Opinions — Friday, February 20, 2026

The Federal Circuit affirmed the Board's finding that claims 1, 3, 5, 9, 12–13, and 15 of VL Collective IP's U.S. Patent No. 8,605,794—directed to synchronizing audio and visual data segments—were unpatentable as anticipated by or obvious over Sonohara. The central dispute concerned claim construction: whether "assignment rule" excluded techniques using exact timing information (as patent owner argued based on prosecution history) and whether "content-related data segments" required syntactical meaning within the respective data file, as defined in the specification. The Board rejected the proposed negative limitation on "assignment rule" for lack of clear and unmistakable disavowal, adopted the specification's definition for "content-related data segments," and found Sonohara disclosed all claim elements.

The court's analysis turned on two notable procedural and substantive points. First, applying Axonics, the court held that once the patent owner proposed a new claim construction in its response—arguing for the "syntactical meaning" requirement—the petitioner was entitled to address that construction in reply, including mapping the prior art to the newly urged limitation, even though the petition had not explicitly discussed "syntactical meaning." The court rejected patent owner's forfeiture argument regarding a different construction on appeal and found substantial evidence supported the Board's factual finding that Sonohara's originating image and sound files possessed syntactical meaning, as that meaning was imparted during the file production process that created the composite file with header and track information.

The Federal Circuit reversed the District of Delaware's grant of summary judgment of ineligibility under 35 U.S.C. § 101 in favor of defendants Sarepta Therapeutics, Inc. and Sarepta Therapeutics Three, LLC, holding that claims 1–9, 12, 15, and 18–25 of U.S. Patent No. 10,526,617—directed to cultured host cells containing recombinant nucleic acid molecules encoding AAV capsid proteins combined with heterologous non-AAV sequences—are not directed to a natural phenomenon and are patent-eligible subject matter. REGENXBIO Inc. and the Trustees of the University of Pennsylvania asserted the claims against Sarepta's SRP-9001 gene therapy product. The district court had applied the "markedly different characteristics" test from Diamond v. Chakrabarty and concluded the claims were ineligible because combining natural products in a host cell did not change the individual naturally occurring components, analogizing the case to Funk Brothers Seed Co. v. Kalo Inoculant Co. The Federal Circuit disagreed, holding that the claimed genetically engineered host cells—which are undisputedly human-made and do not exist in nature—possess markedly different characteristics from anything naturally occurring because they contain recombinant nucleic acid molecules created by chemically splicing together sequences from different organisms, distinguishing the claims from the gene isolation claims held ineligible in Association for Molecular Pathology v. Myriad Genetics, Inc.

The decision provides significant guidance on applying the natural phenomenon exception to claims involving genetically engineered biological materials, clarifying that human-made cellular constructs combining genetic sequences from different species through recombinant DNA technology satisfy Chakrabarty's "markedly different characteristics" test even when the individual component sequences may exist in nature. The court's emphasis that "recombinant nucleic acid molecules" are inherently non-natural because they involve chemically splicing together sequences from different organisms distinguishes this from mere isolation or purification of naturally occurring substances, which Myriad and ChromaDex v. Elysium Health held insufficient for eligibility. The court's reasoning reinforces that eligibility analysis must focus on the claimed invention as a whole—here, a genetically engineered host cell system—rather than dissecting it into individual naturally occurring components. The decision's reliance on Chakrabarty rather than the Alice/Mayo framework for composition claims involving alleged natural products aligns with the court's approach in ChromaDex, confirming that the "markedly different characteristics" test remains the primary analytical framework for product-of-nature challenges to biotechnology inventions.

The Federal Circuit affirmed two IPR final written decisions in which the PTAB found Micron failed to prove certain claims of Netlist's U.S. Patent No. 10,489,314 unpatentable as obvious over prior art reference Halbert. The '314 patent relates to memory modules that communicate with a computer's memory controller. In the first proceeding, the dispositive issue was whether Halbert disclosed claim 1's "specified data rate" limitations, which the Board construed to require that data transmitted between the memory module and controller occur at the same rate as data transmitted between the logic circuit and ranks. In the second proceeding, the Board found Micron failed to show motivation to combine two different Halbert embodiments to meet claim 15's requirement that ranks receive both active and non-active chip select signals.

The court's analysis focused on intrinsic claim construction under the Phillips framework and the articulated-reasoning requirement for motivation to combine under KSR. On claim construction, the court held that "data rate" in claim 1 refers to the rate at which data is transmitted between specific pairs of components, rejecting Micron's broader interpretation that would encompass either a ratio of rates across different device pairs or pieces of data per strobe cycle. On motivation to combine, the court held the Board properly required Micron to explain why a skilled artisan would incorporate non-concurrent operation features (active/non-active chip select signals) into a memory module specifically designed for concurrent rank operation to achieve increased throughput, where the combination would degrade the module's performance.