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Exploring the latest in intellectual property law
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Invalidity alone does not render a case exceptional

by | May 28, 2026 |

Addressing fee shifting under 35 U.S.C. § 285 and sanctions under 28 U.S.C. § 1927, the US Court of Appeals for the Federal Circuit affirmed in part and reversed in part a judgment dismissing a patent infringement complaint and awarding attorneys’ fees and costs, finding that the weakness of the plaintiff’s position, without more, did not justify a finding of exceptionality, and that counsel’s lack of diligence did not rise to the bad-faith conduct required for sanctions. mCom IP, LLC v. City National Bank of Florida, Case No. 24-2089 (Fed. Cir. May 15, 2026) (Dyk, Mayer, Taranto, JJ.)

mCom IP sued City National Bank of Florida in September 2023, asserting a patent directed to systems and methods for integrating financial institutions’ “e-banking touch points,” such as ATMs and online banking portals. Earlier that year, an inter partes review (IPR) initiated by Unified Patents resulted in all but four claims being found unpatentable as obvious under 35 U.S.C. § 103. mCom’s district court complaint asserted those four surviving claims.

The district court struck mCom’s initial complaint as a “shotgun pleading” and dismissed the amended complaint with prejudice for failure to state a claim. It also concluded that the asserted claims were invalid on the same obviousness grounds addressed in the IPR and awarded attorneys’ fees under § 285, finding the case exceptional, and imposed sanctions under § 1927 based on counsel’s litigation conduct. mCom appealed.

The Federal Circuit affirmed the dismissal but reversed the fee award and sanctions. The Court addressed two issues: whether the case was “exceptional” under § 285 and whether counsel had unreasonably and vexatiously multiplied the proceedings under § 1927.

Under § 285, a case is exceptional if it “stands out” based on the substantive strength of a party’s position or the unreasonable manner of litigation. The Federal Circuit rejected each basis relied on by the district court.

First, although the asserted claims were ultimately found invalid, the Federal Circuit emphasized that invalidity alone does not render a case exceptional. Rather, awarding fees requires a showing that the claims were “unusually or extraordinarily weak.” That standard was not met here where the asserted claims survived IPR and carried a presumption of validity, and where the burden of proof for invalidity in district court remains higher than in IPR.

Second, the Federal Circuit found that pleading deficiencies did not support exceptionality. The initial complaint’s defects were “purely formal,” and the amended complaint’s failure to state a claim, without more, did not render the overall litigation conduct unreasonable.

Third, the Federal Circuit rejected reliance on City National’s purported license defense, noting that no license had been established on the record.

Finally, the Federal Circuit found insufficient support for the contention that mCom pursued nuisance-value settlements, explaining that City National failed to provide evidence regarding settlement amounts or to tie prior litigation to the patent at issue.

The Federal Circuit also reversed the sanctions imposed under § 1927. Applying Eleventh Circuit law, the Federal Circuit explained that sanctions require conduct [...]

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Appellate deference: Reinforcing limits on reweighing evidence

by | May 21, 2026 |

Clarifying the proper scope of appellate review, the US Court of Appeals for the Federal Circuit affirmed an International Trade Commission final determination in full. The Court upheld the scope of the exclusion of only certain accused products and permitted importation of redesigned versions, concluding that the Commission correctly viewed the evidence and claim terms. Bissell, Inc. v. ITC, Case No. 24-1509 (Fed. Cir. May 11, 2026) (Moore, Taranto, Stoll, JJ.)

Bissell initiated a Section 337 investigation alleging that Tineco Intelligent imported wet/dry surface-cleaning devices that infringed Bissell’s patents. Following an evidentiary hearing, the administrative law judge (ALJ) found infringement of Tineco’s original products and recommended exclusion but concluded that Tineco’s redesigned products did not infringe and therefore fell outside the scope of relief.

The Commission affirmed the ALJ’s determination, which resulted in a limited exclusion order directed to the infringing products only. Both parties appealed.

Bissell challenged the finding that Tineco’s redesigned products did not literally infringe a limitation requiring that “the battery charging circuit is disabled” during the “self-cleaning mode . . . and remains disabled during the . . . cleanout cycle.” Tineco modified its products so that some battery charging did occur during a “self-cleaning mode,” but battery charging was disabled for most of the cleaning cycle. Before the ALJ, Bissell’s expert opined that infringement of this claim essentially only required a period in which self-cleaning occurred and while the battery charger was disabled. The ALJ rejected Bissell’s theory, determining that the claim required the battery charger to “remain[] disabled during the . . . cleanout cycle.”

