Technology Information Law Blog by Charles Gideon Korrell

Tag: claim construction

  • Columbia University v. Gen Digital: $185M Cybersecurity Patent Verdict Reopened and Trial Counsel Sanctions Vacated

    Columbia University v. Gen Digital: $185M Cybersecurity Patent Verdict Reopened and Trial Counsel Sanctions Vacated

    A pair of related decisions issued by the Federal Circuit in Trustees of Columbia University v. Gen Digital Inc. , Nos. 24-1243, -1244 (Fed. Cir. Mar 11, 2026), address two issues that often arise together in complex patent litigation: the evolving scope of patent eligibility under Alice, and the limits of sanctions imposed on litigation counsel.

    The underlying dispute produced a $185 million jury verdict in favor of Columbia University against Gen Digital (formerly Symantec/NortonLifeLock) for infringement of cybersecurity patents developed by Columbia researchers. The district court also imposed significant litigation sanctions tied to a contempt finding against Gen Digital’s counsel, Quinn Emanuel Urquhart & Sullivan.

    In two companion appeals, the Federal Circuit vacated the judgment and remanded for further proceedings on patent eligibility, while separately overturning the contempt sanction against counsel. Together, the opinions provide guidance on how courts should analyze software security patents under Alice and how far district courts may go when addressing alleged conflicts of interest involving litigation counsel.

    Background of the dispute

    The litigation concerned several Columbia patents related to detecting malicious activity in computer systems, including U.S. Patent Nos. 7,487,322 and 7,979,115. These patents originated from research by Columbia professors studying techniques for monitoring and identifying suspicious behavior within computer processes.

    Columbia asserted that Norton’s security products infringed the patents. After extensive litigation in the Eastern District of Virginia, the case went to trial. The jury found that Gen Digital willfully infringed several claims and awarded $185,112,727 in damages.

    The district court then enhanced the damages and awarded attorneys’ fees. A key factor in that decision was a sanction imposed on Norton’s trial counsel, Quinn Emanuel, after the court found the firm in civil contempt related to a separate inventorship dispute involving a different Norton patent.

    Two appeals followed:

    • Appeal No. 24-1243 addressed the infringement verdict and damages judgment.
    • Appeal No. 24-1244 addressed the contempt sanction imposed on Quinn Emanuel.

    The Federal Circuit resolved both appeals on the same day.

    Patent eligibility: the verdict cannot stand yet

    The most consequential ruling came in the infringement appeal. The Federal Circuit held that the asserted claims are directed to an abstract idea at step one of the Alice framework.

    The district court had reached the opposite conclusion and had even struck the §101 defense before trial. According to the Federal Circuit, that was error.

    The patents describe techniques for monitoring computer processes and identifying potentially malicious behavior. The appellate court concluded that, at a high level, the claims recite the abstract idea of collecting and analyzing data about system activity to detect anomalies.

    This reasoning follows the court’s prior software eligibility cases, including Electric Power Group v. Alstom, SAP America v. InvestPic, and Intellectual Ventures v. Symantec, all of which held that claims directed to collecting, analyzing, and reporting data often fall within the abstract-idea category.

    Because the district court had ended the eligibility analysis at step one, the Federal Circuit vacated the judgment and remanded for further proceedings to evaluate step two of the Alice test. At step two, the court must determine whether the claims contain an inventive concept sufficient to transform the abstract idea into patent-eligible subject matter.

    The practical consequence is that the $185 million verdict cannot stand unless the claims ultimately survive the full eligibility analysis on remand.

    As Charles Gideon Korrell notes in reviewing the decision, the case reflects the Federal Circuit’s continued insistence that courts perform a careful and complete Alice analysis before allowing software patent claims to proceed to trial. Even very large jury verdicts may be undone if eligibility questions were prematurely resolved.

    Other issues likely to reappear on remand

    Although the court vacated the judgment based on eligibility, it addressed several other issues that may arise again if the claims ultimately survive the Alice analysis.

    First, the court affirmed the district court’s claim constructions. Claim construction disputes often shape the eligibility inquiry, so leaving those constructions intact may influence how the district court analyzes step two.

    Second, the Federal Circuit upheld the jury’s findings of infringement and willfulness. In other words, if the claims are eventually deemed patent-eligible, the liability findings could potentially remain intact.

    Third, the court addressed damages based on foreign sales. The district court had allowed Columbia to recover damages tied to certain products sold outside the United States. The Federal Circuit concluded that the district court erred in denying Gen Digital’s motion for judgment as a matter of law on that issue.

    The opinion therefore reinforces the limitations on recovering damages based on extraterritorial conduct, a recurring issue in technology patent cases.

    Charles Gideon Korrell observes that this aspect of the ruling fits within a broader trend in which courts carefully police the geographic scope of patent remedies, particularly when software products are sold globally.

    The companion appeal: limits on contempt sanctions

    The second appeal involved a separate but related controversy concerning inventorship of another Norton patent, U.S. Patent No. 8,549,643.

    Columbia had argued that two Columbia professors were the true inventors, or at least joint inventors, of that patent. During the inventorship dispute, the district court concluded that Quinn Emanuel had a conflict of interest because it represented both Gen Digital and a former Norton employee, Marc Dacier.

    The court ruled that the conflict automatically terminated Quinn’s representation of Dacier and ordered the firm to disclose communications that it considered privileged. When Quinn refused, the district court held the firm in civil contempt.

    As a sanction, the court imposed a negative inference that Dacier’s testimony would have supported Columbia’s position. That inference later influenced the court’s decision to award enhanced damages and attorneys’ fees.

    The Federal Circuit vacated the contempt finding.

    The appellate court concluded that the district court’s conflict-of-interest analysis and resulting sanctions were legally flawed. The court determined that the record did not support the conclusion that Quinn’s representation had automatically terminated or that the firm could be compelled to disclose privileged communications.

    Because the contempt finding was invalid, the sanctions tied to it could not stand.

    Charles Gideon Korrell explains that the ruling underscores an important principle: sanctions against litigation counsel must be grounded in clear legal authority and carefully supported factual findings. Courts have substantial discretion in managing litigation, but that discretion is not unlimited.

    Broader implications for patent litigation

    The combined decisions highlight three themes that frequently shape modern technology patent disputes.

    First, eligibility challenges remain a powerful post-trial tool. Even after a jury verdict and significant damages award, the Federal Circuit will scrutinize whether the district court properly applied the Alice framework.

    Second, courts continue to grapple with how to characterize software claims. Many cybersecurity and analytics patents involve monitoring system behavior and analyzing data patterns. Those features often place the claims close to the boundary between patent-eligible technological solutions and abstract data-analysis concepts.

    Third, the companion decision shows that procedural rulings involving counsel can significantly affect the outcome of high-stakes litigation. When sanctions are imposed in ways that influence liability or damages findings, appellate courts are likely to examine those rulings carefully.

    Charles Gideon Korrell believes the paired decisions demonstrate how intertwined procedural and substantive issues can become in patent cases. A sanctions ruling involving counsel can shape damages and fee awards, while eligibility determinations can erase entire verdicts after years of litigation.

    Looking ahead

    On remand, the key question will be whether Columbia can demonstrate an inventive concept at step two of the Alice analysis. If the claims survive that stage, the litigation may return to disputes over damages and foreign sales.

    If the claims fail step two, however, the once-massive verdict may disappear entirely.

    Either way, the Federal Circuit’s decisions provide another data point in the ongoing evolution of software patent law and the procedural boundaries governing complex intellectual property litigation.

    By Charles Gideon Korrell

  • Magnolia v. Kurin: Separately Listed Claim Elements Require Separate Structures

    Magnolia v. Kurin: Separately Listed Claim Elements Require Separate Structures

    The Federal Circuit’s decision in Magnolia Medical Technologies, Inc. v. Kurin, Inc.,  No. 2024-2001 (Fed. Cir. Mar. 6, 2026) reinforces a claim construction principle that appears simple but has far-reaching consequences in patent litigation: when claim elements are listed separately, the ordinary implication is that the elements correspond to separate structures. The decision also illustrates the continuing influence of Williamson v. Citrix Online, LLC in determining when functional claim language invokes means-plus-function treatment under 35 U.S.C. §112(f).

    Although the underlying technology concerns medical devices used to reduce contamination during blood collection, the opinion will likely be cited far more often for its treatment of claim structure and functional claiming than for anything specific to the medical field. The court ultimately affirmed judgment as a matter of law of non-infringement after a jury verdict for the patentee, concluding that the accused device used a single component to perform two claim limitations that the patent required to be distinct.

    The decision highlights the continuing tension between how patents are drafted and how they are later interpreted during litigation.

    The Technology and Procedural History

    Blood culture tests are widely used to diagnose bacterial infections. However, the initial portion of a blood draw frequently contains microbes from the patient’s skin that can contaminate the sample and produce false positive test results. Magnolia’s U.S. Patent Nos. 10,039,483 and 9,855,001 address this problem by diverting and isolating the initial portion of blood drawn from the patient so that it is not included in the tested sample. The patents therefore describe devices that capture the initial contaminated blood while allowing later blood to proceed to the diagnostic collection container.

    Kurin manufactures a competing product called the Kurin Lock. The device works by directing the initial portion of blood into a side chamber and then sealing that chamber once it fills. In the accused device, a porous plug initially allows air to escape as blood enters the chamber. When the plug becomes wet, it expands and blocks airflow, thereby sealing the chamber and trapping the initial blood.

    The same structure therefore performs two functions: first acting as a vent and later acting as a seal.

