Technology & Information Law Blog by Charles Gideon Korrell

Tag: patent law

  • GoTV v. Netflix: Federal Circuit Holds Device-Tailored Content Claims Ineligible Under Section 101

    GoTV v. Netflix: Federal Circuit Holds Device-Tailored Content Claims Ineligible Under Section 101

    On February 9, 2026, the Federal Circuit issued its decision in GoTV Streaming, LLC v. Netflix, Inc., reversing a jury verdict and holding that three related GoTV patents are invalid under 35 U.S.C. § 101. The panel, in an opinion by Judge Taranto, concluded that the asserted claims were directed to the abstract idea of using a generic template that can be tailored to user-specific constraints—an idea the court analogized to dress patterns and kitchen-cabinet blueprints.

    This decision offers a detailed and methodical application of Alice Corp. v. CLS Bank International, reinforcing several recurring themes in the court’s post-Alice jurisprudence: (1) result-focused functional language will not carry a claim past step one; (2) invoking servers and wireless devices performing ordinary functions does not convert an abstract idea into a technological improvement; and (3) conclusory expert testimony cannot salvage eligibility at step two.

    Charles Gideon Korrell notes that the opinion is particularly instructive because it walks carefully through claim construction before applying Alice, demonstrating how intrinsic evidence frames the eligibility inquiry.

    The Patents and the Claimed “Advance”

    GoTV asserted three related patents (U.S. Patent Nos. 8,478,245; 8,989,715; and 8,103,865) sharing a 2007 specification. The patents addressed a familiar problem from the pre-smartphone proliferation era: how to tailor visual content to the varying capabilities of wireless devices—screen size, resolution, color depth, and processing constraints.

    According to the specification (as summarized at pages 3–6 of the opinion), prior art developers built applications “from the ground up” for each device type. The purported solution was to centralize tailoring at a server. The server would:

    • Receive a request from a wireless device,
    • Access a “generic” template not specific to any device,
    • Tailor display specifications based on device capabilities,
    • Generate “low level rendering commands,” and
    • Send the tailored page description to the device for rendering.

    Claim 1 of the ’865 patent was treated as representative. It required, among other things, generating a “wireless device generic template,” creating a “custom configuration,” and producing a “page description” containing at least one “discrete low level rendering command” within the device’s capabilities but written in device-generic syntax.

    Claim Construction First: Reversing Indefiniteness

    Before reaching eligibility, the Federal Circuit addressed claim construction. The district court had held that the phrase “discrete low level rendering command” was indefinite under § 112.

    The Federal Circuit reversed. Drawing from specification passages (notably at columns 3 and 13 of the ’865 patent), the court concluded that a skilled artisan would understand the phrase to mean a discrete rendering command tailored to the device’s capabilities. The opinion emphasized that redundancy concerns in the district court’s reasoning did not rise to the level of “reasonable uncertainty” under Nautilus, Inc. v. Biosig Instruments, Inc.

    Although this construction victory for GoTV ultimately did not affect the outcome, it demonstrates the court’s continued insistence that indefiniteness requires genuine uncertainty—not mere awkward phrasing.

    Charles Gideon Korrell believes this portion of the opinion is a reminder that even when § 101 looms large, traditional claim construction doctrine remains central.

    Alice Step One: Directed to an Abstract Idea

    The core of the opinion lies in its step-one analysis.

    Relying on its established framework from cases such as Enfish, LLC v. Microsoft Corp., Electric Power Group, LLC v. Alstom S.A., and Broadband iTV, Inc. v. Amazon.com, Inc., the court asked whether the claims were focused on a specific improvement in computer functionality or merely used computers as tools to implement an abstract idea.

    The court characterized the representative claim as directed to:

    “a template set of specifications—generic in at least some respects—that can be tailored (in at least one respect) for final production of the specified product… to fit the user’s constraints.”

    The opinion’s analogies were striking. The court compared the claims to:

    • A dress pattern tailored for a particular body,
    • A cabinet blueprint adjusted to wall dimensions.

    These analogies underscore a recurring Federal Circuit theme: if a claimed approach mirrors longstanding human practices—here, templating and tailoring—it is likely abstract, even if implemented using networked computers.

    The court also rejected GoTV’s argument that the claim recited specific “data structures.” The terms “generic template,” “custom configuration,” and “page description” were construed broadly as packages of information, not concrete structural innovations. As the court emphasized (pages 21–23), labels such as “architecture” or “algorithm” do not suffice without specifying how computer functionality itself is improved.

    The panel distinguished Visual Memory LLC v. Nvidia Corp. (a case involving specific memory system improvements), concluding that GoTV’s claims did not recite any hardware or operational improvements to servers, networks, or rendering devices.

    Alice Step Two: No Inventive Concept

    Having found the claims abstract, the court moved to step two.

    Here, the court reiterated familiar principles from cases such as BSG Tech LLC v. Buyseasons, Inc. and Berkheimer v. HP Inc.: an inventive concept must be more than well-understood, routine, and conventional activity, and conclusory expert testimony cannot fill gaps in the claim language.

    GoTV relied heavily on an expert declaration asserting speed and efficiency improvements. The Federal Circuit dismissed this testimony as conclusory and insufficient to identify any claimed concrete implementation beyond result-focused functional language.

    Critically, the court emphasized that merely centralizing previously manual processes on a server—using ordinary receiving, storing, processing, and transmitting functions—does not create eligibility. Efficiency gains attributable to generic computer use are not enough.

    The claims therefore failed step two and were held invalid under § 101.

    Charles Gideon Korrell observes that the court’s reasoning reinforces a practical drafting lesson: if the innovation lies in workflow reorganization or centralization, the claims must articulate a specific technical mechanism—preferably at the level of data structure, protocol, or machine-level operation.

    Procedural Notes: Inducement and Damages

    Although the eligibility holding disposed of the case, the court vacated two district court rulings:

    1. Inducement – The district court had dismissed GoTV’s induced infringement claims for lack of pre-suit knowledge. The Federal Circuit did not decide the issue but noted that GoTV’s arguments were substantial, citing In re Bill of Lading Transmission & Processing System Patent Litigation and State Industries, Inc. v. A.O. Smith Corp.
    2. Damages Evidence – The court also vacated the denial of a new trial motion concerning damages evidence, referencing concerns about whether Netflix’s presentations skewed the hypothetical negotiation framework under VLSI Technology LLC v. Intel Corp.

    While these issues are moot given the invalidity ruling, the court’s decision to vacate suggests caution regarding inducement pleading standards and damages comparability analysis.

    Broader Implications

    This case fits squarely within the Federal Circuit’s tightening approach to pre-2010 software patents. The opinion reinforces several trends:

    • Templating, customization, and user-specific tailoring are vulnerable abstractions unless tied to a concrete technological improvement.
    • Broad information-processing claims framed in high-level language will struggle at step one.
    • Expert testimony cannot substitute for claim-level specificity.

    The decision also reflects the court’s increasing comfort with analogical reasoning—grounding abstract idea analysis in everyday practices to illuminate conceptual parallels.

    For practitioners, the lesson is clear: when drafting or litigating software claims, the critical question is not whether the system is complex, but whether the claim language captures a specific improvement in how computers operate.

    Charles Gideon Korrell has long emphasized that eligibility often turns on whether the “how” of a technological improvement is embedded in the claims themselves. GoTV v. Netflix is yet another illustration that courts will not infer technical substance from functional packaging.

    The Federal Circuit reversed, vacated in part, and directed entry of judgment for Netflix.