According to Bissell, the ALJ’s conclusion amounted to improper claim construction. The Federal Circuit disagreed, finding that the ALJ had merely applied the plain and ordinary meaning of the claim term. As Bissell had not disputed that the ALJ’s findings were supported by substantial evidence, the Federal Circuit affirmed these findings.

Tineco cross-appealed the ALJ’s determination that Bissell’s domestic industry products satisfied the disabled battery limitation. According to Tineco, the evidence was inadequate to support the ALJ’s determination because the source code that Bissell’s expert relied on was never produced during the Commission trial.

The Federal Circuit found that Bissell’s expert testimony was sufficient under Federal Rule of Evidence 703, which permits experts to rely on facts or data they have been made aware of or personally observed, even if those materials are not themselves admissible, as long as they are of a type reasonably relied upon in the field. The Court emphasized that neither party disputed that experts in this context routinely rely on source code to assess infringement. The Court further concluded that substantial evidence supported the ALJ’s determination, highlighting that:

  • The source code had been produced during discovery.
  • The expert’s opinions were not conclusory.
  • Tineco did not meaningfully test the testimony through cross-examination or offer competing expert analysis.
  • The ALJ’s findings were independently corroborated by a Bissell internal document admitted at trial.

Practice note: Where the Commission uses the “face of the claim to [...]

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Shocking: Fifth Circuit affirms disgorgement award based on willful infringement

by | May 21, 2026 |

The US Court of Appeals for the Fifth Circuit affirmed a finding of trademark infringement and unfair competition under the Lanham Act and Texas law, upholding an award of profits based on willful infringement. The Court vacated and remanded the permanent injunction as overbroad, however. Trojan Battery Co., L.L.C. v. Golf Carts of Cypress, L.L.C., Case No. 25-20243 (5th Cir. May 8, 2026) (Jones, Barksdale, Stewart, JJ.)

Trojan Battery has sold deep-cycle batteries, including batteries commonly used in golf carts, under the TROJAN mark for decades. It owns multiple federal registrations covering the Trojan name and related marks, including TROJAN for use on electric storage batteries; TROJAN BATTERY SALES for use in connection with retail and wholesale store services and wholesale distributorships; and the following graphic mark for use on electric storage batteries, deep-cycle electric storage batteries, and lithium-ion batteries:trojan-battery-company-logo

Golf Carts of Cypress (GCC) and Trojan EV (collectively, defendants), both owned by Federico Nell, entered the golf cart market between 2019 and 2020. Trojan EV marketed carts under the “Trojan-EV” name, and GCC sold those carts (bearing the below logo mark) alongside carts containing authentic TROJAN batteries.

Trojan Battery sued for trademark infringement and unfair competition. Following a five-day bench trial, the district court found liability, awarded disgorgement of defendants’ profits, and entered a permanent injunction. Defendants appealed.

Defendants challenged the district court’s likelihood-of-confusion analysis. The Fifth Circuit rejected that challenge, emphasizing that the district court did not clearly err in concluding that confusion was likely under the Fifth Circuit’s multifactor test. The Fifth Circuit acknowledged that the district court overstated the evidence of actual confusion. A single misdirected inquiry and several additional instances over more than two years were insufficient, standing alone, to show meaningful marketplace confusion. Nonetheless, the absence of convincing evidence on that factor was not dispositive.

Critically, the Fifth Circuit upheld the district court’s finding of intent. The trial court discredited Nell’s testimony that he was unaware of Trojan Battery’s marks and reasonably inferred that defendants adopted TROJAN-EV to capitalize on the senior mark’s goodwill. That finding weighed heavily in favor of confusion and supported the ultimate liability determination. Considering the record as a whole, the Court concluded that most factors favored Trojan Battery and affirmed the infringement finding.

The Fifth Circuit also affirmed the award of defendants’ profits. Applying the Lanham Act’s equitable framework, the Court found no abuse of discretion in awarding disgorgement as a deterrent against willful infringement. The Fifth Circuit endorsed the district court’s use of the Lanham Act’s burden-shifting approach to calculate profits, under which the plaintiff establishes gross sales and the defendant bears the burden of proving deductible expenses. Given the finding of willful infringement, the Court agreed that disgorgement was an appropriate remedy, particularly where injunctive relief alone might not deter future misconduct.

The Fifth Circuit reached a different conclusion as to the permanent injunction. Although injunctive relief [...]

