Our Patent Case Summaries provide a weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Implicit, LLC v. Sonos, Inc.
Nos. 2020-1173, -1174 (Fed. Cir. (PTAB) Mar. 9, 2026). Opinion by Cunningham, joined by Taranto and Stoll.
Implicit appealed final written decisions in two IPRs holding certain claims of two patents unpatentable, as well as a decision by the Patent Trial and Appeal Board on remand holding that later-issued certificates of correction adding a new inventor had no impact on those decisions.
Sonos had challenged the patents based in part on a prior art reference with a December 11, 2001 filing date. In the IPRs, Implicit argued that the originally named inventors conceived of the claimed inventions and worked with engineer Guy Carpenter to implement them before that date, such that the reference was not prior art because Carpenter’s work inured to the inventors’ benefit. The Board rejected that argument, concluding that Implicit failed to establish conception and communication to Carpenter sufficient for any reduction to practice to inure to the named inventors’ benefit, and held the challenged claims unpatentable as anticipated or obvious.
After the Board’s final written decisions, Implicit obtained certificates of correction under 35 U.S.C. § 256 adding Carpenter as an inventor. In considering the effect of those certificates, the Board ruled that although § 256 corrections are generally retroactive, equitable doctrines precluded Implicit from relying on the corrected inventorship to revisit the Board’s already-issued unpatentability determinations.
The Federal Circuit affirmed. The court held that “forfeiture can apply notwithstanding the retroactive effect of 35 U.S.C. § 256 and that the Board did not abuse its discretion in applying forfeiture to the circumstances of this case.” “Implicit had the opportunity to seek correction of inventorship and assert its change of inventorship theory earlier in this proceeding, and such a change could directly affect the trial and outcome of the proceeding.” Thus, applying forfeiture principles can be appropriate.
The Federal Circuit next ruled that the Board did not abuse its discretion in determining that Implicit forfeited its ability to argue a new antedating argument based on the correction of inventorship. The court noted, for example, that Implicit “waited until after the final written decisions had already been issued to seek certificates of correction.”
Gramm, et al. v. Deere & Co.
No. 2024-1598 (Fed. Cir. (S.D. Iowa) Mar. 11, 2026). Opinion by Reyna, joined by Lourie and Cunningham.
Gramm owns a patent directed to an apparatus for maintaining the header of a crop harvester at a designated height above the ground as the harvester traverses a field. Gramm sued Deere for infringement, and the lawsuit eventually focused on claim 12 of the patent and its requirement of a “control means” for raising or lowering the header.
The parties agreed that “control means” is a means-plus-function limitation under 35 U.S.C. § 112(f) and agreed on the claimed function, but disputed whether the specification disclosed sufficiently definite corresponding structure. In particular, the parties disputed whether the specification’s disclosure of a “head controller 20” feature of the corresponding structure is sufficiently definite.
Deere argued it is not because the disclosed “head controller 20” amounts to a computer or processor, for which the specification needed to disclose, but failed to disclose, the algorithm by which the computer or processor works to accomplish the claimed function. The district court agreed with Deere and entered judgment of invalidity based on indefiniteness. Reaper appealed.
The Federal Circuit reversed and remanded, ruling that “the district court erred by discounting structure that performs the claimed function in claim 12.” In particular, the district court had excluded Deere’s “Dial-A-Matic Version #1” controller as corresponding structure because it did not control lateral positioning of the header, but the Federal Circuit observed that lateral positioning was not part of the claimed function. Thus, “the district court clearly erred by excluding the Dial-A-Matic Version #1 as corresponding structure.” Because Dial-A-Matic Version #1 is properly disclosed as corresponding structure, the Federal Circuit held that the district court erred by determining that “control means” is indefinite.
The Federal Circuit also addressed Dial-A-Matic Versions #2 and #3. As to those versions, the district court did not clearly err in determining that they were microprocessor-based and thus “require a corresponding algorithm in the specification to be sufficiently definite,” but the specification failed to disclose a corresponding algorithm.
Lastly, Reaper argued that the district court overlooked the issue of equivalents to the corresponding structure. The Federal Circuit responded that “Reaper’s argument reflects a fundamental misunderstanding of our precedent and the means-plus-function analysis.” The court continued: “for purposes of claim construction, the district court need only ascertain the corresponding structure disclosed in the specification, not what equivalents may exist.” “District courts are not required to undertake an analysis during claim construction to determine what equivalents may exist in the abstract.”
The Trustees of Columbia University in the City of New York v. Gen Digital Inc.
No. 2024-1243 (Fed. Cir. (E.D. Va.) Mar. 11, 2026). Opinion by Dyk, joined by Prost and Reyna.
Columbia sued Gen Digital, which markets the Norton software brand, for infringement of patents directed to detecting anomalous program executions. Columbia also sought correction of inventorship of a separate patent. The asserted claims concerned executing at least part of a program in an emulator, comparing function calls to a model, and identifying anomalous behavior.
Norton moved for judgment on the pleadings that the claims are ineligible under 35 U.S.C. § 101, but the district court denied the motion, concluding that the claims were not directed to an abstract idea. The case thus proceeded to trial, where a jury returned a verdict of willful infringement and awarded more than $185 million in damages, including damages based on foreign sales. The district court awarded enhanced damages and attorneys’ fees, relying in part on a contempt finding against Norton’s counsel.
The Federal Circuit vacated the judgment and remanded. Beginning with ineligibility, the Federal Circuit ruled at Alice step one that the asserted claims are abstract and that further proceedings on remand are required as to step two.
The court held that the asserted claims are directed to the abstract idea of comparing data against a model created using different computers to determine whether the data are anomalous. The court rejected Columbia’s arguments that the claims were directed to non-abstract technological improvements, explaining that the asserted efficiency benefits reflected only an abstract divide-and-conquer approach and that other alleged improvements were either forfeited or not required by the claim language. The court stated that “the claimed invention’s efficiency gain from the use of multiple computers is no more than [a] concededly abstract idea.”
As to Alice step two, the Federal Circuit deemed it “best addressed by the district court in the first instance.” The court explained that Columbia had preserved an argument that the claimed “model of function calls” could supply an inventive concept and that, at the pleadings stage, factual disputes precluded resolving the issue on appeal.
Next, “given the interest in judicial efficiency,” the Federal Circuit addressed remaining issues raised and fully briefed by the parties. First, the Federal Circuit affirmed the district court’s construction of the claim term “emulator,” rejecting Norton’s argument that the term required software that simulates a computer system.
Second, the court affirmed the denial of JMOL of noninfringement, holding that sufficient evidence supported the jury’s finding that Norton’s products infringed.
Third, the Federal Circuit affirmed the denial of JMOL on willfulness, holding that substantial evidence supported the jury’s finding that Norton knew or should have known of the patents and lacked a reasonable belief that its products did not infringe.
Fourth, the Federal Circuit held that the district court erred in denying JMOL as to damages based on foreign sales. Relying on Microsoft Corp. v. AT&T Corp., the court held that software sold to foreign customers was not “made in” or “distributed from” the United States merely because software was transmitted from domestic servers or originated from master copies here. The court rejected alternative theories based on joint infringement, induced infringement, and causation because those theories were not properly presented to the jury.
Finally, the Federal Circuit held that the awards of enhanced damages and attorneys’ fees could not stand. In a companion appeal, the Federal Circuit reversed a contempt order that had formed part of the basis for the district court’s enhancement analysis and award of attorneys’ fees. The Federal Circuit provided guidance to the district court for handling these issues on remand if the claims are found to be patent eligible.