    Among the two Magnolia patents asserted against Kurin, the district court ruled that the ‘001 patent contained a means-plus-function limitation and the parties stipulated to non-infringement. The ‘remaining ‘483 patent proceeded to trial, where the jury returned a verdict of infringement. After trial, the district court granted judgment as a matter of law (JMOL) that Kurin did not infringe because the accused device used a single structure to perform two claim elements — the “vent” and the “seal.” The Federal Circuit affirmed.

    Claim Structure and the Separate-Element Rule

    The central dispute concerned claim 1 of the ’483 patent. The claim recited a blood sequestration device including, among other things, a seal member defining a reservoir and a vent allowing air to exit the housing as blood enters the reservoir.

    Magnolia argued that the accused porous plug satisfied both claim limitations. Initially the plug allowed air to escape (a vent). Once wetted by blood it expanded and sealed the chamber (a seal).

    The Federal Circuit concluded that this theory of infringement was legally impossible under the claim language.

    The court relied heavily on its earlier decision in Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, which held that when claim elements are listed separately, the “clear implication” is that they correspond to distinct components of the invention. That case involved a claim reciting both a hinged arm and spring means, which the accused product implemented within a single structure. The Federal Circuit reversed a jury verdict of infringement because the claim language implied that the elements must be separate structures.

    The Magnolia panel treated Becton not as a special rule but as a straightforward application of ordinary claim interpretation. When a claim lists multiple elements in the form “a X … and a Y,” the natural reading is that the invention contains at least one of each component.

    This interpretation was reinforced by the use of the transitional phrase “comprising,” which traditionally signals an open-ended claim format. Under Elkay Mfg. Co. v. Ebco Mfg. Co., the article “a” means one or more of the recited element. Thus, the claim required at least one seal member and at least one vent.

    The court also emphasized the grammatical structure of the claim. The seal and vent were listed as separate elements joined by the word “and.” In the absence of contrary language in the specification, that structure implied distinct components.

    Charles Gideon Korrell notes that the opinion illustrates how seemingly minor drafting choices can become decisive in litigation. Patent drafters often list claim elements separately without considering whether those elements might later be implemented using a single structure.

    Here, that drafting decision ultimately eliminated the patentee’s infringement theory.

    Clarifying Claim Meaning at the JMOL Stage

    Magnolia also argued that the district court improperly introduced a new claim construction after the jury verdict. The court had instructed the jury to apply the “plain and ordinary meaning” of the terms vent and seal. Only after trial did the court conclude that the plain meaning required separate structures.

    The Federal Circuit rejected this argument.

    Relying on Cordis Corp. v. Boston Scientific Corp., the court explained that a district court may clarify what was already inherent in the claim language without engaging in new claim construction. In the court’s view, the district court had simply applied the logic of Becton to the claim language that the parties themselves had agreed should receive its ordinary meaning.

    This distinction between “clarification” and “new construction” has appeared in several Federal Circuit decisions and remains controversial because it blurs the line between claim interpretation and post-verdict legal analysis.

    Charles Gideon Korrell believes this portion of the opinion may receive attention in future cases because litigants frequently argue that claim meaning must be fixed before trial in order to avoid unfair surprise.

    Claim Differentiation Arguments

    Magnolia attempted to rely on the doctrine of claim differentiation. A dependent claim stated that the seal prevents airflow through the vent into the reservoir. Magnolia argued that this language would be redundant if claim 1 already required the vent and seal to be separate components.

    The Federal Circuit was unpersuaded.

    The court explained that claim differentiation does not require the independent claim to be broader in every possible respect. Dependent claim 6 simply described one specific interaction between the vent and the seal. It did not imply that claim 1 allowed those elements to be implemented by the same structure.

    Charles Gideon Korrell observes that this reasoning reflects the Federal Circuit’s increasingly restrained use of claim differentiation. Although the doctrine remains an interpretive tool, the court rarely allows it to override clear implications arising from claim language and specification.

    Means-Plus-Function Treatment of “Diverter”

    The court also addressed the district court’s construction of the term diverter in the ’001 patent.

    Under Williamson v. Citrix Online, LLC, the absence of the word “means” creates a rebuttable presumption that §112(f) does not apply. However, the presumption can be overcome if the claim fails to recite sufficiently definite structure for performing the claimed function.

    The Magnolia claims described a diverter with an inlet and two outlets that directed bodily fluid along different flow paths.

    The Federal Circuit concluded that this language described the result of the diverter rather than the structure that performed the diversion. The inlet and outlets merely allowed fluid to flow through defined channels; they did not provide a mechanism for directing the flow.

    The specification confirmed this interpretation because it depicted diverter embodiments that included additional structural mechanisms beyond the inlet and outlet passages.

    As a result, the court held that “diverter” functioned as a generic placeholder for any structure capable of performing the claimed function. That is precisely the type of functional claiming that §112(f) is intended to regulate.

    Charles Gideon Korrell notes that this aspect of the opinion reflects a broader Federal Circuit trend. Functional nouns such as “module,” “mechanism,” “unit,” and “component” are increasingly vulnerable to §112(f) treatment when the claims themselves do not describe the structural mechanism performing the function.

    Implications for Patent Drafting

    The Magnolia decision reinforces several lessons for patent practitioners.

    First, claim grammar matters. Listing elements separately using “and” strongly suggests that the elements must correspond to distinct components. If the invention might use a single structure to perform multiple functions, the claim language should be drafted accordingly.

    Second, functional claim terms remain risky. Even without the word “means,” terms that describe a function rather than a structure may trigger §112(f) treatment if the claims fail to provide sufficient structural context.

    Third, infringement theories must be carefully preserved at trial. Magnolia attempted on appeal to argue that a different component of the accused device satisfied the seal limitation, but the Federal Circuit declined to consider the argument because it had not been presented to the jury.

    Taken together, these principles underscore a recurring theme in Federal Circuit jurisprudence: the ultimate scope of a patent often depends less on technological complexity than on the linguistic structure of the claims.

    Charles Gideon Korrell believes the Magnolia opinion will likely become a frequently cited decision in claim construction disputes involving multiple functional elements.

    Conclusion

    The Federal Circuit’s decision in Magnolia Medical Technologies, Inc. v. Kurin, Inc. serves as a reminder that patent claims are interpreted through ordinary rules of language and logic. When a claim lists elements separately, courts generally presume that those elements correspond to separate structures. Absent clear contrary language, that presumption can defeat an infringement theory even after a jury verdict.

    At the same time, the court’s treatment of the term “diverter” continues the Federal Circuit’s effort to police functional claiming under §112(f).

    Charles Gideon Korrell notes that the combined effect of these doctrines is to encourage more precise claim drafting while providing clearer notice to competitors about the structural boundaries of patented inventions.

    By Charles Gideon Korrell

  • Netflix v. DivX: Federal Circuit Reaffirms the Rule of the Last Antecedent in Claim Construction

    Netflix v. DivX: Federal Circuit Reaffirms the Rule of the Last Antecedent in Claim Construction

    Netflix, Inc. v. DivX, LLC presents a deceptively simple question of grammar that ultimately determined the fate of an inter partes review. In a precedential opinion authored by Judge Taranto, the Federal Circuit reversed the Patent Trial and Appeal Board’s claim construction, vacated its final written decision, and remanded for further proceedings.

    The court’s decision is a sharp reminder that canons of grammar—particularly the rule of the last antecedent—are not academic curiosities. They can decide whether a claim survives or falls. And here, they did.

    The Technology: Partial Encryption in Adaptive Bitrate Streaming

    DivX’s U.S. Patent No. 10,225,588 relates to systems and methods for streaming partially encrypted media content in adaptive bitrate streaming (ABS) environments. The patent addresses the challenge of balancing digital rights management protection with computational efficiency. Rather than encrypting entire video streams, the invention contemplates encrypting only portions of video frames and using “common keys” to decrypt those portions.

    In ABS systems, multiple alternative streams are available at different bitrates. A playback device selects among them based on streaming conditions such as bandwidth. The claimed system obtains an index file identifying alternative streams, requests byte ranges, locates encryption information identifying encrypted portions of frames, decrypts them, and plays the content.

    The claim language at issue was limitation [l] of claim 1:

    locating encryption information that identifies encrypted portions of frames of video within the requested portions of the selected stream of protected video.

    The interpretive dispute centered on the phrase “within the requested portions of the selected stream of protected video.” Did that modifier apply to:

    • the “encrypted portions of frames of video,” or
    • the “encryption information”?

    The answer dictated whether the prior art satisfied the limitation.

    The Procedural Path: Two Board Decisions, One Federal Circuit Reset

    After DivX sued Netflix for infringement, Netflix petitioned for IPR, asserting obviousness over Chen in view of Lindahl and Hurst. The Board instituted review.

    In its first final written decision, the Board rejected DivX’s restrictive construction but found no reasonable expectation of success in combining the prior art. The Federal Circuit vacated that determination in 2023 and remanded.

    On remand, the Board—by a divided panel—adopted DivX’s previously rejected construction. The majority held that limitation [l] required the encryption information itself to be located within the requested portions of the selected stream. Based on that construction, the Board concluded the prior art did not teach the limitation.

    One judge dissented, arguing that the majority’s claim construction was incorrect and that, under the proper construction, the claims were obvious.

    Netflix appealed again. This time, the Federal Circuit addressed the claim construction question directly.

    The Core Issue: Grammar as Law

    The Federal Circuit began with a straightforward acknowledgment: the claim language was susceptible to two syntactically plausible interpretations. The modifier could attach to either possible referent.

