Opinions — Thursday, July 2, 2026

The Federal Circuit affirmed the District of Delaware's dismissal under Rule 12(b)(6) of Etison LLC v. HighLevel, Inc., holding all claims of U.S. Patent Nos. 10,846,357 and 11,361,047 invalid under 35 U.S.C. § 101. The patents relate to website creation systems using templates to generate digital sales "funnels" that direct potential customers sequentially through webpages toward purchasing decisions. The district court treated claim 1 of the '357 patent as representative of all 40 claims across both patents and found them directed to the abstract idea of "filtering information based on user preferences to arrive at a final result," with no inventive concept at Alice step two.

The Federal Circuit held that the district court erred in treating claim 1 as representative of claims containing a "one or more triggers" limitation not present in claim 1, because the defendant failed to show the patentee's argument about this distinction was frivolous. The court clarified that once a challenger makes a prima facie showing of representativeness based on substantial similarity and linkage to the same abstract idea, the burden shifts to the patentee to present non-frivolous arguments as to why a representative claim cannot fairly dispose of all claims in the group. The error was harmless, however, because the district court effectively performed an Alice step two analysis on the claims with the triggers limitation and correctly concluded they added no inventive concept beyond conventional computer activities—a determination the Federal Circuit reviewed de novo and affirmed.

The Federal Circuit affirmed the district court's transfer from the Southern District of New York to the Eastern District of North Carolina, its construction of the claim term "mounted on" in U.S. Patent No. 5,827,178 covering a laryngoscope, and its grant of summary judgment of noninfringement to defendant Teleflex Medical Inc. The court held that Teleflex did not waive its venue objection because it had previously participated only as successor-in-interest to LMA under Rule 25(c), not as a defendant in its own right until Dr. Berall's Second Amended Complaint added allegations concerning Teleflex's separate distribution of accused products. The court construed "mounted on" to mean "fastened to the exterior of," distinguishing it from "mounted in" as used elsewhere in the claims.

On claim construction, the court emphasized the significance of the patentee's deliberate choice of different prepositions—"mounted on" for the camera and screen versus "mounted in" for the power supply—inferring that the patentee intended different meanings. The court found no literal infringement under this construction and affirmed the equivalents holding because Dr. Berall failed to present limitation-specific proof; his briefing did not adequately apply the insubstantial differences test on a limitation-by-limitation basis, and the district court properly enforced its local rules in deeming the function-way-result test forfeited where it appeared only in an expert report incorporated by reference rather than in the briefing itself.

The Federal Circuit vacated the District of Delaware's indefiniteness ruling on U.S. Patent Nos. 8,856,638 and 8,862,978 asserted by TrackTime, LLC against Amazon.com Services LLC and remanded for reconsideration in light of intervening precedent, while affirming the judgment that claim 9 of the '638 patent is invalid as anticipated under 35 U.S.C. § 102. The district court had construed "executable program code configured to facilitate annotation" and "executable program code configured to synchronously play . . . multimedia" in claims 1 and 2 of the '978 patent as means-plus-function limitations governed by 35 U.S.C. § 112(f), then held those claims indefinite for lack of corresponding structure in the specification. TrackTime argued the district court's analysis was inadequate under Dyfan, LLC v. Target Corp., 28 F.4th 1360 (Fed. Cir. 2022), which issued after the claim construction order. The Federal Circuit agreed that further analysis was warranted but declined to hold the terms outside § 112(f) on the existing record, instead remanding for new proceedings on whether § 112(f) applies and, if so, whether it is satisfied. On the '638 patent, the court affirmed the jury's anticipation verdict based on the LiveNote reference, rejecting TrackTime's challenge to the sufficiency of the evidence.

The decision underscores the continuing uncertainty around when functional claim language—particularly "nonce" terms like "executable program code" that lack the word "means"—triggers § 112(f) treatment, an issue Dyfan addressed by requiring more searching inquiry into whether claim language recites sufficient structure. The remand signals that courts must reassess § 112(f) applicability with attention to Dyfan's framework, which examines whether the term, as understood by persons of ordinary skill in the art, connotes sufficiently definite structure. The decision may invite renewed expert testimony on whether challenged terms were understood to denote specific structural implementations at the relevant time, rather than purely functional placeholders. By declining to resolve the § 112(f) question itself despite the parties' briefing, the panel left open the possibility that further factual development—not just legal reanalysis—could affect the outcome, suggesting practitioners should anticipate that § 112(f) disputes increasingly may require record evidence about how skilled artisans understood contested terminology.