Federal Circuit Archives

Federal Circuit

Tick tock: Related trade secrets have single accrual date under DTSA statute of limitations

by Tori Lazerson | Jun 11, 2026 | Trade Secrets

The US Court of Appeals for the Federal Circuit reversed a judgment awarding damages and a permanent injunction, finding that the plaintiff’s trade secret misappropriation claims were barred by the statute of limitations under the Defend Trade Secrets Act (DTSA). Insulet Corp. v. EOFlow, Co. Ltd., Case No. 25-1807 (Fed. Cir. May 28, 2026) (Dyk, Reyna, JJ.) (Prost, J., dissenting).

Insulet manufactures the Omnipod, an adhesive wearable insulin patch pump currently sold in 25 countries. EOFlow developed a competing product, the EOPatch 2, marketed in Europe and South Korea. On August 3, 2023, Insulet filed suit against EOFlow alleging trade secret misappropriation under the DTSA and patent infringement.

The misappropriation allegedly occurred when EOFlow hired several former Insulet employees to develop the EOPatch 2. The employees included Steve DiIanni, former director of mechanical engineering at Insulet, who possessed “detailed technical information” about the Omnipod. Between March and May 2018, DiIanni provided EOFlow with computer-aided design (CAD) files and information regarding the Omnipod’s soft cannula and occlusion-detection algorithm.

The district court bifurcated the DTSA and patent claims. At trial on the DTSA claims, the jury found misappropriation of four trade secrets, including the Omnipod CAD files, and concluded that none of Insulet’s claims were barred by the statute of limitations. The jury initially awarded $170 million in compensatory damages and more than $280 million in exemplary damages. These amounts were reduced to $26 million and $34 million, respectively, with the district court’s grant of a permanent injunction. Insulet’s patent claims were dismissed without prejudice.

On appeal, Insulet moved to transfer to the Court of Appeals for the First Circuit. The Federal Circuit denied the motion, concluding that it retained jurisdiction because the dismissal of the patent claims functioned, at least in part, as a dismissal with prejudice, since the statute of limitations expired with respect to certain alleged acts of patent infringement. The Court then addressed two issues under the DTSA statute of limitations: when the statute of limitations begins to run and whether related trade secrets are subject to a single accrual date.

On the first issue, the parties disputed the applicable standard. EOFlow argued that the statute of limitations began to run under an inquiry-notice standard while Insulet contended that the Supreme Court’s 2010 decision in Merck & Co. v. Reynolds required application of a discovery standard under which the limitations period begins when the plaintiff discovers or reasonably should have discovered the facts underlying its claim. The Federal Circuit declined to decide which standard governed, concluding that Insulet’s claims were time-barred even under the more demanding Merck standard. Applying an access-plus-similarity framework, the Court found that, before the critical date, Insulet knew or should have known that EOFlow had access to its trade secrets through a former Insulet employee, and possessed sufficient information regarding similarities between the EOPatch 2 and Insulet’s trade secret technology to plead a misappropriation claim.

On the second issue, for which there was no controlling First Circuit authority, the Federal Circuit determined that the [...]

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E-I-E-I-No patents for data harvesting

by Ashley K. Justice | Jun 11, 2026 | Patents

Addressing patent eligibility and attorneys’ fees, the US Court of Appeals for the Federal Circuit affirmed a district court’s ruling that five farming data patents were directed to patent-ineligible subject matter, but vacated and remanded the district court’s unexplained determination that the case was not exceptional. AGI SureTrack LLC v. Farmers Edge Inc., Case Nos. 24-1730; -1830 (Fed. Cir. Jun. 2, 2026) (Moore, Mayer, Lourie, JJ.)

AGI SureTrack owns five patents directed to capturing farming operation data in real time using passive data collection devices attached to farming equipment while the equipment performs farming operations. The claimed systems process and share the collected data through an online farming data exchange system or server. AGI sued Farmers Edge and Farmers Edge (US) for patent infringement.

At summary judgment, the district court found the asserted patents invalid under 35 U.S.C. § 101, concluding that the claims were directed to patent-ineligible subject matter. The district court also ruled that the case was not exceptional under 35 U.S.C. § 285 for purposes of awarding attorneys’ fees. AGI appealed the invalidity ruling, and Farmers Edge cross-appealed the no-exceptionality ruling.