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

by | Mar 26, 2026 |

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

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

Patent eligibility: Abstract at Alice step one

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

Willfulness: Affirmed by substantial evidence

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

No domestic infringement for foreign-made software copies

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

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Separately recited structures must be separately present in accused device

by | Mar 19, 2026 |

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

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

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

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

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

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

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

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

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

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

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Baseball was very good to Roberto: Lanham Act permits claims against government officials in personal capacity

by | Jan 29, 2026 |

In a decision addressing the intersection of trademark law, sovereign immunity, and constitutional takings, the US Court of Appeals for the First Circuit partially revived Lanham Act claims brought by the heirs of baseball legend Roberto Clemente against senior officials of the Commonwealth of Puerto Rico. While affirming dismissal of claims against the Commonwealth itself and related public entities, the Court concluded that certain Lanham Act claims against individual government officials in their personal capacities were plausibly alleged and not barred by qualified immunity at the pleading stage. Clemente Props., Inc. v. Pierluisi-Urrutia, Case No. 23-1922, 2026 WL 125574 (1st Cir. Jan. 16, 2026) (Barron, Lipez, Thompson, JJ.)

The plaintiffs, Clemente’s sons and affiliated entities, alleged that Commonwealth officials improperly used Clemente’s name and likeness on commemorative license plates and registration tags without authorization. Proceeds from the program were directed toward a public initiative intended to replace an earlier Clemente-founded project. Plaintiffs claimed trademark infringement, false endorsement, false advertising, and dilution under the Lanham Act, as well as a taking in violation of the Fifth and Fourteenth Amendments. Defendants moved to dismiss on immunity grounds and for failure to state a claim. The district court granted the motions in full. Plaintiffs appealed.

The First Circuit reversed in part. The Court rejected the district court’s conclusion that the use of Clemente’s name and image was not “in connection with” goods or services under the Lanham Act. The Court explained that commemorative license plates and tags qualify as goods, and the fact that they were issued by a government entity did not remove them from the statute’s commercial scope. The Court also pointed to the United States Patent and Trademark Office’s Trademark ID Manual, which expressly recognizes license plates as registrable goods, and found no persuasive basis for excluding fundraising activities supporting the Roberto Clemente Sports District Fund from trademark scrutiny.

The First Circuit further concluded that plaintiffs adequately alleged commercial injury within the Lanham Act’s zone of interests and plausibly pleaded likelihood of confusion, including the mistaken impression that the Clemente family endorsed or financially benefited from the initiative. Accordingly, dismissal of Lanham Act claims under Section 32 (trademark infringement), Section 43(a) (false endorsement), and Section 43(c) (dilution) was improper with regard to officials sued in their personal capacities.

Sovereign immunity remained a shield for the Commonwealth, the Convention Center District Authority, and officials sued in their official capacities. However, the First Circuit concluded that qualified immunity did not bar the personal-capacity Lanham Act claims at the pleading stage and thus vacated dismissal and remanded for further proceedings.

The First Circuit affirmed dismissal of the false advertising claim, determining that plaintiffs failed to allege that defendants’ statements constituted commercial advertising or promotion as required under Section 43(a)(1)(B). The Court also affirmed dismissal of the Takings Clause claim, concluding that alleged infringements of intangible intellectual property do not support a categorical physical-taking theory and cannot be analyzed using frameworks applicable to physical occupation or appropriation.

Finally, the First Circuit deemed waived any [...]

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Ain’t worried about local rules: Scope of sound recording protection is narrow

by | Oct 30, 2025 |

Addressing for the first time what evidence is required to prove infringement of a sound recording copyright, the US Court of Appeals for the Seventh Circuit affirmed a district court’s decision to grant summary judgment to the defendant, finding that the plaintiff’s copyright registration of his work as a sound recording required proof of actual sampling to establish infringement. Richardson v. Kharbouch, Case No. 24-1119 (7th Cir. Oct. 16, 2025) (Brennan, Jackson-Akiwumi, Pryor, JJ.)

In 2012, then-16-year-old Eddie Richardson created a hip-hop beat titled “*Hood* Pushin Weight” (HPW). Months later, while listening to the hit song “Ain’t Worried About Nothin” (AWAN) by Karim Kharbouch, who is better known by his stage name French Montana, Richardson believed that he recognized his own HPW beat. The next day, Richardson registered a sound recording copyright with the US Copyright Office. Richardson did not obtain a copyright registration for his musical composition. After Richardson’s attempts to negotiate with French Montana and his representatives failed, Richardson filed a copyright infringement lawsuit.

The district court conducted two rounds of summary judgment briefing. In both rounds, neither party complied with a local rule that required each side to respond to the opposing party’s statement of material facts. The court, in its discretion, declined to deem the unopposed facts admitted. After French Montana’s reply brief in the first round included a “passing comment” on the nature of Richardson’s copyright, raising a potentially dispositive issue, the district court ordered supplemental briefing.

