Technology Information Law Blog by Charles Gideon Korrell

Tag: means-plus-function

  • Gramm v. Deere: Reversal of Indefiniteness Finding for Means-Plus-Function Claim

    Gramm v. Deere: Reversal of Indefiniteness Finding for Means-Plus-Function Claim

    The Federal Circuit’s decision in Gramm v. Deere & Co., No. 24-1598 (Fed. Cir. Mar. 11, 2026) addresses a recurring issue in patent litigation: when a means-plus-function claim is sufficiently supported by corresponding structure in the specification. The case arises from agricultural technology used to maintain the proper height of a crop-harvesting header as the machine moves across uneven terrain. While the technology itself is specialized, the court’s reasoning has broader implications for how courts analyze indefiniteness under 35 U.S.C. § 112 when claims invoke § 112(f).

    The Federal Circuit ultimately reversed the district court’s ruling that the patent claims were indefinite. The opinion provides an instructive reminder that courts must identify the correct corresponding structure before concluding that a claim lacks sufficient disclosure.

    Background of the Dispute

    The patent at issue, U.S. Patent No. 6,202,395, is directed to an apparatus for maintaining a crop harvester’s header at a desired height above the soil. Maintaining consistent header height is critical in agricultural harvesting operations because uneven terrain can cause the header to either dig into the ground or miss portions of the crop.

    Richard Gramm is the inventor and owner of the ’395 patent, which is exclusively licensed to Reaper Solutions LLC (formerly Headsight). Reaper brought suit against Deere & Company alleging that Deere’s header sensor kits infringed the patent.

    The litigation has a long procedural history. Deere challenged the patent through inter partes review proceedings, after which only independent claim 12 and certain dependent claims remained in the case. The dispute then returned to district court, where the central issue became claim construction of the limitation “control means.”

    Both parties agreed that “control means” is a means-plus-function limitation governed by § 112(f). Under that provision, the claim is construed to cover the corresponding structure described in the specification and equivalents thereof.

    The dispute centered on whether the specification disclosed adequate structure for performing the claimed function.

    The District Court’s Indefiniteness Ruling

    The district court concluded that the claim was indefinite.

    In reaching that conclusion, the court first determined that the claimed function was performed by a general-purpose computer or controller. Under Federal Circuit precedent, when a means-plus-function limitation is implemented using a computer, the specification must typically disclose an algorithm for performing the claimed function.

    This principle stems from cases such as WMS Gaming Inc. v. International Game Technology, which held that a general-purpose computer is not sufficient structure unless the patent also discloses the algorithm that the computer performs. Similarly, the Federal Circuit’s en banc decision in Williamson v. Citrix Online, LLC reaffirmed that the absence of such disclosure can render a claim indefinite.

    Applying this framework, the district court held that the ’395 patent failed to disclose the required algorithm. As a result, the court determined that the “control means” limitation lacked sufficient corresponding structure and declared the claims indefinite under § 112(b).

    The district court entered judgment of invalidity in favor of Deere.

    The Federal Circuit’s Reversal

    The Federal Circuit reversed the indefiniteness ruling.

    Judge Reyna, writing for the panel, concluded that the district court had misidentified the relevant corresponding structure. Because that structural analysis was flawed, the indefiniteness determination could not stand.

    The Federal Circuit emphasized a key principle in means-plus-function analysis: the court must identify the structure disclosed in the specification that performs the claimed function. If at least one embodiment provides sufficient structure, the claim is not indefinite.

    This rule traces back to Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., where the Federal Circuit held that a claim remains valid even if only one disclosed embodiment provides the required corresponding structure.

    In Gramm, the specification referenced a system known as “Dial-A-Matic Version #1.” The Federal Circuit concluded that this system constituted the corresponding structure for the claimed “control means.”

    The district court had excluded Dial-A-Matic Version #1 from its structural analysis because the system lacked certain capabilities described elsewhere in the specification. Specifically, the district court believed the structure needed to perform additional functions beyond those recited in the claim.

    The Federal Circuit rejected that reasoning.

    The court explained that the corresponding structure must perform the claimed function—nothing more. If the specification describes additional capabilities or features, those extra functions should not disqualify the disclosed structure.

    By improperly narrowing the set of permissible structures, the district court had effectively eliminated the very embodiment that satisfied the means-plus-function requirement.

    Because Dial-A-Matic Version #1 was adequately disclosed and performed the claimed function, the Federal Circuit held that the “control means” limitation was not indefinite.

    The Algorithm Requirement in Context

    One of the more interesting aspects of the opinion is how it addresses the algorithm requirement for computer-implemented means-plus-function claims.

    In cases like WMS Gaming, the Federal Circuit held that a patent must disclose the algorithm executed by a computer performing the claimed function. Otherwise, the claim effectively covers any computer capable of performing the function, which would exceed the permissible scope of § 112(f).

