The Technology & Information Law Blog

Analysis by Charles Gideon Korrell

Month: June 2026

  • Hafeman v. Google: Federal Circuit Bars Review of Sotera-Based Institution Challenges and Reinforces Nexus Requirements for Secondary Considerations

    Hafeman v. Google: Federal Circuit Bars Review of Sotera-Based Institution Challenges and Reinforces Nexus Requirements for Secondary Considerations

    The Federal Circuit’s decision in Hafeman v. Google LLC, Case No. 24-1600 (Fed. Cir. Jun. 5, 2026) addresses three recurring issues in inter partes review practice: the scope of appellate review under 35 U.S.C. § 314(d), the limits of claim construction arguments raised after PTAB proceedings have concluded, and the evidentiary burden required to establish a nexus between secondary considerations and the claimed invention.

    The court ultimately dismissed part of the appeal and affirmed the remainder, leaving intact PTAB decisions finding all challenged claims of three patents (U.S. Patent Nos. 10,325,122; 10,789,393; and 9,892,287) directed to computer recovery and return systems unpatentable.

    Although the patents themselves concern technology for displaying return information on lost or stolen computers, the broader significance of the decision lies in the court’s treatment of discretionary institution issues and secondary considerations evidence. Those aspects of the opinion are likely to be cited well beyond the specific technology involved.

    The Technology and the IPR Proceedings

    The patents at issue were owned by Carolyn Hafeman and generally related to systems that display recovery or return information on a computer before or alongside a lock screen. The goal was to assist in returning lost or stolen devices to their owners.

    A central claim limitation required “initiating or changing return information” through remote communication “without assistance by a user with the computer.”

    Google and Microsoft filed six IPR petitions challenging the patents. The petitions arose against the backdrop of parallel district court litigation involving LG products that incorporated Google and Microsoft device-location functionality.

    As frequently occurs in modern PTAB practice, discretionary denial issues became an important part of the institution phase. After the patent owner argued that the PTAB should deny institution because of the parallel litigation, LG provided a Sotera-style stipulation agreeing not to pursue in district court grounds that were raised or reasonably could have been raised in the IPRs.

    The PTAB relied on that stipulation and instituted review.

    The Board later found the challenged claims obvious over prior art references known as Jenne and Cohen and rejected the patent owner’s evidence of secondary considerations.

    A Significant § 314(d) Decision

    The most consequential portion of the opinion concerns appellate review of institution-related disputes.

    After institution, the patent owner argued that LG had violated the Sotera stipulation in the district court litigation. According to the patent owner, that violation should have led the PTAB either to terminate the proceedings or at least explain why the proceedings should continue despite the alleged breach.

    The Federal Circuit held that it lacked authority to review that challenge.

    The court emphasized that litigants cannot evade the jurisdictional limitations imposed by § 314(d) merely by reframing an institution challenge as an attack on a final written decision. Instead, courts must examine the substance of the argument and the relief sought.

    The opinion relies heavily on several recent precedents defining the scope of § 314(d).

    First, the court discussed the Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, which held that judicial review is barred not only for direct challenges to institution decisions but also for issues closely tied to institution determinations.

    The court also relied on Thryv, Inc. v. Click-To-Call Technologies, LP, where the Supreme Court held that parties cannot obtain review of institution-related determinations simply because those issues arise in an appeal from a final written decision.

    The Federal Circuit then connected those Supreme Court decisions to its own recent cases, including Federal Express Corp. v. Qualcomm Inc. and Ethanol Boosting Systems, LLC v. Ford Motor Co. Both decisions emphasized that courts must look beyond the label attached to a challenge and determine whether it ultimately seeks to undo institution.

    Applying those principles, the court concluded that Hafeman’s challenge was fundamentally directed at institution because the requested remedy was termination of the IPRs based on circumstances surrounding the Sotera stipulation that supported institution in the first place.

    As a result, the appeal was dismissed to the extent it challenged the PTAB’s handling of the alleged Sotera violation.

    This aspect of the decision may prove particularly important for future PTAB litigants. Parties increasingly rely on Sotera stipulations to avoid discretionary denial under the PTAB’s evolving institution framework. The Federal Circuit’s decision suggests that disputes regarding those stipulations may be difficult to transform into appealable issues once a final written decision has been entered.

    Charles Gideon Korrell notes that the court’s analysis continues a broader trend of treating institution-related disputes as effectively insulated from appellate review, even when those disputes arise after institution and are framed as procedural objections to later agency actions.

    The “Without Assistance” Limitation

    The patent owner also challenged the PTAB’s obviousness analysis, arguing that the Board had improperly construed the claim requirement that return information be initiated or changed “without assistance by a user.”

    The dispute centered on prior art that required a user to establish an internet connection before remote updates could occur.

    According to the patent owner, the claimed invention prohibited any user assistance beyond powering on the device. Because the prior art required internet connectivity established by the user, the patent owner argued that it could not satisfy the limitation.