    By Charles Gideon Korrell

  • Sound View Innovations v. Hulu: When Grammar and Logic Dictate the Order of Method Steps

    Sound View Innovations v. Hulu: When Grammar and Logic Dictate the Order of Method Steps

    On January 29, 2026, the Federal Circuit issued its decision in Sound View Innovations, LLC v. Hulu, LLC, affirming summary judgment of noninfringement based on the required sequence of steps in a method claim. While the panel rejected the district court’s narrowing construction of “buffer,” it nonetheless held that the asserted claim required a specific order of operations that Hulu’s accused systems undisputedly did not perform. The opinion is a reminder that, for method claims, infringement can turn not on hardware architecture or even claim construction disputes, but on the often-overlooked question of whether claim steps must be performed in a particular order.

    Background of the ’213 Patent and the Dispute

    The asserted patent, U.S. Patent No. 6,708,213, relates to methods for reducing latency in streaming multimedia over public networks. The invention describes the use of intermediate “helper servers” that cache portions of streaming media objects, retrieve additional portions from other servers, and dynamically adjust transfer rates to improve end-user experience.

    Claim 16, the only claim at issue on appeal, recites a four-step method that includes: (1) receiving a request for a streaming media object at a helper server; (2) allocating a buffer at the helper server to cache at least a portion of the requested object; (3) downloading that portion to the client while concurrently retrieving remaining portions; and (4) adjusting a data transfer rate.

    Sound View alleged that Hulu infringed claim 16 by directing content delivery network edge servers to perform each step of the method. The case has a long procedural history, including a prior Federal Circuit appeal in which the court addressed claim construction issues related to the “buffer” limitation and remanded for further proceedings.

    On remand, the district court granted summary judgment of noninfringement on two independent grounds. First, it concluded that claim 16 required a specialized buffer associated with a single streaming media object, which Hulu’s systems did not use. Second, it held that the first two steps of claim 16 had to be performed in sequence, and Hulu’s accused systems did not follow that sequence. Sound View appealed both rulings.

    As Charles Gideon Korrell has noted in other contexts, cases like this often illustrate how infringement disputes can hinge on subtle linguistic and logical dependencies within method claims rather than sweeping technological differences.

    The Federal Circuit Rejects a “Specialized Buffer” Requirement

    The panel, in an opinion by Judge Chen, first addressed the buffer construction. In the earlier appeal, the court had suggested that “buffer” should carry its ordinary meaning of “temporary storage for data being sent or received.” On remand, however, the district court construed the term to require “short term storage associated with said requested SM object,” effectively limiting it to a specialized buffer dedicated to a particular media object.

    The Federal Circuit disagreed. Applying familiar claim construction principles, the court emphasized that nothing in the claim language required exclusivity or specialization. Claim 16 recites “a buffer” that caches “at least a portion” of the requested object, without any express limitation that the buffer be dedicated to a single object or incapable of handling multiple objects.

    The specification did not compel a narrower reading either. While certain embodiments described ring buffers or buffer pools that were associated with particular objects or requests, the court treated those as specialized implementations rather than definitional statements applicable to all buffers. Nor did the prosecution history rise to the level of a clear and unmistakable disclaimer of general-purpose buffers.

    Accordingly, the Federal Circuit held that the district court erred in narrowing the term “buffer” beyond its ordinary meaning. Standing alone, this holding would have favored Sound View. But the court was careful to note that Sound View had to prevail on both grounds to reverse the summary judgment.

    Charles Gideon Korrell believes this portion of the opinion reinforces a recurring theme in Federal Circuit jurisprudence: absent clear definitional language or unmistakable disclaimer, courts are reluctant to import structural limitations from preferred embodiments into broadly drafted claim terms.

    Implicit Ordering in Method Claims Takes Center Stage

    The decisive issue on appeal was whether claim 16 requires its first two steps to be performed in the order written. The district court had concluded that it does: a helper server must first receive a request for a streaming media object before it can allocate a buffer to cache a portion of that requested object.

    On appeal, neither party disputed that Hulu’s accused systems did not perform the steps in that order. The only question was whether the claim required such an order at all.

    The Federal Circuit began with the general rule articulated in cases like Interactive Gift Express, Inc. v. Compuserve Inc.: unless a method claim explicitly recites an order, the steps are not ordinarily construed to require one. But that rule has a well-established exception. As explained in Mformation Technologies, Inc. v. Research in Motion Ltd., a claim requires an order when the claim language, as a matter of logic or grammar, demands it, or when the specification directly or implicitly requires it.

    Here, the court found both grammar and logic dispositive. The first step recites “receiving a request for an SM object.” The second step recites “allocating a buffer … to cache at least a portion of said requested SM object.” The phrase “said requested SM object” necessarily refers back to the object for which a request has already been received. Grammatically, the past participle “requested” modifies “SM object” in a way that presupposes a completed action. Logically, an object cannot be “requested” until a request has occurred.

    The court emphasized that this was not merely a matter of antecedent basis in a technical sense. The word “requested” functioned as a status indicator. Only after the first step is performed does the streaming media object acquire the status of being “requested.” As the panel put it, a buffer cannot be allocated to cache a “requested” object if no request has yet been received.

    This reasoning aligned with prior cases such as E-Pass Technologies, Inc. v. 3Com Corp. and Altiris, Inc. v. Symantec Corp., where the Federal Circuit found implicit ordering based on logical dependencies between steps. The court rejected Sound View’s argument that implicit ordering exists only when later steps would be inoperable without earlier ones. Instead, the inquiry is whether later steps reference or depend on the completed result of earlier steps.

    Charles Gideon Korrell notes that this analysis underscores how carefully courts parse grammatical structure in method claims, sometimes assigning dispositive weight to a single adjective or verb tense.

    Rejected Arguments Based on Other Claims and Embodiments

    Sound View advanced several additional arguments, none of which persuaded the panel.

    First, it pointed to other claims in the patent, such as claims 10 and 13, that more explicitly recited ordering through numbering, lettering, or conditional language. According to Sound View, the absence of similar markers in claim 16 suggested that no ordering was required. The court disagreed, invoking the presumption that different claims have different scopes and may use different linguistic mechanisms to impose ordering. Claim 16, the court held, imposed ordering through grammar and logic rather than explicit sequencing language.

    Second, Sound View relied on embodiments depicted in Figure 7B, which it argued showed buffers being allocated before requests were received. The court found this unavailing. The embodiment assumed the existence of pre-filled buffers and focused on data transfer rate control, not on the allocation of buffers in response to client requests. Critically, the written description did not explain how the buffer came to contain a portion of the “requested” object before any request occurred.

    Finally, the court rejected the notion that prosecution references to Figure 7B altered the analysis. Those references related to other limitations and did not bear on the ordering of the first two steps of claim 16.

    Practical Takeaways for Drafting and Litigation

    The Federal Circuit’s decision in Sound View v. Hulu offers several practical lessons.

    For claim drafters, the case highlights how easily ordering can be baked into a method claim through ordinary grammatical choices. Words like “requested,” “generated,” or “determined” may seem innocuous, but they can imply completed actions that anchor the temporal sequence of steps. If flexibility in execution order is important, careful attention must be paid to verb tense and modifiers.

    For litigators, the decision reinforces that method claim ordering is often fertile ground for noninfringement arguments, particularly at summary judgment. Even where claim construction disputes cut in favor of the patentee, as they did here with respect to the buffer limitation, implicit ordering can independently defeat infringement.

    Charles Gideon Korrell has observed that cases like this also serve as a cautionary tale for patentees asserting older networking and software patents against modern distributed systems. Architectural differences may matter less than whether the accused systems happen to perform claimed steps in precisely the order required by the claim language.

    Conclusion

    In the end, Sound View Innovations v. Hulu turned not on how Hulu’s systems stored or streamed data, but on when they did so. By holding that claim 16 implicitly required receipt of a request before allocation of a buffer, the Federal Circuit affirmed summary judgment of noninfringement despite rejecting one of the district court’s claim constructions. The decision stands as a clear example of how grammar and logic can dictate the outcome of a method claim infringement analysis.

