Technology Information Law Blog by Charles Gideon Korrell

Author: gideon.korrell

  • Federal Circuit Ruling in NexStep v. Comcast: Key Patent Law Takeaways

    On October 24, 2024, the United States Court of Appeals for the Federal Circuit issued a significant decision in NexStep, Inc. v. Comcast Cable Communications, LLC, affirming the district court’s ruling of non-infringement on two patents owned by NexStep. The case raised important questions about claim construction, the doctrine of equivalents, and evidentiary requirements for proving infringement. Below, we break down the key patent law principles addressed by the court.

    1. Claim Construction and the Meaning of “VoIP”

    One of the central disputes in the case revolved around the meaning of “VoIP” (Voice over Internet Protocol) in NexStep’s U.S. Patent No. 8,885,802 (‘802 patent). The court reaffirmed that claim terms must be interpreted as understood by a person skilled in the art at the time of the invention and that industry-standard definitions are crucial when a term is widely recognized.

    • The district court had construed “VoIP” to mean “protocols and data formats for transmitting voice conversations over a packet-switched network, such as the Internet.”
    • NexStep argued for a broader definition that would include any form of audio data transmission.
    • The Federal Circuit affirmed the district court’s narrower definition, holding that the term “VoIP” was well understood in the industry to require two-way voice communication, not just one-way audio transmission.

    Key Takeaway:

    Claim construction remains a critical aspect of patent litigation, and courts rely heavily on technical dictionaries, industry standards, and expert testimony to determine the proper scope of disputed terms.

    2. Doctrine of Equivalents and the “Single Action” Limitation

    The second major issue involved NexStep’s U.S. Patent No. 8,280,009 (‘009 patent), which described a “concierge device” that facilitates technical support sessions through a single user action. NexStep claimed that Comcast’s troubleshooting tools infringed this patent under the doctrine of equivalents, even though Comcast’s system required multiple button presses rather than a single action.

    • The jury initially found no literal infringement but ruled that Comcast’s system infringed under the doctrine of equivalents.
    • However, the district court overturned the jury’s finding, granting judgment as a matter of law (JMOL) for Comcast because NexStep’s expert, Dr. Ted Selker, failed to provide particularized testimony and linking argument showing why multiple actions were equivalent to a “single action.”

    Key Takeaway:

    To succeed under the doctrine of equivalents, patentees must provide specific, well-reasoned testimony explaining how the accused product meets each limitation of the claim in a substantially equivalent way. Generalized assertions of similarity are insufficient.

    3. Evidentiary Burdens in Patent Infringement Cases

    The decision highlights the strict evidentiary requirements needed to establish infringement under the doctrine of equivalents. The court emphasized three key principles:

    1. Element-by-Element Comparison:
      • A plaintiff must prove equivalence for each claim element, not just argue that the overall system is similar.
    2. Particularized Testimony and Linking Argument:
      • The plaintiff’s expert must provide detailed explanations connecting specific features of the accused product to the claimed invention.
    3. Avoiding Generalized Testimony:
      • Simply stating that an accused product functions “in the same way” as the claimed invention without further analysis is insufficient.

    The court concluded that NexStep’s expert testimony was too vague and conclusory to support an infringement verdict under the doctrine of equivalents.

    Key Takeaway:

    Courts are highly skeptical of broad assertions of equivalence without detailed, rigorous evidence. Patent litigants must ensure that their expert testimony is precise, thorough, and directly tied to the claim language.

    Final Thoughts

    The Federal Circuit’s decision in NexStep v. Comcast reinforces the importance of careful claim drafting, precise claim construction, and robust evidentiary standards in proving infringement. The ruling serves as a cautionary tale for patent holders seeking to rely on the doctrine of equivalents—generalized arguments and vague expert testimony will not withstand judicial scrutiny.

    For companies engaged in patent litigation, this case underscores the need to build a strong factual and expert witness foundation to support infringement claims. As courts continue to tighten evidentiary standards, litigants must ensure that their arguments are well-supported, their claim construction is well-reasoned, and their expert testimony is compelling and detailed.

    By Charles Gideon Korrell

  • Federal Circuit Decision in UTTO Inc. v. Metrotech Corp.: Key Takeaways on Patent Law

    The Federal Circuit issued its decision in UTTO Inc. v. Metrotech Corp., a case centered on patent infringement and state-law tort claims. This decision provides significant insights into claim construction, infringement analysis, and the role of economic torts in intellectual property disputes. Below, we explore the key patent law issues addressed by the court.

    Background of the Case

    UTTO Inc. owns U.S. Patent No. 9,086,441 (the ‘441 patent), which covers a method for detecting underground utility lines using GPS technology and predefined buffer zones. UTTO sued Metrotech Corp. for patent infringement, alleging that Metrotech’s RTK-Pro locator device, which features a “walk back” function, infringed its patent. Additionally, UTTO claimed tortious interference with prospective economic advantage under California law.

    The district court dismissed UTTO’s claims, holding that UTTO failed to sufficiently plead infringement and failed to demonstrate an independently wrongful act by Metrotech. UTTO appealed, leading to this decision by the Federal Circuit.