    The Federal Circuit rejected that argument.

    The court began with the claim language itself, emphasizing that the phrase “without assistance by a user” modifies the act of initiating or changing return information. The language does not address who establishes the internet connection necessary for remote communication.

    That distinction proved decisive.

    The court agreed with the PTAB that the claims focus on whether the user assists in changing the return information itself, not whether the user performs preliminary actions that make communication possible.

    The specification reinforced that conclusion. The court pointed to passages describing automatic internet-based updating mechanisms similar to antivirus software updates. Those passages contemplated circumstances in which the user might initiate internet connectivity while the update process itself remained automatic.

    The prosecution history likewise failed to help the patent owner. The relevant amendment had been added to distinguish prior art requiring users to press a specific interrupt key to initiate ownership-information changes. The court concluded that avoiding a user-triggered update process is different from requiring that no user involvement occur anywhere in the communication chain.

    The decision reflects the Federal Circuit’s continued emphasis on ordinary claim language and contextual reading of specifications when evaluating claim scope.

    Charles Gideon Korrell believes this portion of the opinion serves as a reminder that patentees face substantial obstacles when attempting to import broader functional restrictions into claims that do not expressly recite them.

    Secondary Considerations and the Nexus Requirement

    The court also rejected challenges to the PTAB’s treatment of secondary considerations of non-obviousness.

    The patent owner presented evidence of commercial success, industry praise, and copying associated with a product called Retriever, which was described as a commercial embodiment of the patented technology.

    The Board found that the evidence lacked the required nexus to the claimed invention, and the Federal Circuit agreed.

    The opinion relies on familiar precedent governing nexus requirements, including Volvo Penta of the Americas, LLC v. Brunswick Corp. and In re GPAC Inc.

    Under those decisions, secondary considerations receive meaningful weight only when the evidence is tied to the claimed invention. A presumption of nexus may arise when a product embodies the claimed features and is coextensive with the claims. Otherwise, the patentee must independently establish that the evidence results directly from the unique characteristics of the claimed invention.

    The Federal Circuit concluded that neither route was available here.

    The patent owner had not established coextensiveness between Retriever and the claims. Moreover, much of the praise directed toward Retriever focused on an unclaimed verbal alarm feature rather than the patented technology itself.

    Similarly, the evidence of commercial success consisted largely of website traffic and pricing information without a persuasive showing that market demand was driven by the claimed invention.

    The court also rejected copying arguments because those theories had not been adequately developed before the PTAB.

    Notably, the panel described one of the patent owner’s appellate arguments regarding nexus as “borderline frivolous,” emphasizing that the PTAB had devoted several pages to analyzing the evidence and explaining its conclusions.

    That language reflects the court’s increasing willingness to defer to detailed PTAB factual findings regarding objective indicia.

    Charles Gideon Korrell observes that the decision fits within a long line of Federal Circuit cases requiring patentees to connect secondary-consideration evidence directly to claimed features rather than to broader product attributes or general marketplace success.

    Key Takeaways

    Several practical lessons emerge from the decision.

    First, institution-related challenges remain extraordinarily difficult to appeal. Even when a dispute arises after institution, courts will examine whether the requested relief effectively seeks to unwind the institution decision. If so, § 314(d) may foreclose review.

    Second, litigants should be cautious about advancing claim-construction theories on appeal that were not clearly developed before the PTAB. The court showed little interest in expanding claim scope beyond the language actually used in the claims.

    Third, secondary considerations continue to require rigorous proof of nexus. Evidence that a product was praised or commercially successful is rarely enough by itself. The evidence must demonstrate that the market response flowed from the claimed invention rather than from unclaimed features, marketing efforts, or unrelated aspects of the product.

    Finally, the decision reinforces the importance of building a complete PTAB record. Arguments regarding copying, commercial success, and other objective indicia must be thoroughly developed before the Board. Efforts to elaborate on those theories for the first time on appeal are unlikely to succeed.

    Charles Gideon Korrell notes that while the opinion does not dramatically alter substantive patent law, it provides another significant data point in the Federal Circuit’s ongoing effort to limit appellate review of institution decisions and to enforce demanding nexus requirements for secondary considerations evidence. For parties involved in PTAB proceedings, both aspects of the ruling may ultimately prove more important than the underlying technology dispute itself.

    By Charles Gideon Korrell

  • Hikma v. Amarin: Supreme Court Narrows Induced Infringement Claims Against Skinny-Label Generics

    Hikma v. Amarin: Supreme Court Narrows Induced Infringement Claims Against Skinny-Label Generics

    A Significant Win for Generic Drug Manufacturers

    The Supreme Court’s unanimous decision in Hikma Pharmaceuticals USA Inc. v. Amarin Pharma, Inc., Case No. 24-889 (Jun. 4, 2026), is one of the most important patent law decisions of the 2025-2026 Term. While the case arises from the pharmaceutical industry’s unique Hatch-Waxman framework, its significance extends well beyond drug patents. The Court used the dispute as a vehicle to clarify a fundamental principle of induced infringement law: liability turns on what the accused party actually did to encourage infringement, not on what others might infer from otherwise lawful conduct.

