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In mCom IP, LLC v. City National Bank of Florida, the Federal Circuit reversed an award of attorneys’ fees under 35 U.S.C. § 285 against the patent owner and sanctions under 28 U.S.C. § 1927 against its counsel, holding that neither the patent owner’s decision to litigate patent claims surviving inter partes review (IPR) nor counsel’s alleged lack of diligence cleared the high bars those statutes impose. The decision captures the distinction between correctness and substantive strength in the context of § 285’s “exceptional case” standard set forth by the U.S. Supreme Court in Octane Fitness, LLC v. ICON Health & Fitness, Inc.

Background

The ʼ508 patent generally relates to a system and method for delivering a retail banking multi-channel solution that unifies interactive electronic banking touch points. In other words, the ʼ508 patent is about software that ties together all the different ways a customer interacts with their bank — branch visits, ATMs, phone, online banking, mobile apps, even kiosks — so they look and behave like one consistent experience instead of separate disconnected systems with different menus and separate logins or workflows.

In 2023, the Patent Trial and Appeal Board (PTAB) of the USPTO held that all but four claims (2, 8, 14, and 17) of mCom’s U.S. Patent No. 8,862,508 unpatentable (IPR2022-00055). After the PTAB’s ruling, mCom brought an action against City National alleging infringement of the four remaining claims. At the same time, City National and mCom were debating City National’s claim that it was licensed to practice the ʼ508 patent under an mCom agreement with NCR Corporation. The district court struck mCom’s first complaint but allowed mCom to amend. The district court then dismissed mCom’s amended complaint with prejudice finding that each of the four asserted claims were invalid for failing to add any substance or non-obvious content to the claims held unpatentable in the IPR. The court also noted that infringement had not been adequately pleaded because mCom’s “claim chart is difficult (if not impossible) to parse,” and mCom otherwise offered only “bare assertions . . . that the screenshots in the claim chart ‘literally specify the claimed functions.’”

Attorneys’ fees and costs were subsequently awarded to City National under the exceptional-case authority of 35 U.S.C. § 285 (against mCom) and the attorney-sanction authority of 28 U.S.C. § 1927 (against mCom’s counsel, Victoria Brieant).

The Federal Circuit’s Analysis

The appellate panel left undisturbed the lower court’s dismissal of the complaint with prejudice, which affirmed the finding that the asserted claims are invalid. The remaining issues on appeal were (1) whether the case was exceptional under § 285 and/or (2) litigated in bad faith under § 1927.

35 U.S.C. § 285 permits a district court, in its discretion, to award fees to the prevailing party in an “exceptional” case. As explained in Octane Fitness and as previously discussed in IP IQ posts on September 17, 2025, May 30, 2023, and May 18, 2023, the case must “stand out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” The Federal Circuit addressed each of the district court’s four grounds used to support the § 285 award.

First, the district court reasoned that mCom’s case was unusually, substantively weak because the asserted patent claims were invalid. The Federal Circuit was not persuaded, again relying on Octane Fitness, which clarified that “[I]t is the ‘substantive strength of the party’s litigating position’ that is relevant . . ., not the correctness. . . of that position.” Further, the panel noted that the standard of a district court challenge has a higher burden of persuasion compared to an IPR, so mCom could reasonably have believed that the district court could not simply take the IPR result for the other claims as a starting point (via issue preclusion) and address only patentable distinctness — because district-court obviousness faces a higher burden. Therefore, there was no warrant for a determination that the case was unreasonably weak or unreasonably maintained.

Second, the district court treated the strike of mCom’s first complaint and the dismissal of its amended complaint as evidence of an exceptionally weak or unreasonably litigated case. The appellate panel again disagreed, finding these procedural events neither legally sufficient on their own nor responsive to whether mCom’s allegations themselves were exceptionally weak.

Third, the district court faulted mCom for failing to investigate “whether a license . . . would cover the purported infringing activity,” “even after being put on actual notice” of such a license and treated that lack of diligence as evidence of an unreasonable suit. The appellate panel disagreed, explaining that, absent a finding that a license or related agreement actually existed, mCom’s decision not to consider a license before initiating litigation could not support a § 285 award.

Fourth, the district court inferred from mCom’s history of filing many patent suits without taking any to trial an improper goal of “quickly settling . . . for nuisance value.” The appellate panel rejected this ground as unsupported by the record because there was no showing of the values of the settlements or even which involved the ’508 patent.

With respect to the § 1927 sanction, under Eleventh Circuit law, imposing liability for excess costs requires that the attorney have engaged in “egregious” and “objectively reckless” conduct, that is, behavior “tantamount to bad faith.” To meet this standard, the attorney must have knowingly or recklessly pursued a frivolous claim or needlessly obstructed the litigation of a non-frivolous claim. The district court made no express determination that mCom’s case was frivolous, and the appellate panel found no basis for such a determination on the record. Instead, the district court had faulted Ms. Brieant for insufficient diligence in investigating the case and the material produced during discovery. The Federal Circuit, however, held that the lack of diligence does not rise to the level of needless obstruction of a non-frivolous suit.

Key Takeaways

  • An IPR ruling is not always the end of the story. Losing claims at the USPTO does not foreclose a patent owner from litigating the surviving claims in district court, and asserting them is not, without more, “exceptional” under § 285.
  • An “exceptional” case must actually be exceptional. Under Octane Fitness, what matters is the substantive strength of the litigating position, not its ultimate correctness, and a string of procedural setbacks is not a substitute for that showing. In other words, the movant must articulate why the patentee’s position was unusually weak, not merely wrong.
  • A lack of diligence alone is not sanctionable. § 1927 sanctions under Eleventh Circuit law requires conduct “tantamount to bad faith.” Absent a finding of frivolousness or needless obstruction, an insufficiently diligent investigation does not meet that bar.
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Last week in Actelion Pharmaceuticals Ltd. v. Mylan Pharmaceuticals Inc., the Federal Circuit delivered generic drug maker Mylan Pharmaceuticals Inc. with a notable victory when it affirmed the district court’s judgment that it does not infringe Actelion Pharmaceuticals Ltd.’s patents covering the active ingredient in the pulmonary arterial hypertension drug Veletri®. In particular, the appellate panel affirmed that the claim term “pH of 13 or higher” refers to a measurement taken at standard temperature (25 ± 2°C), and that prosecution history estoppel and the disclosure-dedication rule independently bar Actelion from pursuing infringement under the doctrine of equivalents.

Background

Actelion owns U.S. Patent Nos. 8,318,802 and 8,598,227 (the ‘802 and ‘227 patents) — both entitled “Epoprostenol Formulation and Method of Making Thereof.” While epoprostenol is a vasodilator and antiplatelet agent used to treat cardiovascular disease, it is notoriously unstable in water, degrading rapidly in acidic conditions. The Actelion patents describe lyophilized (freeze-dried) pharmaceutical compositions of epoprostenol that are purportedly more stable and more convenient than prior hypertension drugs, which require a special basic diluent and refrigeration.

According to the Actelion patents, the key to the invention is manufacturing the epoprostenol composition from a highly basic “bulk solution” — one with a pH of 13 or higher. Once freeze-dried and later reconstituted, the resulting compositions remain stable even with standard intravenous fluids at room temperature. Claim 1 of the ʼ802 patent is representative:

A lyophilized pharmaceutical composition comprising:

(a) a unit dose of 0.5 mg or 1.5 mg of epoprostenol or a salt thereof;

(b) arginine; and

(c) sodium hydroxide,

wherein said lyophilized pharmaceutical composition is (i) formed from a bulk solution having a pH of 13 or higher and (ii) capable of being reconstituted for intravenous administration with an intravenous fluid.

