Conceptual Similarity Does Not Go Arm in Arm with Substantial Similarity
In Range Of Motion Products, LLC v. Armaid Company Inc., Appeal No. 23-2427, the Federal Circuit held that functional aspects of a design must be separated out when analyzing whether an ordinary observer would find two designs similar, even if those functional aspects result in conceptual similarity.
Range of Motion (RoM) sued Armaid, alleging that Armaid’s “Armaid2” massager infringed RoM’s design patent. The district court first construed the claim to separate out functional aspects from ornamental features and found that many similarities between the devices, such as the shape of the claimed arms, were driven by functional considerations. The district court then compared the differences between the remaining ornamental aspects (including ornamental aspects of the functional features) and held that the designs were “plainly dissimilar” such that no reasonable jury could find substantial similarity. The district court accordingly granted summary judgment of non-infringement.
The Federal Circuit affirmed. The Court emphasized that design‑patent infringement requires comparing only the ornamental aspects of the claimed and accused designs, and that functional aspects must be factored out of the analysis. The panel rejected RoM’s argument that conceptual similarity alone, such as placing the two devices’ images side‑by‑side or overlaying them, could establish infringement. The Federal Circuit agreed with the district court that the shape of the arms and other shared features were functional and therefore could only be considered to the extent that they contributed to the overall ornamentation.
The Federal Circuit held that, after functional aspects of the designs were filtered out, the remaining ornamental differences made the designs plainly dissimilar to the ordinary observer. The Court also affirmed on the alternative basis that, even if the district court needed to reach a three-way analysis to compare the designs in light of prior art, no reasonable jury could find that the designs were substantially similar.
Chief Judge Moore dissented, arguing that the substantial similarity analysis should always be undertaken with no “plainly dissimilar” exception, as framing the issue in terms of differences rather than similarities fundamentally affects the analysis.
Wireless TV is So Main“stream”
In Gotv Streaming, LLC v. Netflix, Inc., Appeal No. 24-1669, the Federal Circuit held that a winning claim construction isn’t always enough to overcome § 101.
GoTV Streaming, LLC (“GoTV”) sued Netflix, Inc. (“Netflix”) for infringement of three patents directed to methods and systems for delivering and tailoring server content for streaming on wireless devices. Netflix argued that each patent was directed to ineligible subject matter under §101. The district court rejected Netflix’s § 101 challenge but held all asserted claims of one of GoTV’s patents indefinite. A jury found that Netflix infringed the two remaining patents. GoTV and Netflix filed cross appeals on indefiniteness and patent eligibility.
On appeal, the Federal Circuit first reversed the district court’s indefiniteness holding, instead adopting GoTV’s proposed construction of the claim term. The Court then turned to the two-step Alice test and held that, under step one, the claims were directed to the abstract idea of a template set of specifications that can be tailored for final production of a specified product to fit a user’s constraints. The Court likened the abstract idea in the claims to a “pattern specifying many but not all details for a dress or trousers” or a “kitchen-cabinet blueprint.” At Alice step two, the Court held that the claims lacked an inventive concept because they merely recited ordinary computers and networks collecting information to prepare a tailored image description for display on a device screen. Therefore, the Federal Circuit reversed the district court’s judgment on patentability and ruled in favor of Netflix.
Challenged Director-to-PTAB Instructions Did Not Require Notice-and-Comment Rulemaking
In Apple Inc. v. Squires, Appeal No. 24-1864, the Federal Circuit held that challenged instructions that the PTO’s Director gave to the PTAB regarding discretionary denial of inter partes review petitions are general statements of policy and thus not subject to the notice-and-comment rulemaking requirements of the Administrative Procedure Act.
Apple Inc. and four other companies (collectively, “Apple”) challenged three instructions issued by the Director of the Patent and Trademark Office (PTO) to the Patent Trial and Appeal Board (Board) based on, as relevant to this decision, the PTO’s failure to use the formal notice-and-comment rulemaking procedure. Two of the three instructions at issue were in the form of precedential Board decisions issued in the NHK and Fintiv cases. The “NHK-Fintiv instructions” identified six nonexclusive factors for the Board to evaluate when deciding whether to institute an IPR proceeding or not. The third instruction, issued by the Director in the form of a memorandum, modified the NHK-Fintiv instructions. The district court held that the challenged instructions were not required to go through the notice-and-comment rulemaking procedure. Apple appealed.