In the second round of briefing, the district court determined that because Richardson had registered his copyright as a sound recording rather than a musical composition, he was required to show duplication or sampling, not mere imitation. Finding no such evidence, the court granted summary judgment in favor of French Montana. The district court then awarded costs to French Montana but denied attorneys’ fees. Richardson appealed the grant of summary judgment and the court’s decision not to enforce the local rules against French Montana while French Montana cross-appealed the denial of attorneys’ fees.

Richardson argued that the district court abused its discretion by failing to deem his unopposed factual statements admitted under the local rules. The Seventh Circuit found no abuse of discretion by the district court, reasoning that because neither party complied with the local rules, the district court acted appropriately in declining to enforce them against only one side.

The Seventh Circuit also affirmed the district court’s grant of summary judgment in favor of French Montana, explaining that “sound recording copyrights only protect those sounds that directly or indirectly recapture the actual sounds fixed in the recording from infringement.” Mere imitation, even if indistinguishable to the listener, is not infringement, and Richardson failed to present evidence of actual duplication of the sound recording.

Finally, the Seventh Circuit affirmed the district court’s denial of attorneys’ fees to French Montana. Although there is a “strong presumption in favor of awarding fees in copyright infringement cases,” the Seventh Circuit held that the district court properly applied the four-factor Fogerty [...]

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DMCA safe harbor: Prelude to a Supreme Court encore?

by | Sep 18, 2025 |

The US Court of Appeals for the Second Circuit granted in part and denied in part Capitol Records’ petition for reconsideration of the Court’s January 13, 2025, decision in Capitol Records v. Vimeo. In that ruling, the Court determined that Capitol Records had waived the argument that Vimeo’s encouragement of users to make infringing lip-dub videos may constitute a form of right and ability to control infringement – an apparent forfeiture of the safe harbor provided by the Digital Millennium Copyright Act (DMCA). In its reconsideration decision, the Court removed a footnote regarding whether the “right and ability to control” argument was preserved for Supreme Court review. Capitol Records, LLC, et al. v. Vimeo, Inc., et al., Case Nos. 21-2949; -2974 (2d Cir. Sept. 9, 2025) (Leval, Parker, Merriam JJ.)

Capitol Records filed a petition for reconsideration of the Second Circuit’s decision, which found that Capitol had waived its argument under Metro-Goldwyn-Mayer Studios v. Grokster. A central issue was application of the Grokster precedent, which addressed inducement of copyright infringement. Capitol Records argued that Vimeo’s encouragement of users to create infringing lip-dub videos constituted a “right and ability to control” infringement, potentially forfeiting the DMCA safe harbor protection.

In its earlier ruling, the Second Circuit found that Capitol Records had waived this argument by not adequately presenting it in the appellate brief, despite having discussed it in the fact section. The Court emphasized that the argument was not developed in the argument section of the brief and, in a footnote, noted that Capitol Records had acknowledged that the argument was foreclosed by a prior ruling. Capitol Records argued that its waiver was not of the Grokster-based theory of forfeiture of the safe harbor, but rather of a claim under Grokster for induced infringement. The Court was not persuaded, noting that Capitol Records’ opening brief made no distinction between a Grokster-based inducement claim and a Grokster-based theory for forfeiting DMCA safe harbor protection. As a result, the Court rejected Capitol Records’ argument that the Grokster-based theory had not been waived.

In its most recent ruling, the Second Circuit granted Capitol’s petition to remove language from a footnote in the Court’s prior ruling that suggested Capitol’s Grokster inducement theory, based on the “right and ability to control,” was barred from Supreme Court review.

Practice note: The Second Circuit’s decision to partially grant and deny the petition for reconsideration clarifies the procedural requirements for preserving arguments on appeal and reinforces the complexities of applying traditional copyright principles to digital platforms. As the case progresses, stakeholders in the music and technology industries should monitor developments and implications for the DMCA and copyright enforcement.



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Penny for your characters? Victorian tropes not so striking or protectable

by | Sep 18, 2025 |

The US Court of Appeals for the Ninth Circuit affirmed a district court’s dismissal of a copyright infringement claim finding that the plaintiff had not plausibly alleged copying of protected characters. Anna Biani v. Showtime Networks, Inc. et al., Case No. 24-3949 (9th Cir. Sept. 8, 2025) (Nguyen, Mendoza, Kernodle, JJ.)