When Mylan filed an Abbreviated New Drug Application (ANDA) seeking FDA approval to market a generic version of Veletri®, Actelion sued Mylan for patent infringement under 35 U.S.C. § 271(e)(2). Mylan’s position was straightforward: Its generic product was manufactured from a bulk solution with a pH well below the claimed threshold when measured at 25 ± 2°C — the standard temperature used throughout the pharmaceutical industry. Actelion countered that pH should be assessed at the solution’s actual (refrigerated) operating temperature, at which Mylan’s bulk solution would register above pH 13.

The district court had previously construed “pH of 13 or higher” to mean “pH of 12.98 or higher,” following a prior Federal Circuit remand requiring consideration of extrinsic evidence. That construction — unchallenged on this appeal — meant the sole issue at the bench trial was whether Mylan’s bulk solution, as used in manufacturing, had a pH meeting the claims. The district court found no literal infringement and no infringement by equivalents, entering final judgment for Mylan in March 2024.

The Appeal

On appeal, Actelion argued that the district court erred by construing “pH of 13 or higher” as a standard-temperature measurement. Actelion’s theory rested on the argument that “pH” has its ordinary meaning — the hydrogen-ion concentration of a solution as it exists — and that the claim language itself did not specify any temperature for the measurement.

The Federal Circuit disagreed and affirmed, finding the district court made no reversible error. The court’s analysis examined both intrinsic and extrinsic evidence. On the intrinsic side, the specification of the ʼ802 patent never explicitly states the conditions for its pH measurements, but it does define an “alkaline environment” as one with “pH > 7” — a definition that is accurate only at standard temperature. The court found this implicit assumption was consistent in the experimental tables and pH comparisons in the specification. Both parties’ experts agreed that the vast majority of pH measurements described in the specification reflected standard-temperature values.

On the extrinsic side, the court consulted the United States Pharmacopeia (USP) — an influential and widely followed collection of pharmaceutical industry standards — which both parties acknowledged prescribes that, “unless otherwise specified,” pH measurements are taken at 25 ± 2°C. In addition, general chemistry textbooks further supported the understanding that pH values, when generally described, assume standard ambient temperature and pressure. Because there was no evidence that the Actelion patents specified otherwise, the standard-temperature construction was not in error, and Mylan’s ANDA product — with a pH well below the claimed threshold at that temperature — did not literally infringe.

Even setting aside literal infringement, the Federal Circuit independently affirmed two separate bars to Actelion’s doctrine of equivalents (DOE) theory. First, prosecution history estoppel applied here. During prosecution of the ʼ802 patent, Actelion amended the pH limitation from “a pH of greater than 12” to “a pH of 13 or higher” in response to an examiner’s obviousness rejection. The examiner had noted that unexpected results had not been demonstrated for bulk solutions with a pH of 12 or greater, but indicated the claims would be allowable if limited to pH 13 or higher, where such results had been shown. Under Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., this narrowing amendment creates a presumptive surrender of the territory between the original and amended claim scope.

Actelion argued that the tangentiality exception applied — i.e., that the amendment was made for reasons unrelated to the specific equivalents it sought to capture. The Federal Circuit rejected this argument, finding that pH 13 was the precise threshold the examiner identified as demonstrating unexpected results necessary for nonobviousness. The discernible objective reason for the amendment was to narrow the claims to pH 13 or higher, which is directly related to whether a bulk solution with a sub-13 pH (measured at standard temperature) could be equivalent. Actelion was therefore estopped from asserting the doctrine of equivalents to capture pH lower than pH 13.

– The Tangentiality Exception –
when the reason for the original narrowing amendment is only tangentially related to the newly alleged equivalent

Second, the disclosure-dedication rule independently barred Actelion’s equivalents theory. The specification of the ʼ802 patent explicitly disclosed pH ranges for bulk solutions, including values below 13 — specifically pH 12–13, 12.5–13, and greater than 12 — as preferred alternatives, but Actelion did not claim them. The Federal Circuit found these disclosures were sufficiently specific to identify sub-13 pH ranges as alternatives to the “pH of 13 or higher” limitation, and affirmed the bar under the disclosure-dedication rule as well.

– The Disclosure-Dedication Rule –
when a patentee discloses but declines to claim subject matter, that subject matter is dedicated to the public and cannot be recaptured as an equivalent

Takeaways

The Federal Circuit’s decision in Actelion v. Mylan offers some important takeaways about claim construction and the limits of the doctrine of equivalents:

  • Industry Standards Shape Claim Meaning – Where a claim term has a well-established meaning within an industry standard (here, the USP’s default standard-temperature pH measurement), courts will apply that meaning unless the patent expressly specifies otherwise. Patentees who rely on non-standard conditions should make those conditions explicit in the claim language and specification.
  • Specification Consistency Matters – Even without an explicit definition, consistent use of a term in a particular sense in the specification can establish its meaning. The court’s reliance on the  implicit standard-temperature framework in the specification — embedded in dozens of experimental comparisons — underscores the importance of internal consistency.
  • Amendment Scope Carries Real Consequences – Narrowing amendments made to overcome obviousness rejections will be construed broadly in their surrender of equivalent territory. The tangentiality exception is a narrow escape hatch, and patentees should assume it will not be available when the amendment directly targets the alleged equivalents.
  • Disclose Only What You Claim – When a specification identifies specific alternatives to a claimed limitation (such as pH ranges below the claimed threshold), those alternatives cannot be recaptured through the doctrine of equivalents, regardless of whether the patentee intended to claim them.

For Actelion, the Federal Circuit’s affirmance means Mylan keeps the door open to bringing a competing generic epoprostenol product to market.

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Earlier this week in Bissell, Inc. v. International Trade Commission, the Federal Circuit affirmed the ITC’s determination that Tineco’s original wet/dry surface cleaning devices infringed Bissell’s patents and were properly subject to a limited exclusion order. But Tineco managed to stay one step ahead of the ban by redesigning its products after the investigation began, and the Federal Circuit confirmed that those redesigned products are in the clear. In doing so, the decision addresses several issues of practical significance: the boundaries of claim language in the context of software-implemented features, the scope of expert reliance on undisclosed source code, and the standards for challenging fact findings as legal errors on appeal.

Background

Bissell Inc. owns U.S. Patent Nos. 11,076,735 and 11,071,428, which share a specification and relate to wet/dry floor cleaning systems that feature an automated self-cleaning mode. The key innovation at issue in the Bissell patents is the relationship between the self-cleaning cycle and the battery charging circuit of the device. The specification explains that disabling the battery charging circuit during the self-cleaning mode is “beneficial because if the battery charging circuit [] is not disabled and power not supplied by the battery [] during the self-cleaning mode, the capacity of the wall charger [] can be exceeded.” Claim 1 of the ’735 patent captures this concept directly, requiring that “the battery charging circuit is disabled by the actuation of the self-cleaning mode input control and remains disabled during the unattended automatic cleanout cycle.” During the dispute, the parties referred to the italicized portion as the “disabled battery limitation.”

Bissell filed a Section 337 complaint at the ITC alleging that Tineco’s Floor One S3 and Floor One S5 Pro products infringed claims 1, 13, and 15 of the ’735 patent and claim 1 of the ’428 patent. After the investigation was instituted, Tineco introduced redesigned versions of the accused products with altered source code. Following an evidentiary hearing, the Administrative Law Judge (ALJ) issued an Initial Determination finding that Tineco’s original products infringed the asserted claims but that the redesigned products did not — because the redesigned products’ battery charging circuit did not meet the disabled battery limitation required by the claims. In particular, timing diagrams showed that Tineco’s redesigned products charge twice during the 120-second self-cleaning period. The Commission adopted the ALJ’s findings and entered a limited exclusion order covering only the original accused products.