    However, Gramm illustrates that the algorithm requirement does not apply rigidly in every situation. If the specification identifies a concrete physical system that performs the claimed function, that system itself may qualify as the corresponding structure.

    The key analytical step is determining whether the structure is merely a generic computer or whether it represents a specific system disclosed in the patent.

    Here, the Federal Circuit treated the Dial-A-Matic system as a sufficiently concrete structure to satisfy the statutory requirement.

    Standard of Review

    The court also reiterated the standards governing appellate review of claim construction and indefiniteness determinations.

    Questions involving intrinsic evidence—such as whether a claim invokes § 112(f) or whether the specification discloses corresponding structure—are reviewed de novo. However, underlying factual determinations based on extrinsic evidence are reviewed for clear error.

    This framework derives from the Supreme Court’s decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., which established that subsidiary factual findings during claim construction receive deferential review.

    In this case, the Federal Circuit determined that the district court’s legal analysis of corresponding structure was incorrect, making reversal appropriate.

    Implications for Patent Drafting and Litigation

    The Gramm decision highlights several practical lessons for patent practitioners.

    First, the case underscores the continuing significance of means-plus-function claiming. Although many practitioners avoid § 112(f) language due to its structural limitations, such claims remain common in mechanical and control-system technologies.

    Second, the decision reinforces that the corresponding structure analysis must be anchored to the claimed function—not to broader descriptions in the specification.

    Third, the opinion illustrates the importance of clearly describing operational systems in the specification. Even when a patent does not explicitly recite an algorithm, identifying a concrete system that performs the function may suffice.

    As Charles Gideon Korrell observes, disputes over indefiniteness frequently arise not because the patent lacks technical disclosure, but because courts and litigants disagree about which portions of the specification qualify as corresponding structure.

    Charles Gideon Korrell notes that the Federal Circuit’s reasoning in Gramm reflects a broader pattern in recent decisions: appellate courts are often skeptical of invalidity rulings that stem from overly restrictive structural interpretations.

    Another takeaway is that litigants should carefully evaluate whether the accused infringer’s own arguments about claim construction implicitly identify the corresponding structure. In Gramm, Deere had previously pointed to Dial-A-Matic Version #1 as a relevant system during claim construction, a position that ultimately undermined the indefiniteness theory.

    As Charles Gideon Korrell explains, this type of litigation posture can be significant because statements made during claim construction frequently shape how courts later evaluate indefiniteness.

    Finally, the decision reinforces the Federal Circuit’s long-standing principle that claims should not be invalidated lightly when the specification discloses at least one workable embodiment.

    Conclusion

    The Federal Circuit’s ruling in Gramm v. Deere provides a careful clarification of the corresponding-structure requirement for means-plus-function claims. By reversing the district court’s indefiniteness determination, the court emphasized that the proper inquiry focuses on whether the specification discloses structure capable of performing the claimed function—not whether the structure includes additional features or capabilities.

    For practitioners, the case serves as another reminder that indefiniteness challenges under § 112 often turn on the precision of the structural analysis. When courts identify the correct embodiment in the specification, many purported indefiniteness problems disappear.

    Charles Gideon Korrell believes that the decision will likely be cited in future disputes involving control systems and legacy mechanical patents, where functional language is common but the disclosed structure may not resemble modern software-driven implementations.

    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

  • Genuine Enabling Tech. v. Sony: Means-Plus-Function Claims Demand Full Structural Accounting

    Genuine Enabling Tech. v. Sony: Means-Plus-Function Claims Demand Full Structural Accounting

    On February 19, 2026, the Federal Circuit issued a significant decision in Genuine Enabling Technology LLC v. Sony Group Corporation, No. 2024-1686, affirming summary judgment of noninfringement in favor of Sony.

    At first glance, the case involves familiar territory: PlayStation controllers, Bluetooth modules, and an aging patent directed to combining data streams. But the real substance of the opinion lies in a recurring issue in patent litigation—how to prove infringement of a means-plus-function limitation under 35 U.S.C. § 112(f).

    The court’s message is direct and important: when a patentee elects means-plus-function claiming, it must grapple with the full corresponding structure disclosed in the specification. Selective abstraction will not suffice.

    This decision reinforces the Federal Circuit’s increasingly disciplined approach to structural equivalence and highlights the evidentiary burdens facing patentees who rely on functional claiming.

    The Patent and the Accused Products

    Genuine Enabling Technology (GET) asserted U.S. Patent No. 6,219,730 against Sony’s PlayStation 3 and 4 consoles and controllers. The ’730 patent addresses a problem that was common at the time of filing: limited computer ports and hardware resources. Rather than dedicating separate ports to multiple input devices, the patent discloses synchronizing and combining multiple input streams into a single data stream for transmission.

