Precedential and Key Federal Circuit Opinions
1. THE NIELSEN COMPANY (US), LLC v. TVISION INSIGHTS, INC. (2025-1371, 8/14/2026) (Dyk, Reyna, Bissoon, D.J.)
Dyk, J. The Court affirmed the Patent Trial and Appeal Board’s decision holding the challenged claims of U.S. Patent No. 11,470,243 to be unpatentable as obvious. The patent relates to audience measurement methods to count the number of people in an audience through image processing and facial recognition.
The Court rejected the patent owner’s arguments that the Board erred in considering a publication authored by Ying-li Tian as analogous prior art to the ’243 patent and in concluding that Tian’s teachings rendered obvious the disputed claims. First, the patent owner argued that the Board violated the Administrative Procedure Act (“APA”) in concluding that the Tian publication was reasonably pertinent because petitioner’s inter partes review petition argued only that the Tian publication was in the same field of endeavor as the ’243 patent, not that Tian’s teachings were reasonably pertinent. While the same-field and reasonably pertinent theories are separate tests for analogous art, the Court explained that the evidence and analysis related to them may overlap, and the same evidence was germane to both tests here. The Court explained that there is no requirement for a petitioner’s analogous-art theory to be made expressly, and the Court determined that the patent owner was on notice because the reasonably pertinent theory was implicit in the petition, even if not made expressly. Further, the Court determined that the patent owner addressed the reasonably pertinent theory in the Patent Owner’s Response and that any error was harmless because the patent owner had not established any prejudice. Second, on the merits of the Board’s reasonably pertinent finding, the Court found that substantial evidence supported the Board’s reasonable-pertinence finding and its determination that Tian is analogous art. The Court rejected the patent owner’s arguments that the problems confronting the inventor are limited to those expressly referenced in the patent specification because a patent may address broader problems. Finally, the Court concluded that the Board did not err by concluding that the Tian publication disclosed certain claim limitations and by finding motivation to combine Tian with the other prior-art references in the obviousness grounds.
2. RANGE OF MOTION PRODUCTS, LLC V. ARMAID COMPANY INC. (23-2427, 8/11/2026) (Moore, Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, Cunningham, Stark)
The Court denied a request for rehearing en banc of a panel decision relating to the proper test for determining design patent infringement.
The panel decision affirmed the district court’s grant of summary judgment of noninfringement of U.S. Design Patent No. D802,155, which claims the ornamental design of a body massaging apparatus. The panel majority agreed that the shapes of certain features of the accused device are driven by function and therefore must be factored out of the infringement analysis, even though they may possess some ornamental aspects. Applying the ordinary observer test, the panel majority concluded that, after accounting for functional aspects, the overall ornamental appearance of the accused device is plainly dissimilar from the claimed design as a matter of law.
Judge Cunningham, joined by Judge Hughes, wrote an opinion concurring in the denial of the petition for rehearing en banc. The concurrence defended the panel decision as consistent with longstanding Supreme Court and Federal Circuit precedent. The concurrence rejected the dissent’s argument that the functional-versus-ornamental inquiry in claim construction should go to the jury as a question of fact. The concurrence explained that as with utility patents, claim construction is both a proper and necessary component of the design patent infringement analysis, and determining the proper scope of a design patent claim, like a utility patent claim, involves the interpretation of a legal document and determining the bounds of a property right. In the concurrence’s view, district court judges are properly tasked with claim construction and doing so does not usurp the jury’s fact-finding process.
Chief Judge Moore dissented, joined by Judge Reyna. The dissent argued that the Court has essentially eliminated any role for the jury over quintessentially jury-type fact questions in design patent infringement cases. Because a design patent is a series of pictures rather than a written instrument, the dissent’s view is that questions occurring within a design patent infringement trial, including determining which aspects of the design are functional versus ornamental, should be factual judgments for a jury. The dissent explained that no answer to the questions underlying the functionality assessment is rooted in interpretation of legal text, and juries are equipped to assess functionality as a matter of fact and in fact do so all the time in analogous areas of law. The dissent’s position is that the concerns espoused in Markman for why construing written patent claims is properly the court’s job are absent for design patents, and almost nothing in the way of legal analysis undergirds the claim construction of a picture, which is nearly all factual analysis. The dissent would assign questions of aesthetic appearance, ornamentality, and functionality to the jury as part of the infringement determination.