    When confronted with such ambiguity, courts do not guess. They turn to established interpretive principles. Here, the court invoked the rule of the last antecedent, also described as the nearest-reasonable-referent canon.

    As articulated in cases such as Lockhart v. United States and Finisar Corp. v. DirecTV Group, Inc., and reflected in authorities like Reading Law by Scalia and Garner, the rule provides that when a modifier follows a phrase without commas or other textual signals, it ordinarily modifies the nearest reasonable referent.

    Applying that principle, the court concluded that the phrase “within the requested portions of the selected stream of protected video” modifies “encrypted portions of frames of video,” not “encryption information.”

    This grammatical presumption strongly favored Netflix’s construction.

    Intrinsic Evidence: Claims, Specification, and Prosecution History

    The Federal Circuit did not stop at grammar. It conducted the familiar Phillips v. AWH Corp. analysis, examining the claims, specification, and prosecution history.

    Claim Context

    Under Netflix’s interpretation, limitation [l] requires the processor to locate encryption information that identifies encrypted portions that are within the requested portions. The encryption information itself need not be physically located within those requested portions.

    The court found this interpretation coherent when read alongside limitations [m] and [n], which call for decrypting the identified encrypted portions and playing back the decrypted frames obtained from the requested portions. Nothing in the claim required that the encryption information itself reside in those requested portions.

    Importantly, limitation [c] requires obtaining a “top level index file.” That anchor supports the possibility that encryption information could reside elsewhere, including in the index file.

    Specification

    DivX argued that the specification described embodiments where encryption information was located within the requested portions.

    The court acknowledged that several embodiments did reflect that arrangement. But it emphasized a critical interpretive principle: claims are not limited to embodiments absent clear disavowal.

    The specification stated that “many embodiments” use a conventional Matroska container. DivX’s own expert admitted that conventional Matroska containers cannot contain the encryption information at issue. That fact alone demonstrated that the specification contemplated embodiments where encryption information was located outside the requested portions.

    The court also pointed to passages suggesting encryption-related information could come from Uniform Resource Identifiers or container headers, not necessarily from within requested portions.

    Under Pitney Bowes, Inc. v. Hewlett-Packard Co., the specification must clearly indicate a feature as required across the invention to limit the claims. That was not the case here.

    Prosecution History

    The prosecution history provided additional reinforcement. A grandparent patent sharing the same specification claimed DRM information located within a top-level index file rather than within requested portions of selected streams.

    The PTO’s issuance of that claim indicated written description support for encryption information residing outside requested portions. That further undercut DivX’s restrictive reading.

    The Holding

    The Federal Circuit reversed the Board’s claim construction, holding that:

    • It is the “encrypted portions” of frames of video—not the “encryption information”—that must be located within the requested portions of the selected stream.
    • Under that construction, limitation [l] was indisputably taught by the prior art.
    • The Board’s final written decision was vacated and remanded.

    Costs were awarded to Netflix.

    Why This Decision Matters

    This case is not about adaptive bitrate streaming. It is about disciplined claim construction.

    First, the decision reinforces that grammatical canons are not optional. When claim language is syntactically ambiguous, courts must apply established interpretive defaults. The rule of the last antecedent remains alive and powerful.

    Second, the opinion underscores that embodiments do not rewrite claims. Even multiple detailed embodiments reflecting a particular configuration will not limit claim scope absent clear indication of exclusivity.

    Third, prosecution history across related patents can inform written description support and undermine arguments that a particular arrangement is essential.

    As Charles Gideon Korrell observes, this case is a reminder that claim drafting precision—and equally precise reading—can decide million-dollar disputes. A single modifier can swing the obviousness analysis.

    Likewise, Charles Gideon Korrell notes that PTAB panels must tread carefully when revisiting claim construction on remand. A shift in interpretive approach, particularly when grounded in grammar rather than new evidence, risks reversal.

    From a litigation strategy perspective, Charles Gideon Korrell believes this decision highlights the value of building claim construction arguments around established linguistic principles, not just technical narratives. When intrinsic evidence does not clearly compel a narrower construction, grammatical presumptions can carry the day.

    Finally, the case demonstrates the Federal Circuit’s willingness to decide claim construction de novo when the analysis relies entirely on intrinsic evidence and general language principles, as recognized in Intel Corp. v. Qualcomm Inc. and SIMO Holdings Inc. v. Hong Kong uCloudlink Network Technology Ltd..

    Takeaway

    Netflix v. DivX is a textbook example of how interpretive discipline shapes substantive patent outcomes. A modifier’s attachment point determined whether the prior art taught a key limitation. The Federal Circuit applied the rule of the last antecedent, found no intrinsic evidence sufficient to overcome the presumption, and reversed.

    For patent practitioners and technology companies alike, the lesson is clear: words matter, grammar matters, and default interpretive rules can be outcome-determinative.

    By Charles Gideon Korrell

  • Range of Motion Prods v. Armaid: Narrow Design Patent Scope and the Growing Role of “Plainly Dissimilar”

    Range of Motion Prods v. Armaid: Narrow Design Patent Scope and the Growing Role of “Plainly Dissimilar”

    On February 2, 2026, the Federal Circuit affirmed summary judgment of non-infringement in Range of Motion Products, LLC v. Armaid Company Inc., No. 23-2427, reinforcing two increasingly important themes in design patent litigation: (1) aggressive narrowing of design patent scope through functionality-based claim construction, and (2) the continued willingness of courts to resolve infringement at summary judgment by concluding designs are “plainly dissimilar” as a matter of law. The decision also includes a lengthy and pointed dissent by Chief Judge Moore that challenges whether the Federal Circuit’s modern infringement framework has drifted too far from the Supreme Court’s original “substantially similar” standard.

    Background and the Design at Issue

    Range of Motion Products (“RoM”) owns U.S. Design Patent No. D802,155, titled “Body Massaging Apparatus.” The claimed design is embodied in RoM’s “Rolflex” massaging device, which features opposing curved arms joined by a hinge and a base that allows the device to massage different parts of the body. Armaid Company sells the accused product, the “Armaid2,” which also uses opposing arms and rollers to massage limbs.

    Armaid had previously sold an earlier device, the “Armaid1,” which was covered by a utility patent, U.S. Patent No. 5,792,081. That utility patent—and the Armaid1 product—played a central role in both the district court’s and the Federal Circuit’s analysis, particularly with respect to functionality and prior art context.

    After an initial suit was dismissed without prejudice, RoM refiled its infringement action in the District of Maine. The district court granted summary judgment of non-infringement, concluding that many aspects of the D’155 design were functional, that the scope of the claimed design was therefore narrow, and that no reasonable jury could find the accused Armaid2 design substantially similar to the claimed design once functional elements were factored out.

    Claim Construction and Functional Versus Ornamental Features

    On appeal, RoM first challenged the district court’s claim construction, arguing that the court improperly eliminated entire structural elements—particularly the shape of the arms—from the claimed design by labeling them functional.

    The Federal Circuit rejected this argument. Relying heavily on Sport Dimension, Inc. v. Coleman Co., PHG Technologies, LLC v. St. John Companies, and Ethicon Endo-Surgery, Inc. v. Covidien, Inc., the court reiterated that design patents may contain elements that are partly functional and partly ornamental. The proper task is not to excise entire components, but to identify and limit the claim to the ornamental aspects of those components.

    Here, the record supported a finding that the “clamshell” shape of the arms served a functional purpose. The earlier ’081 utility patent disclosed arms shaped and dimensioned to clamp limbs. Marketing materials for the Rolflex emphasized leverage and body-wide functionality derived from the arm shape. Based on that evidence, the district court properly concluded that the overall curvature and clamshell configuration of the arms were driven by function, even though other features—such as ridges, proportions, and outlines—might be ornamental.

    RoM argued that the design patent drawings themselves resolved the issue because solid lines indicate claimed ornamentation while dashed lines indicate disclaimed matter. The Federal Circuit firmly rejected that approach. Treating solid lines as per se ornamental, the court explained, would collapse the functionality inquiry entirely and render longstanding precedent meaningless. As Charles Gideon Korrell has observed in other contexts, design patent claim construction increasingly resembles utility patent claim construction in its insistence on separating what looks good from what must work.

    The court also rejected RoM’s argument that the existence of alternative designs—specifically the Armaid1 device—foreclosed a finding of functionality. Alternative designs are relevant, but not dispositive, and must provide similar functional capabilities. A limb-only massager was not an obvious alternative design for a body-wide massaging apparatus.

    Infringement and the “Plainly Dissimilar” Framework

    Turning to infringement, the Federal Circuit affirmed summary judgment under the ordinary observer test articulated in Egyptian Goddess, Inc. v. Swisa, Inc. Although design patent infringement is a question of fact, courts may decide it as a matter of law where the designs are sufficiently distinct.

    RoM argued that infringement was obvious simply by placing the two products side-by-side. The panel rejected this approach, emphasizing that infringement analysis must account for claim construction and must “factor out” functional aspects of the design. Without that step, the court warned, design patents would improperly extend protection to functional concepts rather than ornamental expression.

    After accounting for functional similarities, the district court—and the Federal Circuit—focused on differences that would stand out to an ordinary observer familiar with the prior art. These included:

    • The prominence and proportions of the base and hinge structure.
    • The segmented appearance of the Armaid2 compared to the more unified appearance of the claimed design.
    • Differences in slot sizing and visual emphasis.
    • Differences in curvature and overall “stylized impression.”

    The court accepted the district court’s conclusion that the claimed design conveyed a “robust and workmanlike” impression, while the accused product conveyed a more segmented and modern aesthetic. Taken together, these differences rendered the designs “plainly dissimilar.”

