Precedential and Key Federal Circuit Opinions

1.  GOTV STREAMING, LLC v. NETFLIX, INC. [OPINION] (2024-1669, -1744, 2/9/2026) (Prost, Clevenger, Taranto) *

Taranto. The Federal Circuit found the asserted patents of GoTV Streaming, LLC (“GoTV”) invalid under § 101. GoTV had sued Netflix, Inc. (“Netflix”) for infringement of certain patents related to requesting content, delivering said content, and tailoring the content to the display specifications of the requester’s device. Before a trial, the district court denied Netflix’s request to find the claims invalid under 35 U.S.C. § 101. A trial then occurred, and GoTV obtained a partial win. On appeal, Netflix challenged the district court’s § 101 analysis.

The Federal Circuit found the asserted claims invalid under § 101. Before applying the two step Alice test, the Federal Circuit first engaged in claim construction for a disputed term, finding (contrary to the district court’s ruling) the term in question was not indefinite. The Federal Circuit then applied the Alice test to a claim representative of all the claims in the asserted patents and found it was directed to the abstract idea of “a template set of specifications … that can be tailored (in at least one respect) for final production of the specified product (here an image) to fit the user’s constraints.” Slip Op. at 20. The Federal Circuit held the claims were not directed to an improvement in computer functionality. The Federal Circuit then found that the representative claim was not patent eligible at step two because it did nothing more than apply the abstract idea using ordinary computer and network technology.

Separately, the Federal Circuit acknowledged GoTV’s argument that the district court erred in granting Netflix summary judgment of no induced infringement because GoTV’s knowledge allegations relied on the original complaint. While not adjudicating the issue, the Federal Circuit “deem[ed] its arguments to be sufficiently substantial that it is worth vacating the district court’s grant to Netflix of summary judgment of no inducement of infringement.” Id. at 27. Ultimately, the Federal Circuit reversed, vacated in part, and directed the district court to enter judgment for Netflix.  

*WilmerHale represented Netflix in this matter

2.  INGEVITY CORP. v. BASF CORP. [OPINION] (2024-1577, 2/11/2026) (Lourie, Prost, Cunningham)

Lourie. The Federal Circuit affirmed a finding of antitrust liability for patent tying. Ingevity Corp. and Ingevity South Carolina LLC (together “Ingevity”) sued BASF Corp. (“BASF”) for patent infringement. The patent at issue covered, among other things, carbon honeycombs used in fuel-vapor canisters but did not cover honeycombs used in air-intake systems. The district court granted summary judgment to BASF on the patent claims, but BASF’s antitrust counterclaims went to trial. In those counterclaims, BASF alleged that Ingevity unlawfully conditioned licenses to the asserted patent on customers’ agreement to fulfill all honeycomb product needs with Ingevity, not just those covered by the asserted patent (i.e. that Ingevity engaged in patent tying). The jury found for BASF, finding that Ingevity unlawfully tied licenses to its patent (tying product) to its unpatented carbon honeycomb products (the tied products).

The Federal Circuit affirmed the jury’s determination. Ingevity had argued that it could not be liable for tying under 35 U.S.C. § 271(d), which expressly shields conduct that would otherwise be characterized as tying or exclusionary when it is undertaken to prevent contributory infringement as defined in § 271(c), which limits contributory infringement to the sale of a “material or apparatus . . . especially made or especially adapted for use in an infringement . . . and not a staple article or commodity of commerce suitable for substantial non-infringing use.” “To prove that Ingevity, as the patentee, was not entitled to control the goods at issue—thus engaging in unlawful tying—BASF needed to show by a preponderance of the evidence that the goods have actual and substantial non-infringing uses, i.e., that they are staple goods.” Slip Op. at 14.