The Federal Circuit affirmed the § 101 ruling under the two-step Alice framework. At Alice step one, the Federal Circuit found that AGI’s claims were directed to the abstract idea of collecting, analyzing, and transmitting farming data. The Court explained that claims using conventional computer components to collect, analyze, and present data (activities that can be characterized as mental processes) are directed to an abstract idea. The Court rejected AGI’s argument that the patents claimed an unconventional hardware and software system that solved interoperability problems among distinct brands of farming equipment. The claim language did not recite such a technological solution, and the specification described the invention as a way to track, store, and profit from farming operation data.

The Federal Circuit also rejected AGI’s reliance on claims involving detection of communication protocols and the use of stored “implement profiles” to decode farming equipment information. In the Court’s view, those limitations merely combined abstract concepts and did not change the character of the claims as being directed to data collection, processing, and transmission.

At Alice step two, the Federal Circuit found no inventive concept sufficient to transform the abstract idea into patent-eligible subject matter. The claims relied on generic computer components performing conventional functions. The Court explained that although the claimed automation may have increased the speed and efficiency of collecting and analyzing farming data, improved speed from automation alone does not supply an inventive concept. Considering the claim elements individually and as an ordered combination, the Court concluded that the patents did not claim a patent-eligible application for tracking and collecting farming data.

The Federal Circuit reached a different result on attorneys’ fees. The district court had ruled that the case was not exceptional under § 285 but provided no explanation for that determination. The Federal Circuit vacated and remanded, explaining that while district courts need not always provide extensive reasoning, they must provide enough [...]

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Trade secret owner may pursue unjust enrichment damages despite licensing history

by Amol Parikh | Jun 4, 2026 | Trade Secrets

The US Court of Appeals for the Federal Circuit affirmed in part, reversed in part, and vacated in part a district court’s post-trial rulings in a trade secret and contract dispute, finding that a trade secret plaintiff may pursue unjust enrichment damages under both the Defend Trade Secrets Act (DTSA) and the Michigan Uniform Trade Secrets Act (MUTSA) even where the parties have a prior licensing relationship. The Court also reinstated the jury’s breach-of-contract damages award and rejected the defendant’s attempt to impose a heightened knowledge requirement for combination trade secrets. Versata Software, LLC v. Ford Motor Co., Case No. 24-1140 (Fed. Cir. May 22, 2026) (Moore, Taranto, Hughes, JJ.)

Ford licensed Versata’s automotive configuration software under a Master Subscription and Services Agreement. When the agreement was about to expire, the parties failed to agree on renewal terms, and Ford released its own software, which it had developed while still licensing Versata’s software. Versata alleged that Ford misappropriated several combination trade secrets embodied in Versata’s software and breached the parties’ agreement. A jury found Ford liable for misappropriating three trade secrets and for breach of contract, awarding more than $22 million in trade secret damages and $82.26 million in contract damages.

Before trial, the district court had limited Versata to a reasonable royalty theory based on the parties’ licensing history and had excluded damages models that measured the value Ford allegedly derived from using the trade secrets. After trial, the district court reduced the trade secret damages award to $0 and the contract award to $3. Versata appealed.

The Federal Circuit found that the district court had legally erred by categorically precluding unjust enrichment damages. The Court explained that the plain language of both the DTSA and the MUTSA permits recovery of unjust enrichment caused by misappropriation that is not accounted for in actual loss. While prior licensing history may be relevant to damages, it does not foreclose unjust enrichment as a matter of law. The Court therefore vacated the zeroed-out trade secret damages judgment and remanded for a new damages trial, instructing the district court to reconsider the reasonable royalty models it had previously excluded because they were not based solely on licensing history.

On the contract award, the Federal Circuit reversed the district court’s decision and reinstated the jury’s $82 million award. Applying Michigan law, the Court concluded that Versata had given the jury a reasonably certain damages path in the form of three annual license figures ($17 million, $14.95 million, and $10.95 million) multiplied by seven and a half years. The jury’s $82.26 million award equated to about $10.97 million per year, which fell within the range supported by the evidence and did not shock the conscience.

The Federal Circuit also affirmed liability for trade secret misappropriation. Ford argued that Versata had to show that Ford knew the specific elements of each combination trade secret at the time of use or disclosure. The Court rejected that proposed heightened requirement, concluding that neither the DTSA nor the MUTSA [...]

