Precedential and Key Federal Circuit Opinions
1. CONSTELLATION DESIGNS, LLC v. LG ELECTRONICS INC. [OPINION] (2024-1822, 04/28/2026) (Lourie, Stoll, Oetken, D.J.)
Stoll, J. The Court vacated and remanded the district court’s summary judgment of eligibility for claims 17, 21, 24, and 28 of U.S. Patent No. 8,842,761 (“’761 patent”) and claim 5 of U.S. Patent No. 10,693,700 (“’700 patent”). The Court affirmed the district court’s summary judgment of eligibility for claims 21 and 23 of U.S. Patent No. 11,019,509 (“’509 patent”) and claims 24 and 44 of U.S. Patent No. 11,018,922 (“’922 patent”). The Court also affirmed the denial of Defendants’ motion for judgment as a matter of law of non-infringement, affirmed the denial of judgment as a matter of law of no damages, and affirmed the denial of Defendants’ motion to exclude the testimony of Plaintiff’s damages expert.
The asserted patents are directed to digital communication systems that use a “constellation,” i.e., a visual representation of the relationship between digital bits and broadcast analog symbols, to transform analog signals transmitted over-the-air back to the original digital bits. Broadcast signals become weaker and pick up noise as they are transmitted, making it difficult to map the received signals back to the correct digital bits, and optimized constellations address this issue. The asserted patents explain that conventional constellations were uniform, and claim as an improvement communication systems using non-uniform constellations that optimize capacity using “parallel decoding capacity” (“PD capacity”).
The Court divided the asserted claims into two groups: (1) the asserted ’761 and ’700 patent claims, which recite using non-uniform constellations optimized using PD capacity (collectively, “the optimization claims”); and (2) the asserted ’509 and ’922 patent claims, which recite specific non-uniform constellations (collectively, “the constellation claims”).
At Alice Step One for the optimization claims, the Court found that, although the specification described some technical details, the claims recited nothing more than the broad abstract idea of optimizing a constellation for PD capacity and preempted all uses of that idea. At Alice Step Two for the optimization claims, the Court found that Plaintiff pointed to no inventive concept outside of the abstract idea itself, i.e., the use of non-uniform constellations that are optimized based on PD capacity. The Court rejected Plaintiff’s arguments that its inventors were the first to develop non-uniform constellations optimized for PD capacity and that Defendants’ obviousness challenges failed at trial and before the Patent Trial and Appeal Board as conflating the novelty and obviousness inquiries with the search for the inventive concept in the claims. The Court thus vacated the district court’s summary judgment of validity of the optimization claims and remanded.
At Alice Step One for the constellation claims, the Court found that these claims were directed to specific constellations that the inventors developed using techniques described in the specification, rather than the abstract idea of optimizing a constellation for capacity. The Court found that the constellation claims were directed to solving the technological problem of overcoming capacity constraints to improve coding gains through the particular solution of specific, non-uniform constellations with overlapping constellation point locations. The Court found the constellation claims eligible at Alice Step One, and thus did not reach Alice Step Two.
The Court then affirmed denial of Defendants’ JMOL of non-infringement, finding that it was legally proper for Plaintiff to rely on standards-related evidence to meet some elements and to use evidence specific to the accused products to show satisfaction of other elements of the same claim. The Court agreed with the district court’s reading and interpretation of Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010) as permitting a plaintiff to use industry standards, under the conditions set out in that case, on a limitation-by-limitation basis.
Finally, the Court affirmed the denial of Defendants’ JMOL of no damages and denial of Defendants’ motion to exclude Plaintiff’s damages expert for relying on a built-in apportionment theory based on third-party licenses that Defendants contended were not sufficiently comparable. The Court agreed with the district court that Plaintiff’s damages expert relied on sufficient facts to opine that the licenses were sufficiently comparable to rely on built-in apportionment, including testimony from Defendants’ corporate representative on the structure of the royalty rate, Plaintiff’s technical expert on the technical similarities, and Plaintiff’s damages expert’s explaining the economic similarities.