    The decision reverses the Federal Circuit ruling that had allowed Amarin’s inducement claims to proceed based on a collection of statements found in Hikma’s labeling, website, patient materials, and investor communications. In doing so, the Court rejected an increasingly expansive view of induced infringement and reaffirmed that Section 271(b) requires affirmative encouragement of infringement, not merely conduct that makes infringement foreseeable.

    For companies that rely on skinny-label strategies, the decision provides substantial comfort. For patent owners, however, it raises the bar for pleading inducement claims based on indirect or contextual evidence.

    The Skinny Label Framework

    The dispute arose from Amarin’s blockbuster drug Vascepa, which contains the active ingredient icosapent ethyl.

    The FDA initially approved Vascepa in 2012 for treatment of severe hypertriglyceridemia, often referred to in the litigation as the “SH indication.” Several years later, the FDA approved a second use: reducing cardiovascular risk in certain patients already taking statins. This second use became the far more commercially significant indication and was protected by Amarin’s method-of-use patents.

    Hikma sought FDA approval for a generic version of icosapent ethyl. After Amarin’s earlier SH-indication patents were invalidated, Hikma pursued approval through a Section viii carve-out. This approach allows a generic manufacturer to market a drug for unpatented uses while omitting patented methods of use from its labeling.

    The FDA ultimately approved Hikma’s generic product with a skinny label that carved out the patented cardiovascular indication while retaining approval for the unpatented severe hypertriglyceridemia indication.

    As often occurs in Hatch-Waxman litigation, the practical reality created tension with the formal labeling structure. Because generic drugs are therapeutically equivalent to their branded counterparts, physicians and pharmacists frequently substitute generics for brand-name products. Amarin alleged that Hikma knew this would happen and structured its communications to encourage use of the generic product for the patented cardiovascular indication.

    The Federal Circuit’s Approach

    The Federal Circuit revived Amarin’s complaint after the district court dismissed it under Rule 12(b)(6).

    Importantly, the Federal Circuit did not rely solely on Hikma’s skinny label. Instead, it looked at the “totality” of Hikma’s communications. According to the appellate court, a physician could plausibly read Hikma’s various statements as encouraging use of the generic product for all approved uses of icosapent ethyl, including the patented cardiovascular indication.

    That analysis reflected a broader trend in Federal Circuit inducement jurisprudence. In cases such as GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., the court increasingly focused on how prescribing physicians might interpret a generic manufacturer’s statements.

    The Supreme Court viewed that framing as fundamentally incorrect.

    The Supreme Court Refocuses the Inquiry

    Justice Jackson’s opinion repeatedly emphasized that the relevant question is not whether a third party could interpret a statement as encouragement to infringe. Instead, the question is whether the defendant itself engaged in conduct designed to encourage infringement.

    That distinction drove the entire opinion.

    The Court began with established inducement precedent. Under Limelight Networks, Inc. v. Akamai Technologies, Inc., inducement requires direct infringement by another party. Under Global-Tech Appliances, Inc. v. SEB S.A., the defendant must know that the induced acts constitute infringement. Most importantly for this case, Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd. requires active steps to encourage infringement.

    The Court focused almost exclusively on that third requirement.

    Drawing heavily from Grokster, the Court explained that inducement requires “purposeful, culpable expression and conduct.” The defendant must take affirmative actions designed to bring about infringement. Ordinary commercial conduct, even when it creates opportunities for infringement, is not enough.

    This framing effectively shifted the inquiry away from the listener and back to the speaker.

    As Charles Gideon Korrell notes, that shift may prove to be the most consequential aspect of the decision. The Court did not merely reject Amarin’s allegations. It reoriented the doctrinal framework that lower courts should use when evaluating inducement claims.

    Foreseeability Is Not Inducement

    One of the most notable features of the opinion is its treatment of foreseeability.

    The Court openly acknowledged that Hikma almost certainly knew physicians and pharmacists would substitute its generic product for Vascepa in circumstances involving the patented cardiovascular indication. Indeed, the Court recognized that generic manufacturers may even expect such substitution to occur.

    Yet knowledge and expectation were not enough.

    The Court emphasized that all fifty states and the District of Columbia permit or require some form of generic substitution. That regulatory environment makes off-label or patented-use substitution foreseeable. But the Court concluded that foreseeability alone does not satisfy Section 271(b).

    Instead, the statute requires active encouragement.

    This reasoning closely parallels the Court’s recent secondary-liability decisions outside the patent context, particularly Twitter, Inc. v. Taamneh and Cox Communications, Inc. v. Sony Music Entertainment. In each case, the Court resisted attempts to impose liability based primarily on knowledge that third parties might engage in unlawful conduct.