In February 2025, after the parties briefed the appeal, the Acting Director of the PTO rescinded the third set of instructions. In October 2025, the Director indicated that he, rather than the Board, would determine whether to institute IPR proceedings.
The Federal Circuit ruled that Apple’s challenge turned on whether the challenged instructions were substantive legislative rules or mere statements of general policy. The Federal Circuit explained that “legislative rules alter the landscape of individual rights and obligations, binding parties with the force and effect of law[.]” By contrast, “general statements of policy are pronouncements that do not have the force and effect of law” and are “merely statements issued by an agency to advise the public prospectively of the manner in which the agency proposes to exercise discretionary power.” The Federal Circuit concluded that the challenged instructions were mere statements of general policy, because they were not binding on the PTO and simply advised the public of the manner in which the agency proposed to exercise its discretionary power.
The Federal Circuit also explained that, while the “touchstone” of a substantive rule is that it has the force and effect of law with respect to individual rights and obligations, a non-institution decision does not affect a patent challenger’s actual legal rights or obligations. The patent challenger’s rights and obligations remain what they would have been if Congress had not enacted the IPR regime.
Thus, the Federal Circuit affirmed the district court’s judgment rejecting Apple’s challenge to the Director’s instructions.
Presented by Netflix—Grammar Police: An Exercise in Claim Construction
In Netflix, Inc. v. Divx, LLC, Appeal No. 24-1541, the Federal Circuit held that common principles of English grammar may be used to identify the presumptively correct interpretation of a disputed claim term.
Netflix, Inc. petitioned the Patent Trial and Appeal Board (Board) to institute inter partes review (IPR) of all claims of U.S. Patent No. 10,225,588 (“the ’588 patent”), a patent owned by DivX, LLC. The ’588 patent claimed systems and methods for streaming partly encrypted media content. The Board instituted the IPR and, during the proceedings, the parties disputed the construction of the following claim limitation: “locating encryption information that identifies encrypted portions of frames of video within the requested portions of the selected stream of protected video[.]” DivX argued that this limitation required “that the encryption information is located within the requested portions of the selected stream of protected video.” In contrast, Netflix argued that only the “encrypted portions of frames of video” needed to be “within the requested portions of the selected stream of protected video.” Ultimately, the Board issued a final written decision in which it adopted DivX’s proposed construction and rejected Netflix’s obviousness challenge.
On appeal, the Federal Circuit noted that both parties’ interpretations were semantically plausible but found that application of principles of English grammar “clearly favored” Netflix’s construction. Specifically, the principle that “the modifier is presumptively understood to be tied to the nearest available semantically plausible modificand” favored Netflix’s construction. Though that principle only “establishes a presumptive interpretation,” nothing in the intrinsic record indicated that that presumption had been overcome.
Thus, the Federal Circuit reversed the Board’s construction, “conclud[ing] that it is the ‘encrypted portions’ of frames and video, and not the ‘encryption information,’ that must be ‘located within the requested portions of the selected stream of protected video.” The Federal Circuit further held that the limitation at issue, so construed, was taught by the asserted prior art. Thus, the Federal Circuit vacated the Board’s decision and remanded for further proceedings.
The Credibility of Experts is in the Province of the Jury
In Willis Electric Co., Ltd. v. Polygroup Ltd. (Macao Commercial Offshore), Appeal No. 24-2118, the Federal Circuit held that neither the fact that a damages expert’s testimony could have been presented more clearly nor the fact that the methodology could be subject to reasonable disagreement is a basis to exclude that expert’s testimony.
Willis Electric Co., Ltd. (Willis) sued Polygroup Ltd. and three other entities (collectively, Polygroup) for patent infringement. The district court denied Polygroup’s Daubert motion to exclude the opinions of Willis’ damages expert. After a jury trial in which a single, dependent claim was asserted, the jury awarded Willis $42,494,772 in damages. Polygroup then moved for a new trial on damages, which the district court denied, and Polygroup appealed.
