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.
Bissell, Inc., et al. v. ITC
Nos. 2024-1509, -1709 (Fed. Cir. (ITC) May 11, 2026). Opinion by Stoll, joined by Moore and Taranto.
Bissell filed an ITC complaint asserting that Tineco violated Section 337 of the Tariff Act through the importation and sale of wet dry surface cleaning devices that infringe two Bissell patents. After the complaint was filed, Tineco redesigned the accused products. At the conclusion of the investigation, the Commission barred Tineco from importing certain accused products that were found to infringe, but determined that the redesigned products did not infringe.
Bissell appealed the noninfringement finding as to Tineco’s redesigned products, and Tineco cross-appealed the Commission’s finding that Bissell has a technical domestic industry as well as certain infringement findings relevant to both the original accused products and the redesigned products.
The Federal Circuit affirmed the Commission’s final determination in full.
To begin, Bissell argued that the ALJ relied on an implicit error in claim construction to find that the redesigned products met the “disabled battery” claim limitation. But the Federal Circuit rejected the argument because “contrary to Bissell’s assertion, the [ALJ] merely applied the plain and ordinary meaning of the claim language,” made credibility determinations, and found that the redesigned products do not complete a cleanout cycle during which the battery charging circuit does not operate.
Next, Bissell argued that, as to infringement under the doctrine of equivalents, the ALJ relied on the legal doctrine of claim differentiation rather than making fact findings under the insubstantial-differences test. The Federal Circuit, however, viewed the ALJ’s analysis as involving fact findings. And because Bissell did not dispute that those findings are supported by substantial evidence in its opening appeal brief, the Federal Circuit affirmed the finding of no infringement under the doctrine of equivalents as to Tineco’s redesigned products.
Turning to the cross-appeal, Tineco challenged the finding of Bissell’s domestic industry because the ALJ had accepted testimony from Bissell’s expert based on the products’ source code, but the source code was not introduced as evidence at trial. The Federal Circuit rejected this argument because “expert testimony may be more extensive than the exhibits that are introduced into an evidentiary record.” The court held that, under the circumstances presented, “an expert can rely on source code without a party introducing that source code into the evidentiary record at trial.”
Lastly, the Federal Circuit rejected Tineco’s challenges to certain Commission findings because the findings were supported by substantial evidence.
Actelion Pharmaceuticals Ltd v. Mylan Pharmaceuticals Inc.
No. 2024-1641 (Fed. Cir. (N.D. W. Va.) May 13, 2026). Opinion by Taranto, joined by Reyna and Stoll.
Actelion owns two patents that describe certain pharmaceutical compositions involving epoprostenol, which is the active ingredient in Actelion’s hypertension drug Veletri®. After Mylan submitted an abbreviated new drug application to the FDA seeking approval to market a generic epoprostenol drug, Actelion sued Mylan for infringement.
Each claim recites a bulk solution pH of “13 or higher” or “greater than 13.” Actelion argued that Mylan infringes because its bulk solution has a pH of above 13 when measured at the refrigerated “operating temperature” of the solution. The district court, however, construed the claim phrases to refer to a pH measurement made at standard temperature (25±2°C), and under that construction, the pH of Mylan’s bulk solution was below the claimed range. Thus, the district court found that Mylan did not literally infringe.
The district court also found no infringement by an equivalent for three reasons: (1) Actelion was barred by the disclosure-dedication rule from capturing bulk solutions with (standard-temperature) pH less than 13; (2) during prosecution, Actelion had responded to an obviousness rejection by amending the claimed range to 13 and above, and thus was estopped from attempting to recapture, as an equivalent, pH values lower than 13; and (3) Actelion’s substantive arguments evaluated the “function” and “way” parts of the equivalency analysis “at an impermissibly high level of generality.” Actelion appealed.
The Federal Circuit affirmed. First, the court upheld the claim construction in view of the intrinsic record and extrinsic evidence. The court ruled that the specification as a whole provided “considerable support” for the district court’s construction, and “the extrinsic evidence strongly reinforces what is already indicated by the intrinsic evidence.” Under that construction, there was “undisputably no literal infringement.”