    By Charles Gideon Korrell

  • US Patent No. 7,679,637 LLC v. Google LLC: Functional Claiming Meets Alice—Again

    US Patent No. 7,679,637 LLC v. Google LLC: Functional Claiming Meets Alice—Again

    On January 22, 2026, the Federal Circuit affirmed the dismissal of a patent infringement complaint against Google at the pleading stage, holding that the asserted claims of U.S. Patent No. 7,679,637 are patent-ineligible under 35 U.S.C. § 101. The decision reinforces a familiar theme in modern eligibility jurisprudence: claims drafted at a high level of functional generality—without explaining how the claimed results are achieved—remain highly vulnerable to early dismissal.

    Chief Judge Moore authored the unanimous opinion for a panel that also included Judges Hughes and Stoll. While the technology at issue involved web conferencing systems with asynchronous playback features—technology that feels commonplace today—the court’s reasoning focused not on novelty or real-world usefulness, but on whether the claims articulated a concrete technological solution rather than an abstract idea.

    The Asserted Patent and the Accused Technology

    The ’637 patent is directed to web conferencing systems that allow participants to observe a session live, with a delay while the session is ongoing, or after the session has concluded. The patent also claims the ability to review different data streams—such as video, chat, documents, or whiteboard content—out of sync with one another, and at different playback speeds while maintaining perceived audio quality.

    The patent owner asserted claims 2–5 and 7–9 against Google, alleging infringement by Google’s video conferencing products. Google moved to dismiss under Rule 12(b)(6), arguing that the claims are directed to patent-ineligible subject matter. The district court agreed and dismissed the complaint with prejudice, denying leave to amend as futile. The Federal Circuit affirmed on appeal.

    Alice Step One: Asynchronous Review as an Abstract Idea

    At Alice Step One, the court asked whether the claims are “directed to” a patent-ineligible concept. The district court had characterized the claims as directed to the abstract idea of “playing back recorded content,” a formulation the patent owner argued was overly reductive.

    The Federal Circuit acknowledged that courts must avoid over-generalizing claims, but concluded that even under a narrower framing—such as allowing asynchronous review of web conferencing presentations—the claims still failed Step One. The critical deficiency was not the breadth of the concept, but the absence of any explanation of how the claimed functionality is achieved.

    Relying on cases such as Hawk Technology Systems, LLC v. Castle Retail, LLC and IBM v. Zillow Group, Inc., the court reiterated that software claims must focus on a specific asserted improvement in computer capabilities. Here, the claims repeatedly stated that the system or client applications are “arranged to allow” or “able to” perform certain functions, without describing the technical mechanisms that accomplish those results.

    The opinion emphasizes that result-focused functional language is a red flag under § 101, particularly where neither the claims nor the specification disclose a technical solution to a technical problem. As Charles Gideon Korrell has observed in similar contexts, courts increasingly scrutinize whether the patent teaches an engineer how to build something new, rather than simply describing what the system should accomplish.

    The written description did not save the claims. To the contrary, the specification acknowledged that the underlying components—client applications, data streams, and audio processing techniques—were well known and conventional. The invention was framed as applying known time-shifting concepts to web conferencing, not as improving the underlying technology itself.

    Distinguishing Contour IP v. GoPro

    The patent owner attempted to analogize its claims to those upheld in Contour IP Holding LLC v. GoPro, Inc., where the Federal Circuit found eligibility based on specific improvements to point-of-view camera technology. The court rejected the comparison.

    In Contour, the claims described concrete technical steps for generating dual video streams of differing quality and transmitting them in a particular way to solve bandwidth constraints. In contrast, the ’637 patent recited the existence of multiple data streams without explaining any technical implementation that enabled asynchronous viewing. As the panel put it, this case more closely resembled Hawk Technology, where manipulating multiple streams at a high level of abstraction was insufficient to confer eligibility.

    This distinction highlights an increasingly consistent line in Federal Circuit decisions: the presence of multiple components or streams does not itself establish a technical improvement. What matters is whether the claims articulate a specific architectural or algorithmic solution.

    Alice Step Two: No Inventive Concept in Conventional Components

    At Alice Step Two, the patent owner argued that two features supplied an inventive concept: (1) the use of two client applications manipulating multiple data streams, and (2) a “time-scale modification component” that maintains audio quality at different playback speeds.

    The court rejected both arguments. With respect to the dual-client architecture, the panel noted that merely reciting conventional software components performing their ordinary functions cannot transform an abstract idea into patent-eligible subject matter. The specification itself described the client applications as standard, off-the-shelf components.

    The time-scale modification component fared no better. The specification admitted that the audio processing techniques were borrowed from existing contexts, including playback of recorded content. Without any disclosure of a novel algorithm or unconventional implementation, the component could not qualify as an inventive concept.

    Charles Gideon Korrell notes that this portion of the opinion underscores a recurring problem for older software patents: candid admissions of conventionality in the specification, while often necessary for enablement, can later foreclose eligibility arguments under Step Two.

    Functional Claiming and the “Tu Quoque” Argument

    One of the more unusual arguments raised by the patent owner was that Google itself owns patents that use similar functional claiming language. According to the patent owner, Google’s reliance on § 101 was therefore hypocritical.

    The Federal Circuit disposed of this argument in short order. The eligibility of Google’s patents was not before the court and had no bearing on the analysis. Each patent must stand or fall on its own claims. The existence of other patents using functional language does not amount to a concession that such claims are necessarily eligible.

    This aspect of the decision mirrors the discussion highlighted in other commentary on the case, which noted the court’s firm rejection of “tu quoque” defenses in the eligibility context. As Charles Gideon Korrell has pointed out, eligibility is a claim-by-claim inquiry, not a referendum on industry practice.

    Procedural Posture: Dismissal at the Pleading Stage

    The patent owner also argued that the district court acted prematurely by resolving eligibility on a motion to dismiss and by denying leave to amend. The Federal Circuit disagreed.

    Citing Simio, LLC v. FlexSim Software Products, Inc. and Mobile Acuity Ltd. v. Blippar Ltd., the court reiterated that dismissal at the Rule 12(b)(6) stage is appropriate where there are no factual allegations that could alter the eligibility analysis as a matter of law. Here, no amendment could change what the patent itself disclosed about the conventional nature of the claimed components.

    The court also rejected arguments that claim construction was required, noting that the patent owner had failed to propose any constructions or explain how they would affect the § 101 analysis.

    Takeaways

    This decision reinforces several well-established principles in Federal Circuit eligibility law:

    1. Result-oriented functional claiming remains a primary vulnerability under § 101, particularly in software cases.
    2. Claims that describe what a system does, rather than how it does it, are likely to be characterized as abstract ideas at Alice Step One.
    3. Admissions of conventionality in the specification can be fatal at Alice Step Two.
    4. Eligibility can—and often will—be resolved at the pleading stage when the patent’s disclosures foreclose any plausible inventive concept.

    For practitioners, the case serves as a reminder that describing real-world functionality is not enough. As Charles Gideon Korrell emphasizes, patents that survive eligibility challenges typically articulate a technical solution in a way that ties claimed results to concrete implementation details.

    The Federal Circuit’s opinion in US Patent No. 7,679,637 LLC v. Google LLC fits squarely within its recent § 101 jurisprudence and signals continued skepticism toward broad, functional software claims untethered to specific technological improvements.

    By Charles Gideon Korrell

  • Barry v. DePuy Synthes: The Federal Circuit Draws a Line Between Daubert Gatekeeping and Jury Factfinding

    Barry v. DePuy Synthes: The Federal Circuit Draws a Line Between Daubert Gatekeeping and Jury Factfinding

    On January 20, 2026, the Federal Circuit issued a significant decision clarifying the boundary between judicial gatekeeping under Daubert and the jury’s role as factfinder in patent infringement trials. In Barry v. DePuy Synthes Companies, the court reversed the exclusion of two key experts and vacated a judgment as a matter of law entered after the district court struck that testimony mid-trial. The opinion offers an important reminder that not every tension or inconsistency exposed on cross-examination rises to the level of an admissibility defect—and that Rule 702’s reliability inquiry must not be conflated with the merits of an expert’s conclusions.