Bissell’s Challenge for the Redesigned Products

Bissell appealed the finding that Tineco’s redesigned products do not infringe the disabled battery limitation, both literally and under the doctrine of equivalents. In both instances, Bissell tried to reframe fact findings as legal errors — a strategy the Federal Circuit rejected.

Bissell first argued that the ALJ had implicitly construed the disabled battery limitation for the first time in the Initial Determination and that this construction was erroneous. The Federal Circuit was not persuaded. Reviewing the Initial Determination, the appellate panel found that the ALJ simply applied the plain and ordinary meaning of the claim language, made credibility determinations regarding Bissell’s expert (finding his testimony neither “credible nor persuasive”), and concluded that the redesigned products do not complete a cleanout cycle during which the battery charging circuit remains off.

The panel distinguished this case from its 2024 decision in Google LLC v. EcoFactor, Inc., 92 F.4th 1049 (Fed. Cir. 2024), where the Federal Circuit had found that the tribunal “established the scope of [a] limitation” when “there [was] nothing on the face of the claim to discern the scope and boundaries” imposed by the tribunal. Here, the panel explained that no such construction occurred; rather, the ALJ simply applied what the claim language plainly says. Because Bissell conceded at oral argument that it was only challenging literal infringement as a matter of claim construction — and did not separately argue that the Commission’s fact findings lacked substantial evidence — the Federal Circuit found no basis to disturb the no-infringement finding.

Bissell’s doctrine of equivalents argument fared no better. Bissell contended that the ALJ relied on the legal doctrine of claim vitiation rather than applying the insubstantial differences test under Warner-Jenkinson. The Federal Circuit rejected this framing. The ALJ found Bissell’s expert unpersuasive in opining “that a battery circuit that does the opposite [of what the claim requires] (i.e., a battery circuit that charges during an automatic cleanout cycle) is insubstantially different from the claim.” While the ALJ also stated that the expert’s “opinion renders meaningless the ‘remains disabled’ requirement,” the Federal Circuit read these two observations together as a coherent factual analysis — not a legal shortcut. The panel emphasized that the ALJ’s analysis “summarized the parties’ positions, considered Bissell’s expert’s opinion, and explained that that opinion was unpersuasive” and was not “legally inadequate.”

Once again, Bissell failed to challenge the underlying fact findings as lacking substantial evidence in its opening brief, which proved fatal on appeal. As the Federal Circuit noted, “[b]ecause Bissell does not dispute that the Administrative Law Judge’s fact findings are supported by substantial evidence in its opening brief . . . we affirm the Commission’s finding of no infringement under the doctrine of equivalents.”

The Cross-Appeal: Tineco’s Three-Pronged Challenge

Tineco cross-appealed three issues: (1) whether Bissell’s domestic industry products satisfy the disabled battery limitation; (2) whether all of Tineco’s accused products meet the brushroll limitation; and (3) whether all of Tineco’s accused products satisfy the suction nozzle limitation.  The Federal Circuit affirmed all three.

Tineco’s most interesting argument on cross-appeal was procedural. Tineco contended that Bissell’s expert could not rely on source code that was produced during discovery but never introduced as an exhibit at the evidentiary hearing to support his opinion that Bissell’s domestic industry products satisfy the disabled battery limitation. The Federal Circuit disagreed, relying on Federal Rule of Evidence 703, which permits experts to base opinions on facts or data they were made aware of — even if those facts or data are not themselves admitted into evidence — as long as experts in the field would reasonably rely on such materials. The court found all the relevant factors satisfied: (1) the source code was produced in discovery; (2) Bissell’s expert reviewed it and relied on it to conclude that Bissell’s domestic industry products satisfied the disabled battery limitation; (3) experts in this field would reasonably rely on source code to understand the operation of the domestic industry products; and (4) Tineco never provided expert opinions or theories contrary to Bissell’s expert’s opinions on the issue. In fact, Tineco never challenged this limitation in its prehearing brief and did not cross-examine Bissell’s expert on the issue at the hearing.

The court also pointed to a corroborating internal Bissell document in the record stating that “[c]harging starts [in Bissell’s product] once the machine is placed onto the plugged-in dock. Charging stops once the Clean Out Cycle runs, then resumes once the cycle completes” — consistent with the disabled battery limitation. Together, Bissell’s expert’s testimony and this corroborating document constituted substantial evidence of technical domestic industry.

Tineco’s challenges to the brushroll and suction nozzle limitations were more straightforward, and both failed under the substantial evidence standard. On the brushroll limitation — requiring “a brushroll within the recovery pathway of the recovery system” — the ALJ found the limitation met under both parties’ competing interpretations of “recovery pathway.” Even under Tineco’s narrower view, the ALJ relied on Tineco’s own expert testimony and demonstratives. Specifically, Tineco’s expert conceded that a brushroll at least 50% inside the recovery pathway satisfies the “within” requirement — and Tineco’s own demonstrative showed “no material difference[] . . . between a brushroll that is 50% ‘inside of’ the recovery pathway and the brushrolls of the accused products.” Under the substantial evidence standard, which merely asks whether “a reasonable mind might accept a particular evidentiary record as adequate to support” a fact finding, the Federal Circuit declined to second-guess the ALJ’s reasonable inference from evidence that Tineco itself put before the tribunal.

On the suction nozzle limitation — requiring that the suction nozzle “is configured to extract fluid and debris from the brushroll” — the ALJ relied on Tineco’s own expert, who conceded that the suction nozzle draws fluid and debris off the metal blade and off the floor. From that concession, the ALJ reasonably inferred that “it was more probable than not that the suction nozzle could also suction fluid and debris off the brushroll, which is between the suction nozzle and the floor.” The ALJ also relied on an experiment performed by Bissell’s expert demonstrating that the suction nozzle, when the metal blade was removed, was powerful enough to extract fluid and debris directly from the brushroll. The Federal Circuit concluded that the ALJ’s finding “was not based on mere speculation but rather on substantial evidence.”

The Takeaways

  • Design-arounds work — if they are genuinely different. Tineco escaped the exclusion order by altering its source code so that the battery charging circuit re-enabled twice during the self-cleaning cycle. That change, while seemingly minor, was enough to take the redesigned products outside the literal scope of the claims. The message for respondents facing ITC investigations is that targeted, well-documented redesigns can be an effective tool for limiting exposure under an exclusion order, provided the redesign addresses the specific claim limitation at issue.
  • Framing a factual dispute as a legal error will not unlock de novo review. Both of Bissell’s appeals — on literal infringement and the doctrine of equivalents — were undercut by the same strategic misstep: Bissell challenged the Commission’s findings as matters of claim construction and claim vitiation rather than engaging directly with the factual record. A party seeking to overturn an infringement (or non-infringement) finding must engage with the substantial evidence standard, or risk having the challenge dismissed as a repackaged legal argument.
  • Source code does not need to be formally introduced as an exhibit for an expert to rely on it. The appellate panel’s application of Federal Rule of Evidence 703 confirms that experts in patent cases may rely on source code produced in discovery to form opinions, even if the code is not formally admitted into evidence, as long as practitioners in the field would reasonably do so. That said, formal admission remains the safer practice — both to preclude challenges like Tineco’s and to give the factfinder direct access to the supporting materials, especially when source code is central to proving infringement or domestic industry.
  • Expert concessions are fair game. In both the brushroll and suction nozzle analyses, the ALJ and the Federal Circuit relied heavily on testimony and demonstratives from Tineco’s own expert to support findings against Tineco. Litigants preparing expert witnesses should carefully review any concessions that could be weaponized by opposing counsel, as those concessions can — and in this case did — provide substantial evidence for the very findings a party is trying to defeat.
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In a recent precedential decision from the Federal Circuit, the appellate court explained that words of approximation like “about” are not inherently definite or indefinite — but when a patentee fails to provide sufficient guidance as to the meaning of such terms, it can be fatal to the claims. More specifically, in Enviro Tech Chemical Services, Inc. v. Safe Foods Corp., the court affirmed the lower court’s determination that all asserted claims of U.S. Patent No. 10,912,321 were invalid as indefinite under 35 U.S.C. § 112(b) because the term “about” failed to inform skilled artisans about the scope of the invention with reasonable certainty.