    Claim Construction: Defining “Group of Buried Asset Data Points”

    A central issue in the case was the construction of the term “group of buried asset data points” as used in UTTO’s patent. The district court had determined that this phrase required at least two data points per buried asset, leading to the conclusion that Metrotech’s product, which allegedly used only a single point, did not infringe.

    The Federal Circuit vacated this aspect of the lower court’s ruling, finding that additional claim construction analysis was required. The appellate court noted that while the ordinary meaning of “group” may imply two or more, the specification of the ‘441 patent included references to “one or more buried asset data points.” This raised ambiguity as to whether a single data point could satisfy the claim language. The court remanded the case for further claim construction proceedings.

    Infringement Analysis and the Doctrine of Equivalents

    Beyond claim construction, the Federal Circuit reviewed the district court’s dismissal of UTTO’s infringement claims. The district court had ruled that because Metrotech’s device used only a single data point, it did not infringe the ‘441 patent. Furthermore, the district court rejected UTTO’s doctrine of equivalents argument, which was not challenged on appeal.

    The Federal Circuit emphasized that, depending on the final claim construction, UTTO might still establish infringement. The appellate court’s decision allows UTTO to continue litigating its claims under a broader interpretation of its patent language.

    State-Law Tort Claim: Economic Interference and Antitrust Considerations

    UTTO also alleged that Metrotech engaged in tortious interference with prospective economic advantage by misrepresenting its software capabilities to Honeywell, a potential UTTO customer. UTTO argued that Metrotech falsely claimed it could provide data in a format compatible with UTTO’s software, thereby preventing UTTO from securing a deal with Honeywell.

    The Federal Circuit upheld the district court’s dismissal of this claim, reasoning that UTTO failed to allege an “independently wrongful act.” The court found that Metrotech’s statements did not constitute fraud under California’s Unfair Competition Law. Moreover, UTTO’s antitrust-based argument—that Metrotech unlawfully tied its software to its hardware—failed because UTTO did not adequately allege that Metrotech had market power in the tying-product market.

    Key Takeaways for Patent Litigants

    This decision highlights several important principles in patent litigation:

    1. Claim Construction Matters: The meaning of disputed terms should be carefully argued, particularly when a term’s ordinary meaning conflicts with the patent specification.
    2. Intrinsic and Extrinsic Evidence: Courts will consider intrinsic evidence (the patent’s claims and specification) but may also examine extrinsic evidence (such as expert testimony) when necessary to resolve ambiguity.
    3. Doctrine of Equivalents Limitations: If direct infringement is not established, claimants must present compelling evidence when arguing that an accused product performs substantially the same function in the same way to achieve the same result.
    4. Economic Interference Claims Require Stronger Allegations: Allegations of fraud or anticompetitive conduct must be well-supported with specific factual assertions.

    Conclusion

    The Federal Circuit’s decision in UTTO Inc. v. Metrotech Corp. serves as a crucial reminder of the complexities involved in patent infringement cases and economic tort claims. By remanding the case for further claim construction, the court has provided UTTO another opportunity to argue its infringement case, while reaffirming strict pleading requirements for state-law tort claims. Patent owners and litigants should take note of the importance of precise claim drafting and robust evidence when pursuing intellectual property disputes.

    By Charles Gideon Korrell

  • Court of Appeals Reverses Dismissal in AlexSam v. Aetna: Key Patent Law Issues Explained

    The Federal Circuit’s recent decision in AlexSam, Inc. v. Aetna, Inc. (Case No. 22-2036) highlights critical issues in patent licensing, direct and indirect infringement, and pleading standards in patent litigation. The court vacated and remanded parts of the district court’s dismissal, finding that key errors had been made in assessing AlexSam’s claims against Aetna. Below, we break down the major legal issues addressed in the opinion.

    Background of the Case

    AlexSam, Inc. alleged that Aetna, Inc. infringed U.S. Patent No. 6,000,608 (the ‘608 patent), which covers a multifunction card system used for financial transactions, including medical savings accounts. The lawsuit focused on Aetna’s Mastercard- and VISA-branded products, which AlexSam claimed infringed its patent both directly and indirectly.

    The district court dismissed AlexSam’s claims, finding that Aetna was covered by a prior license agreement with Mastercard and that AlexSam failed to plead sufficient facts to support claims of direct or indirect infringement for the VISA-branded products. The Federal Circuit reviewed these rulings de novo and vacated the district court’s decision in significant respects.

    Key Patent Law Issues Addressed

    1. License Defense in Patent Infringement Cases

    A major issue in the case was whether Aetna’s Mastercard-branded products were covered by a 2005 license agreement between AlexSam and Mastercard. The district court held that all transactions involving Mastercard’s financial network fell within the license’s scope, barring AlexSam’s infringement claims. However, the Federal Circuit found that the district court oversimplified the license agreement.

    • The agreement only covered transactions involving activation or adding value to an account.
    • Not all of the allegedly infringing activities by Aetna’s Mastercard-branded products fell within this scope.
    • Because the patent claims at issue were broader than the license’s scope, some accused transactions might not be licensed.

    As a result, the Federal Circuit vacated the district court’s finding that Aetna was protected by the license agreement, allowing AlexSam’s claims to proceed for further fact-finding.

