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Headnote to self: Third Circuit rejects fair use defense for AI training

by Hannah Hurley | Oct 15, 2026 | Copyrights

The US Court of Appeals for the Third Circuit affirmed a grant of partial summary judgment in favor of Thomson Reuters, finding that Westlaw’s editorial headnotes were copyrightable and that use of those headnotes to train an artificial intelligence (AI) legal-research platform did not constitute fair use. Characterizing the dispute as “no more than an ordinary copyright case,” the Court emphasized that its decision did not resolve broader questions concerning generative AI training. Thomson Reuters Enterprise Centre GmbH v. ROSS Intelligence Inc., Case No. 25-2153 (3d Cir. Sept. 29, 2026) (Restrepo, Montgomery-Reeves, Bove, JJ.)

Thomson Reuters operates Westlaw, a legal-research platform that provides judicial opinions accompanied by editor-written headnotes summarizing key points of law. Although judicial opinions are not copyrightable, Thomson Reuters claimed copyright protection in the headnotes, which its editors prepare under detailed guidelines requiring them to identify and summarize significant legal principles in concise standalone statements.

ROSS developed a non-generative-AI legal-research platform designed to respond to users’ legal questions by identifying relevant passages from about 10 million judicial opinions. To train its platform, ROSS retained LegalEase Solutions to prepare about 25,000 memoranda, each containing a legal question and four to six responsive judicial opinions. LegalEase used thousands of Westlaw headnotes to formulate the questions. ROSS intended to compete directly with Westlaw and marketed its platform at comparable prices.

Thomson Reuters sued ROSS for copyright infringement. The district court granted partial summary judgment, finding that 2,243 headnotes identified by Thomson Reuters’ expert were sufficiently original to warrant copyright protection and that ROSS’s use of those headnotes was not fair use. The district court certified the originality and fair use issues for interlocutory appeal.

The Third Circuit first addressed copyrightability. Applying the “extremely low” originality threshold established in the Supreme Court’s 1991 Feist Publications, Inc. v. Rural Telephone Service Co. decision, the Third Circuit concluded that the headnotes contained sufficient creativity because editors exercised judgment in selecting which legal principles to summarize and how to express them. The Third Circuit rejected ROSS’s argument that copyright protection would effectively grant Thomson Reuters a monopoly over the law, explaining that judicial opinions remained freely available. The Court also rejected ROSS’s merger doctrine argument, finding that the underlying legal principles could be expressed in many ways.

Turning to fair use, the Third Circuit considered the four statutory factors under 17 U.S.C. § 107:

As to the purpose and character of the use, the Court found ROSS’s use commercial and, at most, minimally transformative because both platforms served the same purpose, which was helping users locate relevant legal materials. Although ROSS used the headnotes to train its AI platform rather than displaying them, it could have relied on freely available judicial opinions instead. This factor weighed against fair use.
The nature of the copyrighted work weighed slightly in ROSS’s favor because the headnotes primarily conveyed factual information and legal principles. The Court noted, however, that this factor generally carries limited weight.
The amount and substantiality of the portion used weighed against fair use [...]

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Clearing the air: Impossibility is an enablement problem, not an indefiniteness problem

by Vincent Li, PhD | Oct 15, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed a judgment of patent invalidity on alternative grounds. The Court found that claims reciting a scientific impossibility were not indefinite because their scope was clear but were invalid for lack of enablement. Satius Holding, LLC v. Samsung Electronics Co., Ltd., Case No. 25-1446 (Fed. Cir. Oct. 1, 2026) (Moore, Lourie, Hughes, JJ.)

Satius sued Samsung for infringement of a patent directed to a communications apparatus that uses a coupler to match the characteristic impedance of air to that of a wireless transmitter and receiver. A representative claim recited “[a] communications apparatus for transmitting electric or electromagnetic signals over air.” The district court found the claims indefinite because transmitting electric signals over air is scientifically impossible. Satius appealed

The Federal Circuit first construed “transmitting electric . . . signals over air” to require transmission of signals through air in electric form, which the parties agreed was impossible. Satius argued that the limitation instead described converting electric signals into electromagnetic signals for transmission over air. The Court rejected that interpretation, explaining that transmitting signals over air differs from communicating signals to air. Adopting Satius’ interpretation would improperly rewrite the claims to add a conversion step.