On the question of equivalents, the Federal Circuit discerned “no error in the district court’s application of both the prosecution history estoppel and disclosure-dedication bars,” and thus affirmed. As to estoppel, Actelion relied “entirely on the tangentiality exception to argue that prosecution history estoppel does not apply,” but the Federal Circuit determined that “Actelion failed to show that the claim amendment is only tangential to the differences between the alleged equivalent and the literal claim scope.” As to disclosure-dedication, the Federal Circuit determined that the rule “independently bars Actelion’s theory of infringement by an equivalent,” observing that “overlapping alternatives are readily susceptible of being clearly disclosed and yet partially unclaimed,” as occurred here.
mCom IP, LLC, et al. v. City National Bank of Florida
No. 2024-2089 (Fed. Cir. (S.D. Fla.) May 15, 2026). Opinion by Taranto, joined by Dyk and Mayer.
mCom is the assignee of a patent that claims a “unified electronic banking system” and a method of constructing a “unified electronic banking environment.” In a separate IPR proceeding, the Patent Trial and Appeal Board found all challenged claims unpatentable, leaving four claims in the patent. mCom sued City National Bank of Florida for infringement of those four claims.
The district court dismissed mCom’s complaint with prejudice for failure to state a claim, ruling that the asserted claims were invalid on the same obviousness grounds asserted in the IPR against the other claims and that mCom had not adequately pleaded infringement. The court subsequently awarded attorneys’ fees and costs to City National, relying on the exceptional-case authority of 35 U.S.C. § 285 for an award against mCom and on the attorney-sanction authority of 28 U.S.C. § 1927 for a separate award against mCom’s counsel. mCom and its counsel appealed as to one of the claims (claim 17) and as to the fees award and sanction.
The Federal Circuit affirmed the dismissal of mCom’s complaint with prejudice. The court rejected mCom’s arguments (1) that the district court did not actually invalidate claim 17, and (2) that claim 17 covers patent-eligible subject matter under § 101. The Federal Circuit explained that “the first argument is plainly incorrect” because “the only possible reading of the district court’s decision is that it held the asserted claims invalid.” And the Federal Circuit explained that mCom’s second argument about validity under § 101 “is simply beside the point” because the district court did not decide the issue.
The court then addressed and agreed with mCom’s challenges to the award of fees under § 285 and § 1927. The court agreed with mCom’s arguments that both determinations were improper because there was “no sound determination of unusually clear weakness (or bad faith) of the infringement assertion …, it was never established that City National had a good licensure defense to infringement …, and no evidence permitted a reasonable finding that mCom had sought nuisance-value settlements.”
Magnolia Medical Technologies, Inc. v. Kurin, Inc.
No. IPR2026-00097 (PTAB May 14, 2026) (designated precedential on May 14, 2026). Decision by Squires.
Kurin filed a request for discretionary denial of an IPR petition filed by Magnolia. Because the patent at issue had been challenged in district court, where a jury found the asserted patent claims not invalid, the Director denied institution of the IPR.
In so ruling, the Director explained at length the standard for exercising discretion, including Congressional intent behind AIA reviews. The Director emphasized that “the purpose of AIA reviews was, and is, to provide a quick and cost-effective alternative to district court patent litigation for resolving disputes over patent validity.” Also, “Congress intended AIA reviews to narrow disputes—not create another forum where litigation can be expanded.”
The Director concluded that, “at bottom, the central purpose of IPRs is to determine whether the patent at issue may have been improvidently granted and whether and to what extent that right should continue to be recognized at all.” The Director also stressed that “discretion is afforded to ensure fairness, efficiency, and predictability in patent disputes in a focused inter partes context—as Congress envisioned—as distinct from the broad adjudication of private disputes in district court litigation.”
Turning to this case “with these principles and guidance in mind,” the Director viewed Magnolia’s petition as being “outside the purpose of AIA reviews” because Magnolia “apparently is not attempting to use the Board as an alternative to the litigation but instead is using the IPR process to obtain a second bite at the apple after losing in district court.” The Director therefore denied institution.