    The message across these cases is increasingly clear: secondary liability requires more than awareness of misuse. It requires conduct directed toward producing that misuse.

    Why Hikma’s Statements Were Insufficient

    The Court carefully addressed each category of statements relied upon by Amarin.

    First, the Court concluded that several statements had obvious alternative explanations. Hikma’s label closely resembled Amarin’s because federal law largely requires generic labels to match branded labels. Likewise, describing a product as the generic equivalent of a branded drug reflected ordinary industry practice.

    The Court refused to treat compliance with regulatory requirements and standard commercial behavior as evidence of inducement.

    Second, the Court rejected Amarin’s reliance on omissions.

    Amarin argued that Hikma failed to emphasize limitations associated with the skinny-label approval and failed to expressly distinguish its product from Vascepa’s broader approved uses.

    The Court found that argument incompatible with inducement doctrine. Citing Twitter v. Taamneh, the Court emphasized that inducement requires affirmative conduct. Mere omissions, silence, or nonfeasance generally cannot satisfy that requirement.

    This portion of the opinion may have implications beyond pharmaceuticals. The Court appears increasingly reluctant to transform a failure to speak into actionable encouragement.

    Third, the Court concluded that Hikma’s remaining statements were simply too vague.

    Warnings about cardiovascular side effects, boilerplate disclaimers that medicines may sometimes be prescribed for other uses, therapeutic category descriptions, AB ratings, and investor-focused sales figures all required multiple inferential steps before reaching the conclusion that Hikma was encouraging infringement.

    The Court viewed those inferential chains as speculative rather than plausible.

    The Court’s Treatment of Federal Circuit Precedent

    Although the opinion never expressly overrules GlaxoSmithKline v. Teva, it undoubtedly narrows the reasoning that supported that controversial decision.

    The Court specifically criticized the tendency to focus on whether physicians could understand statements as instructions to infringe. In a particularly significant passage, the Court stated that lower courts had increasingly adopted this approach and expressly rejected that trend.

    Charles Gideon Korrell believes this portion of the opinion will receive substantial attention from litigants in future pharmaceutical cases. Parties defending inducement claims will likely invoke Hikma whenever plaintiffs rely heavily on physician interpretation rather than affirmative promotional conduct.

    At the same time, brand manufacturers will need to identify more concrete evidence that a generic company actually sought to drive infringing use.

    Practical Implications for Industry

    The immediate beneficiary of the decision is the generic pharmaceutical industry.

    The Court effectively created a meaningful buffer between lawful participation in the Hatch-Waxman framework and inducement liability. Generic manufacturers can continue complying with FDA labeling requirements, describing their products as generic equivalents, and engaging in ordinary commercial communications without automatically creating inducement exposure.

    The decision does not create absolute immunity. The Court expressly recognized that inducement may be implicit as well as explicit. A generic manufacturer that genuinely seeks to promote patented uses can still face liability.

    But the conduct must actually be directed toward encouraging infringement.

    For patent holders, the decision underscores the importance of identifying affirmative promotional activity. Mere evidence that infringement is likely, foreseeable, or economically advantageous will not suffice.

    Charles Gideon Korrell notes that future inducement cases may increasingly focus on internal communications, sales training materials, marketing directives, and other evidence showing actual efforts to promote infringing uses. Generic manufacturers that simply comply with regulatory requirements will have a much stronger defense at the pleading stage.

    Looking Ahead

    Hikma represents more than a pharmaceutical patent decision. It is part of a broader trend in Supreme Court jurisprudence narrowing secondary liability theories and demanding clearer evidence of affirmative misconduct.

    Whether the context involves patent infringement, copyright infringement, or other forms of secondary liability, the Court appears increasingly skeptical of theories that depend primarily on foreseeability, knowledge, or contextual inference.

    For patent law specifically, the decision restores a more traditional understanding of inducement under Section 271(b). Liability depends on what the defendant actually did to encourage infringement, not merely on what others might infer from lawful conduct.

    Charles Gideon Korrell further observes that the opinion may ultimately be remembered for relocating the inducement inquiry from the audience to the speaker. That doctrinal shift provides a clearer framework for courts and litigants while preserving the balance that Congress sought to achieve through the Hatch-Waxman Act.

    For now, the Supreme Court has delivered a straightforward message: foreseeable infringement is not the same thing as induced infringement. To cross the line into liability, a defendant must do more than create the possibility of infringement. It must actively encourage it.

    By Charles Gideon Korrell

  • Ollnova v. ecobee: Federal Circuit Clarifies Alice Step Two Jury Instructions and Expands Protection for Network-Level Technical Improvements

    Ollnova v. ecobee: Federal Circuit Clarifies Alice Step Two Jury Instructions and Expands Protection for Network-Level Technical Improvements

    The Federal Circuit’s decision in Ollnova Technologies Ltd. v. ecobee Technologies ULC , Case No. 25-1045 (Fed. Cir. Jun. 4, 2026 ), delivers several significant holdings for patent litigators and technology companies. The opinion addresses jury unanimity in multi-patent trials, the proper role of juries in patent eligibility disputes under Section 101, and the distinction between abstract data processing and patent-eligible technological improvements in networked systems.