    2. Direct Infringement: What Constitutes ‘Making’ or ‘Using’ a Patented System?

    AlexSam argued that Aetna directly infringed its patent by making and using the VISA-branded products. The district court dismissed this claim, reasoning that only third-party customers, and not Aetna itself, could have performed the infringing acts.

    The Federal Circuit disagreed, emphasizing that:

    • A complaint does not need to allege infringement on an element-by-element basis but must provide a plausible factual basis for infringement.
    • The complaint plausibly alleged that Aetna controlled and operated the system in a way that constituted making and using the patented invention.
    • The district court erred in resolving disputed factual issues about Aetna’s role at the motion-to-dismiss stage.

    The court reinstated AlexSam’s direct infringement claim, allowing it to proceed to discovery.

    3. Induced and Contributory Infringement: When Is a Party Liable for Third-Party Actions?

    AlexSam also claimed that Aetna induced infringement by instructing and encouraging customers to use its VISA-branded products in an infringing manner. The Federal Circuit found AlexSam’s allegations sufficient to survive dismissal.

    • AlexSam alleged that Aetna provided marketing materials and instructions that led customers to use the products in ways that infringed the ‘608 patent.
    • Aetna had knowledge of the ‘608 patent due to prior notice letters from AlexSam.
    • The allegations plausibly suggested that Aetna’s conduct met the intent requirement for inducement.

    For contributory infringement, the court found that AlexSam plausibly alleged that Aetna provided a Processing Hub, which had no substantial non-infringing uses and was central to the accused system.

    These findings reinforced that indirect infringement claims can survive if they sufficiently allege knowledge, intent, and the absence of substantial non-infringing uses.

    Implications for Patent Holders and Defendants

    The Federal Circuit’s ruling underscores several important principles for patent litigation:

    1. License Scope Matters: Courts will scrutinize whether a license truly covers the accused activities rather than broadly assuming that all transactions are licensed.
    2. Pleading Standards Are Flexible: Patent complaints need not include element-by-element analysis but must provide a plausible basis for infringement claims.
    3. Defendants’ Roles Must Be Factually Assessed: Dismissal is inappropriate when factual disputes exist about a defendant’s control over an infringing system.
    4. Inducement and Contributory Infringement Are Viable Claims: Even without direct infringement by the defendant, liability may arise from instructing or facilitating third-party infringement.

    By clarifying these issues, the Federal Circuit has set the stage for further litigation in the district court, where AlexSam will now have the opportunity to present evidence to support its claims.

    Conclusion

    The AlexSam v. Aetna decision highlights the complexity of patent litigation, particularly in cases involving licensing agreements, direct infringement theories, and allegations of inducement. As the case returns to the district court, it will provide further insight into how courts interpret patent claims in the context of financial and healthcare transaction systems. For patent holders and defendants alike, this ruling is a reminder of the critical role that careful drafting, strategic litigation, and early factual development play in patent cases.

    By Charles Gideon Korrell

  • Federal Circuit Revives False Advertising Claim Against Crocs: Key Patent Law Issues

    The Federal Circuit recently issued a significant ruling in Crocs, Inc. v. Effervescent, Inc., reversing the District Court for the District of Colorado’s summary judgment in favor of Crocs, Inc. The ruling addresses key issues at the intersection of patent law and false advertising under the Lanham Act, providing a critical clarification on how misrepresentations regarding patent protection can impact commercial competition.

    Background of the Case

    The litigation between Crocs, Inc. and its competitors has spanned over a decade, with disputes arising over patent infringement, false advertising, and unfair competition. In this case, Crocs sued Dawgs, a competing footwear manufacturer, for patent infringement. In response, Dawgs counterclaimed, alleging that Crocs engaged in false advertising by misrepresenting that its proprietary material, “Croslite,” was patented when, in fact, it was not.

    The District Court’s Ruling

    The District Court granted summary judgment in favor of Crocs, holding that Dawgs failed to state a claim under Section 43(a) of the Lanham Act. The court determined that Crocs’ statements regarding its product’s patent status were akin to claims of inventorship and, under precedent established in Dastar Corp. v. Twentieth Century Fox Film Corp., such claims do not give rise to a cause of action under the Lanham Act.

    The Federal Circuit’s Decision

    On appeal, the Federal Circuit reversed the District Court’s decision, holding that false claims of patent protection can, in certain circumstances, form the basis for a false advertising claim under Section 43(a)(1)(B) of the Lanham Act. The court reasoned that:

    1. Misrepresentation of Patent Status Can Mislead Consumers – The court emphasized that Crocs’ statements about Croslite being “patented” could mislead consumers into believing that its competitors’ products were inferior or unauthorized copies, thereby affecting purchasing decisions.
    2. Distinguishing False Patent Claims from Authorship Claims – The court clarified that while Dastar precludes claims based on misrepresentation of authorship, it does not shield companies from liability when they falsely claim patent protection in a way that misrepresents the qualities of their products.
    3. Legal Standards for False Advertising Under the Lanham Act – The Federal Circuit reiterated that to establish a claim under Section 43(a)(1)(B), a plaintiff must show that a false or misleading statement was made in commercial advertising, deceived or had the tendency to deceive consumers, and was material to purchasing decisions. The court found that Dawgs sufficiently alleged these elements.