Terumo BCT Inc. v. Haemonetics Corp.
IPR2025-01374, -01391 (PTAB May 12, 2026) (designated informative on May 13, 2026). Order by Squires.
Haemonetics filed requests for Director Review of two notices granting institution of IPR proceedings initiated by Terumo. In its petitions, Terumo advanced a “plain and ordinary meaning” for all claim terms. But one week after institution, Terumo argued in a co-pending district court case that certain claims reciting a “controller” were indefinite. Haemonetics then argued that Terumo’s inconsistent positions are insufficiently explained, contrary to recent Board decisions, and violate 37 C.F.R. § 42.104(b)(3), warranting Director Review and denial of institution.
Addressing these arguments, the Director noted that “[Terumo] knew that, consistent with Board precedent, it cannot take different positions on claim construction in the district court and at the Board without an adequate explanation.” And the Director found that “[Terumo]’s assertion that the term ‘controller’ is not in controversy in these IPRs and so it was not required to construe the term in the Petitions is an inadequate justification for the different positions.” The Director reiterated what he has “stated repeatedly”—that “a petitioner should present a single construction and apply that construction consistently before the Board and the district court.”
The Director concluded that “[Terumo]’s conduct, which ensued following institution, demonstrates that this dispute is less about a litigation alternative, as Congress intended, and more about inconsistent positions to gain an upper hand in the overall litigation.” Because the Director “would not have instituted these IPRs in the first instance had [Terumo] engaged in this strategic litigation-style behavior before institution,” the Director granted Director Review, vacated the notices granting institution, and denied institution.
Ford Motor Co. v. AutoConnect Holdings LLC
IPR2025-01342, -01383, -01524 (PTAB May 12, 2026) (designated informative on May 13, 2026). Order by Squires.
AutoConnect filed requests for Director Review of three notices granting institution of three IPR proceedings initiated by Ford. Ford advanced a “plain and ordinary meaning” for claim terms in the petitions, but served invalidity contentions in related district court proceedings that argued all the challenged claims are indefinite. AutoConnect argued that Ford’s inconsistent positions were unexplained and contrary to Board precedent, warranting discretionary denial.
The Director held, quoting the Terumo decision (summarized above), that “it is appropriate to deny institution when a Petitioner’s conduct demonstrates that the dispute ‘is less about a litigation alternative and more about inconsistent positions to gain an upper hand in the overall litigation.’” Ford offered to stipulate to withdraw all indefiniteness arguments against the challenged patents from the related litigation if the Board agreed to maintain and not vacate institution. The Director, however, found that “[t]his stipulation, offered only after [Ford]’s actions ran afoul of [Board precedent] and only after [AutoConnect] brought those actions to the Office’s attention, is insufficient.” Thus, the Director granted Director Review, vacated the notices granting institution, and denied institution.
TikTok, Inc. v. Shopsee, Inc.
IPR2025-01485 (PTAB Jan. 16, 2026) (designated informative on May 13, 2026). Decision by Squires.
Shopsee filed a request for discretionary denial of TikTok’s IPR petition. In the petition, TikTok stated that “no express constructions are required to find the [challenged] claims invalid.” In a co-pending district court case, however, TikTok had argued that certain claim terms are indefinite.
Shopsee urged discretionary denial of the IPR petition, arguing that TikTok presented inconsistent claim construction positions in the district court and before the Board without explaining why different positions were warranted. In response, TikTok offered to stipulate that it will not pursue the indefiniteness arguments if the IPR proceeding is institution.
The Director reiterated that “when a petitioner advances different positions before the Board and a district court, that petitioner is required to explain why those different positions are warranted.” Here, TikTok did not do so. And the Director stated that TikTok’s proposed stipulation “is not in keeping with our precedent.” In particular, unlike other stipulations the Board entertains, TikTok’s proposed stipulation did not “increase[] efficiency by reducing duplication between the district court and the Board,” and did not “minimize[] the potential for inconsistent outcomes in the two proceedings.” Thus, the Director denied institution of the IPR.