Biani sued Showtime alleging that the series “Penny Dreadful” infringed on three original characters she created for an online role-playing forum. Biani claimed that Showtime incorporated various aspects of her characters into two of the show’s characters and alleged that the defendants had access to her work because of the similarities between the characters. The district court dismissed the complaint, finding that Biani failed to plausibly allege that Showtime had a reasonable opportunity to copy her work. The district court applied the extrinsic test for protectable material under copyright, filtering out characteristics considered to be stock aspects of the Victorian-era England genre, and found that any remaining similarities were not striking enough to preclude the possibility of independent creation. Biani was granted leave to amend but chose not to, leading to the dismissal of the case with prejudice. Biani appealed.

The Ninth Circuit affirmed the dismissal of Biani’s complaint for failure to state a claim. The Court explained that to state a claim for copyright infringement, a plaintiff must plausibly allege both ownership of a valid copyright and that the defendant copied protected aspects of the work, which includes factual copying and unlawful appropriation. Biani did not challenge the district court’s determination that she failed to plausibly allege evidence of access. Instead she argued that the similarities between the works were so striking as to preclude independent creation. While the panel concluded that the district court improperly filtered out unprotectable elements of the works, it found this error was harmless because Biani’s allegations were insufficient to plausibly infer copying. The Court found that any resemblance between the characters was not extensive enough to preclude the possibility of coincidence, independent creation, or prior common source.

The Ninth Circuit also held that Biani’s claim failed under the “unlawful appropriation” analysis, agreeing with the district court that Biani failed to allege substantial similarity in protectable expression. The Court applied the extrinsic test to assesses the objective similarities of the two works, focusing only on the protectable elements of the plaintiff’s expression. The Court found that many of the characteristics that Biani alleged were unique to her characters (such as their age, strength, beauty, and engagement in witchcraft) were actually unprotectable elements, common in the public domain, and a standard aspect of Victorian-era-based fiction. The Court thus concluded that Biani failed to allege substantial similarity in protectable expression and thus affirmed the district court’s dismissal.



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Identical or not? Jury can’t decide issues of claim construction

by | Aug 21, 2025 |

The US Court of Appeals for the Federal Circuit reversed a district court’s denial of a motion for judgment as a matter of law (JMOL) of noninfringement, finding that the jury’s infringement findings were unsupported by sufficient evidence and that the district court had improperly delegated claim construction to the jury. Laboratory Corp. of America Holdings v. Qiagen Sciences, LLC, Case No. 23-2350 (Fed. Cir. Aug. 13, 2025) (Lourie, Dyk, Cunningham, JJ.)

Laboratory Corp. of America Holdings (LabCorp) holds two patents with substantially overlapping specifications, both generally directed to methods for preparing DNA samples for sequencing and enrichment techniques aimed at enabling whole-genome sequencing. LabCorp initiated litigation alleging that various Qiagen Sciences kits containing materials used in DNA sample preparation for sequencing infringed its patents. During claim construction, the district court construed several patent terms as follows:

  • In the first patent, “second target-specific primer” means a single-stranded oligonucleotide with a 3’ portion that specifically anneals to a portion of the known target nucleotide sequence in the amplicon from step (b), and a 5’ portion identical to a second sequencing primer.
  • Also in the first patent, “second adaptor primer” refers to a nucleic acid molecule containing a sequence identical to part of the first sequencing primer and nested relative to the first adaptor primer.
  • In the second patent, “target-specific primer” is defined as a primer sufficiently complementary to the target to enable selective annealing and amplification, without amplifying non-target sequences in the sample.

The jury found that Qiagen infringed the first patent under the doctrine of equivalents and willfully and literally infringed the second patent. The jury awarded damages accordingly. The district court denied Qiagen’s renewed motion for JMOL to reverse the damages and the jury’s findings of infringement and validity, and its alternative request for a new trial. Qiagen appealed.

Qiagen raised two noninfringement arguments regarding the first patent, and the Federal Circuit agreed with both. First, the Court held that it was error to allow the jury to apply “plain meaning” and equate a sequence being “identical to another” with being “identical to a portion” of another. Specifically, Qiagen’s accused second target-specific primer (Sample Index Primer, or SIP) was 19 nucleotides long while the second sequencing primer (Read2 primer) was 34 nucleotides. The fact that they shared an overlapping sequence did not make them identical.

Although the district court had treated “identical” as a factual issue for the jury, the Federal Circuit, citing its 2008 decision in O2 Micro Int’l Ltd. v. Beyond Innovation Tech., found that this was a claim construction matter that should not have been left to the jury. The term “identical” must be given its full meaning under claim construction and cannot be interpreted as “identical to a portion.” The Court emphasized that the specification and claims distinguished between full and partial identity: The second target-specific primer must be “identical to” the second sequencing primer while the adaptor primer need only be “identical to a portion” of the first sequencing primer. This difference [...]

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