Turning to indefiniteness, the Federal Circuit explained that “[i]ndefiniteness is not the same as impossibility.” A claim is indefinite only if it fails to inform skilled artisans of its scope with reasonable certainty. Here, the impossible limitation appeared in both the claims and specification, and its meaning was clear. The Federal Circuit therefore rejected the district court’s conclusion that scientific impossibility rendered the claims indefinite.

The Federal Circuit nevertheless affirmed invalidity for lack of enablement. Although the district court had not decided that issue, the Federal Circuit found it appropriate to do so because the relevant facts were undisputed and the parties had fully briefed the question. The specification must enable the full scope of the claimed invention. Because the claims expressly covered transmitting “electric or electromagnetic signals over air,” and transmitting electric signals over air is scientifically impossible, the specification could not enable the full claim scope. The claims therefore failed to meet the enablement requirement.

Practice note: A scientifically impossible claim limitation does not necessarily render a claim indefinite if its scope is reasonably certain. However, expressly claiming an impossible alternative can invalidate the claim for lack of enablement, even if other claimed alternatives are operable.

Saved by the bell: Class certification isn’t the time to have a mini-trial on the merits

by Cecilia Choy, PhD | Oct 8, 2026 | Technology

The US Court of Appeals for the Ninth Circuit declined to disturb a district court’s certification of damages and injunctive classes asserting violations of California’s statutory right of publicity. The Ninth Circuit rejected challenges based on predominance and adequacy. Nolen v. PeopleConnect, Inc., Case No. 24-3894 (9th Cir. Sept. 24, 2026) (Berzon, Friedland, Mendoza, JJ.)

PeopleConnect operates Classmates.com, which maintains a searchable database containing more than 450,000 yearbooks. Users may access the site as unregistered visitors, free members, or paid subscribers. The dispute centered on subscription advertisements that allegedly used individuals’ names in connection with paid membership offers. Nolen advanced two theories to obtain class certification: a “sequence theory,” under which a visitor searching for a person could encounter a subscription advertisement after registering for a free account, and a “banner theory,” under which free members could see subscription advertisements while searching the site.

Nolen alleged that PeopleConnect violated California Civil Code § 3344 by using individuals’ names without consent in connection with advertising for paid subscriptions. She argued that the alleged commercial use occurred by making individuals’ identities searchable within the advertising flow, regardless of whether a particular name had actually been searched. The district court conditionally certified damages and injunctive classes, and the Ninth Circuit granted interlocutory review under Rule 23(f).

PeopleConnect argued that predominance was lacking because the district court had misconstrued § 3344 by permitting claims based on mere searchability. The Ninth Circuit rejected that argument as an improper attempt to litigate the merits at class certification. The Court emphasized that certification is not a “mini-trial on the merits” and that the relevant question is whether the issue is susceptible to common proof, not whether the plaintiff is ultimately likely to prevail. Because the alleged connection between the use of class members’ identities and advertising presented a common factual question, the Court concluded that the district court did not abuse its discretion in finding predominance.

The Ninth Circuit also rejected PeopleConnect’s argument that damages would require individualized proof of injury. It concluded that if PeopleConnect used class members’ names in direct connection with advertising, a factfinder could reasonably infer that those names had at least some economic value. The Court distinguished between the commercial value of the names and the resulting economic injury, concluding that both issues were capable of class-wide resolution.

PeopleConnect further argued that the proposed classes included individuals who might ultimately be ineligible for relief, including persons who had consented to certain uses of their identities, were not readily identifiable, had registered as members, or had donated yearbooks, or whose names were not searchable. The Ninth Circuit concluded that these issues did not defeat certification. Some of those factors went to predominance while others implicated manageability. The Court reiterated the presumption against denying class certification based solely on manageability concerns and explained that Rule 23 does not require a plaintiff to establish an administratively feasible method for identifying every class member at the certification stage.