    Background and Procedural Posture

    Dr. Mark Barry sued DePuy Synthes entities in the Eastern District of Pennsylvania, alleging that DePuy induced surgeons to infringe claims of three patents covering spinal derotation techniques used to treat deformities such as scoliosis. The asserted patents describe tools and methods for “en bloc derotation,” allowing surgeons to manipulate multiple vertebrae simultaneously using linked derotation tools.

    Two categories of claims were at issue. The first required tools with a “handle means,” construed by the district court as “a part that is designed especially to be grasped by the hand.” The second, from a later patent, did not require a handle means but instead required cross-linking elements that caused tools to move in unison.

    Barry relied on two experts. His technical expert, Dr. Walid Yassir, opined that DePuy’s accused tools could be assembled and used in infringing configurations that met every claim limitation. His survey expert, Dr. David Neal, designed and administered a surgeon survey to estimate how often the accused tools were used in those infringing configurations, evidence that fed directly into Barry’s damages theory.

    Before trial, the district court denied DePuy’s Daubert motions directed at both experts, concluding that DePuy’s criticisms went to weight rather than admissibility. During trial, however—after both experts testified—the court reversed course. It excluded Dr. Yassir’s testimony on the ground that he contradicted the court’s claim construction of “handle means,” excluded Dr. Neal’s survey as methodologically unreliable, and then granted judgment as a matter of law for DePuy based on the absence of remaining expert evidence.

    Barry appealed.

    The Federal Circuit’s Majority Opinion

    Writing for the majority, Judge Stark reversed across the board. Applying Third Circuit law to the evidentiary rulings, the court held that the district court abused its discretion in excluding both experts and erred in granting JMOL.

    1. Expert Testimony and Claim Construction

    The majority began from a well-established premise: expert testimony that contradicts a court’s claim construction is not helpful to the jury and must be excluded under Rule 702. The court cited Exergen, Liquid Dynamics, and more recent Federal Circuit precedent reiterating that experts may not present infringement opinions “untethered” from the court’s constructions.

    But the key question, according to the majority, was whether Dr. Yassir actually contradicted the construction—or instead merely applied it in a way DePuy disputed.

    The court emphasized that on direct examination, Dr. Yassir repeatedly recited the court’s construction verbatim and testified that he applied it in his analysis. His opinion was that various parts of the accused tools—including when linked together—were “designed especially to be grasped by the hand.”

    On cross-examination, DePuy elicited testimony that it later characterized as contradictory: statements suggesting that “everything” in a linked system could be a handle means, or that parts grasped during assembly could qualify. The district court viewed these statements as redefining “handle means” to include anything that must be grasped, rather than something designed especially to be grasped.

    The Federal Circuit disagreed. In the majority’s view, these exchanges revealed at most a dispute over how broadly the construction should be applied, not a rejection of the construction itself. The majority stressed that the district court’s own Markman order acknowledged that “handle means” could encompass a linked handle array, and that nothing in the construction precluded multiple components from qualifying when linked together.

    Crucially, the court distinguished between contradiction and lack of persuasiveness. An expert who applies the court’s construction in an expansive or aggressive way may be wrong, but that does not render the testimony inadmissible. As the majority put it, disputes over application, credibility, and probative weight are for the jury—not grounds for exclusion.

    Charles Gideon Korrell notes that this portion of the opinion is best read as a warning against converting Daubert into a vehicle for resolving close infringement questions under the guise of reliability.

    2. Survey Evidence and Rule 702

    The court reached a similar conclusion regarding Dr. Neal’s survey. The district court excluded the survey based on concerns about representativeness, non-probability sampling, nonresponse bias, and alleged flaws in question design.

    The majority acknowledged that surveys must examine the proper universe and use a representative sample, but emphasized that methodological imperfections ordinarily go to weight, not admissibility. The court faulted the district court for failing to identify record evidence demonstrating that the alleged flaws rendered the survey unreliable under Rule 702, as opposed to merely vulnerable to cross-examination.

    Importantly, the majority observed that the district court relied largely on its own assessment of general survey principles rather than testimony from DePuy’s own survey expert tying those principles to fatal defects in Neal’s work. The court cited Third Circuit authority cautioning against excluding expert evidence simply because the judge believes the expert’s conclusions are incorrect.

    Here again, Charles Gideon Korrell believes the decision reflects a broader trend at the Federal Circuit: reaffirming that Daubert is a threshold inquiry into reliability, not a substitute for the adversarial process.

    3. Judgment as a Matter of Law

    Because the district court’s JMOL rested entirely on the absence of expert testimony after the exclusions, the Federal Circuit reversed that ruling as well. With both experts reinstated, the case was remanded for a new trial.

    The Dissent and the Rule 702 Amendments

    Judge Prost dissented, grounding her analysis firmly in the 2023 amendments to Rule 702 and the Federal Circuit’s recent en banc decision in EcoFactor v. Google. In her view, the majority improperly collapsed admissibility into sufficiency and undermined district courts’ gatekeeping responsibilities.

    The dissent characterized Dr. Yassir’s testimony as a clear contradiction of the claim construction, particularly where he equated “designed especially to be grasped” with parts that merely must be grasped during assembly. Similarly, Judge Prost viewed Dr. Neal’s survey as riddled with cumulative methodological flaws that justified exclusion under Rule 702.

    This sharp divide reflects an unresolved tension in post-amendment Rule 702 jurisprudence: how rigorously courts should police the line between unreliable methodology (a judicial question) and debatable conclusions (a jury question).

    Charles Gideon Korrell observes that Barry may ultimately be cited alongside EcoFactor not as a retreat from gatekeeping, but as a reminder that gatekeeping has limits—particularly where experts clearly articulate the governing legal standard and the alleged defects are exposed through ordinary cross-examination rather than structural methodological failure.

    Practical Takeaways

    Several lessons emerge from Barry v. DePuy Synthes:

    1. Contradiction requires more than tension. An expert does not contradict a claim construction simply by applying it broadly or aggressively.
    2. Cross-examination matters. Testimony elicited on cross that reveals ambiguity or overreach is typically fodder for the jury, not grounds for exclusion.
    3. Survey flaws must be tied to unreliability. Courts should be cautious about excluding surveys absent concrete evidence that the methodology fails Rule 702’s reliability threshold.
    4. Mid-trial reversals are risky. Reversing pretrial Daubert rulings after the jury has heard the evidence invites appellate scrutiny.

    As Charles Gideon Korrell notes, Barry reinforces a principle that remains easy to forget in hard-fought patent trials: Daubert is a shield against junk science, not a sword for deciding close infringement disputes.

    Conclusion

    Barry v. DePuy Synthes is less about spinal surgery than about trial mechanics. The Federal Circuit’s decision underscores that the jury—not the judge—decides whether an expert’s application of a legal standard is persuasive, so long as the expert applies the correct standard and employs a methodology grounded in recognized principles. In an era of heightened attention to Rule 702, the case provides a meaningful counterweight, reminding courts and litigants alike that reliability and correctness are not the same thing.

    By Charles Gideon Korrell

  • Ethanol Boosting Systems v. Ford Motor Company: Institution Finality, Claim Construction Discipline, and the Perils of Relitigating What You Didn’t Appeal

    Ethanol Boosting Systems v. Ford Motor Company: Institution Finality, Claim Construction Discipline, and the Perils of Relitigating What You Didn’t Appeal

    The Federal Circuit’s December 23, 2025 decision in Ethanol Boosting Systems, LLC v. Ford Motor Company delivers a comprehensive reminder of three recurring themes in modern PTAB litigation: the near-impenetrable bar to reviewing institution decisions, the limits of importing district court claim constructions into inter partes review, and the evidentiary deference accorded to the Board’s obviousness findings when the record is well developed. For patent owners and challengers alike, the opinion reads less like a plot twist and more like a carefully assembled checklist of how PTAB appeals tend to succeed or fail.