Background

Enviro Tech’s ’321 patent is directed to methods for treating poultry during processing to increase the weight of the poultry using peracetic acid. Representative claim 1 recites, among other things, a step of altering the pH of the peracetic acid-containing water “to a pH of about 7.6 to about 10 by adding an alkaline source.”

When Safe Foods was sued by Enviro Tech in U.S. District Court for the Eastern District of Arkansas for allegedly infringing the ’321 patent, it argued during claim construction that the term “about” was indefinite. The district court agreed, determining that both “about” and “an antimicrobial amount” were indefinite, and entered judgment that the asserted claims were invalid.

The Federal Circuit’s Analysis

In an opinion authored by Judge Alan Lourie, the Federal Circuit reiterated that terms of degree like “about” and “approximately” are not inherently definite or indefinite. However, when such words of approximation are used, the parameter’s range must be “reasonably certain based on the technological facts of the particular case.” The appellate panel systematically examined the intrinsic evidence — the claims, specification, and prosecution history — and found that none provided adequate guidance as to the scope of the term.

Starting with the claim language, the panel noted that, while the claims recite a “pH of about 7.6 to about 10,” they provide no guidance on how much below 7.6 or above 10 the pH could deviate while still meeting the claim limitation. The parties agreed that “about” means “approximately,” but the court observed that “approximately” provides no more clarity than “about” itself.

Turning to the specification, the court found it equally unhelpful. The specification recited numerous experiments where Enviro Tech would set a target pH, measure the actual pH, and proceed based on the difference. In a majority of experiments, Enviro Tech proceeded only when the difference was less than or equal to 0.3 of the target pH. However, there were notable exceptions. In one particularly informative experiment conducted at a major U.S. poultry processing plant with 5.8 million chickens, Enviro Tech proceeded with deviations between 0.35 and 0.5 of the target pH. The court concluded that this conflicting guidance “does not allow a skilled artisan to determine the scope of ‘about’ with reasonable certainty.”

The prosecution history also failed to clarify the scope of the term. In fact, the court found that Enviro Tech’s treatment of “about” during prosecution was inconsistent. In one office action response, Enviro Tech argued that “a peracetic acid solution at the lower end of the claimed range, pH 7.6” would not have been obvious over the prior art — notably omitting the term “about.” Yet, when discussing another claim in the same response, Enviro Tech included “about” in its arguments about pH values. Enviro Tech did not explain what “about” means at any point during prosecution.

Enviro Tech attempted to argue that its amendment of the lower boundary from “about 7.3” to “about 7.6” during prosecution demonstrated that “about” should be construed to mean less than or equal to 0.3 pH. The Federal Circuit was not persuaded and noted that Enviro Tech did not cite any remarks made to or by the examiner that would define the term and never offered any argument indicating what “about” means. The panel also observed that the prior art disclosed a pH as close as 7.0, which necessitated the amendment to the claims. The court noted that the prior art is “almost ‘about’ a pH of 7.6,” highlighting the imprecision of the term.

Takeaway

This decision serves as an important reminder that words of approximation in patent claims are not a free pass to avoid strict numerical boundaries. While the Federal Circuit has long recognized that terms like “about” and “approximately” may be appropriately used, patentees bear the burden of ensuring that the intrinsic evidence — particularly the specification and prosecution history — provides skilled artisans with reasonable certainty as to the scope of such terms. When the specification provides conflicting examples of permissible deviations, and the prosecution history is inconsistent in its treatment of the approximation term, the claims will likely fall as indefinite.

In short, if a patent relies on terms like “about” to define a claim boundary, the specification should provide clear and consistent guidance as to what deviations are acceptable — ideally with explicit statements defining the term.

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A recent precedential Federal Circuit decision further clarifies the limited scope of judicial review over PTAB institution-related rulings, holding that refusal by the Patent Trial and Appeal Board to resolve a disputed real-party-in-interest issue under 35 U.S.C. § 312(a)(2) is unreviewable on appeal. The April 29, 2026, decision in Federal Express Corporation v. Qualcomm Incorporated, No. 24-1236, provides important considerations for both petitioners and patent owners on institution-stage challenges and what remains open on appeal.   

Background

The case arises from inter partes review (IPR) petitions filed by Qualcomm Incorporated challenging four of Federal Express Corporation’s patents, including U.S. Patent No. 8,766,797 (the ’797 patent) related to systems and methods for accessing sensor-derived shipment information.

In February 2021, FedEx sued Roambee Corporation (since rebranded as Decklar) in the District of Delaware, asserting six FedEx patents, including the ’797 patent. Service of the complaint started Roambee’s one-year window under 35 U.S.C. § 315(b) to file its own IPR. On the very last day of that window, Qualcomm — a non-party to the Delaware litigation — filed IPR petitions targeting four of the six asserted patents. Qualcomm identified the Roambee litigation as a related matter but did not list Roambee as a real party in interest.

FedEx opposed institution under § 312(a)(2), which provides that an IPR petition may be considered only if it identifies all real parties in interest. The board declined to resolve the issue. Instead, the board held that it need not determine whether an unnamed party is a real party in interest where doing so is unnecessary to resolve the proceeding. The board instituted IPR, denied a later motion to terminate, and issued a final written decision finding all challenged claims unpatentable. FedEx appealed.

The Primary Issue on Appeal

Under 35 U.S.C. § 314(a), the director (or the board exercising delegated authority) decides whether to institute the requested inter partes review, and under 35 U.S.C. § 314(d), institution decisions are final and generally unreviewable. The Supreme Court held in Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261 (2016), that § 314(d) bars review of matters “closely tied to the application and interpretation of statutes related to” the institution decision. Challenges aimed at whether the agency properly instituted review fall squarely within that bar. The Federal Circuit extended the same framework to § 312(a)(2) real-party-in-interest determinations in ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020).

The Supreme Court has carved out a narrow exception where the agency acts outside its statutory authority after institution. In SAS Institute, Inc. v. Iancu, 584 U.S. 357 (2018), the petitioner did not challenge whether review should have been instituted, but rather how the board conducted the review after institution.

The question for the Federal Circuit was therefore whether FedEx’s challenge fit within the SAS exception or, instead, was an institution challenge.

The Federal Circuit’s Analysis

The Federal Circuit concluded that FedEx’s challenges “grounded in § 312(a)(2)” were not reviewable. The court viewed the real-party-in-interest requirement of § 312(a) as a threshold condition for institution and “integral to” that decision. Because the requirement has force only at the institution stage, any defect in the board’s handling of it necessarily targets the institution decision, regardless of how the challenge is framed. FedEx’s argument was an attack on whether institution should have occurred at all, and § 314(d) forecloses that attack on appeal.