The Court rejected the Defendants’ argument, raised for the first time at oral argument, that if some asserted claims were found patent ineligible, the Court should vacate the damages award. The Court found that Defendants could have raised this foreseeable argument in its opening brief and that, in any event, Plaintiff’s damages expert testified that the value of the asserted patents were tied to the technology rather than any asserted patent or claim, and that this testimony was undisputed by Defendants’ witnesses.
2. FEDERAL EXPRESS CORPORATION v. QUALCOMM INCORPORATED [OPINION] (2024-1236, 04/29/2026) (Hughes, Cunningham, Stark)
Hughes, J. The Court declined to review Appellant’s challenge to the Patent Trial and Appeal Board’s (“Board”) decision denying the request to terminate inter partes review (“IPR”) proceedings for allegedly failing to determine whether the petition identified all real parties in interest. The Court vacated the Board’s obviousness determination as to the challenged claims of U.S. Patent No. 8,766,797 (“’797 patent”) and remanded.
The Court found that Appellant’s challenges grounded in § 312(a)(2)’s real party in interest requirement fall within § 314(d)’s scope, and are thus unreviewable, because § 312(a)(2) is closely tied to institution. The Court reasoned that § 312(a)(2) describes requirements for a petition to be considered for institution, and therefore the real party in interest requirement is a prerequisite for and is integral to institution, notwithstanding the absence of an express reference to institution. The Court distinguished SAS Institute, Inc. v. Iancu, 584 U.S. 357 (2018) because it found the challenge in that case concerned how the Board’s review would proceed after institution, not the fact that the Board instituted. Since Appellant’s challenge was to whether there should have been institution at all, the Court found that challenge unreviewable.
The Court then vacated and remanded the Board’s final written decision finding claims 6, 17, and 28 of the ’797 patent unpatentable based on a combination of two pieces of prior art, Lau and Buford. The Board based its determination on its belief that Appellant did not contest Appellee’s challenge on the Lau-Buford grounds, but both parties agreed that Appellant did contest this challenge and thus that the findings should at least be vacated. The Court rejected Appellant’s argument that reversal was warranted because it found the Board did not consider Appellant’s arguments against unpatentability in light of Lau-Buford or determine whether Buford met relevant claim limitations, thus, unresolved fact disputes remained.
3. ENVIRO TECH CHEMICAL SERVICES, INC. v. SAFE FOODS CORP. [OPINION] (2024-2160, 05/04/2026) (Lourie, Prost, Burroughs, D.J.)
Lourie, J. The Court affirmed the district court’s decision determining that the asserted claims of U.S. Patent 10,912,321 (“’321 patent”) were invalid as indefinite.
The Court found that “about,” which appeared in all asserted claims, was indefinite. The Court determined that the claim language stating that the acidity will be altered to a “pH of about 7.6 to about 10 by adding an alkaline source” gave no guidance to the permissible deviation from the claimed range, and that the parties’ agreement that the ordinary meaning of “about” was “approximately” did not alter that conclusion. The Court also found that although the specification taught experiments which typically only proceeded when the difference of the actual pH was less than or equal to 0.3 of the target pH, there were several exceptions to that general practice, including an experiment with the largest number of subjects, such that the specification’s conflicting guidance would not allow a skilled artisan to determine the scope of “about” with reasonable certainty.
The Court emphasized as an important determinant in its decision that claim 1 was amended to avoid prior art with a pH as close as 7.0, and the specification recited pHs of 6-10. The Court determined that, where the prior art is almost “about” a pH of 7.6, § 112 necessitates much more clarity than using the vague term “about.” The Court found that, during prosecution, Plaintiff treated the word “about” inconsistently, sometimes including the word “about” in its arguments and sometimes not, and at no time explaining what “about” meant. The Court rejected Plaintiff’s arguments that its amendment from “about 7.3” to “about 7.6” was a disclaimed of pH deviation greater than 0.3 pH and that “about” should therefore mean less than or equal to 0.3, finding nothing in the prosecution history supported this interpretation.