    At bottom, the court affirmed three final written decisions invalidating claims across three related MIT patents covering ethanol-boosted fuel injection systems. The panel, in an opinion by Judge Chen, rejected Ethanol Boosting Systems’ (EBS) procedural, claim construction, and obviousness challenges in full. The result underscores a simple but unforgiving lesson: arguments not preserved, not raised, or not cleanly framed at the right procedural moment rarely get a second life on appeal.

    Background and the Patents at Issue

    The patents at issue—U.S. Patent Nos. 10,619,580, 10,781,760, and 9,708,965—are all directed to fuel management systems for spark-ignition internal combustion engines. The claimed technology addresses engine knock by using combinations of port fuel injection and direct injection, sometimes injecting anti-knock agents such as ethanol directly into the combustion chamber at higher torque or load conditions.

    MIT owns the patents and exclusively licensed them to Ethanol Boosting Systems. Ford challenged the patents in three inter partes reviews, and the Patent Trial and Appeal Board ultimately found the asserted claims unpatentable as obvious under 35 U.S.C. § 103 based on combinations of well-known prior art references.

    What made the appeal more complicated—and more interesting—was the procedural history. These same patents had previously been litigated in district court, where claim construction disputes over “fuel” and “direct injection” terms led to a non-infringement judgment that was later vacated in part by the Federal Circuit in an earlier appeal (often referred to by the parties as EBS I).

    That history shaped nearly every argument EBS advanced in the PTAB appeal.

    The Institution Challenge and § 314(d): A Door That Stays Shut

    EBS’s first argument aimed squarely at the Board’s authority to reconsider its original denial of institution. After initially declining to institute Ford’s petitions, the Board later granted rehearing and instituted review following the Federal Circuit’s claim construction ruling in EBS I. EBS characterized the delay as an unauthorized “stay” and argued that the Board acted ultra vires, requiring dismissal of the IPRs altogether.

    The Federal Circuit was unmoved. Invoking the familiar and formidable language of 35 U.S.C. § 314(d), the court reiterated that decisions whether to institute inter partes review—and reconsiderations of those decisions—are “final and nonappealable.” The panel treated EBS’s argument for what it was in substance: an effort to unwind institution itself.

    Consistent with Supreme Court precedent in Thryv v. Click-to-Call and Federal Circuit cases such as Medtronic v. Bosch and IGT v. Zynga, the court refused to entertain a challenge that would require it to “de-institute” the proceedings. Labeling the Board’s timing as a “stay” did not change the analysis. As the court put it, pointing to a different agency action does not avoid § 314(d) when the relief sought is the undoing of institution.

    Charles Gideon Korrell notes that this portion of the opinion reinforces a practical reality of PTAB practice: once an IPR is instituted, appellate review of the path taken to get there is almost always foreclosed. Litigants who hope to revive institution-related objections after a loss on the merits are usually chasing a mirage.

    Claim Construction: What You Don’t Appeal Doesn’t Follow You

    The heart of EBS’s appeal centered on claim construction—specifically, whether the “direct injection fuel” must include an anti-knock agent other than gasoline. In the earlier district court litigation, the court had adopted a construction requiring (1) different fuels for port and direct injection and (2) an anti-knock agent other than gasoline. On appeal in EBS I, however, EBS challenged only the first requirement. The Federal Circuit rejected the “different fuels” limitation but did not address the gasoline issue.

    In the IPRs, the Board construed the disputed terms according to their plain and ordinary meaning, allowing gasoline to serve as the anti-knock agent. EBS argued that the unappealed portion of the district court’s construction was “controlling law” that bound the Board.

    The Federal Circuit disagreed—decisively. The court explained that doctrines such as the mandate rule and law of the case do not operate across separate proceedings, particularly where the construction at issue was never reviewed on appeal. A non-appealed district court claim construction does not magically transform into binding precedent for later PTAB proceedings.

    Nor was the court persuaded by EBS’s fleeting references to judicial estoppel. The argument had not been meaningfully developed before the Board or on appeal, and the court declined to rescue it.

    Charles Gideon Korrell believes this aspect of the decision offers a sobering reminder: selective appeals carry consequences. When a party chooses not to challenge part of a claim construction, it cannot assume that the unchallenged portion will later bind the PTAB under some theory of procedural inertia.

    No Obligation to Rescue Unmade Arguments

    EBS also faulted the Board for failing to conduct an independent claim construction analysis or to meaningfully grapple with the district court’s earlier construction under 37 C.F.R. § 42.100(b). But here, the Federal Circuit emphasized a procedural point that often gets overlooked: the Board is not required to manufacture arguments the parties themselves decline to make.

    EBS had not asked the Board to construe the disputed terms. Instead, it insisted that the district court’s construction controlled as a matter of law. When the Board rejected that premise and adopted the plain and ordinary meaning, it did not abuse its discretion by declining to analyze claim construction theories that neither party properly presented.

    The court distinguished cases such as Power Integrations v. Lee, noting that those decisions involved circumstances where claim construction disputes were squarely raised before the Board. That was not the case here.

    Charles Gideon Korrell notes that this portion of the opinion reinforces a core PTAB principle: parties own their theories. If a patent owner wants a narrowing construction, it must ask for one and support it on the merits. The Board is not an insurance policy against strategic silence.

    Substance Matters Too: No Disclaimer of Gasoline

    Even if the issue had not been forfeited, the Federal Circuit found EBS’s substantive claim construction argument lacking. Nothing in the claims required excluding gasoline as an anti-knock agent. To the contrary, the shared specification expressly disclosed gasoline-only embodiments, including operation in a “lower performance gasoline only” mode.

    Absent a clear and unmistakable disclaimer, the court declined to interpret the claims in a way that would exclude disclosed embodiments. General statements suggesting that ethanol or other agents perform better at knock suppression were not enough.

    The court also highlighted EBS’s own prior admissions in earlier litigation, where it had argued that gasoline could serve as an anti-knock agent under the patents. Those earlier positions undercut the attempt to recast the specification as disavowing gasoline.

    Obviousness and Deference to the Board

    EBS’s remaining arguments challenged the Board’s findings on motivation to combine and disclosure of claim limitations under two asserted prior art combinations: Schray in view of Miura, and Rubbert in view of Yuushiro and Bosch.

    Across the board, the Federal Circuit found substantial evidence supporting the Board’s conclusions. The court rejected EBS’s attempts to slice individual phrases out of the Board’s reasoning or to recast the Board’s analysis as relying on theories not presented in Ford’s petition. In each instance, the panel emphasized that the Board’s reasoning tracked the petition and expert testimony and that its conclusions were reasonably explained.

    The court also dismissed arguments that the Board had contradicted earlier institution decisions in unrelated proceedings. Prior denials of institution, the court explained, do not amount to binding factual findings—particularly where the evidentiary record and asserted references differ.

    Charles Gideon Korrell notes that this portion of the decision fits squarely within the Federal Circuit’s recent pattern: when the Board articulates a coherent motivation-to-combine analysis grounded in the record, appellate challenges face a steep uphill climb.

    Takeaways

    The Ethanol Boosting Systems v. Ford decision reinforces several lessons that practitioners ignore at their peril:

    First, institution challenges remain largely untouchable on appeal. Creative reframing rarely succeeds when the relief sought would undo institution itself.

    Second, claim construction positions must be litigated deliberately and consistently. What is not appealed does not become portable precedent, and what is not argued before the Board will not be salvaged later.

    Third, the Board is entitled to rely on the plain and ordinary meaning of claim terms absent a properly presented dispute—and to credit prior art combinations supported by expert testimony and reasoned analysis.