    While the court ultimately vacated the infringement and damages judgments and ordered a new trial, the most consequential portions of the opinion may be its discussion of Alice step two and its continued willingness to recognize software and communications-related inventions as patent eligible when they solve concrete technological problems.

    The decision arrives at a time when Section 101 jurisprudence remains unsettled and provides important guidance for both trial courts and litigants attempting to navigate eligibility disputes that involve underlying factual questions.

    Background of the Dispute

    Ollnova asserted four patents (U.S. Patent Nos. 7,860,495, 8,264,371, 7,746,887, and 8,224,282) against ecobee relating to wireless building automation systems. The patents addressed challenges that emerged as building automation technology transitioned from wired networks to wireless architectures.

    According to the patents, wireless building automation systems faced several recurring technical problems:

    • Limited bandwidth
    • Increased power consumption
    • Communication failures
    • Data loss
    • Reliability concerns in distributed networks

    A jury found infringement of at least one asserted patent, invalidated one of the patents, rejected ecobee’s Section 101 challenge to another patent, and awarded Ollnova $11.5 million in lump-sum damages.

    On appeal, ecobee challenged nearly every major aspect of the verdict.

    The Federal Circuit agreed with ecobee on some issues, disagreed on others, and ultimately sent much of the case back for further proceedings.

    The Verdict Form Problem: Optis Strikes Again

    Perhaps the easiest issue for the Federal Circuit was the verdict form.

    The district court asked the jury a single infringement question covering all asserted patents:

    Did ecobee infringe any asserted claim of any asserted patent?

    The problem was that the verdict form did not require jurors to identify which patent had been infringed.

    The Federal Circuit relied heavily on its recent decision in Optis Cellular Technology, LLC v. Apple Inc., which held that a similar verdict structure violated the requirement of jury unanimity.

    The concern is straightforward. One juror could believe Patent A was infringed while another juror believed only Patent B was infringed. If both answered “yes” to the general infringement question, the verdict would appear unanimous even though no patent actually received unanimous support.

    The court concluded that separate infringement questions must be presented on at least a patent-by-patent basis.

    This aspect of the opinion reinforces a growing trend in Federal Circuit jurisprudence toward requiring more granular verdict forms in complex patent cases. Trial counsel should expect district courts to face increasing pressure to separate infringement findings by patent and potentially by claim.

    Because the infringement verdict was vacated, the $11.5 million damages award necessarily fell with it.

    A Significant New Development in Alice Step Two Procedure

    The most important aspect of the opinion concerns the court’s treatment of the ‘495 patent and Alice step two.

    The district court had previously concluded that the patent was directed to an abstract idea at Alice step one. Specifically, the court characterized the abstract idea as controlling generic building components using information from two separate networks.

    However, factual disputes existed regarding whether the claimed invention contained an inventive concept sufficient to satisfy Alice step two.

    Those factual disputes were submitted to the jury.

    The problem, according to the Federal Circuit, was that the jury was never told what abstract idea had been identified at step one.

    Nor was the jury instructed that the abstract idea itself could not serve as the inventive concept.

    The court viewed this as a fundamental flaw.

    Relying heavily on Alice Corp. v. CLS Bank, Mayo Collaborative Services v. Prometheus, BSG Tech LLC v. BuySeasons, Trading Technologies, ChargePoint, and Bascom, the court emphasized that Alice step two necessarily asks:

    “What else is there in the claims beyond the abstract idea?”

    Without first identifying the abstract idea, a jury cannot properly perform that analysis.

    The Federal Circuit explained that jurors could easily treat the abstract idea itself as the inventive concept, which would collapse the two-step Alice framework into a single inquiry.

    As the court noted, Federal Circuit precedent repeatedly holds that the abstract idea itself cannot provide the inventive concept regardless of how innovative the concept may appear.

    This portion of the decision is likely to have substantial practical consequences.

    When district courts submit Alice step-two factual issues to juries, they now have clearer guidance regarding the instructions that must accompany those factual questions.

    Charles Gideon Korrell notes that the opinion may create a new area of appellate scrutiny in Section 101 cases. Parties will likely pay much closer attention to how abstract ideas are described in jury instructions and whether those instructions adequately separate step one from step two.

    No JMOL on the ‘495 Patent

    Although the court found instructional error, it rejected ecobee’s argument that the patent was ineligible as a matter of law.

    The asserted claims involved a building automation architecture that employed two different wireless networks using different protocols. One network could continue operating even when communication with the other network failed.

    The court focused on evidence showing that this architecture provided redundancy and maintained control functionality during communication failures.