The Court also rejected PeopleConnect’s adequacy challenges. PeopleConnect [...]

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Rule 54(b) doesn’t permit slicing patent’s claims into separate final judgments

by Yuhe Liu, PhD | Oct 8, 2026 | Patents

The US Court of Appeals for the Federal Circuit concluded that Federal Rule of Civil Procedure 54(b) does not permit entry of partial final judgment on some asserted claims of a patent while other asserted claims of the same patent remain unresolved. The Court explained that infringement of different claims of the same patent generally constitutes a single cause of action. ParkerVision, Inc. v. Qualcomm Inc., Case Nos. 26-1033; -1035 (Fed. Cir. Sept. 30, 2026) (Prost, Chen, Stark, JJ.)

ParkerVision sued Qualcomm in 2014 for infringement of two patents directed to electromagnetic signal conversion. One patent included asserted claims directed to down-conversion (receiver claims). The other patent included both receiver claims and asserted claims directed to up-conversion (transmitter claims).

In 2024, the Federal Circuit vacated an earlier summary judgment of noninfringement and remanded. Following claim construction on remand, the parties stipulated to noninfringement of the receiver claims, and the district court entered partial summary judgment. That ruling resolved all asserted claims of the patent directed only to down-conversion but left unresolved the transmitter claims of the patent covering both down-conversion and up-conversion. At ParkerVision’s request, and over Qualcomm’s objection, the district court entered judgment under Rule 54(b) as to the receiver claims and “severed and stayed” the transmitter claims pending appeal. ParkerVision appealed.

The Federal Circuit concluded that Rule 54(b) did not authorize entry of final judgment as to only some asserted claims of the patent covering both receiver and transmitter functionality. Rule 54(b) permits entry of final judgment only as to one or more “claims” for relief, coupled with an express determination that there is no just reason for delay. The Court explained that a “claim” under Rule 54(b) means a cause of action, not an individual patent claim.

Relying on 35 U.S.C. §§ 271(a) and 281 and Federal Circuit precedent, the Court explained that infringement of different claims of the same patent generally constitutes a single cause of action. ParkerVision’s complaint likewise pleaded a single infringement count for the patent covering both down-conversion and up-conversion and did not separately plead causes of action directed to the receiver and transmitter claims. The Court explained that because the receiver and transmitter claims were part of the same cause of action and the transmitter claims remained unresolved, the district court had not entered a final judgment subject to appellate review.

The Federal Circuit also rejected ParkerVision’s alternative jurisdictional arguments. ParkerVision contended that the judgment was final at least as to the patent directed only to down-conversion because all asserted claims of that patent had been resolved. The Court disagreed, explaining that the district court had not been asked to enter a Rule 54(b) judgment limited to that patent and had not made the required express determination that there was “no just reason for delay” as to that patent. Without a valid Rule 54(b) judgment as to the down-conversion patent, there was also no basis for pendent appellate jurisdiction over issues involving the patent covering both down-conversion and up-conversion.

The Federal Circuit [...]

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Epic omission: District court must address pre-suit notice of potential patent ineligibility when denying sanctions, fees

by Richard (Rick) Evans | Oct 8, 2026 | Patents

Addressing a district court’s denial of motions for Rule 11 sanctions and attorneys’ fees and costs, the US Court of Appeals for the Federal Circuit vacated and remanded, finding that the district court had not adequately explained why a patentee’s pre-suit notice of potential invalidity under 35 U.S.C. § 101 did not render its infringement suit unreasonable. Epic Tech, LLC v. Pen-Tech Associates, Inc., Case No. 25-1624 (Fed. Cir. Sept. 30, 2026) (Moore, C.J.; Cunningham, J.; Subramanian, Distr. J., sitting by designation).

Epic Tech owns a patent directed to an electronic gaming system that connects gaming terminals to a server network so that an initial game can run while a secondary game operates in the background. After the patent issued in 2013, several related applications encountered validity problems during prosecution. One related application was rejected on nonstatutory double patenting grounds over claims of the issued patent. After the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank International, the United States Patent and Trademark Office (USPTO) rejected claims in that application and two other related applications under § 101. Epic Tech ultimately abandoned all three applications.