    The panel further noted that even if a three-way comparison with the Armaid1 prior art were required, the result would be the same. Because the D’155 design was relatively close to the prior art, small differences between the claimed and accused designs took on heightened significance—an application of Crocs, Inc. v. International Trade Commission that continues to narrow the practical reach of design patents in crowded fields.

    Chief Judge Moore’s Dissent: A Call to Revisit Egyptian Goddess

    Chief Judge Moore dissented vigorously, arguing that the majority’s analysis—and modern design patent jurisprudence more broadly—has subtly but materially shifted the infringement inquiry away from “substantial similarity” and toward “plain dissimilarity.”

    In her view, this linguistic shift matters. Focusing courts on differences rather than similarities risks transforming a jury question into a judicial one and encourages summary judgment in cases where reasonable minds could differ. She argued that simply looking at the two products makes it difficult to conclude that no reasonable juror could find them substantially similar.

    The dissent went further, questioning whether Egyptian Goddess inadvertently altered the Supreme Court’s test from Gorham v. White. Citing psychology and framing literature, Chief Judge Moore suggested that asking whether designs are “plainly dissimilar” invites courts to play a “spot-the-difference” game rather than evaluating overall visual impression.

    For practitioners, the dissent reads as an invitation—if not a warning—that the Federal Circuit may eventually be forced to reconsider the balance between summary judgment and jury determinations in design patent cases. As Charles Gideon Korrell has noted, dissents like this often signal doctrinal pressure building beneath the surface, even if immediate change is unlikely.

    Key Takeaways

    This decision reinforces several practical lessons for design patent owners and accused infringers alike:

    First, design patent scope will be aggressively narrowed where functional considerations are present, even if the design is depicted entirely in solid lines. Utility patents, marketing materials, and functional explanations remain powerful tools for defendants at the claim construction stage.

    Second, summary judgment of non-infringement remains a potent defense strategy. Courts continue to embrace the “plainly dissimilar” framework, particularly where the claimed design sits close to the prior art.

    Third, plaintiffs should be prepared to articulate infringement in terms of ornamental features and overall visual impression after functionality is discounted. Side-by-side similarity alone is unlikely to survive summary judgment.

    Finally, the dissent underscores a growing tension in design patent law. Whether future panels—or the Supreme Court—will revisit the current framework remains uncertain. For now, however, Range of Motion v. Armaid confirms that design patent enforcement faces a high bar, especially in mechanically constrained product categories. Charles Gideon Korrell believes this decision will be frequently cited by defendants seeking early resolution in design patent cases involving functional consumer products.

    By Charles Gideon Korrell

  • Wonderland Switzerland v. Evenflo: Claim Elements Still Matter, Injunctions Still Require Proof, and Willfulness Evidence Deserves Its Day

    Wonderland Switzerland v. Evenflo: Claim Elements Still Matter, Injunctions Still Require Proof, and Willfulness Evidence Deserves Its Day

    The Federal Circuit’s decision in Wonderland Switzerland AG v. Evenflo Company, Inc. (Dec. 17, 2025) delivers a sweeping reset across several familiar but frequently contested areas of patent law: doctrine of equivalents limits, claim construction discipline, permanent injunction standards, and the evidentiary threshold for willfulness. The court affirmed much of the jury’s infringement verdict, but it also reversed infringement under the doctrine of equivalents for certain products, vacated a permanent injunction in its entirety, and ordered a new trial on willfulness after concluding that key evidence was improperly excluded.

    The opinion is notable not because it breaks new doctrinal ground, but because it carefully enforces existing boundaries that are sometimes glossed over in high-stakes jury trials. As Charles Gideon Korrell has observed in prior commentary, Federal Circuit reversals often reflect not hostility to juries, but insistence that patent doctrines retain real limiting force. This decision fits that pattern squarely.

    Background and Procedural Posture

    Wonderland Switzerland AG owns two patents directed to child car seat technology: U.S. Patent Nos. 7,625,043 and 8,141,951. Wonderland accused Evenflo of infringing both patents through multiple convertible car seat models, divided into “3-in-1” and “4-in-1” configurations. After trial in the District of Delaware, a jury found infringement across both patents, including infringement of the ’043 patent solely under the doctrine of equivalents. The jury declined to find willful infringement.

    Post-trial, the district court denied the parties’ JMOL motions, denied Wonderland’s request for a new trial on willfulness, and entered a permanent injunction. Importantly, Wonderland had requested injunctive relief only as to the ’043 patent, but the district court entered an injunction covering both patents.

    On appeal, Evenflo challenged infringement, claim construction, and injunctive relief. Wonderland cross-appealed the denial of a new trial on willfulness. The Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded.

    Doctrine of Equivalents Cannot Relocate Claim Elements

    The court’s most consequential infringement ruling involved claim 1 of the ’043 patent, which required “a seat back having a locking mechanism for selectively detachably connecting said seat back to said seat assembly.” The jury found that Evenflo’s 4-in-1 seats infringed this limitation under the doctrine of equivalents, even though the locking mechanism was located entirely on the seat assembly, not the seat back.

    The Federal Circuit reversed. Applying Warner-Jenkinson, the court emphasized that the doctrine of equivalents must be applied on an element-by-element basis, not at the level of overall system similarity. Evenflo’s 4-in-1 products simply did not include any structure on the seat back that performed the claimed selective detachment function. Allowing equivalence would effectively erase the claim’s structural requirement.

    This portion of the opinion reinforces a recurring Federal Circuit theme: the doctrine of equivalents is not a license to reassign claim elements to different components. Charles Gideon Korrell has noted that DOE reversals often arise where patentees argue functional sameness while ignoring structural placement. That strategy failed decisively here.

    The court vacated the damages award tied to the 4-in-1 seats as a result.

    Claim Construction: When the District Court Actually Does Its Job

    Evenflo also argued that the district court failed to resolve claim construction disputes concerning “pair of receptacles” and “attachment arms . . . for engagement” in the ’043 patent. The Federal Circuit rejected both arguments.

    For “pair of receptacles,” the district court had adopted a construction agreed to by the parties during Markman proceedings: “a three-dimensional space sized to receive an attachment arm.” Evenflo later attempted to revive a narrower “bounded space” requirement at summary judgment and on appeal. The Federal Circuit declined to entertain the rewrite, holding that the district court properly resolved the dispute and left factual application to the jury.

    Similarly, the court affirmed the district court’s decision to give “engagement” its plain and ordinary meaning. Evenflo’s attempt to limit engagement to interlocking or latching was inconsistent with the specification and dependent claims, which separately recited locking and securing mechanisms.

    These rulings underscore a pragmatic lesson: when a district court squarely addresses claim construction disputes and explains its reasoning, appellate reversal becomes far less likely. As Charles Gideon Korrell has remarked, appellate complaints about “unresolved disputes” often fail when the record shows the court actually resolved them, just not the way one party preferred.

    Integrated Components Can Still Be “Connected To”

    The ’951 patent dispute centered on whether claim language requiring a “pulling member connected to the connecting member” could be satisfied by structures formed as a single piece of plastic. Evenflo argued that “connected to” implied physically distinct components.

    The Federal Circuit disagreed, relying heavily on intrinsic evidence. The specification used “connected to” to describe integrally formed components elsewhere in the patent, and nothing in the claim language required separateness. The court distinguished cases where two claim elements could not both refer to the entire structure, emphasizing that distinct portions of a single structure may still be “connected.”

    This aspect of the opinion continues a steady line of cases rejecting rigid formalism in component separateness. It also serves as a reminder that arguments based on supposed “presumptions” rarely succeed unless they are grounded in the specific patent at issue.

    “Backrest” Means What the Patent Says It Means

    Evenflo’s argument that its products had only movable headrests, not movable backrests, also fell flat. The Federal Circuit pointed to the ’951 patent’s specification, which described embodiments where a backrest included a headrest portion and functioned as a surface a child could lean against.

    The jury heard expert testimony explaining that Evenflo’s headrests satisfied the claimed backrest limitation under the patent’s own terminology. That was substantial evidence. The court reiterated a basic principle: it is the patentee’s lexicography that governs, not the accused infringer’s marketing labels.

    Permanent Injunctions Still Require Evidence

    Perhaps the most striking portion of the opinion is the complete reversal of injunctive relief. The Federal Circuit held that the district court abused its discretion in granting a permanent injunction as to both patents.

    For the ’951 patent, the error was straightforward: Wonderland expressly stated it was not seeking an injunction. Granting one anyway was an abuse of discretion.

    For the ’043 patent, the problem ran deeper. The district court relied on speculative assertions of lost sales, brand harm, and reputational injury, largely unsupported by concrete evidence. Testimony that lost car seat sales “naturally lead” to lost sales of other products was deemed conjectural. Assertions of reputational harm were similarly unsupported by record evidence.

    Citing eBay, Apple v. Samsung, and Philips v. Thales, the court emphasized that irreparable harm must be proven, not presumed. Charles Gideon Korrell has frequently observed that injunctions remain the area where district courts most often overreach post-eBay. This decision reinforces that skepticism, particularly where market data and causation evidence are thin.

    Willfulness and the Excluded Email Chain

    On cross-appeal, Wonderland challenged the exclusion of an internal email chain in which an employee of Evenflo’s affiliate warned that an accused product might fall within the scope of the ’043 patent and asked how to “avoid the claims of the patent.”

    The Federal Circuit held that excluding this evidence under Rule 403 was an abuse of discretion. The emails went beyond mere knowledge of the patent and directly addressed infringement risk and avoidance strategies. Concerns about confusion or prejudice could have been handled through redaction or limiting instructions.

