IP UPDATE

Lost in the constellation: Result-oriented claims miss the mark under § 101

by Keval Amin | May 7, 2026 | Patents

Addressing issues related to patent eligibility, infringement, and damages, the US Court of Appeals for the Federal Circuit vacated in part, affirmed in part, and remanded, finding that certain result-oriented claims were directed to an abstract idea, lacked an inventive concept, and were therefore not patent eligible. Constellation Designs, LLC v. LG Electronics Inc., et al., Case No. 24-1822 (Fed. Cir. Apr. 28, 2026) (Lourie, Stoll, Oetken, JJ.)

Constellation sued LG for infringing its patents directed to communication systems employing non-uniform constellations, which are signal configurations designed to improve data transmission capacity compared to conventional uniform constellations. The accused products were LG televisions compliant with the ATSC 3.0 broadcast standard.

Constellation successfully moved for summary judgment in its favor on patent eligibility under 35 U.S.C. § 101. At trial, Constellation asserted nine claims across four patents, which the parties grouped into two categories: “optimization claims,” which recited constellations optimized for capacity, and “constellation claims,” which recited specific non-uniform constellation configurations. A jury found willful infringement and awarded damages. The district court denied LG’s motions for judgment as a matter of law (JMOL) of noninfringement and no damages. LG appealed.

On the patent eligibility issue, the Federal Circuit applied the two-step Alice framework and vacated the district court’s ruling as to the optimization claims. At step one, the Court found those claims directed to the abstract idea of optimizing a constellation for parallel decoding capacity. The Court emphasized that the claims were written in a result-oriented manner, reciting a constellation “optimized” for capacity without specifying how that optimization was achieved. Although the claims did not cover every possible optimization technique, they were broad enough to encompass all ways of optimizing a constellation for parallel decoding capacity. The Court rejected Constellation’s reliance on technical details in the specification and reiterated that the § 101 inquiry focuses on the claim language, not unclaimed implementation details. At step two, the Court found no inventive concept, explaining that Constellation’s alleged innovation was the abstract idea itself and that arguments based on novelty or nonobviousness do not satisfy § 101.

In contrast, the Federal Circuit affirmed the district court’s eligibility determination for the constellation claims. The Court explained that representative claims recited specific, concrete configurations (such as unequally spaced constellation points, distinct labeling, and overlapping point locations) amounting to a particular technological solution to a defined problem. Because those claims were not directed to an abstract idea, the Court did not proceed to step two.

On infringement, the Federal Circuit affirmed the denial of JMOL. The Court clarified that a patentee may rely on industry standard compliance to prove some claim limitations while using product-specific evidence for others, as long as the standard is sufficiently specific and either mandatory or shown to be implemented in the accused products. Applying that framework, the Court found that substantial evidence supported the jury’s verdict.

As for damages, the Federal Circuit affirmed the denial of LG’s JMOL motion and its challenge to the admissibility of Constellation’s damages expert. The Court [...]

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Missed delivery: Institution decision statutorily unreviewable

by Tyler Jackson | May 7, 2026 | America Invents Act, Patents

Addressing the scope of appellate review under the America Invents Act, the US Court of Appeals for the Federal Circuit determined that challenges grounded in 35 U.S.C. § 312(a)(2)’s real-party-in-interest requirement are unreviewable where they are closely tied to the Patent Trial & Appeal Board’s institution decision. Fed. Express Corp. v. Qualcomm Inc., Case No. 24-1236 (Fed. Cir. Apr. 29, 2026) (Hughes, Cunningham, Stark, JJ.)

FedEx owns a patent related to sensor-based logistics systems that provide shipment information and allow customized access controls. After FedEx sued Roambee for infringement in district court, Qualcomm (although not a party to that litigation) filed inter partes review (IPR) petitions challenging the FedEx patent. Qualcomm identified the Roambee litigation as a related matter but did not list Roambee as a real party in interest.

FedEx opposed institution, arguing that Qualcomm’s failure to identify all real parties in interest violated § 312(a)(2), which requires that a petition identify all such parties before it may be considered. The Board instituted review and later denied FedEx’s motion to terminate, explaining that it would not decide the real-party-in-interest issue because doing so was unnecessary to resolve the proceeding absent a time-bar or estoppel concern. In its final written decision, the Board declined to revisit the issue and held the challenged claims unpatentable as obvious. FedEx appealed.

On appeal, the Federal Circuit declined to review FedEx’s real-party-in-interest challenges. Relying on Supreme Court precedent and its own case law, the Federal Circuit explained that § 312(a)(2) is a statutory prerequisite “closely tied” to institution because a petition may be considered only if it identifies all real parties in interest. Thus, challenges asserting that the Board failed to properly apply § 312(a)(2) necessarily attack the institution decision itself and fall within § 314(d)’s bar on appellate review.