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Patentee that retains exclusionary rights has constitutional standing notwithstanding broad license grant

by Anisa Noorassa | May 28, 2026 | Patents

The US Court of Appeals for the Federal Circuit reversed a district court decision dismissing a patent infringement suit for lack of constitutional standing, concluding that patentees that retain exclusionary rights, even after granting a broad license, maintain Article III standing. A.L.M Holding Company v. Zydex Industries Private Ltd., Case No. 25-1317 (Fed. Cir. May 19, 2026) (Chen, Cunningham, Stark, JJ.)

A.L.M. and Ergon co-own six patents directed to warm-mix asphalt technology. Prior to filing suit, the patentees entered into a licensing agreement with Ingevity Corporation, granting Ingevity an exclusive, worldwide, royalty-bearing license to manufacture, import, use, and sell products covered by the patents. The agreement also provided for shared control of infringement actions and an equal split of any resulting recoveries and costs. Despite the breadth of the license, the patentees retained certain rights, including the ability to make, import, and use the licensed products.

A.L.M. filed suit against Zydex. The district court dismissed the action, concluding that the patentees lacked constitutional standing because the license transferred away sufficient exclusionary rights, leaving A.L.M. without a cognizable injury under Article III.

Reviewing the issue de novo, the Federal Circuit reversed. The Court framed the proper inquiry for constitutional standing as whether the plaintiff retains an exclusionary interest in the asserted patents. The Court explained that, absent a transfer of all exclusionary rights, a patentee generally maintains the concrete injury necessary to satisfy Article III.

The Federal Circuit emphasized that the constitutional standing inquiry is distinct from the question of statutory standing under 35 U.S.C. § 281. While statutory standing concerns whether a party is entitled to bring suit under the Patent Act and may be cured by joinder of necessary parties, constitutional standing requires a threshold showing of injury in fact and cannot be remedied after the fact.

Applying that framework, the Federal Circuit found that the plaintiffs retained sufficient exclusionary interests. In particular, the patentees preserved rights to royalties and maintained a degree of control over sublicensing, including a veto right. These retained interests demonstrated that the patentees had not transferred all substantial rights in the patents and therefore continued to suffer a legally cognizable injury from alleged infringement.

Accordingly, the Federal Circuit concluded that the plaintiffs satisfied Article III standing requirements and reversed the district court’s dismissal.

Practice note: On the same day that the Federal Circuit issued its decision in A.L.M. Holdings, the same panel also issued a nonprecedential decision in Recor Medical, Inc. v. Medtronic Ireland Manufacturing Unlimited Co., in which it stated, “[i]n a precedential opinion we issued today in a different appeal addressing constitutional standing, A.L.M. Holding Co. v. Zydex Industries Private Ltd., No. 25-1317 (Fed. Cir. May 18, 2026), we held that the patent owner in that case had constitutional standing because it retained a right to sue for patent infringement that was not rendered illusory by the rights it granted to its licensee. Because Medtronic Ireland’s retained rights are materially the same as the patent owner’s in A.L.M., we hold that Medtronic [...]

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Invalidity alone does not render a case exceptional

by Tori Lazerson | May 28, 2026 | Patents

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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Chill out: Numerical claim terms properly limited by industry standards

by Kyle Sorenson, PhD | May 21, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed a noninfringement finding, concluding that a claim limitation reciting a pH range having only a lower limit referred to pH measured at standard temperature in the art. The Court also found that prosecution history estoppel and the disclosure-dedication rule foreclosed reliance on the doctrine of equivalents to capture a pH below the express lower limit. Actelion Pharms. Ltd. v. Mylan Pharms. Inc., Case No. 24-1641 (Fed. Cir. May 13, 2026) (Reyna, Taranto, Stoll, JJ.)

Actelion owns patents covering lyophilized epoprostenol formulations used to treat cardiovascular disease. Epoprostenol is unstable in water because acidic conditions catalyze its degradation. The patents sought to improve stability by manufacturing highly basic bulk solutions, thereby producing freeze-dried formulations that remained stable after reconstitution in typical intravenous fluid. The asserted claims recite bulk solutions having a pH “of 13 or higher” or “greater than 13.”

Mylan sought approval to market a generic version of Actelion’s Veletri® product and was sued under 35 U.S.C. § 271(e)(2). The district court construed “a pH of 13 or higher” to mean “a pH of 12.98 or higher.”

It was undisputed that Mylan’s bulk solution measured below a pH of 12.98 at standard temperature (25±2°C). Actelion nevertheless contended that infringement existed because the solution exceeded pH 13 at lower temperatures during refrigerated manufacturing.