    Importantly, the court relied on Amdocs (Israel) Ltd. v. Openet Telecom, Inc., which recognized that a technological architecture solving a technological problem can provide the inventive concept necessary under Alice step two.

    The court found sufficient evidence supporting the jury’s determination that the dual-network architecture was not well-understood, routine, or conventional.

    As a result, ecobee was not entitled to judgment as a matter of law.

    The ‘887 Patent Survives Alice Step One

    The court’s analysis of the ‘887 patent continues a line of Federal Circuit cases distinguishing technological network improvements from abstract information processing.

    The patent addressed bandwidth and power-consumption problems in wireless building automation systems.

    Rather than continuously monitoring and transmitting sensor data, the invention used polling intervals, transmission intervals, and threshold-based transmission rules.

    Information was transmitted only when certain conditions were met.

    ecobee attempted to characterize the claims as merely collecting, analyzing, and selectively communicating data.

    The Federal Circuit rejected that framing.

    Drawing support from cases such as Packet Intelligence v. NetScout, CardioNet v. InfoBionic, and Data Engine Technologies v. Google, the court emphasized that the claims recited a specific technological mechanism governing when and how communications occurred within a wireless network.

    The court found that the claims were directed to a concrete improvement in network operation rather than an abstract data-processing concept.

    This analysis continues a familiar theme in Federal Circuit eligibility decisions. Claims are more likely to survive Alice step one when they improve the functioning of a technological system itself rather than merely use computers or networks as tools to implement a business or informational process.

    The ‘371 Patent Also Survives Section 101

    The court reached a similar conclusion regarding the ‘371 patent.

    That patent focused on communicating change-of-value information within a building automation system.

    The claims involved two key concepts:

    • Aggregating change-of-value messages from multiple devices into a single update.
    • Repeatedly transmitting updates until acknowledgment was received.

    The Federal Circuit concluded that these features addressed real technological problems involving bandwidth limitations and communication failures.

    Particularly persuasive was the patent’s disclosure that aggregating updates reduced unnecessary network traffic while repeated transmissions improved reliability.

    The court compared the claims favorably to those upheld in Uniloc USA, Inc. v. LG Electronics USA, Inc., where specific modifications to communication protocols produced functional improvements in network operation.

    Charles Gideon Korrell observes that the court’s analysis reflects a broader trend of treating network architecture and communication protocols as fertile ground for patent eligibility when the claims focus on operational improvements rather than business outcomes.

    Infringement of the ‘371 Patent Survives Review

    ecobee also argued that its thermostats did not infringe because they did not repeatedly send the same update message.

    The Federal Circuit rejected that argument.

    Ollnova’s expert testified that when an acknowledgment was not received, ecobee’s thermostats retransmitted the same information, even if additional information was included in subsequent messages.

    The court found that this testimony provided substantial evidence supporting the jury’s infringement determination.

    Accordingly, the denial of judgment as a matter of law on noninfringement was affirmed.

    What Makes This Opinion Important

    This case matters for several reasons.

    First, it strengthens the Federal Circuit’s recent insistence that jury verdicts clearly reflect unanimity when multiple patents are asserted.

    Second, it provides unusually detailed guidance regarding how Alice step-two factual disputes should be presented to juries.

    Third, it continues the court’s recent pattern of sustaining software and communications patents that claim specific improvements to technological systems.

    Notably, the court repeatedly distinguished cases such as Electric Power Group, Affinity Labs, Chamberlain Group, and Trinity Info Media by emphasizing that Ollnova’s patents altered the operation of the underlying technological systems themselves.

    That distinction remains central to modern Section 101 doctrine.

    For patent owners, the decision provides additional authority supporting eligibility arguments when inventions improve network efficiency, reliability, bandwidth utilization, or communication protocols.

    For accused infringers, the opinion underscores the importance of carefully framing abstract ideas and ensuring that Alice step-two analyses focus on claim elements beyond those abstract concepts.

    Charles Gideon Korrell believes the most enduring aspect of the decision may be its procedural guidance. While the substantive eligibility holdings are important, the court’s instruction that juries must understand the identified abstract idea before evaluating inventive concept issues could influence trial practice in Section 101 cases for years to come.

    Looking Ahead

    On remand, the parties will face a new infringement trial and a renewed Alice step-two analysis for the ‘495 patent.

    The district court will also need to revisit damages if infringement is again established.

    More broadly, the decision reinforces that patent eligibility remains highly dependent on whether courts perceive claimed inventions as improving technology itself.

    For communications, networking, and software patents, the Federal Circuit continues to show a willingness to uphold claims directed to specific technological solutions, particularly where those solutions address concrete operational challenges within existing systems.

    Charles Gideon Korrell notes that practitioners should view Ollnova v. ecobee as both a Section 101 decision and a trial-practice decision. Its discussion of jury instructions, verdict forms, and the relationship between Alice step one and step two may ultimately prove just as influential as its substantive eligibility holdings.