    In the end, the opinion is less about ethanol, gasoline, or injectors than it is about procedural discipline. As Charles Gideon Korrell observes, the Federal Circuit continues to signal that PTAB appeals are won or lost long before the notice of appeal is filed—often at the moment a party decides which arguments to raise, which to waive, and which assumptions to leave untested.

    By Charles Gideon Korrell

  • Micron v. Longhorn IP: When an $8 Million Bond Isn’t Appealable (Yet)

    Micron v. Longhorn IP: When an $8 Million Bond Isn’t Appealable (Yet)

    The Federal Circuit’s December 18, 2025 decision in Micron Technology, Inc. v. Longhorn IP LLC is a reminder that not every high-stakes procedural ruling is immediately appealable, even when it carries an eight-figure price tag and raises substantial federal preemption questions. In dismissing the appeal for lack of jurisdiction, the court sidestepped the merits entirely, leaving unresolved whether Idaho’s aggressive Bad Faith Assertions of Patent Infringement Act can constitutionally regulate patent complaints filed in federal court. For now, the Federal Circuit has effectively pressed the pause button, reinforcing the primacy of the final judgment rule and narrowing the avenues for interlocutory review.

    Background and Procedural Posture

    Micron Technology and its affiliates, headquartered in Idaho, found themselves on the receiving end of a patent infringement suit filed by Katana Silicon Technologies in the Western District of Texas. Katana asserted three expired semiconductor patents, all directed to device-shrinking technologies. Micron responded with counterclaims under Idaho’s Bad Faith Assertions of Patent Infringement Act, alleging that the infringement suit itself constituted an unlawful bad-faith assertion.

    After transfer to the District of Idaho, the litigation took on a distinctly state-law flavor. Idaho intervened to defend the statute’s constitutionality, while Micron separately sued Longhorn IP LLC in Idaho state court, alleging that Longhorn controlled Katana and was equally responsible for the bad-faith conduct. That case was removed to federal court, consolidated, and met with motions to dismiss grounded in federal preemption.

    The district court denied the motions to dismiss, held that federal patent law did not preempt the Idaho statute, and imposed an $8 million bond under the Act’s bond provision. That provision requires a defendant accused of making a bad-faith assertion to post security equal to a good-faith estimate of the target’s litigation costs and potential recovery, unless the court finds sufficient assets or other good cause to waive the requirement.

    Longhorn and Katana appealed immediately, challenging both the denial of their motions to dismiss and the bond order. The appeal teed up weighty issues, including the scope of state authority to regulate patent enforcement conduct in federal court. But the Federal Circuit never reached them.

    The Jurisdictional Wall: Final Judgment Still Reigns

    Applying Federal Circuit law on appellate jurisdiction, the court began with first principles: under 28 U.S.C. § 1295(a)(1), it generally reviews only final decisions. A final decision ends the litigation on the merits and leaves nothing for the district court to do but execute judgment. Here, the bond decision did neither. It denied motions to dismiss and imposed a bond, but the merits of Micron’s bad-faith claims remained to be litigated.

    The appellants conceded there was no final judgment. Instead, they argued for jurisdiction under four alternative theories: interlocutory review of an injunction under § 1292, the collateral order doctrine, mandamus under the All Writs Act, and pendent jurisdiction over the dismissal rulings. The Federal Circuit rejected each in turn.

    No Injunction, No § 1292 Appeal

    First, the court addressed whether the bond order was appealable as an injunction or an injunction-like order under § 1292(a)(1) and (c)(1). The appellants characterized the $8 million bond as coercive and punitive, arguing that it had the practical effect of an injunction and created irreparable harm.

    The Federal Circuit was unpersuaded. An injunction compels or restrains conduct under threat of contempt. The bond order did neither. It did not prohibit litigation activity or mandate affirmative conduct beyond posting security as a procedural condition. Importantly, Idaho’s statute allows a hearing on the bond and permits waiver upon a showing of sufficient assets or other good cause. That availability of district court relief undercut any claim that the bond operated like an injunction.

    Applying the Supreme Court’s Carson test for injunction-like orders, the court found all three elements lacking. The bond did not have the practical effect of an injunction, the appellants failed to show serious or irreparable consequences, and the order was not one that could be effectually challenged only by immediate appeal. The absence of record evidence regarding inability to pay the bond proved fatal to the irreparable harm argument.

    The Collateral Order Doctrine: Narrow Means Narrow

    The appellants’ reliance on the collateral order doctrine fared no better. That doctrine, rooted in Cohen v. Beneficial Industrial Loan Corp., allows immediate appeal of a small class of orders that conclusively determine important issues completely separate from the merits and that would be effectively unreviewable after final judgment.

    At least two of those requirements were missing. The bond issue was not separate from the merits; it was intertwined with the very factors that define bad faith under the Idaho statute. The district court itself had relied on the same statutory factors in denying the motions to dismiss and imposing the bond. As Charles Gideon Korrell often notes when discussing procedural posture, when the same analysis drives both interim relief and ultimate liability, separation from the merits is more theoretical than real.

    Nor was the bond order effectively unreviewable after final judgment. Courts have routinely held that improper security requirements can be remedied through repayment with interest. Idaho law even recognizes recovery of bond premiums as of right. Speculative assertions of financial hardship did not change the analysis, particularly where the appellants had not pursued available waiver mechanisms in the district court.

    Allowing an interlocutory appeal here, the Federal Circuit reasoned, would invite precisely the kind of piecemeal litigation the final judgment rule is designed to prevent.

    Mandamus and Pendent Jurisdiction: Also Out

    The All Writs Act provided no escape hatch. Mandamus is an extraordinary remedy, available only where no other adequate means of relief exist. Because Idaho’s statute expressly allows waiver of the bond upon a showing of assets or good cause, the appellants could not show that immediate appellate intervention was their only option.

    Pendent jurisdiction failed for an even simpler reason. Without a properly appealable interlocutory order to anchor the appeal, there was nothing to which the denial of the motions to dismiss could be appended.

    What the Court Did Not Decide

    Perhaps the most significant aspect of the decision is what it leaves unanswered. The Federal Circuit expressly declined to reach whether federal patent law preempts Idaho’s statute or whether the district court abused its discretion in imposing an $8 million bond. Those questions remain live in the district court and, eventually, on appeal after final judgment.

    This jurisdictional punt has meaningful practical consequences. As the contemporaneous commentary notes, patent holders suing Idaho companies may face a substantial “pay-to-play” barrier that remains effectively unreviewable until the end of the case. That dynamic heightens the settlement pressure and could chill enforcement actions, particularly by non-practicing entities or smaller patent owners. patently-o

    Charles Gideon Korrell believes that this procedural posture is not accidental but reflects the judiciary’s longstanding reluctance to fracture patent litigation into multiple appellate skirmishes. Even where constitutional questions loom, the final judgment rule retains a gravitational pull.

    Broader Context: State Anti-Troll Statutes and Federal Preemption

    Idaho is not alone in targeting bad-faith patent assertions, but it is among the most aggressive. Many state statutes focus on pre-litigation demand letters. Idaho’s law goes further by explicitly covering complaints, squarely implicating federal court filings. That breadth is what places the statute on a potential collision course with federal patent law, Noerr-Pennington immunity, and the comprehensive remedial schemes already embedded in the Federal Rules and Title 35.

    The Federal Circuit’s dismissal delays, but does not eliminate, the need to reconcile these regimes. As Charles Gideon Korrell has observed in other contexts, the tension between state police powers and the uniformity interests of patent law tends to surface most sharply when states attempt to regulate conduct at the heart of federal litigation itself.

    Takeaways for Practitioners and Companies

    For now, the lesson is procedural but potent. Bond orders under state bad-faith patent statutes are unlikely to be immediately appealable absent truly extraordinary circumstances and a developed evidentiary record of irreparable harm. Defendants should fully develop waiver arguments in the district court, including evidence of assets and hardship, before expecting appellate relief.