    Implications for Patent Law and False Advertising

    This ruling underscores the potential legal risks for companies that overstate the patent protection of their products. Businesses must ensure that their marketing materials accurately reflect their intellectual property status to avoid false advertising liability. The decision also signals that courts may be more willing to scrutinize patent-related claims in advertising, particularly when they have the potential to mislead consumers and stifle competition.

    Conclusion

    The Federal Circuit’s ruling in Crocs, Inc. v. Effervescent, Inc. highlights the fine line between intellectual property protection and misleading commercial statements. By reversing the summary judgment in favor of Crocs, the court reaffirmed that companies cannot use false claims of patent protection to gain an unfair competitive advantage. This case serves as an important precedent for businesses navigating the complex interplay between patent law and consumer protection statutes.

    By Charles Gideon Korrell

  • Federal Circuit Rules on Key Patent Infringement and Damages Issues in Provisur v. Weber

    The Federal Circuit recently issued a significant ruling in Provisur Technologies, Inc. v. Weber, Inc., addressing key issues in patent infringement, willfulness, and damages. The case involved Provisur’s patents covering food-processing machinery and Weber’s alleged infringement of those patents. The court’s decision clarifies several critical aspects of patent law, particularly in the areas of infringement standards, willfulness, and the use of the entire market value rule in determining damages.

    Background of the Case

    Provisur sued Weber for willful infringement of three patents—U.S. Patent Nos. 10,625,436; 10,639,812; and 7,065,936—related to food-slicing and packaging machinery. The jury found that Weber willfully infringed multiple claims of the patents, awarding Provisur over $10.5 million in damages. Weber appealed, challenging the district court’s rulings on infringement, willfulness, and damages.

    Key Legal Issues and Rulings

    1. Patent Infringement: Affirming and Reversing Jury Findings

    The court upheld the jury’s finding that Weber infringed the ’812 and ’436 patents but reversed the finding of infringement for the ’936 patent. A crucial issue was whether Weber’s SmartLoader product met the claimed “advance-to-fill” limitation. The court determined that Provisur failed to present sufficient evidence showing that the SmartLoader was readily configurable to operate in an infringing manner. Since customers did not have access to the necessary settings to modify the device for infringement, the court found no basis for the jury’s infringement determination on the ’936 patent and reversed that finding.

    2. Willful Infringement: Reversing the Jury’s Verdict

    For willfulness, the court held that the district court erred in admitting testimony that violated 35 U.S.C. § 298, which prohibits using an infringer’s failure to obtain legal advice as evidence of willfulness. Provisur’s expert improperly suggested that Weber’s lack of a legal opinion on infringement indicated willful intent. The court also found that the remaining evidence, including Weber’s internal patent-tracking matrix, did not establish specific intent to infringe. Consequently, the court reversed the willfulness finding.

    3. Damages: Rejecting the Entire Market Value Rule

    One of the most significant aspects of the ruling was the rejection of Provisur’s use of the entire market value rule (EMVR) to calculate damages. Under patent law, a patentee must apportion damages to the infringing feature unless they can prove that the patented feature drives demand for the entire product. The court found that Provisur’s expert testimony failed to provide any substantive evidence that the patented features were the primary drivers of customer demand. Because the slicing line included multiple components beyond the patented features, and no consumer surveys or market studies supported Provisur’s claims, the court ruled that applying the entire market value rule was inappropriate. As a result, the court ordered a new trial on damages.

    Implications of the Decision

    This ruling provides several important takeaways for patent litigation:

    • Clarifies Readily Configurable Standard: To prove infringement, a plaintiff must show that an accused device is not just theoretically capable of infringement but is readily configurable to infringe.
    • Limits Willfulness Arguments: The decision reinforces the restrictions of 35 U.S.C. § 298, preventing patentees from arguing willfulness based on an infringer’s failure to obtain legal advice.
    • Restricts Use of the Entire Market Value Rule: Patent holders seeking substantial damages must provide concrete evidence, such as customer demand studies, to justify using the entire product’s value as the royalty base.

    Conclusion

    The Federal Circuit’s decision in Provisur v. Weber underscores the importance of rigorous evidentiary standards in proving infringement, willfulness, and damages. The ruling provides much-needed clarity on the application of the entire market value rule and reinforces limitations on willfulness claims under § 298. As the case proceeds on remand for a new trial on damages, it will serve as an important reference for patent litigators navigating similar disputes in high-stakes intellectual property cases.

    Here is a link to a brief written on willful infringement.

    By Charles Gideon Korrell

  • Federal Circuit Vacates District Court’s Surprise Patent Ineligibility Ruling in Astellas v. Sandoz

    In a major rebuke to a district court’s handling of patent eligibility, the Federal Circuit has vacated a decision that invalidated Astellas’s pharmaceutical patent under 35 U.S.C. § 101—a ruling the lower court made on its own initiative, without either party raising the issue. The court’s strong reaffirmation of the “party presentation principle” signals a warning against judicial overreach in patent litigation.