Judges Stoll and Stark also dissented without separate opinions.
3. DENTAL MONITORING SAS v. ALIGN TECHNOLOGY, INC. (2025-1752, 8/10/2026) (Lourie, Schall, Taranto)
Lourie, J. The Court vacated and remanded a final written decision of the Patent Trial and Appeal Board in an inter partes review finding the challenged claims of U.S. Patent No. 10,755,409 to be unpatentable as obvious. The ’409 patent is directed to a method for acquiring and analyzing an image of a dental arch of a patient.
The Board found the challenged claims obvious over a prior-art combination including a published patent application by Carrier. The effective filing date of the ’409 patent fell between the filing date of Carrier’s provisional application and the filing date of Carrier’s nonprovisional application. Accordingly, whether Carrier qualified as prior art depended on whether it was entitled to the filing date of its provisional application under AIA 35 U.S.C § 102(d)(2). The Board rejected the petitioner’s argument that, under Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), Carrier could rely on its provisional filing date only if at least one claim of the non-provisional patent was supported by the provisional application’s written description. Instead, the Board relied on its precedential decision in Penumbra Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (PTAB Mar. 10, 2023), to hold that, for purposes of AIA § 102(d)(2), a reference patent receives the filing date of an earlier application as long as it satisfies the ministerial requirements of 35 U.S.C. §§ 119 and 120 and the earlier application describes the subject matter relied upon in the reference patent. Because the Board found that Carrier’s provisional application described the subject matter on which the petition relied, it concluded that Carrier qualified as prior art as of the provisional application’s filing date.
On appeal, the Court examined the question of whether Carrier’s provisional application needed to provide written description support for one of Carrier’s published claims for Carrier to obtain the benefit of its provisional date for prior art purposes under 35 U.S.C. § 102(d)(2). The Court determined that the statutory text requires § 112(a) support for at least one of the prior art patent’s published claims before that reference may obtain an earlier filing date for prior art purposes because the plain language of §§ 102(d)(2) and 119(e)(1) conditions entitlement to an earlier prior art date on compliance with § 112(a). According to the Court, its reading was supported by the phrase “entitled to claim a right of priority under [§] 119” in § 102(d)(2), which refers to substantive entitlement under § 119, including satisfying § 112’s written description requirement, and not merely the procedural act of claiming priority. The Court rejected an argument by petitioner that the analysis in Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), applies only to the pre-AIA version of § 102 and does not apply to prior art determinations under AIA § 102. The Court explained that the concern in Dynamic Drinkware—that a patent challenger should not be able to backdate prior art by claiming priority from an earlier application that would not have supported a patent on the claimed invention—still remains valid.
Accordingly, the Court held that to establish Carrier as prior art to the ’409 patent, petitioner must show that Carrier’s provisional application provides written description support for at least one claim of Carrier. The Court remanded for the Board to determine whether the Carrier provisional application provides written description support for at least one of Carrier’s published claims.
4. SOCKET SOLUTIONS, LLC v. IMPORT GLOBAL, LLC (2025-1121, 8/4/2026) (Moore, Prost, Seeborg, D.J.)
Moore, J. The Court vacated the district court’s grant of a preliminary injunction in favor of the plaintiff and remanded for further proceedings. The asserted patent is directed to an indoor electrical wall outlet cover that permits use of a wall outlet while concealing the outlet contact openings. The district court enjoined the defendant from manufacturing, using, selling, offering to sell, or importing into the United States its accused product and other products that were not more than colorably different from the accused product in the context of the asserted patent.
On appeal, the defendant argued that the district court erred in analyzing likelihood of success and irreparable harm. The Court found the district court erred in construing the claim terms “backplate” and “pin” in its likelihood of success analysis. Accordingly, the Court vacated and remanded for the district court to re-evaluate the likelihood of success of the plaintiff’s patent infringement claims.
The Court did not reach the defendant’s irreparable harm arguments and held only that the district court erred to the extent it relied on a presumption of irreparable harm when a clear showing of patent validity and infringement has been made. The Court noted that the presumption cannot be justified after eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006), as confirmed by the Federal Circuit’s decision in Robert Bosch LLC v. Pylon Manufacturing Corp., 659 F.3d 1142, 1149 (Fed. Cir. 2011). Although eBay and Bosch involved permanent injunctions, the Court determined that there was no reason to depart from their holdings in the preliminary injunction context.