The court rejected FedEx’s effort to invoke SAS. The challenge in SAS addressed a post-institution failure to follow a clear statutory guideline — the duty to decide all challenged claims — and did not seek to undo institution. By contrast, the relief FedEx ultimately sought — vacatur of the final written decision based on a § 312(a)(2) defect — would, in substance, mean the board should not have instituted at all. Reaffirming its prior holdings in ESIP and Ethanol Boosting Systems, LLC v. Ford Motor Co., 162 F.4th 1151 (Fed. Cir. 2025), the court emphasized that allegations of acting in excess of statutory jurisdiction “closely tied to the application and interpretation of statutes related to” the agency’s decision to initiate IPR, without more, do not overcome § 314(d)’s bar.

FedEx fared better on the merits, where the Federal Circuit vacated the board’s obviousness determination as to claims 6, 17, and 28 of the ’797 patent and remanded the case.

Key Takeaways

This decision reinforces several important principles for IPR practice:

  • § 312(a)(2) is not a procedural “gotcha.” Alleged defects in identifying real-parties-in-interest are unlikely to create appealable issues.
  • “Manner of proceeding” framing will not revive institution-tied challenges. The court rejected FedEx’s attempt to recast a § 312(a)(2) objection as a post-institution procedural error. Genuine SAS-style review remains limited to deviations from a clear statutory guideline after a valid institution.
  • Focus on the PTAB. The Federal Circuit’s ability to revisit PTAB decisions on appeal is significantly constrained, particularly for threshold and institution-stage determinations, so clients must focus on winning the fight at the PTAB level.

For practitioners, the message is consistent with the post-Cuozzo line of cases: Treat institution-stage arguments as decisive, and do not count on the Federal Circuit to revisit them later.

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In a significant decision for telecommunications patent law, a panel of the Federal Circuit issued a mixed ruling in Constellation Designs, LLC v. LG Electronics Inc, vacating a summary judgment of patent eligibility for certain claims while affirming eligibility for others, and affirming the jury’s findings of infringement and damages.  The April 28, 2026, opinion provides important guidance on how courts should apply the Alice/Mayo framework to distinguish between impermissibly abstract, result-oriented claims and patent-eligible claims directed to specific technological implementations.

The Claimed Technology

Constellation’s patents (U.S. Patent No. 8,842,761 (the ’761 patent); U.S. Patent No. 10,693,700 (the ’700 patent); U.S. Patent No. 11,019,509 (the ’509 patent); and U.S. Patent No. 11,018,922 (the ’922 patent)) relate to digital communication systems that use non-uniform “constellations” — visual representations of the relationship between digital bits and broadcast signals — to improve transmission capacity. Traditional/uniform constellations were designed with evenly spaced points to maximize the minimum distance between constellation points (dmin), on the theory that greater spacing would improve capacity at high SNRs.

The inventors of the asserted patents took a different approach. Rather than optimizing based on dmin, the inventors developed an iterative process to construct non-uniform constellations optimized for “parallel decode (PD) capacity” — a measure comparing the information entering the mapper on one side of the channel with what exits the demapper on the other.  According to the written description of the asserted patents, these capacity-optimized constellations “can achieve significantly higher performance gains” as compared to conventional constellations (achieving efficiency gains of more than 25%).

The Procedural Background

Constellation Designs sued LG Electronics for patent infringement in the Eastern District of Texas, alleging that LG willfully infringed various claims in the four asserted patents through sales of its televisions compatible with the Advanced Television Systems Committee (ATSC) 3.0 over-the-air broadcast television standard. The district court granted Constellation’s motion for summary judgment of patent eligibility, holding all asserted claims patent eligible under 35 U.S.C. § 101 as being directed to a technical solution to a technical problem — specifically, overcoming data loss in over-the-air transmission through PD-capacity-optimized constellations.

Following a jury trial, the jury found all asserted claims valid and that LG’s accused televisions infringed at least one claim of each asserted patent. The jury awarded Constellation $1,684,469 in past damages (based on a per-television royalty of $6.75) and found LG’s infringement willful. LG appealed the district court’s eligibility ruling, denial of judgment as a matter of law on non-infringement, and denial of judgment as a matter of law on no damages.

The Federal Circuit’s Analysis

The Federal Circuit, in an opinion by Judge Kara Stoll joined by Judge Alan Lourie and District Judge Paul Oetken sitting by designation, divided the asserted claims into two groups: (1) “optimization claims” from the ’761 and ’700 patents, which recite non-uniform constellations “optimized” for PD capacity; and (2) “constellation claims” from the ’509 and ’922 patents, which recite specific non-uniform constellations with defined characteristics. The panel reached meaningfully different conclusions for the two claim groups after applying the two-step Alice/Mayo framework.

The Optimization Claims: Ineligible as Result-Oriented

At Alice step one, the Federal Circuit panel found the optimization claims directed to the abstract idea of “optimizing” a constellation for PD capacity. The panel drew on the Supreme Court’s reasoning in O’Reilly v. Morse and its own precedent in ChargePoint, Inc. v. SemaConnect, Inc.  to conclude that claim 17 of the ’761 patent — representative of the optimization claims — was “an abstract, result-oriented claim directed to all ways of achieving a recited result.”

The court emphasized that the key distinguishing element of claim 17 — the “wherein” clause reciting a constellation “optimized for capacity using parallel decode capacity” — was drafted in a “result-oriented way” that covers every possible method of achieving a constellation “optimized for capacity using parallel decode capacity” without reciting how that optimization is to be achieved. While the specification described an iterative process for constructing a geometrically shaped constellation, including steps for selecting constellation size, checking feasibility, iterating to convergence, and outputting the optimized result, the § 101 inquiry focuses on the claim language itself, and the claims themselves did not incorporate those details. As the court noted, “the specification cannot be used to import details from the specification if those details are not claimed.”

At Alice step two, Constellation had argued that the claims recited an inventive concept based on the efficiency gains achieved and the inventors’ recognition that optimizing for PD capacity yields counterintuitive, improved results. The court rejected this argument, holding that Constellation’s alleged inventive concept “is the abstract idea itself,” which cannot transform claims into a patent-eligible application. The court found no additional elements — individually or as an ordered combination — that transformed the claims’ nature. As a result, the Federal Circuit vacated the lower court’s summary judgment of patent eligibility under 35 U.S.C. § 101 of the optimization claims.

The Constellation Claims: Eligible as Specific Implementations

The constellation claims fared differently. Unlike the optimization claims, the asserted claims of the ’509 and ’922 patents were directed to “specific constellations” that the inventors developed using the techniques described in the specification — including constellations with overlapping point locations and hundreds of specific non-uniform constellations identified by their precise coordinates.

Claim 21 of the ’509 patent was deemed representative of the constellation claims and “directed to solving a particular technological problem — overcoming capacity constraints to improve coding gains — using a particular technological solution — specific, non-uniform constellations with overlapping constellation point locations.” More specifically, claim 29 of the ’509 patent requires that a symbol constellation’s point locations be unequally spaced, that each constellation point carry a different label, and that at least two constellation points share the same location — a counterintuitive structural feature flowing directly from the PD-capacity optimization approach. The court held that these concrete structural limitations provide sufficient specificity to satisfy Alice step one without need to reach step two.

Other Holdings

The Federal Circuit also affirmed the district court’s denial of LG’s motions for judgment as a matter of law on non-infringement and no damages. On infringement, the court held that a patent owner may prove infringement of individual claim limitations using standards-related evidence for some claim elements while using product-specific evidence for other elements of the same claim — an approach the court found consistent with its earlier decision in Fujitsu Ltd. v. Netgear Inc. The court found substantial evidence supporting the jury’s infringement verdict, including expert testimony, source code analysis, internal LG testing documents, and the accused televisions’ compliance with the FCC-mandatory A/322 protocol of ATSC 3.0.