    The asserted claims—including claim 10—recited an “encoding means for synchronizing the user input stream with the input stream and encoding the same into a combined data stream.”

    Critically, the district court construed “encoding means” under § 112(f). The corresponding structure was identified as “the logic design at block 34 in Figure 4A and equivalents thereof.”

    No party disputed that block 34, as a whole, was the corresponding structure.

    That determination would prove decisive.

    Logic Block 34: The Structural Baseline

    Figure 4A of the ’730 patent depicts logic block 34 as a multi-component circuit. It includes:

    Within block 34 are elements such as:

    • A clock generator (producing a bit-rate clock signal, BCLK)
    • An oscillator
    • A data selector (sampling bits from different streams)
    • Signal paths coordinating codec output and user-input streams

    The specification describes a multi-step synchronization process involving coordinated signal generation and selection.

    In short, the disclosed structure was not a single clock. It was a detailed logic design.

    GET’s Infringement Theory

    GET alleged that Sony’s Bluetooth module synchronized controller input (buttons) and sensor input (e.g., accelerometers), satisfying the “encoding means” limitation.

    Its expert, Dr. Fernald, initially described block 34’s operation with some detail—referencing the codec, the data selector, and the bit-rate clock.

    But as the case progressed, GET narrowed its theory. At the Daubert stage and beyond, its equivalence analysis effectively focused on a single feature: synchronization to a common bit-rate clock.

    The district court excluded Dr. Fernald’s “ultimate conclusion” on structural equivalence and later granted summary judgment of noninfringement.

    The Federal Circuit affirmed.

    Structural Equivalence Under § 112(f)

    The governing framework was familiar:

    Under Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259 (Fed. Cir. 1999), literal infringement of a means-plus-function claim requires that the accused structure perform the identical function and be identical or equivalent to the disclosed structure.

    Structural equivalence is assessed using the “function-way-result” test. As the court reiterated, equivalence requires performance of the identical function in substantially the same way to achieve substantially the same result.

    The central issue was the “way” prong.

    The Problem: Ignoring Most of Block 34

    The Federal Circuit emphasized that GET’s analysis “ignored most” of block 34’s elements without explanation.

    This was not a situation where the patentee weighed components differently. Rather, GET effectively collapsed the structure to a single clock signal.

    The court analogized to Traxcell Technologies, LLC v. Sprint Communications Co., 15 F.4th 1121 (Fed. Cir. 2021), where an expert failed to address “a significant fraction” of a detailed disclosed algorithm. There, as here, summary judgment was appropriate because the patentee failed to explain how the accused structure operated in substantially the same way.

    Similarly, the court invoked Dawn Equipment Co. v. Kentucky Farms Inc., 140 F.3d 1009 (Fed. Cir. 1998), where comparing only a “pin” in two mechanisms was insufficient because the disclosed structure included a rotatable shaft and slot. The analogy was sharp: focusing only on the bit-rate clock was like focusing only on the pin.

    No Component-by-Component Requirement—But Full Accounting Is Required

    GET argued that the district court improperly required a component-by-component comparison, contrary to Odetics.

    The Federal Circuit rejected that framing.

    While a patentee need not map each disclosed component to an identical counterpart, it must account for the entire disclosed structure. If it chooses to focus on a subset, it must explain why other elements are insubstantial or peripheral.

    Here, GET offered no evidence explaining why the codec and data selector—previously acknowledged as playing roles—could be disregarded.

    That omission was fatal.

    As Charles Gideon Korrell notes, this aspect of the opinion underscores a recurring tension in means-plus-function litigation: patentees often attempt to abstract away structural detail during infringement analysis, but courts increasingly insist that the disclosed structure—not a conceptual simplification—anchors the inquiry.

    The “Black Box” Problem

    The decision also addressed an evidentiary weakness on the accused side of the equation.

    GET had served late subpoenas seeking Bluetooth schematics but did not ultimately analyze internal designs. The accused module was treated as something of a “black box.”

    Dr. Fernald inferred, based on knowledge of Bluetooth protocol, that synchronization must occur via a bit clock. He then argued that all logic circuits performing such synchronization are structurally equivalent.

    The Federal Circuit rejected that reasoning for three reasons:

    1. It was conclusory.
    2. It collapsed the function-way-result test into a function-result test.
    3. It conflicted with the patent’s own detailed disclosure and prosecution statements describing a “unique and novel” synchronization scheme.

    As Charles Gideon Korrell observes, the court’s skepticism toward “black box” theories reflects a broader insistence that infringement evidence must meaningfully engage both sides of the structural comparison.

    Strategic Implications

    This opinion carries several practical lessons.

    1. § 112(f) Is a Trade-Off

    The court quoted Medical Instrumentation & Diagnostics Corp. v. Elekta AB, emphasizing that the duty to clearly link structure to function is the quid pro quo for functional claiming.

    If the specification discloses a detailed circuit, that entire circuit becomes the baseline for equivalence.

