihood of confusion with the common law rights of a world-famous baseball player and major league baseball’s players association as supported by substantial evidence and consistent with trademark law. Chisena v. Major League Baseball Players Ass’n, Case No. 23-2073 (Fed. Cir. Jan. 8, 2026) (Hughes, Freeman, Lourie, JJ.) (nonprecedential).

Michael Chisena, acting pro se, sought trademark registration for two word marks, ALL RISE and HERE COMES THE JUDGE, and a design mark featuring a baseball field with a superimposed scale of justice and judge’s gavel (pictured below) (Chisena marks) for use in connection with “clothing, namely t-shirts, shirts, shorts, pants, sweatshirts, sweatpants, jackets, jerseys, athletic uniforms, and caps.”

Source: Chisena v. Major League Baseball Players Ass’n, Case No. 23-2073 (Fed. Cir. Jan. 8, 2026), Slip Op at 2.

Chisena filed intent to use applications and alleged that the constructive use priority date for the word marks was July 14, 2017, and for the design mark it was October 12, 2017. The Major League Baseball Players Association (MLBPA) and Aaron Judge, a superstar Yankees outfielder and team captain (collectively, appellees), filed Notices of Opposition against registration of the marks, which the Board consolidated into a single proceeding.

Judge is a well-known baseball player whose rise to fame prompted the commercialization of judicial slogans and insignia in connection with his baseball career. The appellees alleged that the Chisena marks would likely cause confusion with their marks, which include ALL RISE and certain judicial symbols. They argued that they had common law trademark rights that predated Chisena’s alleged priority dates. The Board found that the appellees established priority against the Chisena marks and that there was a likelihood of confusion between the marks and therefore refused to register the Chisena marks. Chisena appealed.

The Federal Circuit found that the Board’s priority decisions were supported by substantial evidence that appellees’ marks were used in commerce prior to the Chisena marks’ priority date. The Court concluded that the priority dates for the Chisena marks were the constructive use filing dates since Chisena did not use the marks in commerce until after he filed the applications. The Court further relied on licensed products bearing judicial slogans, phrases, symbols, and personal indicia related to Judge used as early as June 2017 in holding that appellees’ common law trademark rights predated the Chisena marks’ priority dates.

Chisena argued that appellees did not adequately identify the specific marks at issue in their Notices of Opposition. The Federal Circuit agreed with the Board that the notices provided fair notice because they adequately claimed ownership of the marks that served as the basis for the opposition and the basis for appellees’ priority claims.

Chisena argued that the [...]

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