On damages, LG had challenged Constellation’s damages expert’s reliance on Zenith patent licenses as comparables for a built-in apportionment theory, arguing that the Zenith licenses covered different patents, technologies, and product types. The court rejected LG’s challenge and agreed with the district court that this was a Daubert admissibility challenge — not a sufficiency-of-evidence argument suitable for JMOL — and found sufficient evidentiary support for comparability based on technical and economic similarities established through multiple witnesses to support the jury’s damages verdict.

Key Takeaways

This decision reinforces several important principles for patent eligibility:

  • Result-Oriented Claiming Creates Eligibility Risk – Claims that define an invention solely by the result achieved — without reciting the specific method or structure through which that result is obtained — risk being characterized as directed to an abstract idea under Alice step one. Even where a specification describes the inventive process in concrete detail, those details must be reflected in the claims themselves to survive § 101 scrutiny.
  • Written Disclosure Cannot Save Broad Claims – Technical details in the specification will not cure eligibility defects if those details are not incorporated into the claim language itself.
  • Specificity Matters – Claims that recite specific implementations — such as particular constellation configurations — are more likely to survive eligibility challenges than claims that broadly cover all ways of achieving a result.
  • Standard-Based Infringement Proof Extends Limitation-by-Limitation – The court’s extension of Fujitsu confirms that patent owners may prove infringement of individual claim limitations through compliance with an industry standard — without being required to show that the entire claim is satisfied by the standard. This provides meaningful flexibility for patentees whose technology is incorporated into mandatory or widely adopted standards.

Moreover, novelty does not always equal eligibility. Indeed, the court rejected Constellation’s argument that evidence of novelty and non-obviousness — including unsuccessful IPR challenges — demonstrated an inventive concept, reaffirming that the eligibility inquiry is separate from the novelty and obviousness inquiries.

The case now returns to the Eastern District of Texas for further proceedings on the optimization claims.

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A pending Federal Circuit decision may force licensing counsel to rethink one of the most routine provisions in patent settlement agreements — the licensee’s denial of infringement.

Patent settlement agreements usually contain a denial of liability by the defendant/licensee, e.g., “[l]icensee denies any infringement of the asserted patents.”  For decades, this language has largely been viewed as harmless boilerplate — a standard concession to the settling defendant with no apparent downstream consequences. However, an appeal pending before the Federal Circuit suggests that this boilerplate sentence may have effects far beyond the agreement in which it appears.

The case, VDPP, LLC v. Volkswagen Group of America, Inc., No. 24‑2226, arises from VDPP’s August 2023 lawsuit in the Southern District of Texas asserting U.S. Patent No. 9,426,452 (the ’452 Patent), which is directed to a 3D display and glasses system. VDPP — a non-practicing entity (NPE) — accused Volkswagen of infringement for certain surround‑view camera systems.  Volkswagen moved to dismiss, arguing that VDPP failed to comply with the patent marking statute (35 U.S.C. § 287(a)) before the patent expired. The district court agreed with Volkswagen and dismissed the case with prejudice, denied leave to amend, and later granted Volkswagen’s motion for attorneys’ fees under 35 U.S.C. § 285 holding both VDPP and its counsel jointly and severally liable. VDPP appealed. Oral argument was held on April 9, 2026, before Chief Judge Kimberly Moore, Judge Alan Lourie, and Judge Tiffany Cunningham.

The issue on appeal, in plain terms

Under 35 U.S.C. § 287(a), a patent holder who licenses patented technology must ensure that products covered by the license are properly marked. If the patent holder — or its licensees — fail to mark, damages are limited to the period after the accused infringer receives actual notice of infringement. For an expired patent where only pre‑suit damages are available, failure to mark can eliminate any recovery entirely.

For NPEs that do not themselves manufacture products, § 287(a) often lies dormant. The obligation typically arises only once the patent holder licenses others to make products under the patent.  

The unresolved question now before the Federal Circuit is whether that marking obligation is triggered by a settlement agreement — even when the agreement contains an express denial of infringement by the licensee.

A skeptical reception at oral argument

VDPP’s position on appeal is that its prior settlement agreements with other alleged infringers were not the kind of licenses that trigger § 287(a) at all. According to VDPP, the agreements were simply litigation settlements in which the respective defendants paid to resolve disputes while expressly denying infringement. VDPP argued that the agreements did not permit the defendants “to produce a patented article for or under” the ’452 Patent and, therefore, should not be viewed as licenses in the traditional sense such that any imposed a marking obligation.

The panel appeared unpersuaded. For example, when VDPP claimed that the licensees’ denial of infringement should be dispositive, Chief Judge Moore pushed back:

Every defendant insists they don’t infringe.  And if I were to adopt a rule that says a patentee has no obligation to force marking upon a licensee if they claim they don’t infringe, then I fear we would pretty much never have marking by licensees.

What to watch for when the decision drops

The central question is whether denial-of-infringement language insulates a settlement from the marking trigger of § 287 — or whether the court will look past the label to the substance of what the agreement actually permits.  

If the court focuses on substance over form, a licensor with a portfolio of prior settlement agreements — each framed as a dispute resolution — may have unknowingly started a marking clock years ago. Subsequent defendants could point to those prior agreements and argue that the patentee and prior licensees were obligated to mark but failed to do so, cutting off all pre‑expiration damages. And if the court signals that substance controls, the choice of settlement instrument will likely matter far more than it has historically: A covenant not to sue or a bare release of past claims may be treated differently than a license, giving practitioners a structural tool to resolve disputes without inadvertently triggering obligations that could impair future enforcement.

Practical steps before the opinion issues

Counsel advising patent holders with enforcement portfolios should not wait for the decision to begin reviewing their settlement agreements. Three steps worth taking now:

  1. Audit prior settlement agreements. Review existing agreements to determine whether any were structured as outright licenses versus covenants or releases. If licenses exist, assess whether marking occurred — or realistically could have occurred — during the license period.
  2. Revisit current templates. For any active licensing negotiations, consider whether the settlement agreement being used is appropriate given the marking risk, particularly for patents approaching or past expiration.
  3. Address § 287 expressly. If a denial-of-infringement clause is non-negotiable, consider pairing it with explicit language requiring the licensee to mark any covered products — notwithstanding the denial.

The panel’s questioning at oral argument suggests an uphill battle for VDPP. But the § 287 issue presented here — whether a denial-of-infringement in a settlement agreement defeats a marking obligation that would otherwise attach — is genuinely novel. A clear ruling in either direction will be a meaningful addition to patent licensing practice. 

Stay tuned.

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Last week, the Supreme Court vacated a copyright infringement judgment against an ISP provider and remanded the case to the Fifth Circuit for reconsideration in light of the Cox Communications decision (Grande Comm’s Networks v. UMG Recordings, Inc., 2026 WL 922501, at *1 (U.S. April 6, 2026)). Specifically, the Court directed the Fifth Circuit to reconsider its prior decision upholding a contributory infringement liability verdict against ISP Grande Communications Networks.

The Fifth Circuit concluded that a Texas federal district court had correctly upheld a jury verdict finding Grande Communications Networks liable for the willful contributory copyright infringement of over 1,400 songs after being made aware that its service subscribers were peer-sharing copyrighted songs. At the trial court level, the record label plaintiffs claimed Grande Communications Networks was liable for secondary copyright infringement for failing to ban its subscribers who the labels had accused of illegally sharing copyrighted material through the software BitTorrent. On the issue of contributory copyright infringement, the three-judge panel of the Fifth Circuit determined that the district court applied the correct legal standard by determining that Grande Communications Networks could be secondarily liable for copyright infringement committed by its subscribers “if it induced, caused, or materially contributed to its subscribers’ infringing activity.”