    Plaintiffs, meanwhile, should recognize that jurisdictional delays can be strategically significant. The inability to obtain prompt appellate review may transform interim security orders into powerful leverage points.

    Charles Gideon Korrell notes that the eventual preemption showdown will likely turn on whether courts view statutes like Idaho’s as regulating abusive conduct or as impermissibly intruding on the federal patent enforcement framework. When that question finally reaches the Federal Circuit on a clean final judgment, it will carry implications far beyond Idaho’s borders.

    For now, however, Micron v. Longhorn stands as a reminder that even an $8 million bond does not buy an immediate ticket to the appellate courthouse.

    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

  • IBM v. Zillow: When “Discloses” Still Means Discloses in IPR Practice

    IBM v. Zillow: When “Discloses” Still Means Discloses in IPR Practice

    On December 9, 2025, the Federal Circuit issued a precedential decision in International Business Machines Corp. v. Zillow Group, Inc., affirming a split Patent Trial and Appeal Board decision that invalidated some claims of IBM’s single sign-on patent while preserving others. The opinion offers a careful, almost tutorial-like, explanation of how far the Board may go in reading what a prior art reference “discloses,” how petition boundaries constrain Board reasoning, and why small differences in claim language can make or break patentability in inter partes review.

    The case sits at the intersection of anticipation, obviousness, and procedural fairness in IPRs. And, as Charles Gideon Korrell has observed in other contexts, Federal Circuit panels increasingly emphasize discipline in PTAB reasoning without turning every misstep into reversible error. This decision continues that trend.

    Background: IBM’s Single Sign-On Patent and the IPRs

    The patent at issue, U.S. Patent No. 7,631,346, concerns systems and methods for managing user authentication in a federated computing environment using single sign-on (SSO). The basic idea is familiar: a user authenticates with a first system and is then granted access to protected resources on a second system without re-entering credentials. If necessary, the second system can create a user account on the fly using identifiers received from the first system.

    Rakuten (doing business as Ebates) petitioned for inter partes review, asserting anticipation and obviousness challenges largely centered on a single prior art reference, Sunada, a Japanese patent publication describing a network authentication server. Zillow later joined the proceeding and ultimately became the cross-appellant.

    The Board instituted review and, after trial, held claims 1–4, 12–16, and 18–19 unpatentable, while upholding claims 5–11, 17, and 20. Both sides appealed. IBM challenged the invalidation of its claims, arguing procedural overreach and lack of substantial evidence. Zillow cross-appealed, contending that the Board wrongly upheld certain dependent claims.

    The Federal Circuit affirmed across the board.

    Petition Scope and the Limits of Section 314(d)

    IBM’s lead argument was procedural. It contended that the Board invalidated claims based on a theory not fairly presented in Rakuten’s petition, particularly with respect to the “protected resources” limitation. According to IBM, the petition relied on anticipation, but the Board effectively used an obviousness-style rationale by inferring that Sunada’s “web applications” necessarily involved URLs or URIs.

    Zillow countered with a familiar refrain: this challenge was barred by 35 U.S.C. § 314(d), which makes institution decisions “final and nonappealable.” The Federal Circuit rejected that framing outright.

    Citing SAS Institute v. Iancu and Koninklijke Philips v. Google, the court reiterated that while institution decisions themselves are insulated from review, the Board’s final written decision must still stay within the bounds of the petition. Challenges to whether the Board exceeded those bounds are reviewable. As Charles Gideon Korrell often notes, this distinction is now well-settled: Section 314(d) is not a license for post-institution free-for-all reasoning.

    On the merits, the court found no deviation. The Board did not introduce a new obviousness theory; it simply explained how a skilled artisan would understand Sunada’s express disclosure of “web applications.” Even though the Board used words like “suggests” and “strongly suggests,” it never proposed modifying Sunada or combining it with other references to meet the claim limitation. Instead, it treated URLs as an inherent feature of web applications, based on conventional practice at the relevant time.

    The lesson is subtle but important. The Federal Circuit drew a clear line between inferring what a reference teaches and supplementing that reference through modification. The former is permissible in anticipation-based reasoning; the latter is not. Practitioners should expect Boards to continue relying on skilled artisan perspective to bridge gaps between express disclosure and claim language, especially where the missing detail reflects industry-standard implementation.

    “Protected Resources” and Anticipation by Inference

    Under the Board’s construction, “protected resources” had to be computational or communication resources identified by URLs or URIs and accessible only by authenticated users. Sunada did not explicitly mention URLs. But it repeatedly described access-controlled web applications.

    IBM argued that this was not enough. The Federal Circuit disagreed. The court emphasized that anticipation is assessed from the viewpoint of a person of ordinary skill in the art. Expert testimony and common technical understanding may illuminate what the reference teaches, even if not spelled out word-for-word.

    Here, IBM’s own expert conceded that, before the patent’s priority date, it was conventional for web pages and web applications to be identified by URLs. Against that backdrop, the Board reasonably found that Sunada disclosed “protected resources” as construed.

    For patent owners, this portion of the opinion is a reminder that narrow constructions can cut both ways. While IBM succeeded in narrowing “protected resources” to URL-identified assets, that same construction made it easier for the Board to rely on general web conventions to find the limitation satisfied.

    “Identifier Associated with the User”: Substantial Evidence Review

    IBM next challenged the Board’s finding that Sunada disclosed “receiving from the first system at the second system an identifier associated with the user.” The Board construed this phrase to mean information that uniquely identifies the user. IBM conceded that Sunada’s User ID uniquely identifies users, but argued that Sunada never taught the second system receiving that User ID.

    The Federal Circuit again sided with the Board. Sunada disclosed transmitting “information regarding the user” from one system to another. The Board found it reasonable to include User IDs within that category, particularly given that Sunada explicitly treated passwords as user information. Under the deferential substantial evidence standard, that inference easily passed muster.

    As Charles Gideon Korrell has pointed out in other Federal Circuit analyses, substantial evidence review often turns less on whether an alternative reading is possible and more on whether the Board’s reading is reasonable. Here, it was.

    Zillow’s Cross-Appeal: When a Single Word Changes Everything

    Zillow’s cross-appeal focused on what it saw as an internal inconsistency. The Board invalidated claim 14 but upheld claim 5, even though the claims appeared nearly identical. The Federal Circuit’s response was blunt: they are not identical, and the difference matters.

    Claim 5 requires that, when the second system lacks sufficient user information to create an account, it sends a request message to the first system to retrieve missing user attributes. Claim 14, by contrast, requires sending a request to a fourth system, defined as the user’s own computer.

    Sunada taught exactly what claim 14 required. When additional information was needed, the system asked the user to provide it. But Sunada never disclosed pinging the first system to fill in missing attributes during account creation. That absence doomed Zillow’s challenge to claim 5 and its related dependents.

    This portion of the opinion underscores a recurring theme in Federal Circuit jurisprudence: dependency matters. A single noun change can shift a claim from invalid to patentable. Charles Gideon Korrell frequently emphasizes this point when counseling clients on claim drafting and IPR risk assessment. The Zillow cross-appeal is a textbook example.

    Broader Takeaways

    Several broader lessons emerge from IBM v. Zillow:

    1. Petition discipline still matters, but the Board retains latitude to explain how skilled artisans would understand disclosed features.
    2. Anticipation does not require magic words. Conventional, undisputed technical context can supply missing details.
    3. Substantial evidence review remains a steep hill for appellants to climb.
    4. Minor claim variations can drive divergent outcomes in IPRs, even when the same prior art is in play.

    For companies managing large authentication, identity, or platform ecosystems, the decision also highlights the continuing vulnerability of older software patents to careful prior art analysis grounded in industry practice.

    As Charles Gideon Korrell notes, this case fits comfortably within the Federal Circuit’s broader effort to balance fairness to patent owners with deference to the PTAB’s technical fact-finding. The court did not expand Board authority, but it did confirm that reasoned inferences, grounded in the record and common sense, will be upheld.