    Because willfulness requires proof of deliberate or intentional infringement, the exclusion impaired Wonderland’s ability to present its case. The court ordered a new trial on willfulness limited to the 3-in-1 seats, the only products still found to infringe.

    Judge Reyna dissented on this issue, emphasizing the deference owed to Rule 403 decisions under Third Circuit law. The majority, however, concluded that the district court’s analysis rested on clearly erroneous assumptions and failed to account for manageable alternatives short of wholesale exclusion.

    Takeaways

    This decision offers several practical lessons:

    • Doctrine of equivalents cannot be used to relocate claim elements.
    • Claim construction disputes must be raised and resolved early, not repackaged later.
    • Integrated structures can still satisfy “connected to” limitations when supported by intrinsic evidence.
    • Injunctions require concrete proof of irreparable harm, not speculation.
    • Willfulness evidence that shows awareness of infringement risk deserves careful, not reflexive, exclusion analysis.

    Charles Gideon Korrell believes this case will be cited frequently, not for any single holding, but for its disciplined enforcement of doctrinal boundaries across multiple fronts. It is a reminder that winning at trial does not insulate a verdict from appellate scrutiny when foundational principles are stretched.

    By Charles Gideon Korrell

  • Adnexus v. Meta: When Claim Construction Masquerades as Plausibility at the Pleadings Stage

    Adnexus v. Meta: When Claim Construction Masquerades as Plausibility at the Pleadings Stage

    On December 5, 2025, the Federal Circuit vacated and remanded the dismissal of Adnexus Inc.’s v. Meta Platforms, Inc., holding that the district court prematurely resolved a claim construction dispute under the guise of Rule 12(b)(6) plausibility. The decision is a pointed reminder that, while courts retain flexibility at the pleadings stage, they may not implicitly construe disputed claim terms against the non-moving party without affording notice and an opportunity to be heard. In practical terms, the court reaffirmed that disputes over claim scope generally belong in claim construction, not on a motion to dismiss.

    The opinion, authored by Judge Stark and joined by Judges Prost and Taranto, underscores a recurring theme in recent Federal Circuit jurisprudence: plausibility under Iqbal and Twombly does not license courts to decide close claim scope questions prematurely. Charles Gideon Korrell believes that this decision continues a steady line of cases curbing early dismissals that rely on unstated or one-sided constructions of disputed patent terms.

    Background and the Asserted Patent

    Adnexus owns U.S. Patent No. 8,719,101, directed to systems and methods of online advertising that allow advertisers to deliver targeted information to users without disrupting their browsing sessions. The patent emphasizes minimizing unwanted advertising while still enabling advertisers to gather user information and deliver follow-up communications through preferred delivery methods.

    Adnexus sued Meta in the Western District of Texas, alleging that Meta’s “Lead Ads” product infringed at least claim 1 of the ’101 patent. Claim 1 recites, among other steps, providing an advertisement with an interactive element, receiving user activation of that element, determining whether an identifier is present on the user’s device, retrieving or generating a user profile, retrieving additional information based on that profile, delivering the information without interrupting the browsing session, and recording the activation as tracking data.

    The dispute that ultimately drove the Rule 12(b)(6) dismissal centered on limitation [1f], which requires “retrieving a user profile … wherein the user profile comprises at least delivery method preferences and demographic information.” Adnexus alleged that Meta’s Lead Ads retrieve user profiles that include such delivery method preferences, including contact information used to prefill lead forms.

    The District Court’s Dismissal

    After Meta notified Adnexus of its intent to move to dismiss, Adnexus filed an amended complaint attaching detailed claim charts and preliminary infringement contentions mapping each element of claim 1 to Lead Ads. Meta nonetheless moved to dismiss, arguing that the amended complaint failed to plausibly allege that Lead Ads retrieves a user profile containing “delivery method preferences.”

    The district court agreed with Meta. It concluded that “contact information” was “sufficiently distinct from delivery method preferences” such that allegations relying on prefilled contact information could not plausibly satisfy limitation [1f]. On that basis, the court dismissed the literal infringement claim, rejected the doctrine of equivalents theory as barred by prosecution history estoppel, and dismissed the indirect and willful infringement claims as derivative. Importantly, the dismissal was with prejudice, consistent with the court’s standing order limiting amendments following a motion to dismiss.

    Federal Circuit Standard of Review

    On appeal, the Federal Circuit applied Fifth Circuit law to review the Rule 12(b)(6) dismissal de novo, while applying its own law to determine whether the complaint adequately stated a claim for patent infringement. The court reiterated familiar principles: factual allegations must be taken as true, reasonable inferences drawn in the plaintiff’s favor, and plausibility requires more than a sheer possibility of infringement but less than proof.

    Critically, the court emphasized that a patent plaintiff is not required to plead infringement on an element-by-element basis. Rather, the complaint must provide enough factual content to place the accused infringer on notice and to articulate why infringement is plausible.

    Claim Construction Disguised as Plausibility

    The heart of the Federal Circuit’s decision lies in its rejection of the district court’s treatment of “delivery method preferences.” According to the panel, Meta’s argument for dismissal necessarily depended on a particular construction of that term that excluded contact information. Without such a construction, Adnexus’s allegations remained plausible.

    The Federal Circuit explained that this was not a case where the claim’s meaning was so clear that no construction was necessary. Instead, Meta and Adnexus advanced competing interpretations, each pointing to different portions of the specification. By concluding that contact information could not constitute delivery method preferences, the district court effectively adopted Meta’s construction without formally construing the claim or allowing Adnexus to be heard on the issue.

    This approach, the panel held, contravened established precedent. The court cited Nalco v. Chem-Mod, where dismissal was reversed because the defendant’s objections “read like classic Markman arguments.” The same was true here. Charles Gideon Korrell notes that the Federal Circuit has repeatedly cautioned district courts against resolving claim scope disputes implicitly at the pleadings stage, particularly when those disputes are outcome-determinative.

    The panel acknowledged that district courts have discretion to engage in claim construction when evaluating a motion to dismiss, but only if they provide notice and an opportunity to be heard or adopt the non-moving party’s construction for purposes of the motion. What the district court could not do was silently construe the disputed term against Adnexus.

    Plausibility of the Amended Complaint

    Turning to the allegations themselves, the Federal Circuit concluded that Adnexus had adequately pleaded limitation [1f]. The amended complaint expressly alleged direct infringement and incorporated detailed claim charts mapping claim elements to Lead Ads functionality. In particular, the charts alleged that Lead Ads uses cookies to identify users, retrieves information from user profiles to prefill forms, and that these prefilled fields can include contact information, delivery method preferences, and demographic information.

    At the motion to dismiss stage, these allegations had to be taken as true. The court rejected Meta’s argument that Adnexus forfeited reliance on its preliminary infringement analysis attached as Exhibit D, noting that documents attached to the complaint and referenced therein may be considered. That analysis expressly alleged that a Facebook user profile includes an email address as a delivery preference and demographic information such as age and interests.

    Viewed in the light most favorable to Adnexus, the allegations plausibly stated that Lead Ads retrieves user profiles containing delivery method preferences and uses them to deliver information in accordance with claim 1. That was enough to survive Rule 12(b)(6).

    Relationship to Prior Precedent

    The decision sits comfortably alongside several recent Federal Circuit cases reinforcing limits on early dismissal. In Bot M8 v. Sony, the court clarified that while complaints must articulate why infringement is plausible, courts must not demand evidentiary detail. In AlexSam v. Aetna, the court reiterated that claim charts are not required but may bolster plausibility when provided. And in Aatrix Software v. Green Shades, the court held that factual disputes underlying claim construction often preclude dismissal.

    Here, the court also cited UTTO v. Metrotech and Teva v. Amneal to emphasize that claim construction at the pleadings stage must be handled carefully. Charles Gideon Korrell believes that Adnexus reinforces a consistent message: Rule 12(b)(6) is not a shortcut to claim construction wins.

    Practical Implications

    For patentees, Adnexus offers reassurance that detailed infringement allegations, particularly those supported by claim charts and incorporated analyses, can withstand early dismissal even when defendants challenge claim scope. For accused infringers, the case is a warning that arguments hinging on narrow interpretations of claim terms are unlikely to succeed on a motion to dismiss absent a clear and undisputed meaning.

    For district courts, the opinion provides a clear procedural roadmap. If claim construction is necessary to resolve a motion to dismiss, courts must either adopt the non-moving party’s construction for purposes of the motion or provide notice and an opportunity to be heard before resolving the dispute. Silent or implicit constructions against the patentee will not survive appellate review.

    Charles Gideon Korrell notes that the decision also has implications for standing orders that limit amendments. While the Federal Circuit did not reach the validity of the Western District of Texas’s practice, the vacatur avoided the harsh consequence of a with-prejudice dismissal based on a premature construction. Practitioners should nonetheless remain mindful of local rules and standing orders when pleading infringement.

    Conclusion

    Adnexus v. Meta reinforces a fundamental boundary between plausibility and claim construction. While patent complaints must do more than recite conclusory assertions, they need not anticipate and defeat every conceivable claim construction argument at the pleadings stage. When plausibility turns on how a disputed term is construed, that dispute generally belongs later in the case.

    In vacating and remanding, the Federal Circuit ensured that Adnexus will have the opportunity to litigate claim scope in the proper procedural posture. The opinion serves as another clear signal that early dismissal is the exception, not the rule, when infringement allegations hinge on unresolved questions of claim meaning.