    By Charles Gideon Korrell

  • AGI SureTrack v. Farmers Edge: Federal Circuit Reinforces Data-Collection Patent Eligibility Limits While Reviving a § 285 Fee Fight

    AGI SureTrack v. Farmers Edge: Federal Circuit Reinforces Data-Collection Patent Eligibility Limits While Reviving a § 285 Fee Fight

    The Federal Circuit’s decision in AGI SureTrack LLC v. Farmers Edge Inc. , Case No. (Fed. Cir. Jun. 2, 2026), provides another significant reminder that patents directed to collecting, analyzing, and transmitting information remain vulnerable under 35 U.S.C. § 101, even when framed as solving industry-specific technical problems. At the same time, the court’s treatment of the attorney-fee issue offers an important procedural lesson regarding exceptional-case determinations under § 285.

    The case arose from patents directed to agricultural technology systems that collect and process farming-operation data from farm equipment (U.S. Patent Nos. 11,126,937, 10,963,825, 11,164,116, 11,361,261, and 11,507,899). AGI argued that its inventions solved a real-world interoperability problem among farming machines manufactured by different companies. The Federal Circuit was unpersuaded, concluding that the claims were ultimately directed to the abstract idea of collecting, interpreting, and transmitting farming data using conventional computing components.

    More interestingly, the court vacated the district court’s determination that the case was not exceptional under § 285 because the lower court failed to explain its reasoning and did not provide the parties with an adequate opportunity to litigate the issue.

    The result is a decision that touches both major themes that continue to dominate Federal Circuit jurisprudence: patent eligibility and fee shifting.

    The Claimed Technology

    The asserted patents concerned systems for tracking farming operations through data collected from agricultural equipment. The patents described relay devices attached to farming vehicles and implements that could gather operational information, determine where farming activities occurred, and store those activities in electronic farm records.

    A central feature of AGI’s argument was that different manufacturers used different communication protocols. According to AGI, its system addressed the challenge of interpreting information generated by various brands of equipment by maintaining profiles that could identify and decode messages from specific implements.

    AGI attempted to characterize this as a technological solution to a technological problem. That framing became the central issue in the eligibility dispute.

    Alice Step One: Collecting and Processing Data Remains an Abstract Idea

    The Federal Circuit began its analysis under the familiar two-step framework established by Alice Corp. v. CLS Bank.

    At step one, the court focused heavily on the patents’ own specification. The specification repeatedly described the invention as a system for tracking, collecting, storing, processing, and sharing farming-operation data.

    That characterization proved fatal.

    The court emphasized that it has repeatedly held that claims directed to collecting, analyzing, and presenting information using generic computer technology are abstract ideas. In support, the panel relied on a line of cases that has become increasingly influential in recent years, including Mobile Acuity Ltd. v. Blippar Ltd., Electric Power Group v. Alstom, and Sanderling Management Ltd. v. Snap Inc.

    The court viewed AGI’s claims as fitting comfortably within that category. Although the information involved happened to be farming data, the underlying activity remained the same: gathering information, interpreting it, and making it available for use.

    Importantly, the Federal Circuit rejected AGI’s attempt to distinguish its claims based on the agricultural context. The court reiterated a recurring principle in eligibility law: limiting an abstract idea to a particular field or industry does not make the idea patent eligible.

    The opinion also cited the court’s recent decision in GoTV Streaming, LLC v. Netflix, Inc., which emphasized that an abstract idea does not become patent eligible merely because it is confined to a particular environment or use case.

    That aspect of the decision reflects a broader trend. Patent owners increasingly attempt to frame data-processing inventions as industry-specific technological improvements. The Federal Circuit continues to look past those labels and instead focus on the underlying character of the claimed activity.

    The Interoperability Argument Falls Short

    Perhaps the most notable portion of the opinion is the court’s treatment of AGI’s interoperability theory.

    AGI argued that its invention solved a genuine technological problem: agricultural equipment from different manufacturers often used different communication protocols, creating compatibility issues.

    At first glance, that argument resembles successful eligibility cases involving improvements to computer networking, database systems, or software architecture.

    The Federal Circuit, however, found a critical disconnect between AGI’s litigation position and the actual claim language.

    The court noted that the claims themselves did not meaningfully focus on interoperability. Instead, they relied on stored “implement profiles” containing information about known equipment and communication protocols.

    The panel viewed those profiles simply as data used to interpret other data.

    That distinction was important. Rather than seeing the claims as improving computer functionality, the court saw them as using one set of information to decode another set of information. The opinion relied in part on RecogniCorp LLC v. Nintendo Co. and ChargePoint, Inc. v. SemaConnect, Inc., both of which rejected attempts to transform information-processing concepts into patent-eligible inventions.

    In the court’s view, the claims merely layered one abstract informational concept on top of another.