    Background: The Overactive Bladder Treatment and the Patent Dispute

    Astellas Pharma, the manufacturer of Myrbetriq®, an extended-release formulation of mirabegron for overactive bladder (OAB), sued multiple generic drugmakers, including Sandoz, Lupin, and Zydus, for patent infringement under the Hatch-Waxman Act. The key patent at issue, U.S. Patent No. 10,842,780 (the ’780 patent), covered a sustained-release formulation of mirabegron that overcame the “food effect”—an issue where drug absorption varies significantly depending on whether the patient has eaten.

    During the litigation:

    • The generic manufacturers challenged the patent’s validity only under 35 U.S.C. § 112, arguing that the claims were not enabled, lacked written description, or were indefinite.
    • Sandoz explicitly waived arguments under §§ 102 (anticipation) and 103 (obviousness) before trial.
    • Neither side raised a challenge under 35 U.S.C. § 101 (patent eligibility).

    However, after a five-day bench trial, the district court unexpectedly ruled that the patent claims were invalid under § 101—a legal theory that had never been argued by the defendants. This ruling blindsided Astellas, prompting their appeal.

    Key Patent Law Issues Addressed

    1. Can a Court Invalidate a Patent on Grounds Not Raised by Either Party?

    The Federal Circuit’s resounding answer: No.

    The appeals court held that the district court violated the “party presentation principle”—a fundamental rule in U.S. litigation that courts must decide only the issues framed by the parties.

    The Supreme Court has repeatedly reinforced this principle, stating that courts should not act as “issue spotters” on behalf of litigants. The Federal Circuit echoed this, emphasizing:

    “It is for the parties—not the court—to chart the course of the litigation.”

    By introducing a new ground of invalidity sua sponte, the district court abused its discretion, undermining due process, and depriving Astellas of an opportunity to defend its patent.

    2. Is Patent Eligibility a Special Case Where a Court Can Rule on Its Own?

    No. The district court seemed to treat § 101 eligibility like a jurisdictional question, which courts must assess even if not raised. However, the Federal Circuit flatly rejected this view, clarifying that patent eligibility is subject to the same statutory presumption of validity under 35 U.S.C. § 282 as other validity defenses.

    The court noted:

    • The Supreme Court has never held that § 101 must be evaluated independently by courts.
    • Patent challengers bear the burden of proving invalidity—courts cannot assume this burden for them.

    3. Was the ’780 Patent’s “Food Effect” Solution Merely a Natural Law?

    The district court held that Astellas’s discovery of a sustained-release profile that eliminated the food effect was merely an application of a natural law, making it patent-ineligible under Mayo Collaborative Services v. Prometheus Labs (2012).

    The Federal Circuit avoided ruling on the merits of this issue, focusing instead on the procedural error. However, it hinted that the district court likely misunderstood the scope of § 101, as formulation patents like Astellas’s typically claim a non-naturally occurring composition—not a law of nature.

    Outcome and Key Takeaways

    IssueFederal Circuit Decision
    Court raising § 101 issue sua sponteAbuse of discretion—violates party presentation principle
    Treatment of § 101 as jurisdictionalError—validity challenges must be raised by parties
    Presumption of validity under § 282Applies equally to § 101 challenges
    Future of Astellas’s patentRemanded for ruling on infringement and § 112 validity defenses

    The Federal Circuit vacated the district court’s judgment and remanded the case for a proper adjudication—one limited to the issues actually raised by the parties (i.e., enablement, written description, and indefiniteness under § 112).

    What This Means for Future Patent Cases

    1. District Courts Must Stick to the Issues Raised

    This ruling strongly discourages judges from introducing new invalidity arguments. It reinforces that § 101 is not a jurisdictional test and that courts cannot invalidate patents sua sponte.

    2. Patent Defendants Cannot Rely on Courts to Raise Additional Defenses

    Generic manufacturers (and other patent challengers) must affirmatively raise § 101 defenses during litigation. A court cannot do their work for them.

    3. Clarifies That Formulation Patents Are Not Automatically “Natural Laws”

    While the Federal Circuit did not directly decide whether Astellas’s patent was ineligible under § 101, its reluctance to uphold the district court’s reasoning suggests that such pharmaceutical formulation patents remain patentable under existing law.

    Next Steps for Astellas

    On remand, Astellas’s patent infringement claims will continue—but the case will focus only on the § 112 defenses (enablement, written description, and indefiniteness). The generics will have to prove these defenses—which are often harder to establish than obviousness or anticipation.

    See also:

    Article relating to patent office interim guidance on subject matter elegibility.

    By Charles Gideon Korrell

  • Federal Circuit Overturns District Court’s Ruling on Indefiniteness in Teleflex v. Medtronic

    In a significant decision for medical device patent litigation, the Federal Circuit vacated and remanded a district court’s ruling that had invalidated key claims in a patent dispute between Teleflex and Medtronic. The case centered on guide extension catheter technology used in cardiovascular procedures, with the core issue being whether the term “substantially rigid portion/segment” was indefinite. The ruling provides important guidance on claim construction, functional limitations, and indefiniteness under patent law.

    Background of the Case

    Teleflex, along with its affiliates, sued Medtronic in the District of Minnesota for infringing seven patents related to guide extension catheters, which help deliver interventional devices into arteries. The patents describe a coaxial guide catheter with a substantially rigid portion that enables controlled movement within a standard guide catheter.