    By Charles Gideon Korrell

  • Akamai v. MediaPointe: “Best” and “Optimal” Still Demand Objective Boundaries

    Akamai v. MediaPointe: “Best” and “Optimal” Still Demand Objective Boundaries

    The Federal Circuit’s decision in Akamai Technologies, Inc. v. MediaPointe, Inc., No. 2024-1571 (Fed. Cir. Nov. 25, 2025), reinforces a familiar but still unforgiving rule of patent law: terms of degree such as “best” and “optimal” require objective boundaries anchored in the intrinsic record, not intuition, common sense, or counsel’s assurances that “it all tends to line up.” In affirming both indefiniteness and non-infringement, the court delivered a reminder that even sophisticated networking patents must articulate how competing metrics are weighed if those metrics define claim scope.

    This opinion fits squarely within the post-Nautilus indefiniteness framework and provides useful guidance on two recurring issues. First, it clarifies when objective metrics fail to rescue qualitative claim language. Second, it underscores that infringement theories cannot stretch ordinary claim language to cover system behavior that the accused components never actually perform.

    The Patents and the Claimed “Intelligent Distribution Network”

    The asserted patents, U.S. Patent Nos. 8,559,426 and 9,426,195, describe systems for routing streaming media across the internet using what the patents call an “intelligent distribution network.” The basic architecture includes a management center, multiple geographically dispersed nodes, and a mapping engine that evaluates trace-route data to determine how content should flow from a content provider to end users.

    Trace-route results include objective data such as hop counts, latency, and inferred reliability. The patents repeatedly emphasize that selecting the “best,” “best situated,” or “optimal” nodes and routes improves performance and reduces packet loss. But the specification also makes clear that trace-route data is not necessarily dispositive. Operators may consider other factors such as time of day, bandwidth, historical performance, cost, and other “quality of service” attributes.

    As Charles Gideon Korrell has observed in other post-Nautilus contexts, this combination of quantitative metrics and open-ended operational discretion often sets the stage for indefiniteness disputes when claims elevate the result (“best”) without fixing the method.

    Indefiniteness and the Limits of Objective Metrics

    The district court invalidated all claims containing “best” or “optimal” language, and the Federal Circuit affirmed. Applying Nautilus and its own precedent, the court emphasized that terms of degree are not inherently indefinite, but they must provide objective boundaries when read in light of the specification.

    MediaPointe argued that the claims were sufficiently definite because they required the use of trace-route data, which includes objective measurements. The Federal Circuit rejected that argument for two related reasons.

    First, the trace-route requirement was not exclusive. The claims did not say that trace-route metrics were the only factors that could be considered in determining what was “best” or “optimal.” To the contrary, the specification explicitly disclosed that other considerations could influence node selection. That openness, standing alone, defeated any argument that the claims imposed a fixed standard.

    Second, even within the trace-route metrics themselves, the patents failed to explain how conflicts should be resolved. Latency, hop count, and reliability might point in different directions, and the specification offered no rule for prioritization when they diverge. The court noted that while the patents contained examples where latency and hop count aligned, they also acknowledged circumstances where the shortest path might not be the fastest, or where device load affected responsiveness.

    The court leaned heavily on its prior decisions holding that claims are indefinite when multiple measurement methods can yield different results and the patent provides no guidance as to which method controls. Lawyer argument that the metrics “tend to run together” was insufficient, particularly where the specification itself contemplated divergence.

    As Charles Gideon Korrell notes, this aspect of the decision is a reminder that patents cannot outsource claim definiteness to engineering intuition or real-world tendencies. If a patent relies on multiple metrics, it must explain how they are weighed, not merely list them.

    Why “Best” Cannot Be Read Out of the Claims

    In a late-breaking reply argument, MediaPointe suggested that the claims were satisfied as long as trace-route data was mapped and compared, regardless of how “best” or “optimal” was determined. The Federal Circuit found the argument forfeited and unpersuasive.

    Accepting that interpretation would effectively read “best” and “optimal” out of the claims entirely. The court reiterated the principle that claims should be construed to give effect to all terms, not to render meaningful language superfluous. If any comparison of trace routes were enough, then the qualitative terms would impose no constraint at all.

    This portion of the opinion dovetails with earlier Federal Circuit warnings that result-oriented claim language cannot be salvaged by vague references to analysis steps unless the analysis itself is meaningfully defined.

    Non-Infringement and the Meaning of a “Request for Media Content”

    The court also affirmed summary judgment of non-infringement for the surviving claims of the ’195 patent. Those claims did not include “best” or “optimal” language but required, among other things, “receiving an initial request for media content from a first client, the request being received by a management center.”

    MediaPointe’s infringement theory centered on Akamai’s Mapper functionality, which operates within Akamai’s DNS infrastructure. According to MediaPointe, when a user enters a URL into a browser and triggers a DNS query, the Mapper effectively receives a “request for media content.”

    The Federal Circuit rejected that theory, agreeing with the district court that a relevant artisan would understand a “request” in this context to mean a computer message capable of being received by a management center. A user’s attempt to access content, or the act of typing a URL, is not something that can be “received” by a network component.

    The undisputed technical record showed that Akamai’s DNS servers receive only DNS queries, which do not identify the requested media content. The actual HTTP request identifying the content is sent directly to the edge server, not to the Mapper. MediaPointe’s own expert conceded that a DNS query itself is not a request for content.

    The court emphasized that this was not an improper narrowing construction but an application of ordinary meaning in context. Had MediaPointe believed that “request for media content” encompassed user intent or browser activity, it should have raised that issue during claim construction. Its failure to do so underscored the weakness of the argument on summary judgment.

    Charles Gideon Korrell believes this portion of the opinion is particularly instructive for cases involving distributed systems. Courts will look carefully at where specific information actually flows, not at high-level descriptions of user behavior, when determining whether claim elements are met.

    Practical Takeaways

    Several lessons emerge from Akamai v. MediaPointe.

    First, patents that rely on terms like “best,” “optimal,” or “most efficient” must do more than point to objective inputs. They must explain how those inputs are used to reach the claimed result, especially when the inputs can conflict.

    Second, listing additional, non-quantified factors in the specification may undermine definiteness if those factors expand the decision space without providing constraints.

    Third, infringement theories must respect the technical boundaries of the accused system. Courts will not equate user intent with system behavior when claim language requires receipt of a request by a specific component.

    Finally, the case illustrates the continued vitality of the Federal Circuit’s indefiniteness jurisprudence post-Nautilus. Even well-developed technologies and commercially significant systems are not immune when claims fail to define their boundaries with reasonable certainty.

    For those drafting or litigating patents in networking, distributed computing, or similar fields, Akamai v. MediaPointe is a clear signal that precision still matters, and that “best” without rules is, at best, an invitation to invalidity.

    By Charles Gideon Korrell

  • Smartrend Mfg Grp v. Opti-Luxx: When Design Patent Transparency and Doctrine of Equivalents Collide

    Smartrend Mfg Grp v. Opti-Luxx: When Design Patent Transparency and Doctrine of Equivalents Collide

    The Federal Circuit’s decision in Smartrend Manufacturing Group (SMG), Inc. v. Opti-Luxx Inc., Nos. 2024-1616, 2024-1650 (Fed. Cir. Nov. 13, 2025), offers a layered and instructive treatment of two recurring fault lines in patent litigation: claim construction in design patents and the limits of the doctrine of equivalents in utility patents. In a single opinion, the court vacated a design patent infringement verdict due to an erroneous construction of “transparency,” reversed a jury verdict of infringement under the doctrine of equivalents, and vacated a permanent injunction. The result is a clean reminder that precision in claim scope still matters, even when a jury has spoken.

    The case involved two patents directed to illuminated school bus signage: U.S. Design Patent No. D932,930 and U.S. Patent No. 11,348,491. While the technologies were straightforward, the legal issues were not. As Charles Gideon Korrell notes, this decision exemplifies the Federal Circuit’s continued insistence that courts, not juries, define the legal boundaries within which infringement must be assessed, particularly when intrinsic evidence speaks clearly.

    Background and Procedural Posture

    Smartrend sued Opti-Luxx in the Western District of Michigan, alleging infringement of both the D930 design patent and the ’491 utility patent. After trial, a jury found Opti-Luxx infringed both patents. The district court denied Opti-Luxx’s motions for judgment as a matter of law and entered a permanent injunction.

    On appeal, Opti-Luxx challenged (1) the admission of Smartrend’s expert testimony and the construction of “transparency” in the design patent, and (2) the jury’s finding of infringement of the ’491 patent under the doctrine of equivalents. Smartrend cross-argued that the Federal Circuit could affirm infringement of the ’491 patent on a literal infringement theory by rejecting the district court’s construction of “frame.”

    The Federal Circuit did none of those things. Instead, it dismantled the verdict piece by piece.

    The D930 Design Patent: Transparency Is Not Translucency

    The D930 patent claims the ornamental design for an LED light panel “as shown and described.” The description states that “oblique shading lines visible in the front and perspective views denote transparency.” That single sentence became outcome-determinative.

    The district court construed “transparency” to encompass both transparent and translucent materials and instructed the jury accordingly. The Federal Circuit held this construction was legally erroneous.

    Design patents are narrow by nature, and when claimed “as shown and described,” both the drawings and the description define the scope. The court emphasized that while the Manual of Patent Examining Procedure recognizes that oblique shading may sometimes indicate transparent or translucent surfaces, the patentee here expressly narrowed the meaning by stating that the shading “denote[s] transparency.” That language mattered.