    Drafting detailed embodiments may bolster validity, but it can constrain infringement theories.

    2. Experts Must Explain Structural Simplification

    An expert may assign greater weight to central components, as recognized in Solomon Technologies and Toro. But selective omission requires explanation.

    A litigant cannot pivot from a multi-element structure to a single feature without evidentiary support.

    3. Conclusory Equivalence Will Not Survive Summary Judgment

    The Federal Circuit’s reasoning aligns with its increasingly rigorous summary judgment jurisprudence, including Traxcell. Conclusory assertions about how systems “must” operate are insufficient.

    Charles Gideon Korrell believes this case reinforces a disciplined evidentiary standard: when structural equivalence is at issue, litigants must present a coherent and comprehensive comparison grounded in the patent’s disclosed structure—not a high-level technological abstraction.

    The Broader Trend

    The decision reflects a broader Federal Circuit trend:

    • Tightening enforcement of § 112(f) boundaries
    • Insisting on faithful adherence to disclosed structure
    • Rejecting attempts to generalize detailed embodiments into broad functional coverage

    Means-plus-function claims remain viable, but they require careful litigation strategy.

    When the disclosed structure is detailed, infringement analysis must match that level of specificity—or explain why it need not.

    Conclusion

    In Genuine Enabling Technology LLC v. Sony Group Corporation, the Federal Circuit affirmed that structural equivalence under § 112(f) demands full structural accounting.

    A patentee cannot:

    • Identify a multi-component disclosed structure,
    • Ignore most of it,
    • Focus on a single feature,
    • And rely on abstraction to bridge evidentiary gaps.

    Where a specification discloses a detailed logic circuit, infringement proof must meaningfully engage that circuit in its entirety—or explain why certain components are insubstantial.

    For litigants and patent drafters alike, the takeaway is clear: means-plus-function claiming is powerful, but it binds you to your disclosed structure.

    By Charles Gideon Korrell

  • Optis Cellular Technology v. Apple Inc.: Federal Circuit Orders New Trial on Infringement and Damages Due to Unanimity Violation and Improper Evidence

    Optis Cellular Technology v. Apple Inc.: Federal Circuit Orders New Trial on Infringement and Damages Due to Unanimity Violation and Improper Evidence

    The Federal Circuit’s June 16, 2025, decision in Optis Cellular Technology, LLC v. Apple Inc., Nos. 2022-1904, 2022-1925, vacates a $300 million damages judgment in a high-stakes standard-essential patent (SEP) case and mandates a new trial on both infringement and damages. The court found that the Eastern District of Texas violated Apple’s constitutional right to a unanimous jury verdict and improperly admitted prejudicial evidence, including a large Apple-Qualcomm settlement. The ruling also carries broader implications for the treatment of abstract claims under § 101 and functional claim limitations under § 112 ¶ 6.

    Key Takeaway

    The Federal Circuit vacated both the infringement and damages verdicts because the jury verdict form failed to ensure unanimity on specific claims, and because the district court improperly admitted a high-dollar Apple-Qualcomm settlement agreement. The court also held two of the asserted claims invalid under § 101, reversed a § 112 ¶ 6 ruling, and rejected the patentee’s request to reinstate a previously set-aside $506 million award.

    Background

    Optis, asserting a suite of five LTE standard-essential patents, sued Apple in the Eastern District of Texas in 2019. After an initial trial in 2020, the jury awarded Optis $506.2 million in damages, finding infringement and willfulness. However, the trial court granted Apple a new trial on damages due to improper exclusion of FRAND evidence. A second trial in 2021 resulted in a $300 million lump-sum verdict.

    Apple appealed, challenging liability, damages, claim construction, and admissibility of certain evidence. Optis cross-appealed, seeking reinstatement of the original damages verdict.

    The Verdict Form and Jury Unanimity Violation

    The Federal Circuit held that the district court erred by using a single verdict question that asked whether Apple infringed “ANY of the asserted claims” without distinguishing between the five asserted patents. This structure permitted a finding of liability even if jurors disagreed on which patents were infringed, violating Apple’s right to a unanimous verdict under the Seventh Amendment and Federal Rule of Civil Procedure 48(b):

    “The verdict form instructed the jury to find Apple liable for infringement regardless of whether all jurors agreed that Apple was infringing the same patent.” (Slip op. at 15)

    Despite the parties’ joint request for patent-by-patent questions, the district court rejected that format. The Federal Circuit deemed this a clear legal error warranting vacatur of the liability judgment and a new trial.

    Damages Verdict Also Vacated

    Because liability was vacated, the court also vacated the $300 million damages verdict. Notably, the district court had instructed the jury to assume all five patents were infringed for purposes of damages—an instruction that now lacks any valid liability finding to support it.