    The dispute boiled down to the meaning of “substantially rigid portion/segment”—a key term appearing in multiple claims across Teleflex’s patents. Medtronic argued that the term was indefinite because its boundaries varied across claims, making it impossible for a skilled artisan to determine its precise scope.

    The district court agreed with Medtronic, ruling that the inconsistency in claim boundaries made the term indefinite, effectively invalidating all asserted claims. Teleflex appealed, arguing that the court misapplied the law on claim construction and indefiniteness.

    Key Issues Addressed by the Federal Circuit

    1. Can the Boundary of a “Substantially Rigid Portion” Vary Across Claims?

    The district court ruled that all claims must define the substantially rigid portion in a consistent way, and since some claims included a side opening in the rigid portion while others placed it separately, the claims were “mutually exclusive” and thus indefinite.

    The Federal Circuit rejected this logic, clarifying that:

    • Independent claims do not need to define terms in exactly the same way across a patent.
    • Claim drafting often involves describing the same invention in different ways to cover variations in implementation.
    • The fact that some claims place the side opening within the rigid portion while others place it distal to it does not automatically create indefiniteness.

    2. Functional Claiming and the Meaning of “Substantially Rigid”

    Teleflex argued that “substantially rigid” should be interpreted as a functional limitation—meaning the portion of the catheter that is rigid enough to perform a specific function (i.e., advancing within the guide catheter).

    The Federal Circuit agreed, stating:

    • The term can be defined by its function rather than requiring an exact material or structural boundary.
    • Functional claiming is valid as long as it provides reasonable certainty about the claim’s scope.
    • The district court erred in insisting that all claims must define rigidity with the same fixed boundary.

    3. Role of Claim Construction in Indefiniteness Analysis

    The court emphasized that indefiniteness is a high standard and that:

    • A claim is only indefinite if it fails to inform skilled artisans with reasonable certainty about the scope of the invention (Nautilus, Inc. v. Biosig Instruments, Inc.).
    • Since experts and the Patent Trial and Appeal Board (PTAB) were able to interpret and apply the claims, the term could not be considered “insolubly ambiguous”.

    Thus, the Federal Circuit vacated the indefiniteness ruling, instructing the district court to reassess claim construction without treating the claims as inherently conflicting.

    Impact of the Decision

    This ruling has significant implications for medical device patents and functional claim drafting:

    • Claim Variability is Not Fatal: The decision reinforces that patent claims can define the same invention in different ways without necessarily being indefinite.
    • Functional Claiming Remains Viable: The court validated the use of functional limitations, allowing claims to describe components by what they do, rather than only by their structure.
    • Higher Bar for Indefiniteness: The ruling underscores that courts must apply a high standard before declaring a patent claim invalid due to indefiniteness.

    For patent litigators and medical device companies, this case serves as a reminder that precision in claim construction matters, but reasonable flexibility is allowed when defining key terms.

    By Charles Gideon Korrell

    Here’s a prior article written on the Nautilus case.

  • Contour v. GoPro: Reversal of § 101 Ineligibility Finding for POV Camera Patent

    Contour v. GoPro: Reversal of § 101 Ineligibility Finding for POV Camera Patent

    In a significant development in the evolving landscape of patent eligibility, the Federal Circuit reversed a district court’s grant of summary judgment under 35 U.S.C. § 101, holding that claims directed to a point-of-view (POV) action camera with real-time streaming and control functionality recite patent-eligible subject matter. The September 9, 2024 decision in Contour IP Holding LLC v. GoPro, Inc., No. 22-1654, provides meaningful clarification on how courts should assess “technological improvements” under Alice step one.

    Background: Remote Control and Real-Time Streaming in POV Cameras

    Contour’s asserted patents (U.S. Patent Nos. 8,890,954 and 8,896,694) cover hands-free POV action cameras configured for remote image acquisition and control. Central to the claims is a “dual stream” architecture: the camera generates a high-quality video file for later viewing and a lower-quality stream that is wirelessly transmitted to a remote device for real-time viewing and control. This design allows users—like a skier with a helmet-mounted camera—to monitor and adjust recordings in real-time using a smartphone app, even when the camera itself is out of sight.

    The district court found the claims ineligible under § 101, characterizing them as directed to the abstract idea of “creating and transmitting video (at two different resolutions) and adjusting the video’s settings remotely.” At Alice step two, the court found no inventive concept, concluding the claims merely invoked generic components performing conventional functions.

    Federal Circuit’s Reversal: A “Technological Solution to a Technological Problem”

    Writing for the panel, Judge Reyna disagreed with the lower court’s characterization of the claims and reversed, holding that claim 11 of the ’954 patent and its counterpart in the ’694 patent are not directed to an abstract idea.

    Importantly, the Federal Circuit emphasized the claim’s requirement for generating two data streams “in parallel” and transferring only the low-quality stream to the remote device. This, the court found, constituted a specific and concrete improvement to the functionality of POV cameras, not merely an abstract idea implemented on conventional hardware.