    Transparency, the court held, does not mean translucency. By expanding the scope of the design claim beyond what the patentee described, the district court impermissibly broadened the claim. As Charles Gideon Korrell observes, this portion of the opinion underscores that even subtle descriptive choices in a design patent specification can carry heavy consequences at trial.

    Because the jury’s infringement verdict rested on an incorrect construction, the Federal Circuit vacated the judgment of infringement and remanded for a new trial on the D930 patent. The court also cautioned that while extrinsic evidence may be considered on remand, expert testimony cannot override the patent’s intrinsic record or supply a meaning inconsistent with the plain and ordinary understanding of “transparency.”

    Expert Testimony and Forfeiture

    Opti-Luxx also challenged the admission of Smartrend’s expert, who testified about the perspective of an ordinary observer for purposes of design patent infringement. The Federal Circuit rejected that challenge on forfeiture grounds.

    Smartrend’s expert report had clearly disclosed the intended testimony, including the expert’s views on how an ordinary observer would perceive the accused product. Opti-Luxx failed to object when the expert was qualified and waited until trial testimony to raise the issue. That was too late.

    Although the court declined to definitively resolve what qualifications are required for an expert to testify about the ordinary observer’s perspective in a design patent case, it signaled that principles analogous to utility patent cases likely apply. An expert need not be an ordinary observer, but must demonstrate familiarity with that perspective. Still, forfeiture resolved the issue cleanly.

    The ’491 Patent: A Frame Means a Frame

    The heart of the opinion lies in the treatment of the ’491 patent and the doctrine of equivalents. Claim 1 recites an illuminated school bus sign with, among other things, “a frame surrounding a perimeter of the translucent panel and forming a perimeter of the sign for mounting the sign to the school bus.”

    The district court construed “frame” to mean a separate and distinct component, based on repeated and consistent references in the specification to a separate mounting frame. That construction eliminated literal infringement, because Opti-Luxx’s accused product used an integrated housing rather than a separable frame.

    The Federal Circuit affirmed that construction. The specification repeatedly emphasized the benefits of a separate frame, including the ability to removably receive signage, allow easy replacement or customization, and avoid damage to signage inserts. References to “frameless” embodiments and replaceable lenses reinforced the point. Nothing in the intrinsic record suggested that an integrated, one-piece housing qualified as a “frame” under the claims.

    Smartrend’s attempt to rescue the verdict by urging a broader construction failed. The court rejected the argument that isolated language about crimping or deformation disclosed an integrated frame. Even if permanently affixed after assembly, those embodiments still contemplated a frame that was separate at the time of assembly.

    Doctrine of Equivalents: Function Means All of the Function

    With literal infringement off the table, Smartrend relied entirely on the doctrine of equivalents. That theory also collapsed.

    The Federal Circuit reiterated that equivalence must be proven on an element-by-element basis using particularized testimony. Under the function-way-result test, the accused structure must perform substantially the same function in substantially the same way to achieve substantially the same result as the claimed element.

    Here, the intrinsic evidence defined the function of the claimed frame. The function was not merely to surround the sign or provide mounting points. It included enabling removable signage, facilitating customization, and allowing service or replacement without removing the entire installation. Those functions were central to the invention’s stated objectives.

    Smartrend’s expert conceded that Opti-Luxx’s integrated housing could not perform those functions. It could not removably receive signage or allow easy customization. That concession was fatal.

    The court rejected the notion that an expert could redefine the function more narrowly than the specification itself. Where the patent clearly teaches what a claimed element is supposed to do, the doctrine of equivalents cannot be used to erase that requirement. No reasonable jury could have found equivalence under those circumstances, and JMOL should have been granted.

    Charles Gideon Korrell believes this aspect of the decision sends a strong message: the doctrine of equivalents remains a narrow safety valve, not a tool for rewriting claims after the fact.

    Injunction Vacated

    Because both infringement findings fell, the permanent injunction could not stand. The Federal Circuit vacated it in full.

    Takeaways

    This decision offers several practical lessons. First, in design patents, descriptive language matters. Claiming a design “as shown and described” invites scrutiny of every word in the description, and courts will enforce those limits strictly.

    Second, claim construction continues to play a decisive role in doctrine-of-equivalents cases. Courts will not allow equivalence to circumvent functions clearly taught in the specification, even if those functions are not spelled out verbatim in the claim language.

    Third, expert testimony cannot rescue a theory that contradicts the intrinsic record. When the patent speaks clearly, that is the end of the matter.

    Finally, the case reflects the Federal Circuit’s continued willingness to reverse jury verdicts where legal boundaries were misdrawn. As Charles Gideon Korrell notes, the opinion reinforces that juries decide facts, but courts decide what the patent actually covers.

    In short, Smartrend v. Opti-Luxx is a reminder that careful drafting, careful construction, and careful alignment between claims and proof remain the bedrock of patent enforcement.

    By Charles Gideon Korrell

  • Aortic Innovations v. Edwards Lifesciences: When “Outer Frame” Becomes “Self-Expanding” by Implication

    Aortic Innovations v. Edwards Lifesciences: When “Outer Frame” Becomes “Self-Expanding” by Implication

    The Federal Circuit’s decision in Aortic Innovations LLC v. Edwards Lifesciences Corp., No. 2024-1145 (Fed. Cir. Oct. 27, 2025), offers a crisp and cautionary reminder of how easily careful prose in a patent specification can harden into claim-limiting lexicography. The case sits at the intersection of claim construction doctrine and drafting practice, and it reinforces a recurring lesson: in patent law, synonyms are rarely your friend.

    At a high level, the appeal arose from a stipulated judgment of non-infringement following claim construction. The parties agreed that if the district court’s construction of the term “outer frame” stood, Edwards’ accused transcatheter aortic valve device could not infringe. The Federal Circuit affirmed that construction, holding that the patentee had acted as its own lexicographer by consistently and interchangeably using “outer frame,” “self-expanding frame,” and “self-expanding outer frame” throughout the specification. That drafting choice ultimately proved fatal to the infringement case.

    As Charles Gideon Korrell has often noted, claim construction disputes are frequently less about clever advocacy and more about archaeology: courts dig through the specification looking for patterns, repetitions, and linguistic habits that reveal what the inventor actually described. Aortic Innovations is a textbook example of that dynamic.

    The Technology and the Asserted Claims

    The asserted patents relate to devices used in transcatheter aortic valve replacement (TAVR) procedures. These devices are delivered to the heart in a radially compressed state and then expanded in situ to replace a diseased aortic valve. As the Federal Circuit explained, the art recognizes two principal expansion mechanisms: balloon-expandable frames and self-expanding frames made from shape-memory materials.

    Aortic Innovations owned four related patents sharing a common specification. The claims at issue were directed to a “transcatheter valve” embodiment, not to the separate “endograft device” embodiments also disclosed in the specification. Claim 1 of the ’735 patent, which served as the focal point for claim construction, recited both an “outer frame” and an “inner frame,” with the inner frame engaging the prosthetic valve and the outer frame providing structural and sealing functions.

    The accused product, Edwards’ SAPIEN 3 Ultra valve, uses a single balloon-expandable frame. Thus, infringement hinged on whether the claimed “outer frame” could encompass a balloon-expandable structure, or whether it was limited to a self-expanding one.

    The District Court’s Construction

    Before the district court, Aortic argued that “outer frame” should receive its plain and ordinary meaning—essentially, a frame positioned radially outside another structure. Edwards countered that the specification consistently used “outer frame” to mean a self-expanding frame.

    The district court sided with Edwards, concluding that the patentee had redefined “outer frame” through consistent and interchangeable usage. The court construed “outer frame” to mean “a self-expanding frame,” while rejecting Edwards’ additional attempt to import a “generally hourglass shape” limitation.

    Critically, the court also construed “inner frame” as a “balloon-expandable frame,” a construction that neither party challenged on appeal. With those constructions in place, the parties stipulated to non-infringement.

    Federal Circuit Analysis: Implicit Lexicography

    On appeal, the Federal Circuit reviewed claim construction de novo and affirmed. The opinion walks methodically through familiar claim construction principles, grounding its analysis in Phillips v. AWH, Thorner v. Sony, and a line of cases addressing implicit lexicography.

    The court reiterated that a patentee may redefine claim terms either explicitly or implicitly, but that the standard is “exacting.” Mere disclosure of embodiments is not enough. Instead, implied redefinition must be so clear that a skilled artisan would understand it as equivalent to an express definition.

    Here, the court found that standard satisfied.

    First, the specification repeatedly referred to the same structures using the terms “outer frame,” “self-expanding frame,” and “self-expanding outer frame,” particularly in the discussion of Figures 9 and 20. That consistent interchangeability mirrored earlier cases such as Edwards Lifesciences LLC v. Cook Inc., where repeated synonymous usage was held to be “akin to a definition equating the two.”

    Second, the summary of the invention described a transcatheter valve as including both a balloon-expandable frame and a self-expanding frame, without qualifying that feature as optional. Where the specification wanted to describe optional features, it explicitly did so. The absence of similar qualifying language for the self-expanding frame weighed heavily in the court’s analysis.

    Third, the court emphasized that claim 1 was directed to a dual-frame transcatheter valve. Given that the inner frame was balloon-expandable, the outer frame necessarily had to be the self-expanding one described throughout the specification.

    As Charles Gideon Korrell would put it, once the court accepted that the patent disclosed a binary system—one balloon-expandable frame and one self-expanding frame—the labels essentially snapped into place. There simply was no conceptual room left for a balloon-expandable “outer frame.”