    Further, the court held that the district court abused its discretion under FRE 403 by admitting a high-value Apple-Qualcomm settlement agreement and allowing Optis’s expert to rely on it:

    “[T]he probative value of the Apple-Qualcomm settlement agreement and Mr. Kennedy’s testimony concerning the same is substantially outweighed by the risk of unfair prejudice.” (Slip op. at 36)

    This agreement, which settled global disputes unrelated to the patents-in-suit, was deemed minimally probative and highly prejudicial.

    Patent Eligibility Under § 101

    The court reversed the district court’s denial of Apple’s § 101 motion on claims 6 and 7 of U.S. Patent No. 8,019,332, finding them directed to an abstract mathematical formula:

    “We conclude that the claims are directed to the abstract idea—a mathematical formula.” (Slip op. at 24)

    Charles Gideon Korrell notes that the Federal Circuit found the claims failed Alice step one and remanded for further proceedings on step two.

    Means-Plus-Function and § 112 ¶ 6

    In another reversal, the Federal Circuit held that the term “selecting unit” in claim 1 of U.S. Patent No. 8,411,557 invoked § 112 ¶ 6. It found “unit” to be a nonce term that fails to connote sufficient structure:

    “‘Selecting unit’ in the claim at issue here invokes § 112 ¶ 6.” (Slip op. at 31)

    The district court had relied on a prior Eastern District ruling, but the Federal Circuit found that opinion unpersuasive, particularly in light of Optis’s own assertion that the “unit” could be implemented in hardware or software. The matter was remanded to determine if the specification provides sufficient structure.

    Claim Construction Affirmed

    The court affirmed the construction of a key term in claim 8 of U.S. Patent No. 8,102,833, rejecting Apple’s argument that the mapping of ACK/NACK control signals required a specific start position.

    Optis’s Cross-Appeal Rejected

    Optis had sought reinstatement of the original $506.2 million award from the first trial, but the Federal Circuit dismissed the cross-appeal, concluding that:

    “[T]he first damages judgment presented the same verdict form issue… and thus cannot be reinstated.” (Slip op. at 36)

    Practical Implications

    This decision reinforces several critical points for SEP litigation and patent damages trials:

    1. Verdict Form Precision Matters: Patent plaintiffs must ensure verdict forms distinguish each asserted patent or claim to avoid violating the defendant’s right to unanimity.
    2. Evidence of Other Settlements Is Risky: Courts will scrutinize the use of large dollar-value settlements, especially when they involve different technologies or were driven by non-comparable litigation pressure.
    3. FRAND Damages Must Align with Liability: Damages awards must correspond to actual findings of infringement, particularly in FRAND cases.
    4. § 101 and § 112 Scrutiny Continues: The court’s reversals on patent eligibility and means-plus-function interpretation signal a continued willingness to invalidate improperly drafted claims—even in complex SEP disputes.

    Charles Gideon Korrell notes that the Federal Circuit’s opinion emphasizes procedural fairness as much as substantive patent doctrine. Charles Gideon Korrell also observes that the court’s insistence on clarity in verdict forms may drive future litigants to pay closer attention to the architecture of jury questions.

    Conclusion

    The Federal Circuit’s decision in Optis v. Apple is a comprehensive rebuke of multiple aspects of the trial court’s handling of a major SEP case. By ordering a new trial on both liability and damages and reversing several key legal rulings, the opinion sets important precedent for how SEP litigation should be conducted and how damages should be assessed.

    By Charles Gideon Korrell

  • Fintiv, Inc. v. PayPal Holdings, Inc.: No Structure, No Claim — Payment Handler Terms Held Indefinite Under § 112 ¶ 6

    Fintiv, Inc. v. PayPal Holdings, Inc.: No Structure, No Claim — Payment Handler Terms Held Indefinite Under § 112 ¶ 6

    In Fintiv, Inc. v. PayPal Holdings, Inc., No. 23-2312 (Fed. Cir. Apr. 30, 2025), the Federal Circuit affirmed the Western District of Texas’s ruling that the asserted patent claims were invalid as indefinite. The decision underscores the court’s continued enforcement of 35 U.S.C. § 112 ¶ 6 for software-related terms that fail to recite sufficient structure, extending the line of cases exemplified by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015).

    Background

    Fintiv asserted four patents—U.S. Patent Nos. 9,892,386, 11,120,413, 9,208,488, and 10,438,196—relating to a cloud-based mobile transaction system. At issue were various claims referring to a “payment handler” or “payment handler service” that either (1) used APIs of various payment processors or (2) exposed a common API for interacting with them.

    The district court, applying § 112 ¶ 6, found the payment-handler terms to be means-plus-function limitations and held the claims indefinite for failure to disclose corresponding structure. Fintiv appealed.