Grande Communications Networks argued before the district court that material contribution is not a valid basis for contributory copyright liability because “the Supreme Court has recognized two — and only two — types of contributory copyright infringement: (1) where the defendant distribute[s] a product or service without any commercially significant, non-infringing use, and (2) where there is clear expression or other affirmative steps taken to foster infringement by the defendant.” The district court instructed the jury that Grande Communications Networks was contributorily liable if it induced, caused, or materially contributed to the infringing activity, and that this standard was met if Grande Communications Networks “could have taken basic measures to prevent further damages to copyrighted works, yet intentionally continued to provide access to infringing sound recordings.” In its opinion, the Fifth Circuit panel — relying in significant part on the Fourt Circuit’s decision that was reversed in the Cox Communications case — found that there was “no basis to reverse the jury’s verdict that Grande is liable for contributory infringement” because “(1) intentionally providing material contribution to infringement is a valid basis for contributory liability; (2) an ISP’s continued provision of internet services to known infringing subscribers, without taking simple measures to prevent infringement, constitutes material contribution; and (3) the evidence at trial was sufficient to show that Grande engaged in precisely that conduct[.]”

Recall that in the Supreme Court’s March 25 decision Cox Communications v. Sony Music Entertainment, which was the subject of a previous blog post, the Court held that Cox Communications, also an internet service provider, could only be found to be contributorily liable for copyright infringement if it affirmatively induced infringement by a subscriber or offered a service designed primarily for infringing uses. In Cox Communications, the Court held that an ISP cannot be held contributorily liable for copyright infringement merely because it continued providing internet service to its subscribers who had been the subject of infringement complaints, and that contributory liability requires proof that the provider actually intended its service to be used for infringement — shown either through active inducement or by offering a service with no substantial non-infringing uses. The holding in Cox Communications appears to vindicate Grande Communications Networks’ position before the trial court, as well as setting a significantly higher bar for contributory copyright infringement than the “material contribution” standard applied by the district court and Fifth Circuit.

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Cox Communications v. Sony Music Entertainment | Decided March 25, 2026

On March 25, 2026, the U.S. Supreme Court delivered a landmark decision that will reshape not only how copyright law applies to the internet for years to come, but could impact other areas of intellectual property law as well. In Cox Communications, Inc. v. Sony Music Entertainment, the Court held that internet service providers cannot be held indirectly liable for their customers’ copyright infringement simply because the ISPs knew the infringement was happening but failed to prevent it. The decision reversed and remanded a billion-dollar judgment against ISP Cox Communications and drew a more clearly defined line around secondary copyright liability.

How We Got Here

In 2018, Sony Music Entertainment and dozens of other major record labels sued Cox Communications — with six million subscribers, one of the largest broadband providers in the United States — in federal district court in Virginia. The theory of liability? Cox Communications had received thousands of infringement notices between 2013 and 2014 identifying specific subscriber accounts that had been repeatedly caught pirating the plaintiffs’ copyrighted music. Cox Communications terminated only 32 customers for copyright infringement during that period — while simultaneously terminating hundreds of thousands of subscribers for nonpayment. The labels argued that Cox Communications’ decision to keep known infringers on its network was motivated by a desire to protect subscription revenue, a combination that made Cox Communications legally responsible for their customers’ copyright-infringing misconduct.

A jury agreed with the plaintiffs, finding Cox Communications liable under two separate legal theories — contributory infringement and vicarious infringement —awarding the music labels $1 billion in statutory damages for willful copyright infringement.

On appeal, the Fourth Circuit split the baby: It threw out the vicarious liability finding but upheld the contributory infringement verdict, reasoning that knowingly supplying a service to someone you believe will use it to infringe copyrights is “exactly the sort of culpable conduct sufficient for contributory infringement.” The Fourth Circuit ordered a new trial on damages, and Cox Communications appealed. The Supreme Court granted cert in June of 2025 on the contributory infringement question.

What the Court Decided

Writing for seven justices, Justice Clarence Thomas reversed the Fourth Circuit in Cox Communications’ favor. The opinion’s core holding is seemingly and certainly consequential: “Under our precedents, a company is not liable as a copyright infringer for merely providing a service to the general public with knowledge that it will be used by some to infringe copyrights.”

Instead, to prove contributory infringement, a copyright owner must show that the provider actually intended for its service to be used for infringement — and the required intent can be established in only two ways. Either the provider affirmatively induced the infringement, or it offered a service specifically designed or tailored to facilitate the infringing activity.

The Court held that Cox Communications did neither. The Court acknowledged that Cox Communications knew infringement was occurring on its network. But general internet access, the Court noted, has numerous non-infringing, lawful uses — it is not a service designed for piracy the way that, say, certain peer-to-peer file-sharing platforms had been (more about Grokster later). And Cox Communications did not encourage its customers to download music illegally; its terms of service explicitly prohibited it. Failing to terminate known infringing accounts, the Court concluded, is not the same as intending infringement.

The opinion puts it plainly: The Fourt Circuit’s reasoning conflicted with the “Court’s repeated admonition that contributory liability cannot rest only on a provider’s knowledge of infringement and insufficient action to prevent it.”

The Court also addressed the labels’ argument that the Digital Millennium Copyright Act (DMCA) — which creates a “safe harbor” for ISPs that take steps to address repeat infringers — implies that providers who fail to meet those safe harbor requirements must therefore be liable. The Court rejected this reading, noting that the DMCA expressly states that failing to qualify for a safe harbor “shall not bear adversely upon” an infringement defense. In other words, missing the safe harbor does not automatically equal liability.

Why This Decision Is Bigger Than Music

The music industry is continuing the fight; the Recording Industry Association of America called the ruling a disappointment and urged policymakers to examine its impact. The labels argued throughout the case that Cox Communications knowingly facilitated “theft on a massive scale,” and there was trial evidence suggesting that some Cox Communications employees were reluctant to terminate infringing accounts precisely because they did not want to lose subscription revenue. However, none of that, in the Supreme Court’s view, is enough.

But the decision’s reach extends well beyond streaming services and record labels. The case attracted amicus briefs from a wide range of civil liberties and First Amendment organizations. The Fourth Circuit’s reasoning, if left standing, would have threatened to hold any general-purpose internet platform liable when users commit infringement, so long as the platform knew about it and did not act decisively enough. That standard would have hung over every social media platform, cloud storage provider, and AI company that hosts or processes user-generated content.

X’s amicus brief to the Court put it thusly: The lower court’s rule could “wreak havoc” on the technology industry and specifically on AI, noting that if content creators can sue AI platforms whenever users employ their tools to violate copyright, tech companies would have no choice but to drastically curtail their services. Given the wave of copyright litigation currently targeting AI companies, the Court’s decision to cabin contributory liability to intentional actors arrives at a particularly consequential moment.

Cox’s Potential Impact Beyond Copyright Law – Patent Law Practitioners, Pay Attention

Central to Justice Thomas’ opinion is something that patent litigators cannot/should not ignore: a deliberate, explicit alignment of contributory copyright liability with its counterparts in patent law. The Court did not stumble into patent territory by accident. It went there on purpose, and in doing so it may have set the stage for a tightening of indirect patent infringement doctrine.

To understand why Cox matters for patent law, you need to understand where copyright’s secondary liability doctrine came from in the first place: patent law. Copyright’s contributory infringement framework has no explicit statutory basis. Unlike the Patent Act — which codifies both induced infringement under 35 U.S.C. § 271(b) and contributory patent infringement under 35 U.S.C. § 271(c) — the Copyright Act says nothing about liability for facilitating another person’s copyright infringement. Courts (including the Supreme Court) have filled that gap by borrowing from patent law, citing what the Court in Cox called the “historic kinship” between the two fields of IP law.