    The panel highlighted several key precedents in its reasoning:

    • McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016): The court analogized Contour’s claims to those in McRO, where rule-based automation of animation was found to improve computer graphics technology. Similarly, Contour’s dual-stream architecture improved real-time camera control and viewing capabilities.
    • Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016): The court reiterated that claims should not be abstracted away from their specific technological solutions. The district court’s characterization of Contour’s claims at “a high level of abstraction” was criticized as contrary to Enfish.
    • Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018) and CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020): The panel cited these cases for the principle that claims reciting specific functional improvements to technology—particularly those improving user interaction or system performance—can be patent eligible at step one.
    • Yu v. Apple Inc., 1 F.4th 1040 (Fed. Cir. 2021): GoPro had relied heavily on Yu, where claims directed to combining two images for enhancement were found ineligible. The court distinguished Yu, noting that Contour involved no “longstanding, fundamental practice” in photography or video recording and instead claimed a concrete, non-generic camera architecture.

    Key Takeaways

    1. Technological specificity matters. The Federal Circuit was persuaded by the “parallel recording” requirement and the specific hardware-software interaction enabling remote streaming and control. Mere invocation of a result is not enough—but a particular claimed structure that achieves it may be.
    2. Avoid abstract overgeneralization. The decision warns against characterizing claims at too high a level of abstraction, a misstep that contributed to the district court’s error.
    3. The context of prior art is relevant—but not dispositive. While GoPro emphasized the use of known components, the court focused instead on their unconventional combination and functional interplay. This reflects a growing trend in § 101 cases toward examining whether claims provide a specific technical solution, even using off-the-shelf hardware.
    4. Preemption concerns remain central. The court noted that Contour’s claims did not risk preempting the field of remote video control. The narrow requirement of dual-stream parallel processing significantly cabined the claim scope.

    Conclusion

    Contour v. GoPro is a noteworthy addition to the Federal Circuit’s body of § 101 jurisprudence. For innovators in imaging technology, real-time communications, or IoT devices, the decision affirms that structural claims improving device functionality—even through combinations of conventional components—may clear the § 101 hurdle when articulated with sufficient technical specificity.

    By Charles Gideon Korrell

  • ParkerVision v. Qualcomm: Collateral Estoppel and Expert Exclusion in Patent Litigation

    ParkerVision v. Qualcomm: Collateral Estoppel and Expert Exclusion in Patent Litigation

    After more than a decade of litigation between ParkerVision and Qualcomm, the Federal Circuit has vacated summary judgment of non-infringement and reversed key Daubert rulings that had hobbled ParkerVision’s case. The court’s decision in ParkerVision, Inc. v. Qualcomm Inc., Nos. 2022-1755, 2024-2221 (Fed. Cir. Sept. 6, 2024), sheds new light on the proper application of collateral estoppel in repeat patent litigation, especially when dealing with related but non-identical patent claims, and on the standards for excluding expert testimony at summary judgment.

    A Litigation Timeline Over a Decade Long

    The saga began in 2011 when ParkerVision sued Qualcomm over its “down-converting” wireless technology. In ParkerVision I, the Federal Circuit affirmed JMOL of non-infringement, largely based on the construction and application of a “generating limitation” found in representative claim 23 of U.S. Patent No. 6,061,551, which required the generation of a down-converted signal from energy transferred into a storage device (e.g., a capacitor).

    In 2014, while post-trial motions were pending in the first case, ParkerVision filed a second action—this time asserting different, albeit related, patents. At issue were two patents: U.S. Patent No. 7,218,907 (related to down-conversion, like the earlier ’551 patent) and U.S. Patent No. 6,091,940 (which includes both down-conversion and up-conversion claims). The parties agreed the accused products remained materially the same, but disagreed about whether the new claims raised the same infringement issue litigated in the 2011 action.

    Collateral Estoppel: Not a Shortcut Without Claim Construction

    The district court had granted Qualcomm’s motion for summary judgment on the grounds that collateral estoppel barred ParkerVision from re-litigating the infringement question. But the Federal Circuit disagreed, holding that the district court erred by failing to conduct proper claim construction under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Instead, the court had relied on Qualcomm’s expert reports and found them “unrebutted.”

    The Federal Circuit emphasized that collateral estoppel applies only if the “issue at stake” is identical. Citing CSX Transp., Inc. v. Bhd. of Maint. of Way Emps., 327 F.3d 1309 (11th Cir. 2003), and Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333 (Fed. Cir. 2013), the court stressed that claim construction differences matter, particularly in patent cases. Here, the newly asserted receiver claims lacked the “generating limitation” that doomed ParkerVision’s case in 2011.

    Importantly, the court noted that ParkerVision’s experts offered evidence that the accused products performed down-conversion before energy storage in a capacitor—precisely what the earlier claims precluded, but what these new claims arguably allow.

    Estoppel from IPRs? Not So Fast

    The decision also clarifies the limited preclusive effect of IPR outcomes. In an earlier IPR, Qualcomm successfully invalidated the apparatus claims of the ’940 patent, but not the method claims. The district court excluded ParkerVision’s validity expert based on estoppel from ParkerVision II, 903 F.3d 1354 (Fed. Cir. 2018).

    The Federal Circuit reversed. It held that because the IPR and appeal had involved a lower standard of proof (preponderance of the evidence) than that required in district court (clear and convincing evidence), collateral estoppel did not apply. This aligns with B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015), and Grogan v. Garner, 498 U.S. 279 (1991), which reject estoppel where differing legal standards apply.