Epic Tech later asserted another related patent in the US District Court for the Southern District of Texas. That district court found the asserted claims patent ineligible under § 101, although the decision was later vacated.

In 2020, Epic Tech sued Pen-Tech in the District Court for the Northern District of Georgia for infringement of the gaming system patent. On summary judgment, the district court found the asserted claims ineligible under § 101 under the two-step Alice framework. Pen-Tech then sought Rule 11 sanctions against Epic Tech and its counsel, as well as attorneys’ fees and costs under 35 U.S.C. § 285, 28 U.S.C. § 1927, and the court’s inherent authority.

Pen-Tech argued that several developments should have put Epic Tech and its counsel on notice that the asserted patent faced a serious § 101 problem before suit was filed, including the Supreme Court’s decision in Alice, the USPTO’s § 101 rejections in related applications, and the district court’s ineligibility decision involving another related patent. According to Pen-Tech, those circumstances required Epic Tech to conduct a meaningful pre-suit validity investigation.

The district court denied the motions, concluding that Epic Tech’s and its counsel’s positions were not frivolous, that the case was not exceptional, and that the litigation had not been pursued unreasonably or vexatiously. Pen-Tech appealed.

The Federal Circuit vacated, finding that the district court’s explanation was insufficient to permit meaningful appellate review. The Court emphasized that the combination of Alice, the USPTO’s post-Alice rejections of related claims, and the prior district court ineligibility ruling created a “compelling concern over the validity” of the asserted claims. Two of the related applications were particularly significant because the USPTO had previously found their claims patentably indistinct from the asserted patent.

The Federal Circuit found that the district court had not meaningfully addressed Pen-Tech’s notice theory. The district court relied in part on Epic Tech’s pre-suit [...]

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DMCA requirements for CMI removal not always met in AI code writing

by Jodi Benassi | Oct 1, 2026 | Copyrights

The US Court of Appeals for the Ninth Circuit affirmed the dismissal of Digital Millennium Copyright Act (DMCA) claims that alleged artificial intelligence (AI) tools removed or altered copyright management information (CMI) from the programmers’ protected works. Doe et al. v. GitHub, Inc., et al., Case No. 24-7700 (9th Cir. Sept. 16, 2026) (Thomas, Miller, Blumenfeld, JJ.)

GitHub operates a platform where developers can store, manage, and share software code. GitHub Copilot and OpenAI Codex are generative AI tools trained on millions of software projects available on GitHub. Copilot uses statistical patterns learned from its training data to generate code in response to user prompts. The plaintiffs are programmers who published copyrighted code in public GitHub repositories under open-source licenses that generally required attribution, including the author’s name and copyright notice.

The plaintiffs sued GitHub, Microsoft, and OpenAI, alleging that Copilot sometimes reproduced their code without the attribution, copyright notices, or license terms accompanying the code in the GitHub repositories. The plaintiffs asserted that these omissions violated § 1202(b) of the DMCA.

The district court dismissed the DMCA claim, reasoning that § 1202(b) required the allegedly infringing work to be identical to the original work from which the CMI had been removed. Because the plaintiffs alleged that Copilot generated near-identical, modified, or functionally equivalent versions of their code, the district court concluded that they had failed to state a claim. It certified for interlocutory appeal the question of whether § 1202(b) imposes an identicality requirement.

Removal or alteration of CMI

Section 1202(b) prohibits intentionally removing or altering CMI, and distributing works or copies of works knowing that CMI has been removed or altered without authority.

The plaintiffs argued that § 1202(b) does not require the defendant’s output to be literally identical to the copyrighted work. They contended that a literal-identicality rule would allow a defendant to evade the DMCA simply by making a trivial change to a copied work after removing its CMI – for example, changing one word on a page. The defendants, while conceding that literal identicality was not required, argued that § 1202(b) requires CMI to have been removed or altered from a copy of the plaintiff’s existing work. If Copilot instead generates a new or derivative work that never contained the plaintiff’s CMI, there is nothing from which CMI was “removed” or “altered.”