    Key Holdings

    1. The Payment Handler Terms Invoke § 112 ¶ 6

    The Federal Circuit agreed with the district court that the “payment handler” and “payment handler service” terms were functional, lacked sufficient structural meaning, and thus invoked § 112 ¶ 6. Although these terms did not use the word “means,” the court found that the presumption against § 112 ¶ 6 was rebutted under Williamson, which allows application of § 112 ¶ 6 when a term “recites function without reciting sufficient structure for performing that function.”

    The panel emphasized that:

    • “Handler” is akin to “module,” a term previously found by the court to lack structural significance.
    • Appending the term “payment” did not supply structure but merely described a function.
    • Expert testimony indicated that a person of ordinary skill would not understand how to implement the recited functions based on the claim language alone.

    Fintiv’s reliance on Dyfan, LLC v. Target Corp., 28 F.4th 1360 (Fed. Cir. 2022), was unpersuasive. Unlike Dyfan, where unrebutted expert testimony supported structure, here neither party’s expert testified that “payment handler” connoted a definite structure.

    2. Lack of Corresponding Structure in the Specification

    Once § 112 ¶ 6 was triggered, the court found that the patents failed to disclose any algorithm or adequate structure for the “payment handler” functionality. Merely restating the claimed function—“wrap[ping] APIs” and “expos[ing] a common API”—did not meet the requirement.

    Citing Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 521 F.3d 1328 (Fed. Cir. 2008), and Rain Computing, Inc. v. Samsung Electronics America, Inc., 989 F.3d 1002 (Fed. Cir. 2021), the court reiterated that describing only a general-purpose computer without a specific algorithm is insufficient.

    Fintiv’s attempt to point to a supposed two-step algorithm was rejected as merely a restatement of the claim language. The court also dismissed the idea that the figures in the patents showed a structural implementation of the payment handler, noting a lack of clarity on how the functions were performed or how different APIs were integrated.

    Implications

    This decision adds to the growing body of Federal Circuit case law demanding structural specificity in software patent claims. Key takeaways include:

    • Terms that combine a generic function descriptor with a purpose (e.g., “payment handler”) are increasingly likely to be swept into § 112 ¶ 6 territory if not clearly supported by structural description.
    • Boilerplate specification language that simply mirrors claim terms without detailing implementation will not rescue functional claims.
    • Practitioners should be cautious in relying on software terms like “service,” “module,” or “handler” without anchoring them to known, sufficiently detailed structures or algorithms in the specification.

    Conclusion

    Fintiv v. PayPal reiterates that when it comes to software patents, claiming a function is not enough—patentees must disclose how the function is performed with sufficient specificity. This decision reinforces the Federal Circuit’s post-Williamson trajectory and continues the tightening of indefiniteness doctrine in the software space.

    By Charles Gideon Korrell

  • Federal Circuit Weighs in on Gesture-Based Patent Dispute: Key Takeaways for IP Law

    The Federal Circuit’s recent decision in Apple Inc. v. Gesture Technology Partners, LLC (March 2025) provides important insights into patent law, particularly in the context of inter partes review (IPR) proceedings and obviousness determinations. This ruling builds on the court’s earlier January 2025 decision in another dispute involving Gesture Technology Partners, reinforcing key legal principles regarding patent validity and the scope of IPR challenges.

    Below, we explore the major legal issues addressed in this case, how they connect to the January ruling, and what they mean for the future of intellectual property law in the tech industry.

    Background of the Case

    The dispute centers around U.S. Patent No. 7,933,431 (the ’431 patent), which relates to gesture-based input methods using cameras and optical sensors. Gesture Technology Partners, LLC (Gesture) sued Apple, LG Electronics, and Google for alleged infringement of the ’431 patent. Apple and its co-appellees petitioned for inter partes review (IPR), challenging the patent’s validity based on prior art.

    The Patent Trial and Appeal Board (PTAB) ruled that most claims were unpatentable but upheld claims 11 and 13. Apple appealed this decision, while Gesture cross-appealed, arguing that additional claims should remain valid.

    The Federal Circuit ultimately affirmed the PTAB’s findings, ruling that claims 1–10, 12, and 14–31 were unpatentable, while upholding claims 11 and 13.

    Connection to the January 2025 CAFC Decision

    This decision follows and reinforces the January 2025 ruling in Gesture Technology Partners, LLC v. Unified Patents LLC, another Federal Circuit case involving Gesture’s ’431 patent. In that case:

    • The Federal Circuit affirmed the PTAB’s finding that claims 7–9 and 12 were unpatentable, relying heavily on prior art disclosures in the Numazaki reference.
    • However, the court also upheld the PTAB’s ruling that claims 10, 11, and 13 were not unpatentable, which became a key point of contention in Apple’s subsequent appeal.