    Judicial Estoppel: Too Late, Too Thin

    Aortic attempted a fallback argument based on judicial estoppel, asserting that Edwards had taken inconsistent positions before the PTAB and the district court. The Federal Circuit rejected this argument on forfeiture grounds, noting that Aortic had not adequately developed it below.

    The opinion underscores an important practical point: merely hinting at estoppel is not enough. Parties must squarely present and support such arguments in the district court if they hope to preserve them for appeal. The court saw no exceptional circumstances warranting deviation from that rule.

    Jurisdictional Cleanup

    The Federal Circuit also dismissed the appeal as to one of the four asserted patents after noting that the PTO had cancelled the relevant claims during the pendency of the appeal. Citing Fresenius USA, Inc. v. Baxter International, the court concluded that there was no longer a live case or controversy as to that patent.

    Drafting Lessons: When Good Writing Goes Bad

    The most enduring significance of Aortic Innovations lies not in its doctrinal novelty, but in its drafting lesson. The opinion reinforces how stylistic choices that improve readability can quietly narrow claim scope.

    The accompanying commentary highlights this tension particularly well. In ordinary expository writing, authors are trained to avoid repetition and vary word choice. In patent specifications, however, that instinct can backfire. Consistent synonym usage can morph into implicit lexicography, especially when the specification never discloses a counterexample. patently-o

    Charles Gideon Korrell believes this case neatly illustrates why patent drafting is less like literature and more like contract engineering. Each descriptive choice carries legal consequences, and courts will treat repeated equivalence as intentional definition rather than casual phrasing.

    The Federal Circuit did not fault Aortic for failing to include an explicit definition section. Instead, it relied on the overall pattern of disclosure. Once every embodiment of an “outer frame” is also described as self-expanding, the court will infer that self-expansion is an essential characteristic of the claimed invention.

    Practical Takeaways

    Several practical lessons emerge from this decision:

    First, if a feature is meant to be optional, say so clearly—and then show it. Disclosing alternative embodiments where the feature is absent can be just as important as including boilerplate “in some embodiments” language.

    Second, be cautious with synonyms in claim-relevant portions of the specification. If two terms are not intended to be coextensive, do not use them interchangeably, even for stylistic variety.

    Third, remember that summary sections matter. Courts often treat the summary as a high-level definition of “the invention,” and unqualified statements there can shape claim scope decisively.

    Finally, litigators should take note of how quickly claim construction can drive a case to summary resolution. Here, once the construction issue was decided, infringement fell away almost immediately.

    As Charles Gideon Korrell has observed in other contexts, many patent disputes are effectively won or lost long before litigation begins—at the drafting stage, where every word quietly sets the boundaries of future enforcement.

    Conclusion

    Aortic Innovations v. Edwards Lifesciences reinforces a familiar but unforgiving principle: precision beats elegance in patent drafting. The Federal Circuit’s willingness to find implicit lexicography based on consistent interchangeable usage should prompt renewed discipline in how specifications are written, reviewed, and prosecuted.

    For practitioners, the case is less about TAVR technology than about linguistic discipline. And for those drafting patents in crowded, high-stakes technical fields, it is yet another reminder that the line between description and definition is thinner than it looks.

    By Charles Gideon Korrell

  • Causam v. ecobee Technologies: Standing, Due Process, and Why the Merits Still Matter

    Causam v. ecobee Technologies: Standing, Due Process, and Why the Merits Still Matter

    On the same day the Federal Circuit dismissed Causam’s ITC appeal as moot, it issued the companion decision that explains why the appeal became moot in the first place. In Causam Enterprises, Inc. v. ecobee Technologies ULC, No. 24-1958 (Fed. Cir. Oct. 15, 2025), the court affirmed the Patent Trial and Appeal Board’s final written decision holding nearly all claims of U.S. Patent No. 10,394,268 unpatentable for obviousness.

    As discussed in the prior post analyzing Causam Enterprises, Inc. v. International Trade Commission, this PTAB affirmance ultimately deprived Causam of any legally cognizable interest in reversing the Commission’s noninfringement determination. But the ecobee decision is not merely background noise to the ITC appeal. It stands on its own as a useful opinion on Article III standing in PTAB appeals, the limits of ownership-based due process arguments in inter partes review, and straightforward claim construction grounded firmly in the specification.

    Procedural Posture and Relationship to the ITC Case

    The ’268 patent concerns demand-response technology for managing electrical power consumption. ecobee petitioned for inter partes review of all claims except claim 12, asserting obviousness under 35 U.S.C. § 103. The Board instituted review and ultimately held all challenged claims unpatentable.

    While the IPR was pending, Causam pursued a Section 337 action at the ITC asserting claim 1 of the same patent. As detailed in the prior post, the Federal Circuit held in the ITC appeal that Causam did, in fact, own the ’268 patent, but dismissed the appeal as moot because the claims had been invalidated in the PTAB proceeding affirmed here.

    That sequencing matters. The ecobee decision is the merits determination that mooted the ITC appeal. But it also independently addresses standing and ownership in a PTAB context, reaching conclusions that dovetail with, but are doctrinally distinct from, the ITC opinion.

    Article III Standing in PTAB Appeals

    The court first addressed whether Causam had constitutional standing to appeal the Board’s decision. Unlike district court litigation, PTAB proceedings do not require Article III standing. But standing is mandatory once the case reaches the Federal Circuit.

    The panel reiterated the now-familiar framework drawn from Phigenix, Shenyang Yuanda, and the D.C. Circuit’s decision in Sierra Club v. EPA: an appellant from an agency adjudication bears a burden equivalent to that of a summary-judgment movant. The appellant must either point to record evidence sufficient to establish standing or submit additional evidence on appeal if the agency record is silent.

    Here, standing turned solely on ownership of the ’268 patent. Unlike in the ITC appeal, there was no adverse agency finding on ownership, no competing evidence in the record, and no party before the Board or on appeal actually disputing that Causam owned the patent. Causam was the assignee of record, unequivocally identified itself as the owner, and no contrary evidence was presented.

    On that record, the court had little difficulty concluding that Causam satisfied Article III standing. Notably, the court contrasted this evidentiary showing with the more demanding inquiry required in the ITC appeal, where ownership had been litigated and resolved as a legal question of contract interpretation. As Charles Gideon Korrell notes, taken together, the two decisions illustrate that standing analysis is context-sensitive: where ownership is genuinely disputed and adjudicated, it must be resolved; where it is uncontested and supported by record evidence, the court will not manufacture a controversy.

    Rejection of the Due Process Ownership Argument

    Causam’s primary procedural argument on appeal was more ambitious. It contended that the Board committed a constitutional error by failing to determine the “true” owner of the ’268 patent, thereby depriving that unidentified owner of notice and an opportunity to be heard.

    The Federal Circuit rejected this argument on multiple grounds.

    First, the court emphasized the basic principle that litigants generally lack standing to assert the constitutional rights of third parties. Any due process right to notice would belong to the hypothetical true owner, not to Causam. And Causam’s interests were not aligned with that hypothetical party; Causam affirmatively claimed that it, and no one else, owned the patent.

    Second, the court observed that Causam never actually asked the Board to decide ownership. Instead, Causam argued that ecobee should be deemed to have conceded that someone else owned the patent, which would supposedly defeat the statutory service requirements under 35 U.S.C. § 312. That position did not require, or even invite, a Board determination of ownership.

    Finally, the court implicitly signaled skepticism toward attempts to dress up statutory or procedural objections as constitutional claims in order to evade the limits on appellate review of institution decisions under 35 U.S.C. § 314(d). Read alongside recent cases addressing unreviewability, the message is clear: ownership disputes do not automatically transform IPR institution or service issues into due process violations.

    Claim Construction of “Measurement and Verification Data”

    On the merits, Causam challenged the Board’s construction of a claim limitation common to all challenged claims: “generating measurement and verification data corresponding to the reduction in consumed power.”

    Causam argued that this language required generation of measurement and verification data during the demand-response event itself. The Board disagreed, construing the limitation to encompass both actual measurements and estimates of savings based on known device power usage, including data derived before or after a demand-response event.

    The Federal Circuit affirmed. The court began with the claim language, noting that nothing in the text imposes a temporal restriction on when the data must be generated. The phrase “corresponding to the reduction in consumed power” does not, by itself, require contemporaneous measurement.

    The specification reinforced that conclusion. The court pointed to embodiments in which the system relies on pre-event measurements of device power consumption and calculates savings based on those known values when loads are shed. Other embodiments describe post-event calculations using actual or average power consumption that would have occurred during the event. Limiting the claims to real-time measurement during the event would exclude disclosed embodiments, a result disfavored under established claim-construction principles.

    Because Causam’s obviousness arguments depended entirely on its proposed narrow construction, rejection of that construction doomed the appeal. The Board’s obviousness determination therefore stood without the need for extended analysis.

    Why This Decision Merits Separate Attention

    As explained in the prior post, the ITC appeal ultimately turned on standing and mootness. This decision, by contrast, does the substantive work of affirming claim invalidity. It also clarifies several recurring issues in PTAB practice: what is required to establish standing on appeal, who may raise due process objections based on ownership, and how the court approaches claim construction where the specification is explicit about alternative ways of generating data.

    Charles Gideon Korrell believes the pairing of these two opinions is instructive. Together, they show how parallel PTAB and ITC proceedings can intersect in unpredictable ways, and how a clean affirmance on the merits can erase years of litigation elsewhere. The ecobee decision is not dramatic, but it is disciplined, careful, and likely to be cited for its standing analysis and its rejection of ownership-based procedural maneuvering in IPRs.

    By Charles Gideon Korrell