The Federal Circuit rejected FedEx’s attempt to reframe its arguments as a challenge to the Board’s post-institution conduct, including the denial of FedEx’s motion to terminate. The Court explained that even when raised later in the proceeding, such arguments “boil down” to whether the Board should have instituted IPR in the first place. Because § 312(a)(2) operates as a prerequisite to institution, those challenges remain unreviewable.

Turning to the merits, the Federal Circuit vacated the Board’s obviousness determination as to several claims. The Board had found those claims obvious based on a combination of prior art because it believed FedEx had not contested that ground. Both parties agreed on appeal that this premise was incorrect: FedEx had in fact disputed the combination. Because the Board’s analysis rested on a mistaken understanding of the record and failed to address FedEx’s arguments or fully evaluate the prior art, the Court concluded that meaningful appellate review was not possible and vacated the Board’s obviousness determination.

The Federal Circuit declined FedEx’s request for outright reversal of the Board. The Court explained that reversal is appropriate only where the record supports a single outcome, but here unresolved factual issues remained, including whether the prior art satisfied the relevant claim [...]

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Expert rule: There are reviewable non-final agency actions

by Ian J. Howard | May 7, 2026 | Patents

In a decision addressing the scope of constitutional challenges to agency action, the US Court of Appeals for the District of Columbia Circuit affirmed a district court’s injunction barring an investigation by the US International Trade Commission premised on a protective order issued by an unconstitutionally appointed administrative law judge (ALJ). Sidak v. ITC, Case No. 23-5149 (D.C. Cir. Apr. 24, 2026) (Katsas, Rao, Walker, JJ.)

Gregory Sidak served as an expert witness in a 2017 Commission proceeding. During that proceeding, the presiding ALJ issued a protective order governing confidential information. At the time, ALJs were appointed unilaterally by the Commission’s chairman – a practice later called into question by the Supreme Court’s decision in Lucia v. SEC, which held that ALJs are “inferior officers” who must be appointed by the president, courts, or the “head” of a department. The Commission subsequently ratified the appointments of its ALJs but did not ratify their prior actions, including the protective order at issue.

Years later, the ITC initiated an investigation into whether Sidak violated that protective order. In response, Sidak filed suit in district court seeking to enjoin the investigation, arguing that the order was unenforceable because it had been issued by an improperly appointed ALJ and never ratified. The district court granted a permanent injunction, and the Commission appealed.

The DC Circuit affirmed, first addressing several threshold procedural issues. The Court determined that the district court had subject matter jurisdiction under 28 U.S.C. § 1331 because Sidak’s claim arose directly under the US Constitution. The Court explained that no applicable statutory review scheme displaced that jurisdiction for this type of claim, and that litigants may pursue equitable relief to enjoin unconstitutional agency action.

The DC Circuit also rejected the Commission’s argument that Sidak’s claim was unripe. Because the case presented purely legal questions regarding the enforceability of the protective order and Sidak faced a credible threat of sanctions, the dispute was both constitutionally and prudentially ripe. The Court further explained that final agency action is not required where a plaintiff brings an implied constitutional claim rather than a claim under the Administrative Procedure Act.

Turning to timeliness, the DC Circuit determined that Sidak had not forfeited his Appointments Clause challenge. Unlike a party that invokes an agency adjudication and seeks a ruling on the merits, Sidak was a third-party witness who neither initiated the underlying proceeding nor sought relief from the ITC. The Court emphasized that forfeiture principles apply differently in that context and that Sidak had no earlier opportunity or obligation to raise his claim.

On the merits, the DC Circuit affirmed the district court’s decision to enjoin the Commission’s investigation. The Commission did not dispute that the ALJ who issued the protective order had been improperly appointed or that the order had not been ratified. The DC Circuit concluded that the district court did not abuse its discretion by granting injunctive relief to prevent enforcement of an order lacking constitutional authority.

Finally, the DC Circuit rejected the Commission’s challenge [...]

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Personal jurisdiction: Are cease-and-desist letters enough?

by Jolie B. Schenerman | Apr 30, 2026 | Trademarks

In a decision clarifying how certain pre litigation enforcement efforts can establish personal jurisdiction, the US Court of Appeals for the Eleventh Circuit reversed the dismissal of Lanham Act and tortious interference claims for lack of personal jurisdiction, concluding that cease and desist letters sent into the jurisdiction satisfied the minimum contacts requirement and did not offend due process. Frida Kahlo Corporation v. Mara Cristina Teresa Romeo Pinedo, Case No. 24-10293 (11th Cir. Apr. 17, 2026) (Luck, Lagoa, Abudu, JJ.)

Frida Kahlo and Frida Kahlo Investments (collectively, Kahlo) manage and license a portfolio of trademarks and publicity rights associated with the artist Frida Kahlo. Kahlo sued Familia Kahlo and Mara Cristina Teresa Romeo Pinedo (collectively, Pinedo) alleging tortious interference and Lanham Act violations arising from Pinedo’s efforts to halt a traveling Frida Kahlo exhibition and related merchandise.