    Expert Testimony: The Threshold for Reliability

    Finally, the court reversed the exclusion of ParkerVision’s infringement experts, holding that the district court abused its discretion by requiring independent simulations or testing as a precondition to admissibility. ParkerVision’s experts had relied on schematics and technical documentation—materials that Qualcomm’s own engineer acknowledged were sufficient to assess how the accused products worked.

    Citing Monsanto Co. v. David, 516 F.3d 1009 (Fed. Cir. 2008), and Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209 (Fed. Cir. 2006), the court reiterated that disputes over expert methodology go to weight, not admissibility, especially when the expert relies on materials typically used in the field.

    What This Means Going Forward

    This decision underscores the need for precision when invoking collateral estoppel in patent cases—especially in repeat litigations involving related but distinct patents. Courts must analyze the actual claim language and conduct proper claim construction, rather than infer equivalence based on superficial similarities or expert declarations. It also reinforces that evidentiary exclusions under Daubert must be carefully tethered to the reliability of the expert’s method, not simply the absence of certain types of analysis.

    The ParkerVision–Qualcomm battle continues, now with a renewed opportunity for ParkerVision to pursue its claims in district court. For practitioners, the ruling is a reminder that even long-running disputes deserve fresh analysis when new claims are at stake.

    By Charles Gideon Korrell

  • Osseo Imaging v. Planmeca: Rejection of Temporal Limitation on Expert Qualifications

    Osseo Imaging v. Planmeca: Rejection of Temporal Limitation on Expert Qualifications

    In its September 2024 decision in Osseo Imaging, LLC v. Planmeca USA Inc., the Federal Circuit reaffirmed the standard for expert qualifications in patent cases, declining to impose a temporal requirement that an expert possess ordinary skill in the art as of the time of invention. The ruling has notable implications for litigation strategy, particularly concerning expert testimony on infringement and validity.

    Background

    Osseo Imaging accused Planmeca of infringing three patents—U.S. Patent Nos. 6,381,301, 6,944,262, and 8,498,374—related to orthopedic imaging systems that create densitometric and tomographic models. Following a jury trial, the District of Delaware entered judgment upholding the jury’s findings of infringement and nonobviousness. On appeal, Planmeca challenged the sufficiency of the evidence, centering its arguments on the qualifications of Osseo’s expert, Dr. Omid Kia.

    Key Issue: Timing of Expert’s Qualification as POSITA

    Planmeca argued that Dr. Kia could not offer substantial evidence on infringement or validity because he did not possess the requisite level of skill in diagnostic imaging in 1999, the patents’ alleged priority date. The Federal Circuit, however, rejected this argument, emphasizing that the governing standard—set forth in Kyocera Senco Indus. Tools Inc. v. ITC, 22 F.4th 1369 (Fed. Cir. 2022)—requires only that an expert possess the ordinary level of skill in the art, not that such skill must have been attained by the date of invention.

    The Court underscored that Kyocera does not impose a temporal requirement, and it declined to infer one. It reasoned that an expert can acquire the necessary skill later and still reliably opine from the perspective of a person of ordinary skill at the relevant time. The Court further noted that Planmeca had not filed a Daubert motion or otherwise timely challenged Dr. Kia’s qualifications at trial, weakening its post-verdict objections.

    Substantial Evidence of Infringement

    Planmeca also challenged the jury’s infringement verdict on several claim limitations, including densitometry, tomographic modeling, and comparing digital models. The Federal Circuit upheld the verdict, finding substantial evidence for each element:

    • Densitometry: The Court found that the accused systems’ calculation of Hounsfield Units (HU) constituted “quantitatively calculated bone density” under the court’s claim construction.
    • Tomographic Model: Dr. Kia’s testimony supported that the systems merged data from multiple tomographic scans, satisfying the claim limitation.
    • Comparing Models: The Court rejected Planmeca’s contention that a human, not the computer, must perform the comparison. It held that presenting models in a way that enables comparison—such as side-by-side alignment—was sufficient.

    Obviousness: Competing Expert Testimony

    As for validity, Planmeca contended that the asserted claims were obvious over a combination of prior art references, including Guenther, Mazess, Fontevraud, and DIMAXIS. However, the Federal Circuit held that substantial evidence supported the jury’s nonobviousness verdict. Dr. Kia testified that combining tomosynthesis (Guenther) with densitometric techniques (Mazess and Fontevraud) would not have been obvious due to the incompatibility between these imaging methods. The Court declined to reweigh the expert testimony or second-guess the jury’s credibility determinations.

    Takeaways

    • No Time-of-Invention Requirement for Expert Qualification: This decision reaffirms that an expert need only possess the requisite skill in the art—when they acquired it is immaterial for purposes of testifying from the perspective of a POSITA.
    • Preservation Matters: The failure to timely challenge expert qualifications under Daubert or through trial objections may limit avenues for appeal.
    • Substantial Evidence Standard Remains Robust: The Federal Circuit continues to defer to jury verdicts where the record reflects a reasonable basis for the findings, even in the face of competing expert testimony.

    This decision serves as a reminder to focus early on expert qualification issues and underscores the importance of building a complete record—both for and against infringement and validity—at trial.

    By Charles Gideon Korrell