The Federal Circuit found the jury’s finding supported by substantial evidence. In particular, Ingevity’s own sales records and spreadsheets showed repeated carbon honeycomb purchases across multiple months and years, totaling more than 18,000 units, for use in air-intake systems, which is a non-infringing use. Ingevity argued “that (1) its records showing sales for non-infringing uses are ‘typographical errors’; (2) the non-infringing uses are ‘impossible’; (3) even if accurate, the records are insufficient to prove ‘actual’ non-infringing uses; and (4) 18,000+ non-infringing uses is not a ‘substantial’ amount.” Id. at 15. The Federal Circuit explained that each of Ingevity’s arguments sought to “relitigate factual disputes the jury resolved in BASF’s favor,” id., and that the court may not second-guess the jury’s credibility determinations, re-weigh the evidence, or question the drawing of legitimate inferences from the facts. Finding that the “jury’s verdict rested on permissible inferences and credibility determinations supported by the record,” id. at 18, the Federal Circuit affirmed the jury’s determination that Ingevity’s honeycombs were staple goods.

3.  NETFLIX, INC. v. DIVX, LLC [OPINION] (2024-1541, 2/13/2026) (Moore, Dyk, Taranto)*

Taranto. The Federal Circuit disagreed with a claim construction determination of the Patent Trial and Appeal Board (“Board”) and vacated and remanded its final written decision. DivX, LLC (“DivX”) had sued Netflix, Inc. (“Netflix”) for infringement of a patent reciting systems and methods for streaming partly encrypted media content. In response, Netflix successfully petitioned for institution of an inter partes review of the asserted patent. But in its final written decision, the Board resolved, over a dissent, a disputed claim construction in such a way that led it to find in favor of DivX. The Federal Circuit reversed the claim construction decision, vacated the Board’s decision, and remanded for further proceedings.

On remand from an earlier decision from the Federal Circuit, the Board had reversed itself and found that a limitation (“locating encryption information that identifies encrypted portions of frames of video within the requested portions of the selected stream of protected video”) in the adjudicated patent “requires ‘that the encryption information is located within the requested portions of the selected stream of protected video.’” Slip Op. at 6. The Federal Circuit found the Board’s construction erroneous, explaining that “modifier[s] [are] presumptively understood to be tied to the nearest available semantically plausible modificand.” Id. at 9. The Federal Circuit explained this rule favored Netflix’s claim construction proposal and that no persuasive indicators suggested otherwise; indeed the claim language and prosecution history reinforced that Netflix’s construction was correct, while the specification did “not furnish a basis for overcoming the presumptive interpretation of the claim language established by the grammar precept [the Federal Circuit] ha[d] discussed.” The Federal Circuit further found the limitation in question taught by the prior art and remanded for further proceedings.

*WilmerHale represented Netflix in this matter

4.  APPLE INC. v. SQUIRES [OPINION] (2024-1864, 2/13/2026) (Lourie, Taranto, Chen)*

Lourie. The Federal Circuit held that notice-and-comment rulemaking was not required for the Director to issue instructions to the Board regarding when to exercise its delegated non-institution authority (that is, the to designate NHK Spring Co. v. Intri-Plex Technologies, Inc., IPR2018-00752, 2018 WL 4373643 (P.T.A.B. Sept. 12, 2018) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, 2020 WL 2126495 (P.T.A.B. Mar. 20, 2020) precedential and to issue the June 21, 2022 memorandum regarding discretionary denials).

The Federal Circuit explained that “Apple’s challenge depends on whether the instructions are a substantive/legislative rule or, instead, are a general statement of policy under 5 U.S.C. § 553(b).“ Slip. Op. at 12. The Federal Circuit then found that the instructions at issue were a “statement of general policy” that did not amount to a legislative rule. Specifically, the Federal Circuit found it informative that “the NHK-Fintiv instructions are not binding on the agency, i.e., on the statutory decisionmaker—the Director.” Id. at 14. Rather, the instructions “simply inform the Board how, as delegate, it should exercise the Director’s discretionary power in specific cases.” Id. 15 (internal quotation and alterations omitted). The Court further noted that the Director “has broad and protected discretion not to launch an IPR, even when the statutory pre-conditions are present.” Id. at 16. Finally, the Federal Circuit explained that “[a] non-institution decision, which is protected as a matter of unreviewable discretion (constitutional issues aside), leaves a patent challenger’s actual legal rights and obligations unchanged.” For these reasons, the Federal Circuit found the instructions in question did not amount to a legislative rule and affirmed the district court's judgment finding that the Director’s instructions had not been improperly issues without notice-and-comment rulemaking.

* WilmerHale represented Apple, Cisco, and Intel in this matter.