The Ninth Circuit rejected a literal identicality requirement and characterized “identicality” as a “misnomer.” The relevant inquiry is not whether the works are identical, but whether CMI was actually removed or altered from a copy of an existing protected work. Identicality may be evidence of removal where two works are otherwise identical, but the allegedly infringing version omits CMI contained in the original. Under those circumstances, a factfinder may reasonably infer that the CMI was removed. But literal identity is not required. Minor cosmetic changes will not necessarily defeat a claim where a defendant substantially or entirely reproduces an existing work and removes its CMI.

Applying that standard, the Ninth Circuit concluded that [...]

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Diamond in the rough: Infringement theory foreclosed by claim construction supports $3.2M fee award

by Hannah Hurley | Oct 1, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed an award of more than $3.2 million in attorneys’ fees and non-taxable expenses, finding no abuse of discretion in the district court’s determination that the patent owner and its exclusive licensee continued to pursue an objectively baseless infringement theory after claim construction and discovery foreclosed their position. Carnegie Institution of Washington v. Fenix Diamonds LLC, Case Nos. 24-1804; -1824 (Fed. Cir. Sept. 17, 2026) (Reyna, Taranto, Stoll, JJ.) (nonprecedential).

Carnegie Institution of Washington and its exclusive licensee, M7D Corporation, sued Fenix Diamonds for infringement of two patents directed to methods for producing lab-grown diamonds using chemical vapor deposition. The asserted claims required growing single-crystal diamonds on a growth surface with only insubstantial non-monocrystalline growth. After claim construction, Fenix produced evidence from its manufacturer, Nouveau Diamonds, showing extensive polycrystalline and nondiamond growth. The district court subsequently granted summary judgment of noninfringement.

After the plaintiffs voluntarily dismissed their appeal following M7D’s financial collapse, the district court found the case exceptional under 35 U.S.C. § 285. It concluded that the plaintiffs’ infringement theory became objectively baseless once they received Nouveau’s evidence – approximately one month before the date from which the court ultimately shifted fees. The district court also exercised its inherent authority to award nontaxable expenses, including expert fees, based on what it viewed as vexatious and unreasonable litigation conduct. Among other things, the district court cited a misleading representation concerning access to a facility and the plaintiffs’ eleventh-hour abandonment of one of the asserted patents. Carnegie appealed.

Carnegie argued that its expert’s infringement theory represented a reasonable application of the district court’s claim construction rather than an attempt to relitigate it. The Federal Circuit disagreed. The district court had expressly construed the disputed “growth surface” limitation as not categorically excluding polycrystalline growth. According to the Federal Circuit, the expert’s attempt to exclude a subset of such growth effectively reintroduced a limitation that the district court had rejected. The district court therefore did not abuse its discretion in concluding that the infringement theory was inconsistent with the governing claim construction.

The Federal Circuit also rejected Carnegie’s challenges to the scope and amount of the award. On causation, the Court explained that once a district court identifies the point at which continued litigation became objectively baseless, it need not tie each subsequent fee to a discrete act of misconduct. The district court could therefore shift all reasonable fees incurred after that point.

The Federal Circuit also affirmed the imposition of joint-and-several liability on Carnegie. Although Carnegie characterized itself as a passive licensor, the Court pointed to its close and intertwined relationship with M7D, including shared counsel, joint litigation filings, and consultation rights under the license agreement. Those circumstances supported holding Carnegie responsible for the fee award along with M7D.

Finally, the Federal Circuit affirmed the denial of Fenix’s request for prejudgment interest. Fenix had not sought prejudgment interest before the district court issued its exceptional-case ruling and, when Fenix later raised the issue, [...]

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Copyright Royalty Board royalty rate allocations must be explained

by Courtney Seams | Oct 1, 2026 | Copyrights

Addressing royalties under the US Copyright Act’s compulsory licensing scheme, the US Court of Appeals for the District of Columbia Circuit vacated the Copyright Royalty Board’s royalty allocation for 2014 through 2017 and remanded for the Board to further explain how the royalty rates were calculated and allocated. Office of the Commissioner of Baseball v. Librarian of Congress, Case Nos. 24-1259; -1260 (DC Cir. Sept. 22, 2026) (Srinivasan, Childs, Rogers, JJ.) (Rogers, J., concurring in part and dissenting in part).