The Court acknowledged in Cox that this kinship runs through a trio of the Court’s landmark secondary liability decisions: Kalem Co. v. Harper Brothers (1911), Sony Corp. of America v. Universal City Studios (1984), and Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd. (2005). In each of those cases, the Court looked to patent law’s standards for indirect infringement — particularly the staple article of commerce doctrine and the inducement rule — when deciding how far copyright’s secondary liability should reach. Cox is the latest branch in the copyright-patent indirect liability family tree.

1. What Cox Actually Holds — and Why It Tracks Patent Law So Closely

Justice Thomas’ majority opinion makes the patent law connection explicit and structural. After announcing the two-pathway framework for contributory copyright liability — inducement or a service tailored to infringement — the opinion states flatly: “These two forms of contributory infringement track patent law.”

The majority then walks through the patent parallels in detail. Under § 271(b), a party is liable for actively inducing patent infringement only when it expresses “an affirmative intent that the product be used to infringe.” Under § 271(c), contributory patent infringement requires that the defendant sell a product “knowing the same to be especially made or especially adapted for use in an infringement of such patent” — but the Court has long held that mere knowledge is not enough; instead, the product must lack substantial non-infringing uses. Both of those standards map directly onto the two pathways for indirect copyright infringement the Court adopted in Cox.

The opinion then drives the point home with a passage that will surely become a staple in indirect patent infringement defense briefing: “This Court has repeatedly made clear that mere knowledge that a service will be used to infringe is insufficient to establish the required intent to infringe.” While the statement was made in a copyright infringement case, because it was made by deliberate reference to patent law’s borrowed structure, how can it not also be read as an endorsement of the same principle across both fields?

2. Broader Implications for Patent Indirect Infringement Doctrine

The timing of the Cox decision is significant. Just five weeks after Cox was decided, the Supreme Court is scheduled to hear oral arguments on April 29 in Hikma Pharmaceuticals USA, Inc. v. Amarin Pharma, Inc., a pharmaceutical patent case squarely about the standard for induced infringement under § 271(b).

But the effects of Cox likely will not stop at the pharmaceutical industry.

The staple article doctrine found in § 271(c) already protects sellers of components that have substantial non-infringing uses from contributory patent infringement. Cox reinforces the same logic in the copyright context and — given the explicit cross-referencing — could be cited to cabin future expansions of either doctrine. Defendants in technology patent cases who supply general-purpose components will seemingly have a cleaner road to arguing that their products are not “especially adapted” for infringing use.

Just as the Court held in Cox that an ISP providing general internet access does not contribute to infringement simply because some users infringe, software platform companies facing patent claims over end-user conduct will argue that general-purpose platforms — those capable of substantial non-infringing uses — should be evaluated by the same demanding intent standard. The logic is seemingly the same whether the underlying IP right is copyright or patent.

The Federal Circuit Court of Appeals (which has exclusive jurisdiction over cases arising under patent law) has at times allowed induced patent infringement cases to proceed on less robust allegations of specific intent, particularly in the Hatch-Waxman context. Cox at least would seem to foreclose the proposition that knowledge of infringement plus inaction equals inducement liability, requiring instead positive conduct that promotes infringement. For instance, the Court identifies in Cox the kind of conduct that would seemingly be necessary to support a finding of inducement — “evidence of express promotion, marketing, and intent to promote” infringement — which might mitigate against findings of inducement in the patent context on a more passive standard.

Cox Communications, Inc. v. Sony Music Entertainment, No. 24-171, 607 U.S. ___ (2026). Decided March 25, 2026. Opinion by Justice Clarence Thomas, joined by Chief Justice John Roberts and Justices Samuel Alito, Elena Kagan, Neil Gorsuch, Brett Kavanaugh, and Amy Coney Barrett. Justice Sonia Sotomayor concurred in the judgment, joined by Justice Ketanji Brown Jackso

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Elon Musk’s year of controversy continues as startup Operation Bluebird attempts to take flight with its rival social media platform — “twitter.new” — by asking the U.S. Patent and Trademark Office (USPTO) to find that Musk’s X Corp. has abandoned its “Twitter” and “tweet” trademarks. X Corp. responded to this petition on December 16 by asking the District Court of Delaware to find that Operation Bluebird is actively infringing on X Corp.’s trademarks by publicly positioning itself to take over the world-famous branding. While Musk publicly remarked in 2023 that X would “bid adieu to the Twitter brand and, gradually, all the birds,” the USPTO and the U.S. District Court for the District of Delaware will soon be tasked with determining whether the marks are deemed “abandoned.”

Key Elements of Trademark Abandonment: Non-Use and Intent Not to Resume Use

The Lanham Act provides that a mark is deemed abandoned “[w]hen its use has been discontinued with intent not to resume use.” In practical terms, a party claiming abandonment must establish two elements: (1) the mark’s non-use and (2) intent not to resume use.

Courts may infer intent to use from the circumstances. Importantly, any “use” must constitute a bona fide use in commerce — that is, use made to identify the source of goods or services and not merely to reserve rights in the mark. The Lanham Act further provides that three consecutive years of non-use creates a rebuttable presumption of abandonment, shifting the burden to the trademark owner to produce evidence of continued use or intent to resume use.

Beyond statutory abandonment, trademarks may also be abandoned in other ways. For example, owners risk losing marks when they become a generic identifier of goods or services, when the associated goods or services are discontinued, or when the owner neglects to police or protect its rights.

An Owner’s Rebuttal: Proving Use or Intent to Resume Use

A trademark owner’s strongest chance of surviving an abandonment claim is evidence of the mark’s current use in commerce, which may include advertising or marketing materials, website screenshots, product packaging or labels, social media promotion tied to sales, or shipping and transaction records. Even where a mark has fallen out of active commercial use, an owner may rebut abandonment by demonstrating a documented and objective intent to resume use. Such evidence can include business plans referencing the mark, product development timelines, licensing negotiations, draft marketing materials, or internal communications discussing relaunch plans.

What Happens After Abandonment?

Once a trademark is deemed abandoned, for all practical purposes, the owner loses all rights associated with the mark. Any protection tied to prior use is extinguished, and the mark generally returns to the public domain — available for adoption and registration by others. While a former owner may attempt to revive the mark, prior registrations typically provide little advantage. Abandonment is, in most cases, permanent.

Potential Abandonment of the Iconic Blue Bird

Despite X Corp.’s successful renewal of its “Twitter” trademark in 2023, Musk and the X Corp. formally dropped the Twitter branding in July of that same year. Operation Bluebird is thus poised to argue that, as of July 2026, X Corp. has presumptively abandoned the mark due to three years of non-use.

Notably, X Corp.’s renewal filing included a screenshot of a “Twitter Ads” webpage featuring both the “Twitter” word mark and the iconic blue bird logo.

Today, however, that same webpage — ads.twitter.com — appears without either mark. While a Google search still displays the hyperlink title “Advertise on X (Twitter)” and X Corp.’s new suit indicating that users still access the platform through the domain “twitter.com,” such residual references may not qualify as bona fide trademark use. X Corp. also proffered within its new suit that they still actively defend and maintain the Twitter trademarks, but those efforts still may fall short.

Given the marks’ apparent absence from active branding, the USPTO and Delaware District Court will need to determine whether X Corp. can demonstrate a concrete and ongoing intent to resume use of the Twitter marks. Perhaps revival plans exist behind the scenes or perhaps the blue bird has truly flown the coop.

If X Corp. fails to muster up the evidence and the marks are deemed abandoned, maybe a new social media tycoon may well be born from Twitter’s discarded feathers. Until then, we can perch by our windowsills and watch how it all unfolds.