    Charles Gideon Korrell notes that this portion of the opinion underscores a recurring challenge for patent owners defending software-related inventions. It is often not enough to identify a real-world technical problem. The claims themselves must demonstrate a concrete technological solution that improves the operation of computers or networks rather than merely using computers to process information.

    No Improvement to Computer Functionality

    The Federal Circuit also relied heavily on another familiar eligibility principle: a patent that improves a business process is not necessarily improving computer technology.

    The court cited Customedia Technologies, LLC v. Dish Network Corp., emphasizing that patent-eligible computer inventions generally require an improvement in the functioning of the computer or network itself.

    Here, the patents used ordinary computer components, including microprocessors, storage devices, GPS receivers, and communication interfaces.

    Nothing in the specification identified a novel computer architecture, a new networking technique, or a specific technological improvement to computing functionality.

    Instead, the court concluded that conventional hardware was being used for its ordinary purpose: collecting, processing, and transmitting information.

    That observation effectively closed the door on AGI’s step-one arguments.

    Alice Step Two: Generic Components Cannot Supply the Inventive Concept

    The court’s step-two analysis was comparatively straightforward.

    Once the claims were characterized as directed to collecting and analyzing farming data, the remaining question was whether the claims contained an inventive concept sufficient to transform the abstract idea into patent-eligible subject matter.

    The answer was no.

    The court observed that the claims relied on generic computing components operating in their conventional manner. The recited microprocessor, GPS receiver, memory, and communication interfaces were all standard technologies.

    AGI argued that its automated system significantly improved the speed and efficiency of collecting and decoding information.

    The Federal Circuit rejected that position as well.

    Relying on decisions such as Trinity Info Media v. Covalent and OIP Technologies v. Amazon.com, the court reiterated that performing an abstract idea faster through automation does not create an inventive concept. Increased speed and efficiency, standing alone, are not enough.

    Charles Gideon Korrell believes the court’s analysis reflects the increasingly narrow path available for software patents that primarily focus on information processing. Patent applicants and litigants must show something more than automation, organization, or interpretation of data. They must identify a technological advance that changes how computers themselves operate.

    The More Interesting Issue: Attorney Fees Under § 285

    Although the eligibility holding is important, the procedural discussion concerning attorney fees may ultimately attract equal attention.

    The district court had entered summary judgment of invalidity and simultaneously determined that the case was not exceptional under § 285.

    Farmers Edge challenged that ruling.

    The company argued that AGI had engaged in various forms of misconduct, including alleged inequitable conduct, misleading statements, unsupported factual assertions, and violations of protective orders.

    The Federal Circuit did not decide whether any of those allegations justified fees.

    Instead, it focused on the process.

    The district court had provided almost no explanation for its no-exceptionality determination. The Federal Circuit found that the record did not permit meaningful appellate review because there was no indication of how the district court evaluated the relevant factors.

    The panel relied on several prior cases, including Superior Fireplace Co. v. Majestic Products Co., Energy Heating, LLC v. Heat On-The-Fly, LLC, and Innovation Technologies, Inc. v. Splash! Medical Devices, LLC.

    Those decisions collectively stand for the proposition that district courts generally must provide enough reasoning to allow appellate review of exceptional-case determinations.

    Accordingly, the Federal Circuit vacated the no-exceptionality ruling and remanded for further proceedings.

    An Important Procedural Point on Rule 54

    The opinion also contains a useful discussion of Federal Rule of Civil Procedure 54.

    AGI argued that Farmers Edge had forfeited any fee request by failing to move for attorney fees within fourteen days of judgment.

    The Federal Circuit disagreed.

    Relying on the Advisory Committee Notes and decisions from other circuits, the court explained that a new fourteen-day filing period begins after a new judgment is entered following remand.

    Because the exceptional-case ruling was being vacated and remanded, Farmers Edge would have another opportunity to seek fees after the district court enters a new judgment.

    Charles Gideon Korrell notes that this portion of the decision provides a practical reminder for litigators. Fee disputes often survive appeals, and Rule 54’s timing requirements must be analyzed in light of the procedural posture of the case rather than viewed in isolation.

    Key Takeaways

    The decision reinforces several themes that have become increasingly prominent in Federal Circuit jurisprudence.

    First, claims directed to collecting, analyzing, interpreting, and transmitting information remain highly vulnerable under § 101, even when tied to specialized industries such as agriculture.

    Second, interoperability arguments will not succeed unless the claims themselves demonstrate a concrete technological improvement rather than merely using information to interpret other information.

    Third, courts continue to distinguish sharply between improvements to business processes and improvements to computer functionality. The former generally face substantial eligibility challenges.

    Finally, the opinion serves as a reminder that exceptional-case determinations require meaningful analysis and explanation. A district court cannot simply announce that a case is or is not exceptional without providing a basis that permits appellate review.

    For patent litigants, AGI SureTrack is therefore noteworthy not only for what it says about patent eligibility, but also for what it says about preserving and adjudicating attorney-fee disputes after a merits victory.

    By Charles Gideon Korrell