The compulsory licensing scheme at issue relates to cable systems that pay statutorily prescribed royalties in exchange for permission to distantly retransmit television broadcast programming. The cable systems calculate and deposit those royalties with the Register of Copyrights. If copyright claimants cannot agree on how to distribute the resulting royalty pool, the Board conducts proceedings to determine the appropriate allocation.

In phase one of the royalty calculation proceedings, the copyright claimants group themselves into categories based on the programming they own, and the Board allocates the overall royalty pot among those categories based on their relative marketplace value. In this case, the Board relied on two principal valuation methodologies, the Bortz Survey and a regression analysis, to determine the relative marketplace value of the programming categories and allocate the royalty pool among them. The Board’s phase one allocation was at issue on appeal. The Joint Sports Claimants (JSC), which included the Office of the Commissioner of Baseball, along with Public Television (PTV), which included the Public Broadcasting Service, separately challenged the Board’s allocation of the royalty pool as arbitrary and capricious.

PTV argued that the Board’s reliance on an expert’s sensitivity test was arbitrary and capricious because:

It departed from the Board’s precedent without explanation.
It contradicted the evidence and nearly every expert’s testimony that minimum-fee signals retain value.
It was applied inconsistently across the copyright claimants.

In response to the first point, the DC Circuit found that the Board did not depart from precedent but instead properly changed its valuation method based on the changed circumstances in the compulsory licensing marketplace that occurred during the 2014 to 2017 time period. Regarding the second point, the Court found that the Board reasonably excluded minimum-fee cable systems because their programming preferences could not be meaningfully captured by a regression designed to measure incremental willingness to pay. As to the third point, the Court found that the Board correctly applied adjustments to certain programming groups to correct distortions in the regression data.

PTV further argued that the sensitivity test’s exclusion of cable systems that were required to carry certain programming was arbitrary and disproportionately affected PTV. The DC Circuit disagreed, explaining that the Copyright Act does not establish the marketplace value of must-carry programming, the evidence did not establish the value PTV attributed to such programming, and the Board reasonably relied on an expert’s estimate of the number of must-carry signals.

JSC argued that the Board’s reliance on an expert’s regression analysis and a Bortz Survey was arbitrary and capricious [...]

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Preamble with backbone: “Universal” limits spinal-implant claims

by Vincent Li, PhD | Sep 24, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed summary judgment and a jury verdict of noninfringement, holding that claim preambles reciting a “universal” spinal implant were limiting and that substantial evidence supported the jury’s separate finding of noninfringement. Moskowitz Family LLC v. Globus Medical, Inc., Case No. 24-1696 (Fed. Cir. Sept. 11, 2026) (Prost, Schall, Stoll, JJ.)

Moskowitz sued Globus for infringing three patents directed generally to implant systems used in spinal-fusion surgery. The patents describe implant tools and intervertebral cages. For two of the asserted patents, the central dispute concerned the term “universal,” which appeared in the preambles of certain claims.

The district court construed the term “universal” as recited to mean “an intervertebral bone fusion spacer designed to be inserted between [vertebrae/vertebral bodies] in any region of the spine, i.e., cervical, thoracic, or lumbar, using any approach, e.g., posterior, anterior, or lateral.” Moskowitz conceded that the accused Globus products did not infringe under that construction but argued that the preambles were not limiting. The district court disagreed and granted summary judgment of noninfringement as to those patents. A jury later found that a claim of the third asserted patent was not infringed, and the district court denied Moskowitz’s motion for judgment as a matter of law (JMOL). Moskowitz appealed.

The Federal Circuit affirmed. As to the claims containing the “universal” language, the Court found the preambles limiting for two reasons. First, other terms in the body of the claims, such as “the intervertebral cage” and “the first integral screw guide,” relied on the preambles for antecedent basis. The Court explained that this dependence was a “strong indication that the preamble acts as a necessary component of the claimed invention.”