    The March 2025 ruling effectively follows the logic of the January 2025 decision, particularly in two major ways:

    1. Reaffirming PTAB’s Findings on Patent Validity:
      • Both cases emphasized that Numazaki disclosed fundamental aspects of gesture-based control, making most of Gesture’s claims obvious under 35 U.S.C. § 103.
      • The Federal Circuit consistently deferred to the PTAB’s factual findings regarding how Numazaki rendered certain claims unpatentable.
    2. Consistently Upholding Claims 11 and 13:
      • The January 2025 case upheld claims 10, 11, and 13, creating a foundation for Apple’s subsequent challenge.
      • In the March 2025 decision, Apple sought to overturn the PTAB’s finding on claims 11 and 13, arguing that the Board misapplied the obviousness standard—but the Federal Circuit again upheld these claims, reinforcing its prior stance.

    Together, these two decisions establish a strong precedent for how courts evaluate IPR outcomes, particularly in disputes involving expired patents and prior art analysis.

    Key Legal Issues Addressed by the Court

    1. Obviousness and Prior Art

    The primary legal issue in both cases was whether the patent claims were invalid due to obviousness under 35 U.S.C. § 103. The court ruled that most of the patent’s claims were obvious in light of prior art—particularly U.S. Patent No. 6,144,366 (Numazaki).

    • Apple argued that Numazaki disclosed similar technology and that a person of ordinary skill in the art would have found the claimed invention obvious.
    • Gesture countered that Numazaki did not sufficiently teach key elements of the ’431 patent, particularly its sensing and image-processing functionalities.

    In both cases, the court upheld the PTAB’s determinations, reaffirming that Numazaki was sufficient prior art to invalidate most claims.

    2. Inter Partes Review (IPR) Estoppel and Standing

    Apple faced a procedural challenge regarding IPR estoppel under 35 U.S.C. § 315(e)(1), which bars petitioners from re-litigating arguments that were (or could have been) raised in an earlier IPR.

    • Gesture argued that Apple should be estopped from challenging claims 11 and 13 because it was allegedly a real party in interest or privy of Unified Patents, the petitioner in the earlier January 2025 case.
    • The court rejected this argument, holding that Gesture had forfeited this claim by not raising it before the PTAB.

    This ruling aligns with the January 2025 decision, where the court emphasized that procedural challenges must be properly raised at the PTAB stage, not on appeal.

    3. Means-Plus-Function Claims and Claim Construction

    Another major issue was the interpretation of means-plus-function claims under 35 U.S.C. § 112, ¶ 6.

    • The March 2025 decision reaffirmed that Numazaki adequately disclosed structures corresponding to the claimed “sensing means” and “computer means” in the ’431 patent.
    • Gesture’s arguments that the Numazaki reference did not sufficiently disclose tracking and image analysis were rejected—just as they were in the January 2025 case.

    4. PTAB’s Jurisdiction Over Expired Patents

    Gesture made a broader challenge, arguing that the PTAB lacks jurisdiction over expired patents—a claim it also raised unsuccessfully in the January case.

    • The March 2025 ruling definitively rejected this argument, reaffirming the Federal Circuit’s prior holding that expired patents remain subject to IPR challenges.
    • This decision aligns with the court’s reasoning in January 2025, reinforcing that patent expiration does not shield invalid claims from IPR proceedings.

    Implications for Patent Holders and Tech Companies

    The two 2025 Federal Circuit rulings offer several key lessons for companies engaged in patent litigation, particularly in the tech sector:

    1. Strengthen Patent Drafting & Prosecution – Ensure patents are clearly distinct from prior art to withstand obviousness challenges.
    2. Raise Procedural Challenges Early – Issues like IPR estoppel and standing must be raised at the PTAB stage, not for the first time on appeal.
    3. Be Strategic About IPRs – Defendants should carefully assess prior art before filing an IPR to maximize their chances of invalidation.

    With the continued expansion of gesture-based and optical-sensing technology, these cases serve as important precedents in software and hardware patent disputes.

    Final Thoughts: A Consistent Approach to Patent Challenges

    The January and March 2025 decisions together paint a clear picture:

    • The Federal Circuit remains deferential to PTAB findings, particularly in IPR proceedings.
    • Courts continue to take a rigorous approach to obviousness analysis, ensuring that patents covering well-known technologies do not survive merely due to clever claim drafting.
    • Expired patents remain vulnerable to challenges under IPR, reinforcing the importance of early and thorough patent prosecution strategies.

    As the tech industry continues to develop new gesture-based and camera-driven input systems, these rulings may have far-reaching consequences for how such patents are drafted, enforced, and challenged in the future.

    By Charles Gideon Korrell

  • Federal Circuit Reverses JMOL in Steuben Foods Patent Case: Key Takeaways for IP Law

    In Steuben Foods, Inc. v. Shibuya Hoppmann Corporation, the Federal Circuit issued a major decision addressing key intellectual property issues related to patent infringement, claim construction, and the reverse doctrine of equivalents (RDOE). The case centered on aseptic food packaging technology, with the court analyzing whether Shibuya’s P7 aseptic bottling line infringed Steuben’s patents.