As a threshold matter, Polygroup argued that the asserted claim’s value cannot be based on any limitations it incorporated from the independent claim from which it depends, because that independent claim had previously been found to be unpatentable at the PTAB under the “broadest reasonable interpretation” claim construction standard, which the Federal Circuit had previously affirmed. The Federal Circuit rejected that argument, however, because the district court reached a different construction of the independent claim and did not find it to be unpatentable under the Phillips standard.
Turning to the heart of the appeal, Polygroup raised a bevy of challenges to Willis’s damages expert’s analysis. For example, Polygroup criticized the expert’s income-based apportionment testimony, based on her failure to tell the jury how she had filtered certain data. But, the Federal Circuit explained, the expert’s testimony was not “rendered inadmissible merely because the expert could have” testified “more precisely.” As another example, Polygroup faulted the way in which the expert had modeled profitability. That type of argument fared no better, the Federal Circuit explained, as “[r]easonable minds may disagree on whether the assumptions underlying her averaging methodology sufficiently approximate market reality, but that is a fact question for the jury, not a basis for excluding expert testimony altogether.” The Federal Circuit rejected Polygroup’s similar criticisms with respect to the expert’s market-based apportionment approach.
Finally, Polygroup argued that the expert’s Georgia-Pacific analysis was purely qualitative and, thus, could not support a reasonable royalty award. The Federal Circuit rejected that argument too, noting that “[t]he Georgia-Pacific analysis necessarily permits qualitative analysis because multiple factors” (e.g., the parties’ commercial relationship, the advantages of the patented invention over prior art, and the character of the patented embodiment) “do not lend themselves to mathematical precision, even in a hypothetical negotiation.” That criticism, the Federal Circuit explained, went to the weight, not the reliability, of the damages expert’s testimony.
Thus, the Federal Circuit affirmed the district court’s judgment denying Polygroup’s motion for a new trial on damages.
How Ignoring Disclosed Structure Can Derail a Means-Plus-Function Case
In Genuine Enabling Technology LLC v. Sony Group Corporation, Appeal No. 24-1686, the Federal Circuit affirmed summary judgment of noninfringement of means-plus-function claims where the patentee failed to justify omitting aspects of the disclosed structure in attempting to show that structure operated in substantially the same “way” as the accused products.
Genuine Enabling Technology (GET) sued Sony, alleging Sony’s PlayStation 3 and 4 consoles and controllers infringed GET’s patent relating to computer input devices that synchronize multiple input data streams. The district court construed “encoding means” in the asserted claims as a means-plus-function limitation subject to 35 U.S.C. § 112(f), and defined the corresponding structure as “the logic design at block 34 in Figure 4A [in GET’s patent] and equivalents thereof.” At the close of discovery, Sony filed a Daubert motion to exclude the opinion of GET’s expert witness that the accused Bluetooth modules were structurally equivalent to block 34 in Figure 4A of GET’s patent. The district court granted Sony’s Daubert motion because GET’s expert failed to explain why he omitted parts of block 34 in opining that GET’s patent and Sony’s accused Bluetooth modules function in substantially the same “way.” Sony later moved for summary judgment of noninfringement, which the district court granted. The district court found that the reasoning in its Daubert ruling compelled concluding that GET failed to prove the accused Bluetooth modules operate in substantially the same “way” as block 34, and thus no reasonable jury could find infringement.
The Federal Circuit affirmed. The Federal Circuit noted that GET never disputed the district court’s claim construction ruling that the structure for the claimed “encoding means” was logic block 34 in GET’s patent. The Federal Circuit emphasized that block 34 has “many different elements,” which GET and its expert ignored without explanation in arguing that block 34 and the accused modules operate in the same “way.” The court also noted that GET’s expert gave inconsistent testimony about which aspects of block 34 matter to the structural equivalence analysis. Because GET’s expert failed to explain why his analysis of the “way” block 34 works left out various elements of that feature, the Federal Circuit agreed summary judgment of noninfringement was warranted because GET did not present enough evidence for a reasonable jury to find that the accused structure and block 34 were structurally equivalent.
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