Precedential and Key Federal Circuit Opinions
1. In Re MOTOROLA SOLUTIONS, INC. [ORDER] (2025-134, 11/06/2025) (Dyk, Linn, Cunningham)
Linn, J. The Court denied Motorola Solutions, Inc.’s petition for a writ of mandamus challenging the Acting Director’s decision to deinstitute several IPRs of Stellar, LLC’s patents. Specifically, Motorola challenged the Acting Director’s rescission of the Vidal Memorandum and argued that the application of that rescission violated Due Process Clause guarantees and the Administrative Procedure Act (APA).
The Court held that mandamus relief was inappropriate because mandamus is ordinarily unavailable for review of institution decisions, which the Congress committed to the Director’s discretion and protected that exercise of discretion from judicial review by making such determinations “final and nonappealable,” under 35 U.S.C. § 314(d).
The Court also held that Motorola failed to show that it has a constitutionally protected right that was being violated, because there is typically no protected property interest in discretionary benefits like IPR institution and Motorola had not shown that the Vidal Memorandum limited the PTO’s discretion in a way that institution could be considered a non-discretionary benefit. The Court also rejected Motorola’s APA arguments as nothing but an attempted end run around § 314(d)’s bar on review. Consequently, Motorola’s petition was denied.
2. CANATEX COMPLETION SOLUTIONS, INC. v. WELLMATICS, LLC [OPINION] (2024-1466, 11/12/2025) (Moore, Prost, Taranto)
Taranto, J. The Court reversed the district court’s ruling that Canatex Completion Solutions’ (“Canatex”) patent was invalid for indefiniteness. The patent at issue included claims for a device, having two parts, that is used in oil and gas wells. The district court accepted the defendant’s argument that the phrase “the connection profile of the second part” in the independent claims lacked an antecedent basis and rejected Canatex’s argument that the phrase contains what a relevant artisan would recognize to be an evident error with an evident simple correction.
On appeal, the Court analyzed the propriety of applying judicial correction to the patent claim. The Court noted that the standard for judicial correction is a demanding one requiring that the error is evident from the face of the patent, and the correction is the only reasonable understanding of the intrinsic evidence such that a person of ordinary skill is constructively aware of the intended meaning. Applying this standard, the Court held the existence of an error in the claim is obvious on its face because the phrase at issue plainly requires an antecedent basis, but no “connection profile of the second part” is previously mentioned in the claims. The Court also held that there is only one reasonable correction, considering all the intrinsic evidence, including the prosecution history. That correction, changing “second” to “first,” is simple and can properly be characterized as a minor clerical or typographical error.
Accordingly, the Court reversed the judgment of invalidity for indefiniteness and remanded the case for further proceedings consistent with the corrected claims.
3. SMARTREND MANUFACTURING GROUP (SMG), INC. v. OPTI-LUXX INC. [OPINION] (2024-1616, 2024-1650, 11/13/2025) (Dyk, Linn, Stark)
Dyk, J. Smartrend Manufacturing Group (SMG), Inc. (“Smartrend”) brought suit asserting infringement of two patents—a utility patent and a design patent—directed to an illuminated school bus sign. The jury found infringement as to both patents at trial, and the district court denied defendant’s JMOL motion and issued an injunction. The Court reversed the infringement judgment for the utility patent and vacated the infringement judgment for the design patent and the injunction, remanding for a new trial on infringement of the design patent.
Regarding the design patent, the Court held that the district court erred in construing the term “transparency” to mean both “transparent” and “translucent,” where the scope of the claims was limited to surfaces that possess transparency. Because the design patent claims the design “as shown and described” in the specification, the Court held that the lower court should have considered the drawings and accompanying description, which expressly limited the scope. Consequently, the Court remanded the judgment of infringement for further proceedings.
Regarding the utility patent, the Court affirmed the district court’s construction of the term “frame” to mean a frame that is separate and distinct from the sign panel because, from a review of the specification, nothing suggests the claimed device can include signs with integrated frames. However, the Court held that the undisputed evidence showed that the accused device does not perform the required functions of the asserted claim. The Court noted that the claimed invention must be capable of removably receiving a sign so that signs can be exchanged, customized, or serviced without removing the entire installation, but Smartrend’s expert witness conceded that the accused product is not capable of doing that. Therefore, the Court held no reasonable jury could have found that the accused product infringed under the doctrine of equivalents and reversed the judgment of infringement.