    This ruling highlights several crucial aspects of IP law, including the viability of RDOE as a defense, the interpretation of means-plus-function claims, and the application of the doctrine of equivalents. Below, we break down the major legal takeaways from this case.

    1. The Reverse Doctrine of Equivalents is Questioned but Not Eliminated

    One of the most significant aspects of the ruling was the court’s discussion of RDOE, an uncommon defense to literal infringement. Shibuya argued that even if its product fell within the literal scope of Steuben’s patent claims, it operated under a different principle and should not be found infringing.

    Steuben countered that RDOE was effectively eliminated by the 1952 Patent Act, which codified infringement rules in 35 U.S.C. § 271(a) and included limitations on overly broad claims under § 112. The Federal Circuit acknowledged that RDOE has been rarely applied and that there is an argument that it may no longer be viable. However, rather than making a definitive ruling on whether RDOE survived the 1952 Patent Act, the court found that the jury had substantial evidence to reject Shibuya’s RDOE argument. As a result, the court reversed the district court’s judgment as a matter of law (JMOL) and reinstated the jury’s infringement verdict for the ‘591 patent.

    2. Means-Plus-Function Claims and the Equivalence Test

    Another key issue involved the construction of means-plus-function claims in the ‘188 patent. The claims at issue used functional language to describe components of the aseptic filling system, such as a “means for filling” bottles at a specified rate. Under § 112, ¶ 6, such claims must be construed to cover the specific structures disclosed in the patent and their equivalents.

    The district court had found that Shibuya’s accused products, which used rotary wheels and neck grippers, did not infringe the means-plus-function claims because they operated differently from the patented conveyor and conveyor plate. However, the Federal Circuit reversed, emphasizing that the equivalence test must consider whether the accused structure performs the same function in substantially the same way to achieve the same result. The court found that Steuben presented substantial evidence that Shibuya’s rotary wheels and neck grippers were equivalent to the claimed structures, leading to a reinstatement of the jury’s verdict on the ‘188 patent.

    3. Limits on the Doctrine of Equivalents

    The court upheld JMOL of noninfringement for claims in the ‘985 patent, highlighting an important limitation on the doctrine of equivalents. The issue in this case was whether a sterilization system that added sterilant “continuously” could be deemed equivalent to a claim that required it to be added “intermittently.”

    The parties had stipulated that “intermittently added” meant “[a]dded in a non-continuous manner.” Given this definition, the court held that allowing a “continuous” system to be considered equivalent would vitiate the claim limitation entirely. This ruling reinforces the principle that the doctrine of equivalents cannot be used to erase clear claim limitations.

    4. Reinstating the Jury’s Verdict and Addressing New Trial Issues

    In addition to reversing JMOL on certain infringement claims, the Federal Circuit also vacated the district court’s conditional grant of a new trial on infringement and damages. Because the district court’s reasoning for ordering a new trial was tied to its JMOL findings—many of which were overturned—the Federal Circuit found no independent basis for a new trial.

    However, the court vacated and remanded the district court’s ruling on a new trial for invalidity and damages, as the lower court had provided no clear rationale for those decisions. This signals the importance of district courts articulating their reasoning clearly when granting new trials, especially in complex patent litigation.

    Key Takeaways for Patent Holders and Defendants

    This decision offers several key lessons for patent holders and defendants in intellectual property disputes:

    1. RDOE Remains a Questionable Defense – While the court did not rule on whether RDOE survived the 1952 Patent Act, it reinforced the principle that substantial evidence from a jury trial should not be overturned lightly.
    2. Means-Plus-Function Claims Require Proper Equivalence Analysis – When dealing with § 112, ¶ 6 claims, courts must carefully compare the structure and function of the accused product to the patent’s disclosed embodiments.
    3. Doctrine of Equivalents Has Limits – The decision confirms that the doctrine of equivalents cannot be used to override explicit claim limitations, particularly when the alleged equivalent is the opposite of the claim language.
    4. District Courts Must Provide Clear Justifications for New Trials – The Federal Circuit vacated a new trial ruling because the district court failed to articulate an independent basis for it.

    Conclusion

    The Steuben Foods decision provides important guidance on several areas of intellectual property law, particularly for companies engaged in patent disputes over manufacturing processes. While the Federal Circuit did not eliminate RDOE outright, it cast doubt on its viability, reinforcing that patentees should focus on claim construction and infringement theories rather than relying on outdated doctrines. The ruling also strengthens the application of means-plus-function claims and the doctrine of equivalents while ensuring that district courts justify their decisions with clear reasoning.

    As patent litigation continues to evolve, this case serves as a reminder of the complexities of IP law and the need for strategic approaches in patent enforcement and defense.

    By Charles Gideon Korrell