Opinions — Thursday, February 26, 2026

In Masimo Corporation v. Apple Inc., the Federal Circuit dismissed consolidated appeals Nos. 2024-1635 and 2024-1636 from Patent Trial and Appeal Board decisions in IPR2022-01291 and IPR2022-01465 pursuant to a joint stipulation of voluntary dismissal under Federal Rule of Appellate Procedure 42(b). The court lifted the stay, dismissed the appeals, and ordered each side to bear its own costs.

The Federal Circuit vacated and remanded the district court's entry of summary judgment both for plaintiff Global Tubing LLC on its inequitable conduct claim and for defendants Tenaris Coiled Tubes LLC and Tenaris S.A. on Global Tubing's Walker Process fraud claim. The dispute centered on Tenaris's U.S. Patent Nos. 9,803,256, 10,378,074, and 10,378,075, covering quenched-and-tempered coiled tubing with specified carbon ranges (0.17-0.35 wt.% in the '256 patent). The district court had found clear and convincing evidence of inequitable conduct based on Tenaris's failure to disclose internal "CYMAX Documents" to the PTO during prosecution, which revealed that a prior product called CYMAX 100 had a carbon range (0.13-0.17 wt.%) overlapping with the claimed invention at 0.17 wt.%. The court relied heavily on inventor Dr. Valdez's comment to prosecution counsel—"I am not sure it is a good idea to disclose this document"—as direct evidence of deceptive intent. The Federal Circuit held that genuine disputes of material fact precluded summary judgment on both the intent-to-deceive and materiality elements of inequitable conduct, and likewise on whether Tenaris possessed the market power necessary to establish a dangerous probability of monopolization under Walker Process.

The decision underscores the difficulty of establishing inequitable conduct on summary judgment even where seemingly damning evidence exists. Dr. Valdez's deposition testimony provided plausible non-deceptive explanations for his hesitation: he believed CYMAX was a "different product" with different properties that would only confuse the examiner, and he understood the previously-submitted Chitwood reference to disclose the same substantive information as the CYMAX Documents (indeed describing Chitwood as "broader than CYMAX"). The panel's resolution turns on whether these explanations create genuine factual disputes about subjective intent—a question that implicates the heightened clear-and-convincing-evidence standard and the caution against inferring bad faith from ambiguous conduct. The ruling also addresses materiality's but-for test and whether overlapping prior art at a single compositional point (0.17 wt.% carbon) would have precluded allowance, a question the court found unsuitable for summary adjudication given disputes about the scope of what Chitwood disclosed and whether the examiner would have found the CYMAX Documents' more specific disclosure outcome-determinative.

The Federal Circuit affirmed the District of Delaware's grant of summary judgment that all asserted claims of Oasis Tooling's U.S. Patents 7,685,545 and 8,266,571 are invalid under 35 U.S.C. § 101. The patents relate to identifying similarities and differences in semiconductor chip designs by standardizing programming languages of different cells before comparison. The court applied the two-step Alice/Mayo framework to representative claim 14, which recites a device with various modules (parser, normalizer, digester, comparer, reporter) for analyzing design data.

At Alice step one, the court held that analyzing data to identify similarities and differences is a process "that can be performed in the human mind" and therefore abstract, rejecting Oasis's argument that the speed and complexity of computer processing was material to eligibility. At step two, the court found no inventive concept because the specification provided no specifics regarding the computer components beyond generic processors and memory, and using such generic components to standardize and compare data is insufficient under Intellectual Ventures I LLC v. Capital One Financial Corp. The court thus affirmed that claim 14 and all asserted claims lack patent-eligible subject matter.