Opinions — Friday, January 23, 2026

Guardant Health, Inc. v. University of Washington concerns the Federal Circuit's reversal of a PTAB final written decision that found claims 1–30 of U.S. Patent No. 10,760,127 not unpatentable under § 103. The patent relates to duplex consensus sequencing methods for reducing error rates in massively parallel DNA sequencing. The central issue on appeal was whether the Board erred in requiring Guardant to prove a motivation to combine and reasonable expectation of success for performing amplification followed by sequencing when a single prior art reference, Travers '075, expressly disclosed both steps in sequence in a single embodiment (paragraph 122).

The court held that the Board erred by imposing a motivation-to-combine requirement where the disputed claim elements—amplification and sequencing—were disclosed together in the proper sequence within a single embodiment of a single reference. Relying on General Electric Co. v. Raytheon Technologies Corp., the court reasoned that requiring a motivation to combine elements already present together in a reference "unduly dissects prior art references into collections of individual elements" and forces petitioners to "re-do the work already done in the prior art reference." The court rejected the patent owner's argument that Guardant had relied on modifying multiple references, finding instead that the petition's primary theory rested on paragraph 122 of Travers '075 alone, despite the petition's lack of clarity in citing additional materials.

The Federal Circuit reversed the district court's denial of JMOL on obviousness, holding that claims 26 and 27 of Orange Electronic's U.S. Patent No. 8,031,064—directed to a tire pressure detection system with an identification-rewritable detector—were invalid as obvious over the combination of Nihei and Nantz. A jury had found the claims nonobvious and infringed, but the district court granted post-trial JMOL of noninfringement; Orange appealed the noninfringement ruling while Autel cross-appealed the denial of JMOL on both obviousness and § 101 eligibility.

The court's analysis turned on claim construction of the "portable setting apparatus" limitation and whether substantial evidence supported the jury's nonobviousness finding. The Federal Circuit determined that the only record evidence identified the setting apparatus in Nihei as both the setting device and the PC together, not the setting device alone, and that this combination was "portable relative to the vehicle" as the claims required—rejecting Orange's argument that portability required a handheld device. The court systematically addressed and rejected Orange's remaining arguments (lack of manual input, requirement to update vehicle computer, RF signal transmission, use of old identification), finding each either unsupported by claim language or contradicted by undisputed expert testimony, and declined to consider Orange's undeveloped secondary considerations and motivation-to-combine arguments.