The district court disagreed, finding that the claim term “a pH of 13 or higher” referred to a pH measured at a temperature standard in the field, and that therefore Mylan did not literally infringe. The district court further ruled that Actelion was barred from asserting and had not proved infringement under the doctrine of equivalents. Actelion appealed.

The Federal Circuit agreed with the district court that a person of ordinary skill would interpret the claimed pH values as measurements taken at standard temperature, absent an express indication otherwise. Although the claims did not specify measurement conditions, the specification consistently treated pH values as standard-temperature measurements. The Court emphasized that the specification compared results across pH levels without suggesting temperature-dependent variation and described an “alkaline environment” as “pH > 7,” a statement accurate only at standard temperature.

The Federal Circuit found that extrinsic evidence reinforced that understanding. The United States Pharmacopeia and expert testimony established that, in pharmaceutical formulations, pH is ordinarily measured at 25±2°C unless otherwise specified. The Court found no clear error in the district court’s factual findings on industry practice.

Because Mylan’s product failed to meet the pH limitation under that standard, the Federal Circuit affirmed the finding of no literal infringement.

The Federal Circuit also rejected Actelion’s doctrine of equivalents theory. During prosecution, Actelion amended the claims from “greater than 12” to “a pH of 13 or higher” after the examiner recognized unexpected results at pH 13 but not at pH 12. The Court found that this narrowing amendment gave rise to prosecution history estoppel, barring Actelion from recapturing lower pH values through equivalence.

Separately, the Federal Circuit applied the disclosure-dedication rule. The patents [...]

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Appellate deference: Reinforcing limits on reweighing evidence

by Ian J. Howard | May 21, 2026 | Patents

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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Words of approximation require more precision after narrowing amendments

by Amol Parikh | May 14, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed a judgment of indefiniteness, concluding that the use of the term “about” to define a critical pH limitation failed to inform skilled artisans of claim scope with reasonable certainty under 35 U.S.C. § 112. Enviro Tech Chemical Services, Inc. v. Safe Foods Corp., Case No. 24-2106 (Fed. Cir. May 4, 2026) (Lourie, Prost, Burroughs, JJ.)

Enviro Tech owns a patent that claims a method for treating poultry during processing to increase the weight of the poultry by using peracetic acid. Each claim in the patent requires the step of altering the pH of the peracetic-acid-containing water to “a pH of about 7.6 to about 10” by adding an alkaline source.

During claim construction, the district court concluded that the term “about” was indefinite, finding that the intrinsic evidence did not inform a skilled artisan as to the scope of the term “about” with reasonable certainty. Enviro Tech appealed.

The Federal Circuit has long held that words such as “about” and “approximately” may be appropriately used to avoid a strict numerical boundary to the specified parameter. However, when a word of approximation is used, the parameter’s range must be reasonably certain based on the “technological facts of the particular case” and considering the claims, specification, prosecution history, and extrinsic evidence.

Starting with the claims, the Federal Circuit found that they failed to provide meaningful guidance on how far below a pH of 7.6 or above a pH of 10 the peracetic-acid-containing water could fall and still satisfy the limitation. Although the parties agreed that “about” ordinarily means “approximately,” the Court concluded that substituting one term for the other does not clarify the permissible deviation from the claimed range or otherwise inform a skilled artisan of the scope of the claims.

The Federal Circuit next turned to the specification, finding that it also failed to define the scope of “about” with reasonable certainty because it provided inconsistent guidance on acceptable pH deviations. Although the specification disclosed experiments where Enviro Tech only proceeded when the measured pH was within 0.3 of the target, the specification also described instances where Enviro Tech continued experiments despite larger deviations, including a large scale poultry processing test with pH variances of up to 0.5. Given these unexplained exceptions (particularly in a commercially significant real world setting) the Court found that the 0.3 threshold could not be treated as a reliable boundary for “about.” Thus, the Court found that the specification’s conflicting examples left skilled artisans without clear notice of the claimed scope.

Turning to the prosecution history, the Federal Circuit found that Enviro Tech treated the term “about” inconsistently. For instance, in one office action response, Enviro Tech argued that “a peracetic acid solution at the lower end of the claimed range, pH 7.6,” would not have been obvious over the prior art, notably omitting the word “about.” Yet on the very next page, Enviro Tech asserted that “a step of adjusting the pH to the range [...]

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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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