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.
The Nielsen Co. (US), LLC v. TVision Insights, Inc.
No. 2025-1371 (Fed. Cir. (PTAB) Aug. 14, 2026). Opinion by Dyk, joined by Reyna and Bissoon (sitting by designation).
TVision Insights filed an IPR petition challenging a patent owned by Nielsen directed to methods and devices for measuring and identifying an audience of a media presentation device such as a television. The Patent Trial and Appeal Board instituted review and found all challenged claims unpatentable as obvious in view of two prior-art combinations, both of which involved the “Tian” reference.
TVision’s petition asserted that Tian is in the same field of endeavor as the challenged patent. In response, Nielsen disputed that Tian was analogous art, arguing that Tian was neither in the same field of endeavor nor reasonably pertinent to the challenged patent. The Board’s final written decision concluded that Tian was reasonably pertinent analogous art.
Nielsen appealed, raising several challenges. To begin, Nielsen contended that the Board violated the Administrative Procedure Act (APA) in concluding that Tian was reasonably pertinent because the petition argued only that Tian was in the same field of endeavor as the challenged patent, not that Tian’s teachings were reasonably pertinent. The Federal Circuit saw no error and no APA violation for three independent reasons.
First, the Federal Circuit explained that “while the same-field and reasonably pertinent theories are separate tests,” it has “cautioned against an unduly rigid view of the analogous art framework and explained that the evidence and analysis relating to the field of endeavor and reasonably pertinent prongs may overlap.” “There is also no requirement for a petitioner’s analogous-art theory to be made expressly; such a theory may be implicit in the petition.”
Second, the Federal Circuit ruled that Nielsen “was not deprived of the opportunity to address reasonable pertinence” and had responded to TVision’s petition “by addressing both the field-of-endeavor and reasonably pertinent prongs.”
Third, the court noted that “the judicial review provision of the APA includes a harmless error rule,” which applied here because Nielsen conceded it identified no evidence or arguments that it was deprived of the opportunity to present. Thus, the Federal Circuit held that the Board did not violate the APA.
The Federal Circuit next addressed the merits of the Board’s conclusion that Tian was reasonably pertinent analogous art as well as the Board’s findings of obviousness based on the grounds of unpatentability involving Tian. For both, the Federal Circuit determined that substantial evidence supported the Board’s findings. Thus, the Federal Circuit affirmed the findings of unpatentability.
Dental Monitoring SAS v. Align Technology, Inc.
No. 2025-1752 (Fed. Cir. (PTAB) Aug. 10, 2026). Opinion by Lourie, joined by Schall and Taranto.
Dental Monitoring owns a patent directed to a method for acquiring and analyzing an image of a dental arch of a patient using a deep learning device. Align filed an IPR petition challenging the claims of the patent.
The Patent Trial and Appeal Board determined that the challenged claims were unpatentable as obvious over the combination of three prior art references, including the “Carrier” reference. As part of its analysis, the Board found that the effective filing date of the challenged patent fell between the filing date of Carrier’s provisional application and the filing date of Carrier’s non-provisional application. Thus, whether Carrier qualified as prior art depended on whether it was entitled to the filing date of its provisional application. The Board found that Carrier qualified as prior art because Carrier’s provisional application described the subject matter on which the petition relied. Dental Monitoring appealed.
The Federal Circuit vacated the Board’s decision and remanded. The court explained that the central dispute on appeal centered on whether Carrier is prior art under 35 U.S.C. § 102(d)(2). Specifically, the parties disputed 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, or whether Carrier needed only to comply with certain “ministerial” requirements.
The Federal Circuit analyzed the statutory framework for § 102(d)(2) and then turned to whether Carrier satisfied the statutory requirements. The court determined that “the plain language of §§ 102(d)(2) and 119(e)(1) resolves the parties’ dispute by conditioning entitlement to an earlier prior art date on compliance with § 112(a).” The court ruled that § 102(d) “incorporates that substantive requirement.”
The Federal Circuit also ruled that its reading “is further supported by Congress’s use of the phase ‘entitled to claim a right of priority’ in § 102(d)(2).” That language, the Federal Circuit explained, “naturally refers to substantive entitlement under § 119, not merely the procedural act of claiming priority.” Therefore, “an applicant becomes ‘entitled to claim priority’ only by satisfying the statutory prerequisites, including § 112’s written description requirement.”
The Federal Circuit thus vacated the Board’s decision. The Federal Circuit also decided to remand rather than reverse because the Board had not determined “whether the Carrier provisional provides sufficient written description support for Carrier.” The Federal Circuit determined that “the Board must make such factual findings, and thus remand is the most appropriate route.”