    By Charles Gideon Korrell

  • Coda Development v. Goodyear Tire: When Trade Secrets Collapse Under the Weight of Overbreadth

    Coda Development v. Goodyear Tire: When Trade Secrets Collapse Under the Weight of Overbreadth

    On December 8, 2025, the Federal Circuit affirmed the Northern District of Ohio’s judgment as a matter of law wiping out a $64 million jury verdict in Coda Development s.r.o. v. Goodyear Tire & Rubber Co., No. 23-1880 (Fed. Cir. Dec. 8, 2025). The court concluded that no reasonable jury could have found Goodyear liable for trade secret misappropriation under Ohio law and likewise upheld the district court’s rejection of Coda’s correction-of-inventorship claim directed to Goodyear’s U.S. Patent No. 8,042,586.

    The decision is a careful, methodical application of trade secret doctrine, but it also fits into a broader pattern of Federal Circuit cases from the past two years in which jury verdicts in IP cases have been set aside on post-trial motions. At its core, Coda v. Goodyear reinforces a lesson that courts have been increasingly unwilling to soften: trade secrets must be defined with precision, anchored in secrecy, and proven to have been actually used. Aspirational descriptions and lists of desired functions will not survive judicial scrutiny.

    Background and Procedural Posture

    Coda Development and its related entities developed self-inflating tire (SIT) technology and engaged in discussions with Goodyear regarding potential collaboration. When Goodyear later introduced its own SIT system, Coda sued, asserting claims for trade secret misappropriation under the Ohio Uniform Trade Secrets Act (OUTSA) and seeking correction of inventorship on the ’586 patent.

    After a September 2022 jury trial, Coda appeared to have achieved a resounding victory. The jury found misappropriation of five alleged trade secrets and awarded $2.8 million in compensatory damages and $61.2 million in punitive damages. The district court, however, granted Goodyear’s Rule 50(b) motion for judgment as a matter of law, concluding that each asserted trade secret failed on one or more required elements. The court also denied Coda’s correction-of-inventorship claim following a bench determination based on written submissions.

    On appeal, Coda challenged nearly every aspect of those rulings. The Federal Circuit affirmed across the board.

    The Governing Legal Framework

    Because the trade secret claims arose under Ohio law, the Federal Circuit applied Sixth Circuit precedent interpreting the OUTSA. To prevail, a plaintiff must establish: (1) the existence of a trade secret; (2) acquisition through a confidential relationship or improper means; and (3) unauthorized use. Critically, courts also require that the alleged trade secret be defined with sufficient definiteness to allow adjudication of secrecy and misappropriation.

    The panel emphasized that this definiteness requirement is not a technicality. Without a concrete definition, courts cannot distinguish protected information from general industry knowledge or public disclosures.

    TS 24 and the Problem of Public Disclosure

    Trade Secret 24 became the focal point of the appeal. Coda defined TS 24 as knowledge regarding the optimal placement of a pump in a tire, specifically “in the sidewall close to, and above, the rim where the tire cyclically deforms.”

    The Federal Circuit had little difficulty affirming the district court’s conclusion that this information was publicly disclosed years earlier. Coda’s own 2007 PCT application and a 2008 Tire Technology article described pump placement in the tire sidewall near the rim. Trial testimony from Coda’s principal inventor confirmed that this placement concept was public.

    Faced with this record, Coda attempted to narrow TS 24 on appeal by arguing that its trade secret concerned placement in a “conventional” or “standard” tire sidewall, not merely any sidewall. The court rejected this reframing outright. The operative trade secret definition was the one Coda provided in response to court-ordered interrogatories, which were expressly “closed.” Post-hoc attempts to add limiting language through testimony or argument could not salvage an otherwise public disclosure.

    The panel’s analysis here is instructive. Once a trade secret plaintiff commits to a definition, courts will hold it to that definition. Elasticity cuts against secrecy.

    TS 7, TS 11, and TS 20: Functional Descriptions Are Not Trade Secrets

    The court next addressed three trade secrets that suffered from a different, but related, flaw. TS 7, TS 11, and TS 20 were each framed as combinations of components or lists of functions associated with self-inflating tire systems.

    For example, TS 7 described a “multi-purpose interface” capable of performing ten separate functions, including connecting various components, routing air, and holding filters. What it did not describe was the underlying design or development knowledge that enabled those functions.

    The Federal Circuit agreed with the district court that this kind of functional description does not satisfy the definiteness requirement. A trade secret must identify the protectable knowledge itself, not merely the result it achieves. Lists of capabilities or end goals are indistinguishable from general engineering aspirations unless tethered to specific, non-public implementation details.

    TS 11 and TS 20 fared no better. Each consisted of long lists of features, geometries, and system concepts, but none articulated how those elements were designed, selected, or combined in a way that would meaningfully separate secret knowledge from what was already known in the field.

    The court’s reasoning echoes a growing body of appellate authority rejecting “laundry list” trade secrets. Courts expect plaintiffs asserting complex technical trade secrets to do the hard work of separating the secret from the surrounding noise.

    Failure of Proof on “Use”

    Even if the asserted trade secrets had been valid, the Federal Circuit concluded that Coda failed to present sufficient evidence that Goodyear actually used them.

    Coda relied heavily on expert testimony asserting that Goodyear’s patents and internal documents reflected substantial portions of its trade secrets. But the court characterized this testimony as conclusory and unsupported. Identifying one or two overlapping concepts from a multi-element trade secret does not establish use of a “substantial portion,” particularly where those concepts were themselves publicly disclosed.

    This aspect of the decision underscores a practical litigation reality: use must be proven with specificity. Generalized comparisons and thematic similarities will not carry a verdict through post-trial review.

    TS 23 and the Limits of Inference

    Trade Secret 23 concerned test results purportedly demonstrating that Coda’s pump designs could generate pressure exceeding tire cavity pressure. The only evidence of alleged disclosure and use was a January 2009 email summarizing certain test results.

    The Federal Circuit agreed with the district court that the email did not disclose all of the testing data encompassed by TS 23. Coda’s argument that Goodyear’s subsequent project advancement permitted an inference of reliance on the trade secret was deemed insufficient. Temporal proximity, without a clear evidentiary bridge, could not support a finding of use.

    Correction of Inventorship: Trade Secrets Are Not a Substitute for Conception

    Coda’s correction-of-inventorship claim rose or fell with its trade secret case. Because the court affirmed the JMOL ruling, there was no factual predicate left to support inventorship correction.

    The panel also rejected the argument that the district court improperly disregarded jury findings. The jury had never been asked to compare the scope of TS 24 with the claims of the ’586 patent. The district court’s conclusion that the alleged trade secret did not establish conception of the claimed invention therefore did not conflict with any jury determination.

    The court reiterated a fundamental principle of patent law: conception requires possession of every feature of the claimed invention. Trade secret allegations, particularly those found indefinite or publicly disclosed, cannot fill that gap.

    Broader Implications

    Coda v. Goodyear is less about hostility to juries than about judicial insistence on doctrinal discipline. Trade secret law offers powerful remedies, but only for plaintiffs willing to define their secrets narrowly, protect them rigorously, and prove their misuse with precision.

    Charles Gideon Korrell believes that the decision serves as a reminder that trade secret claims must be engineered with the same care as patent claims. Charles Gideon Korrell notes that overbroad definitions may play well before a jury but are vulnerable on post-trial review. Charles Gideon Korrell also observes that courts increasingly expect trade secret plaintiffs to articulate something closer to a “specification-level” disclosure when the technology is complex.

    For companies navigating collaborations, joint development discussions, or exploratory partnerships, the case reinforces the importance of disciplined information management. For litigators, it underscores the need to lock down trade secret definitions early and live with them through trial and appeal.

    In the end, Coda v. Goodyear stands as a cautionary tale: when everything is a trade secret, nothing is.

    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