Central to the dispute were cease and desist letters sent by Pinedo to Kahlo’s Florida based business partners. The letters asserted that Pinedo held superior rights to Frida Kahlo’s name, likeness, and trademarks and threatened legal action if the recipients continued their involvement with Kahlo. Kahlo alleged those claims were false and caused business partners to withdraw or hesitate, disrupting Kahlo’s licensing relationships.

Kahlo filed suit in Florida. Pinedo moved to dismiss for lack of personal jurisdiction. The district court granted the motion, concluding that Florida’s corporate shield doctrine protected Pinedo from jurisdiction and that, in any event, Pinedo lacked sufficient minimum contacts with Florida. Kahlo appealed.

The Eleventh Circuit reversed, concluding first that the corporate shield doctrine did not bar jurisdiction over Pinedo. The Court focused on the language of the cease and desist letters, which expressly identified Pinedo as the “heiress of the painter Frida Kahlo” and stated that the letters were sent “in our capacity as representatives of Mara Cristina Teresa Romeo Pinedo.” The Court found that those representations showed that Maria Pinedo was acting in her personal capacity, not merely as a corporate agent. As a result, the corporate shield doctrine, which can protect corporate officers from jurisdiction based solely on acts performed for a corporation, did not apply. Because the doctrine was inapplicable, Pinedo was subject to Florida’s long arm statute, which permits jurisdiction where a nonresident commits a tortious act outside the state that causes injury within Florida.

The Eleventh Circuit next addressed whether exercising specific personal jurisdiction would comport with due process. The Court answered in the affirmative, explaining that Pinedo intentionally directed conduct into Florida by sending cease and desist letters to Florida entities. The alleged tortious interference claims arose directly from those communications, satisfying the relatedness requirement for specific jurisdiction.

The Eleventh Circuit also found purposeful availment because Pinedo plausibly alleged an intentional tort, the letters were expressly sent to Florida entities, and it was reasonable for Pinedo to anticipate having to defend itself in Florida based on its actions.

Finally, the Eleventh Circuit concluded that Pinedo failed to make a compelling case that exercising jurisdiction would violate traditional notions of fair play and [...]

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Patent disclosure erases trade secret protection

by Hannah Hurley | Apr 30, 2026 | Patents, Trade Secrets

Addressing the boundary between patent disclosures and trade secret protection, the US Court of Appeals for the Federal Circuit reversed a jury’s findings of trade secret misappropriation, breach of contract, and improper inventorship, concluding that the asserted “trade secrets” were generally known and therefore not protectable under California law. The Court affirmed, however, a $1 million statutory damages award for trademark counterfeiting. International Medical Devices, Inc. v. Cornell, Case Nos. 25 1580; 1605 (Fed. Cir. Apr. 17, 2026) (Dyk, Reyna, Taranto, JJ.)

International Medical Devices, Menova International, and Dr. James Elist (collectively, the plaintiffs) manufacture and sell the Penuma® cosmetic penile implant. The plaintiffs sued Dr. Robert Cornell and associated individuals and entities after Cornell attended a Penuma® surgical training session under a nondisclosure agreement (NDA) and later helped develop a competing implant. The plaintiffs asserted claims for misappropriation of trade secrets, breach of the NDA, trademark counterfeiting based on unauthorized use of the Penuma® mark, and invalidity of two cosmetic implant patents for failure to name Elist as an inventor.

A jury found for the plaintiffs on all claims. After a bench trial on remedies, the district court awarded more than $17 million in trade secret and exemplary damages, entered a permanent injunction, and awarded $1 million in statutory damages for counterfeiting. Cornell appealed.

The Federal Circuit reversed the trade secret verdict in its entirety, concluding that none of the asserted trade secrets were protectable under California law. The Court concluded that the alleged technical trade secrets were disclosed in publicly available patents and thus were “generally known” as a matter of law.

In doing so, the Federal Circuit reaffirmed the long-standing principle that “that which is disclosed in a patent cannot be a trade secret.” Once information enters the public domain through patent disclosures, it cannot later be reclaimed as confidential business information through trade secret law.

The plaintiffs’ remaining alleged trade secret (a list of surgical instruments) fared no better. The Federal Circuit found that the list had been emailed to the defendants without any confidentiality designation or obligation, defeating any claim that reasonable measures were taken to maintain its secrecy.

Because the plaintiffs failed to identify any confidential information beyond the alleged trade secrets, the Federal Circuit also reversed the breach of contract verdict. The NDA expressly excluded information that was “generally available to the public,” and the Court found that an NDA cannot transform public domain information into protected confidential material.

The Federal Circuit reached a different conclusion on trademark counterfeiting, however, and affirmed the jury’s finding and the $1 million statutory damages award. The Court explained that the evidence showed that Cornell had advertised and offered Penuma® implants without authorization. Cornell argued that the Penuma® mark was registered only for goods, not services, and therefore could not support a counterfeiting claim tied to surgical procedures. The Court rejected that argument, concluding there was sufficient evidence that Cornell offered the Penuma® implant itself as a good, not merely a medical service.

Finally, the Federal Circuit [...]

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