Second, the specifications confirmed that universality was a fundamental characteristic of the claimed inventions rather than merely an intended use. Without the preamble limitation, the claims would fail to capture that characteristic.

Moskowitz argued that “universal” should be separated from the remainder of the preamble, relying on cases in which the Federal Circuit treated different portions of a preamble differently. The Court rejected that argument, finding that “universal” was “intertwined with the remainder of the preambles” and did not merely recite an intended use. Even considered independently, universality remained a fundamental characteristic of the claimed invention, the Court explained.

The Federal Circuit also rejected Moskowitz’s argument that the district court’s construction improperly required a physically impossible “one-size-fits-all” implant. The Court explained that the patents instead described a design adaptable for use across different regions of the spine and with multiple surgical approaches. The construction did not require a single implant size or a single manner of insertion.

Turning to the patent that proceeded to trial, the Federal Circuit affirmed the denial of JMOL. The asserted claim required a gripper “cooperating with” a handle. Because neither party sought construction of “cooperating,” the jury was instructed to apply the term’s plain and ordinary meaning.

Globus’ expert testified regarding that ordinary meaning and explained why the accused products did not [...]

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Sold but not shown: Private sale does not always constitute public disclosure

by Keval Amin | Sep 24, 2026 | Patents

The US Court of Appeals for the Federal Circuit found that a commercial sale did not qualify as a “public disclosure” under 35 U.S.C. § 102(b)(1)(B) where the sale did not make the relevant aspects of the invention available to the public. NCS Multistage Inc. v. Nine Energy Service, Inc., Case No. 25-1000 (Fed. Cir. Sept. 14, 2026) (Cunningham, Reyna, Hughes, JJ.)

NCS Multistage sued Nine Energy Service for infringing claims of a patent directed to a “float tool” used in the oil and gas industry to help run casing strings to the bottom of a wellbore. The claimed invention uses a rupture disc to seal the casing during installation and rupture once the casing is positioned, avoiding the need to drill out plugs.

At trial, Nine argued that a prior-art device (the TDP-PO tool, which a third party, TCO, sold to Apache in August 2012) anticipated the asserted claims. NCS responded that its own earlier sale of an AirLock device to Tundra in July 2012 constituted a “public disclosure” under § 102(b)(1)(B), thereby removing the later Apache sale from the prior art. The jury returned a verdict in favor of NCS on both infringement and no invalidity. Nine appealed.

The Federal Circuit disagreed with NCS, concluding that the AirLock sale was not a public disclosure as a matter of law. Relying on its 2024 decision in Sanho Corp. v. Kaijet Technology Int’l Ltd, Inc., which interpreted the same “publicly disclosed” language in § 102(b)(1)(B), the Court explained that placing an invention “on sale” does not necessarily mean that the invention has been publicly disclosed. NCS privately sold the AirLock to a single customer. The device was delivered inside a sealed black tube that had to be cut open to inspect its internal components. There was no evidence that receipt of the tube made the claimed features available to the public, including the rupture disc’s configuration and its relationship to the casing string’s internal diameter. Although the transaction was not subject to a nondisclosure agreement, there was likewise no evidence that the invention’s relevant features were communicated beyond Tundra, and NCS’s own technical materials were marked confidential. On those facts, the Court concluded that the AirLock sale did not qualify as a public disclosure under § 102(b)(1)(B).

The Federal Circuit also reversed two claim construction rulings. First, it found that the term “internal diameter” has a single meaning (i.e., a measured diameter across the width of the casing string) and rejected the district court’s construction permitting the term to refer either to that measurement or to an inner surface. Second, the Court found that the term “casing string” should not be limited to casing measuring at least 4.5 inches because the specification’s permissive language did not establish either lexicography or disavowal.

The claim construction errors, together with the erroneous treatment of the AirLock sale, required a new trial on infringement and invalidity. Accordingly, the Federal Circuit vacated and remanded for further proceedings.

Practice note: Patent owners seeking to invoke [...]

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