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.
VLSI Technology LLC v. Intel Corp.
No. 2024-1772 (Fed. Cir. (N.D. Cal.) Apr. 14, 2026). Opinion by Moore, joined by Chen and Kleeh (sitting by designation).
VLSI sued Intel for infringement of a patent that relates to choosing one or more cores of a multicore processor to execute a particular task. The district court struck certain theories of VLSI’s damages expert because the court determined VLSI failed to adequately disclose those theories in its damages contentions. The district court then granted Intel summary judgment of noninfringement based on two grounds: (1) extraterritoriality and (2) rejection of VLSI’s doctrine of equivalents theory of infringement. VLSI appealed.
On extraterritoriality, with respect to the asserted method claims, VLSI’s argument on appeal focused on a pretrial stipulation between the parties. The Federal Circuit explained that a “pretrial stipulation, like any contract, presents a legal question” reviewed de novo. Interpreting the stipulation de novo, the Federal Circuit agreed with VLSI that the stipulation’s “plain and unambiguous language establishes that, for all accused Intel products and activities determined to meet the technical requirements of the asserted claims, 70% will automatically be treated as having a U.S. nexus for infringement purposes.” Because the district court’s ruling contradicted the stipulation, the Federal Circuit reversed.
With respect to the asserted apparatus claims, the Federal Circuit again agreed with VLSI. The court held that the district court “improperly focused on where the claimed measuring limitations were practiced instead of the undisputed fact that Intel imported and sold the accused products in the United States.” The Federal Circuit thus reversed the district court’s grant of summary judgment of noninfringement on extraterritoriality grounds.
Next, the Federal Circuit addressed the district court’s grant of summary judgment of noninfringement under VLSI’s doctrine of equivalents theory. The district court had imported a requirement that certain claims required “core selection to occur only ‘upon identifying’ (i.e., after identifying) a single-core processing task,” because, in the district court’s view, the patent applicants’ statements during prosecution amounted to “clear and unmistakable disavowal of a broader interpretation.” The Federal Circuit analyzed the prosecution statements and reversed, ruling that the statements did not meet “the high burden for prosecution disclaimer.”
Lastly, the Federal Circuit affirmed the district court’s striking of the damages theories presented by one of VLSI’s experts. The district court struck those theories because VLSI had not adequately disclosed them in accordance with the court’s local patent rules. The Federal Circuit saw no abuse of discretion and thus upheld the decision. The Federal Circuit also noted that the district court had “left untouched the damages theories of another VLSI expert,” and that VLSI thus maintains the ability to prove damages based on that expert’s opinions “and can do so on remand.”
Definitive Holdings v. Powerteq
No. 2024-1761 (Fed. Cir. (D. Utah) Apr. 14, 2026). Opinion by Cunningham, joined by Moore and Dyk.
Definitive sued Powerteq for infringement of a patent relating to reprogramming engine controllers. Powerteq moved for summary judgment of noninfringement and invalidity.
The district court granted summary judgment of invalidity under pre-AIA 35 U.S.C. § 102(b) based on a device sold by non-party Hypertech called the “Hypertech Power Programmer III” (PP3). Definitive appealed, contending that the court erroneously relied on inadmissible hearsay and that the § 102(b) on-sale bar should be limited to sales expressly disclosing the prior art device’s functionality.
The Federal Circuit affirmed. First, the court addressed Definitive’s argument that the district court erred by relying on deposition testimony of Hypertech’s Rule 30(b)(6) witness regarding sales of the PP3 despite his purported lack of personal knowledge of the device. The Federal Circuit did not need to resolve Definitive’s argument because the court held that the witness’s testimony that was within his personal knowledge adequately established the key facts: “(1) his ability to authenticate the PP3 sales records, which themselves demonstrate that the PP3 was on sale prior to the critical date of the [asserted] patent; and (2) that Powerteq’s expert … analyzed source code from the PP3.” Thus, the district court did not abuse its discretion by considering the testimony in deciding summary judgment.
Second, the Federal Circuit addressed Definitive’s argument that the PP3 source code is inadmissible hearsay. The Federal Circuit disagreed. The court explained that “commands—like ‘dispose of a bag’ or ‘burn a photo album’—are instructions not offered for their truth,” and “so too for source code.” Because the source code commands are not hearsay, the Federal Circuit ruled that the district court did not abuse its discretion in considering expert testimony about source code commands in granting summary judgment.
Third, the Federal Circuit addressed Definitive’s argument that the PP3 was not prior art. Definitive contended that under the on-sale bar of § 102(b), prior art must disclose to the public how to perform the patented method, and the sales of the PP3 did not do so.
The Federal Circuit disagreed. Relying on precedent from the Supreme Court, the Federal Circuit explained that “triggering the on-sale bar does not require that the sale make the details of the invention available to the public.” The court continued: “The question is not whether the sale, even a third party sale, ‘discloses’ the invention at the time of sale, but whether the sale relates to a device that embodies the invention.” If so, then the patented invention is “on sale” under § 102(b). Because the PP3 embodied the patented methods and apparatuses and was sold to members of the public, the Federal Circuit ruled that the district court did not err in determining that the asserted claims of Definitive’s patent were invalid.
Teva Pharmaceuticals Int’l GmbH, et al. v. Eli Lilly & Co.
No. 2024-1094 (Fed. Cir. (D. Mass.) Apr. 16, 2026). Opinion by Prost, joined by Cunningham and Andrews (sitting by designation).
Teva sued Lilly for infringing three of Teva’s patents referred to as the “headache patents.” A jury found that Lilly willfully infringed and failed to prove the asserted claims invalid. The district court then granted judgment as a matter of law (JMOL) that the asserted claims are invalid for failure to satisfy both the written-description and enablement requirements of 35 U.S.C. § 112. Teva appealed.
The Federal Circuit reversed and remanded. Starting with written description, the court explained that the dispute concerned “whether the specification disclosed a representative number of species of the asserted claims’ genus of humanized anti-CGRP antagonist antibodies.” That is because, “for claims to a genus,” as here, “adequate written description requires disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can visualize or recognize the members of the genus.”
The Federal Circuit held that “the headache patents make clear that their claimed invention is the use of anti-CGRP antagonist antibodies, or humanized versions thereof, to treat headache—not such antibodies themselves” and that “a reasonable jury could have found that anti-CGRP antibodies themselves and methods of making them were well known, replete, or extensively described in the prior art.” Those facts along with the specification’s disclosures “suffice[d] to support the jury’s rejection of Lilly’s written-description challenge.” Thus, the district court’s JMOL of no written description was improper.
Turning next to enablement, the Federal Circuit noted that “enablement and written description often rise and fall together” and “so it is here.” The Federal Circuit held that “in light of the well-known status of anti-CGRP antagonist antibodies and the routine nature of humanization,” the relevant inquiry here “would have been determining which humanized anti-CGRP antagonist antibodies treat headache.” The court ruled that “the specification disclosed that all such antibodies work for that purpose.” Thus, “given the nature of the asserted claims and the jury’s supportable findings,” the Federal Circuit concluded that JMOL of no enablement was improper.