Opinions — Thursday, April 23, 2026

In Universal Electronics, Inc. v. Roku, Inc., Appeal Nos. 2024-1856 and 2024-1916 (appeals from IPR2022-01289), the parties stipulated to voluntary dismissal of Appeal No. 24-1916 under Federal Rule of Appellate Procedure 42(b), with each side to bear their own costs. The court granted the stipulation and issued mandate as to Appeal No. 24-1916 only on April 23, 2026.

The Federal Circuit reversed in part and affirmed in part a combined claim construction and summary judgment decision involving Network-1 Technologies, Inc.'s suit against Google LLC and YouTube, LLC for infringement of three patents directed to methods for identifying media works without modification. The district court held claims of two patents (the '988 and '464 patents) invalid as indefinite based on the term "non-exhaustive search," and granted summary judgment of noninfringement as to the '237 patent, concluding that neither Google's LSH nor Siberia version of its Content ID system met the "sublinear search" limitation. The Federal Circuit affirmed the indefiniteness determination but reversed the noninfringement ruling as to one version of Content ID, finding a genuine issue of material fact as to the LSH system's infringement of the '237 patent.

The court's indefiniteness analysis is notable for its treatment of claim terms added during prosecution to distinguish prior art but lacking support in the original specification. Reviewing the indefiniteness determination de novo (with clear error review for subsidiary facts based on extrinsic evidence), the court found that neither the intrinsic record—including incorporated references and the specification's contrast between "linear searches" and "other forms of matching"—nor extrinsic evidence such as expert testimony and academic papers informed a skilled artisan with reasonable certainty as to the scope of "non-exhaustive search." The court cited Nautilus in cautioning against viewing matters "post hoc" and declined to narrow the claim term based on specification language predating the term's addition to the claims, noting that accepting vague distinguishing language only perpetuates uncertainty in the patent system.

The Federal Circuit affirmed the district court's invalidation under 35 U.S.C. § 101 of claims from two NantWorks patents—U.S. Patent Nos. 10,664,518 and 10,403,051—asserted against Niantic for its augmented reality games Pokémon Go and Harry Potter: Wizards Unite. The '518 patent relates to mapping AR objects and rendering them on a device display, while the '051 patent covers incorporating visual objects into a digital representation of an environment surrounding an AR device. The district court granted judgment on the pleadings as to the '518 patent and summary judgment as to the '051 patent, finding both directed to abstract ideas with no inventive concept under the Alice/Mayo framework.

At step one, the court rejected NantWorks's argument that the district court oversimplified the claims by ignoring specific steps involving tessellated tiles, area databases, and AR content objects. The court held that these purported specifics still amounted to determining a user's location on a map, selecting relevant information, and displaying it—tasks performable with pencil and paper, a "telltale sign of abstraction." At step two, the court found no inventive concept because NantWorks relied on "selectively" populating device memory to conserve bandwidth, a limitation not recited in the claims and thus unavailable to salvage eligibility. The court emphasized that the abstract idea itself cannot supply the inventive concept and that the ordered combination of limitations did not fundamentally change or improve computer function.

The Federal Circuit affirmed the International Trade Commission's determination of no Section 337 violation by Keysight Technologies with respect to Centripetal Networks' U.S. Patent Nos. 9,264,370 and 10,193,917. The '370 Patent relates to correlating packets in communications networks by provisioning devices to identify and log packets received and transmitted by network devices, then correlating those packets based on the log entries. The Commission found no violation on three independent grounds: failure to establish the technical prong of the domestic industry requirement, failure to show infringement, and patent ineligibility.

The court's analysis centered on the substantial evidence standard and waiver. For the technical prong, the court held that substantial evidence supported the Commission's finding that Centripetal's RuleGATE ports were merely electrical interfaces incapable of performing the claimed functions, rather than "devices" that could be provisioned with rules and generate log entries as required by claim 22. The court applied the principle that where two inconsistent conclusions can be drawn from the evidence, the agency's choice must be sustained on substantial evidence review, even though Centripetal presented testimony suggesting the ports could perform the required functions. The court also found Centripetal waived challenges to the Commission's non-infringement findings by failing to address specific claim limitations—particularly the "identify" and "communicate" aspects of limitations (e) and (f)—in its opening brief.

The Federal Circuit affirmed the Patent Trial and Appeal Board's determination that claims 1–3, 5–13, and 15–20 of Centripetal Networks' U.S. Patent No. 10,193,917 were unpatentable for obviousness, and reversed the Board's finding that claims 4 and 14 were not unpatentable. The '917 patent relates to rule-based network-threat detection, specifically a packet-filtering device that processes network packets based on threat indicators and generates both packet-level and flow-level log data. The dispute centered on whether the Sourcefire prior art reference—a user guide for a real-time network defense system—disclosed the claimed invention's "packet flow entry" and related elements, either alone or in combination with the Macaulay reference on cyber threat intelligence data.

The court's analysis turned significantly on claim construction and the Board's findings regarding what Sourcefire disclosed. The Board construed "packet flow entry" as an entry in a flow log that consolidates multiple packet log entries sharing a common threat identifier, and found that Sourcefire's intrusion event display—which showed aggregated information for packets triggering the same intrusion rule—satisfied this limitation. The court reviewed the Board's claim construction de novo and its underlying factual findings about the prior art for substantial evidence, applying the legal framework under which the ultimate obviousness determination receives de novo review but factual findings supporting motivation to combine and reasonable expectation of success are reviewed for substantial evidence.

The Federal Circuit affirmed the Patent Trial and Appeal Board's determination that claims 1–5 and 8 of Slingshot Printing LLC's U.S. Patent No. 7,195,341—directed to semiconductor substrates for micro-fluid ejection devices such as inkjet printheads—would have been obvious over the Torgerson and Bruce references. Slingshot challenged the Board's findings that Torgerson disclosed connecting power transistors to logic circuits through a polysilicon conductor layer, that a skilled artisan would have been motivated to combine Torgerson with Bruce to achieve the claimed ground-conductor configuration, and that the Board's analysis of the remaining limitations violated the Administrative Procedure Act.

The court's application of the motivation-to-combine analysis is instructive, particularly in its effort to distinguish Virtek Vision International ULC v. Assembly Guidance Systems, Inc. The panel found substantial evidence supported the Board's conclusion because Canon had demonstrated Bruce's approach was one of a finite number of predictable solutions responding to known design needs—specifically, the need to reduce substrate size—whereas in Virtek the record lacked evidence of finite solutions, design needs, or market pressures. The court also applied Bowman Transportation's reasonably-discernible-path standard to uphold the Board's analysis of the remaining claim limitations, finding adequate explanation despite Slingshot's argument that the Board merely cited to Canon's petition without independent articulation of its reasoning.