Opinions — Monday, May 11, 2026

The Federal Circuit affirmed the Board's determination that all claims of MetroM Rail's U.S. Patent Nos. 8,812,227 and 9,043,131 (claims 1–16) are unpatentable as obvious, and reversed the Board's determination that claims 17–20 of the '131 patent are not unpatentable. Both patents relate to collision-avoidance systems for railroads using UWB sensing and GPS technologies. The primary issue was whether the prior art reference Grisham, alone or in combination with Nixon, disclosed the claimed limitations, including a "wireless communications antenna operable to send and receive data representing the separation distance over the air."

On the secondary considerations issue, the court held that MetroM forfeited the presumption of nexus because its AURA CAS product contained "important" unclaimed features that were not "insignificant" to the product, and MetroM failed to separately identify unique characteristics of the patented invention that drove demand beyond what was already known in the prior art. On the cross-appeal, the court applied claim construction principles to conclude that the "data representing the separation distance" in claim 17 was the time-of-flight data itself—the pulse sequences transmitted to measure distance—and that Grisham expressly disclosed antennas that "continuously transmit and receive impulse radio signals wirelessly" constituting such data, thus rendering MetroM's three-sentence argument in its patent owner response insufficient to overcome the petitioners' showing.

The Federal Circuit affirmed the district court's denial of § 285 attorney fees for IPR proceedings but upheld the award for district court litigation in Extremity Medical, LLC v. Nextremity Solutions, Inc. concerning U.S. Patent 8,303,589. After the Board found claim 59 unpatentable in an IPR that Nextremity voluntarily initiated, Nextremity sought fees for both the IPR and district court proceedings under § 285's exceptional case provision. The district court granted fees only for the district court litigation, finding the case exceptional based on Extremity's failure to investigate prior art identified in pre-suit letters, its lack of substantive validity arguments, and its failure to defend the claim before the Board.

The court applied Dragon Intellectual Property LLC v. DISH Network L.L.C. to hold that § 285 does not permit recovery of fees from voluntarily undertaken parallel IPR proceedings, rejecting Nextremity's arguments that Sullivan v. Hudson required treating the IPR as "part and parcel" of the district court action. The court reasoned that allowing such recovery would require district courts to evaluate exceptionality of proceedings in which they had no involvement, undermining the principle that district courts are best positioned to assess cases they oversee. On the exceptional case determination, the court reviewed for abuse of discretion and found the district court properly applied the Octane Fitness totality-of-circumstances framework, concluding that Extremity's pattern of advancing unsupported litigation positions despite notice of invalidating prior art stood out from ordinary litigation weakness.

The Federal Circuit affirmed the International Trade Commission's final determination in Investigation No. 337-TA-1304, which found that Tineco's original wet dry surface cleaning devices infringed claims 1, 13, and 15 of U.S. Patent No. 11,076,735 and claim 1 of U.S. Patent No. 11,071,428, but that Tineco's redesigned products did not infringe. Bissell challenged the Commission's no-infringement finding as to the redesigned products, arguing they met the limitation requiring "the battery charging circuit is disabled by the actuation of the self-cleaning mode input control and remains disabled during the unattended automatic cleanout cycle," both literally and under the doctrine of equivalents. The court rejected Bissell's argument that the ALJ improperly construed the claim, finding instead that the ALJ applied the plain and ordinary meaning and made credibility determinations that Bissell failed to challenge for substantial evidence. On equivalents, the court held that the ALJ properly applied the insubstantial differences test rather than improperly invoking claim vitiation, and affirmed because Bissell did not dispute that substantial evidence supported the factual findings. On cross-appeal, the court affirmed the Commission's domestic industry and infringement findings for the original products, including that an expert could rely on source code produced in discovery but not formally introduced as an exhibit under Federal Rule of Evidence 703.

The decision addresses the procedural trap of characterizing fact-bound determinations as claim construction errors to secure de novo review. Bissell attempted to reframe the ALJ's credibility assessments and application of claim language to the accused products as an implicit claim construction requiring independent appellate review, but the court rejected this framing where no actual construction occurred and Bissell failed to challenge the evidentiary support for the findings. The ruling reinforces that parties cannot circumvent substantial evidence review by labeling adverse factual findings as legal errors. On domestic industry, the court's application of Rule 703 clarifies that experts may base technical opinions on materials produced in discovery without requiring formal admission of underlying documents, provided the reliance is reasonable within the field—a significant point for ITC investigations where voluminous technical materials like source code inform expert analysis but need not be introduced wholesale as exhibits.