2 opinions in the patent, trademark, design patent, and trade dress categories. Rule 36 affirmances and non-IP dispositions excluded.
In Prime Time Toys LLC v. Spin Master, Inc., the Federal Circuit dismissed consolidated appeals in Nos. 2026-1236, 2026-1238, and 2026-1239 from three Patent Trial and Appeal Board inter partes review proceedings under Fed. R. App. P. 42(b) based on the parties' agreement, with each side to bear its own costs.
Panel: Moore, Dyk, Taranto
The Federal Circuit reversed the district court's judgment of invalidity but affirmed dismissal of breach-of-contract claims in NimbeLink Corp. v. Digi International Inc. NimbeLink owns patents covering embedded cellular modems and sued Digi for infringement and breach of two non-disclosure agreements executed during acquisition discussions. The district court held the preamble term "space-efficient cellular modem device" was a limiting but indefinite claim term under 35 U.S.C. § 112(b), rendering all asserted claims invalid.
The Federal Circuit applied Catalina Marketing and related precedent to hold the preamble term "space-efficient" non-limiting, concluding it merely extolled benefits of structural features already recited in the claim body rather than adding essential structure. The court distinguished cases where preambles supply necessary antecedent basis, finding that while "cellular modem device" provided such basis for dependent claims, "space-efficient" did not, and that the structural completeness of the claim body meant deleting the modifier would not affect the claimed invention. The court also found no prosecution history disclaimer, as the examiner's allowance rationale referenced "specific circuit structure" and "arrangement" without clearly relying on the preamble's "space-efficient" language to distinguish prior art.