Opinions — Monday, August 10, 2026

In Power2B, Inc. v. Samsung Electronics Co., Ltd., the Federal Circuit dismissed consolidated appeals from two IPR proceedings before the Patent Trial and Appeal Board pursuant to the parties' agreement under Fed. R. App. P. 42(b), with each side to bear its own costs.

The Federal Circuit vacated and remanded a final written decision by the Patent Trial and Appeal Board finding claims 1–15 of Dental Monitoring SAS's U.S. Patent No. 10,755,409 unpatentable as obvious over three prior art references, including U.S. Patent Application Publication 2021/0068923 ("Carrier"). The central legal question was whether Carrier qualified as prior art under AIA 35 U.S.C. § 102(d)(2) based on its provisional application filing date, which predated the '409 patent's effective filing date, or only its later non-provisional filing date. The Federal Circuit held that for a patent or published application to receive the benefit of an earlier filing date for prior art purposes under § 102(d)(2), it must satisfy the written description requirement of § 112(a) for at least one published claim, not merely the "ministerial" requirements of claiming priority under §§ 119 and 120. The court rejected the Board's precedential decision in Penumbra, which had applied only ministerial requirements, finding that the statutory text of § 102(d)(2)—which conditions prior art status on being "entitled to claim a right of priority under [§] 119"—incorporates § 119(e)(1)'s requirement that the invention be "disclosed in the manner provided by [§] 112(a)."

The decision resolves uncertainty about the level of support required for a patent publication to antedate another patent as prior art under the AIA. The court's interpretation forecloses the Board's reading that AIA § 102(d) created a bifurcated standard distinguishing between the written description requirement for establishing an applicant's own priority date under § 100(i) and a lesser ministerial standard for establishing a reference's prior art date. The court emphasized that the statutory phrase "entitled to claim" demands substantive compliance with § 119, not merely the procedural act of asserting priority, and rejected Align's argument that legislative history discussing "ministerial" requirements could override unambiguous statutory text requiring § 112(a) support. By requiring written description support for at least one claim before a reference patent can backdate its prior art effect through a provisional application, the court extends the principle articulated in Dynamic Drinkware, LLC v. National Graphics, Inc. to the AIA framework and limits patent challengers' ability to expand the prior art universe through unsupported priority claims.

The Federal Circuit affirmed the Northern District of California's grant of judgment on the pleadings that claims from iCharts' three patents—directed to generating and sharing "self-contained" interactive charts that retain interactivity when embedded on separate websites—are ineligible under 35 U.S.C. § 101. At Alice step one, the court held that the representative claims were abstract because they recited only a result (generating and sharing self-contained, interactive charts) without identifying how that functional result is achieved, and limiting the claims to the field of "interactive charts" did not escape abstractness.

At Alice step two, the court affirmed on an independent ground that iCharts did not challenge: even assuming Adobe Flash technology (disclosed in the specifications as the mechanism for retaining interactivity) was unconventional, the claims failed to recite Adobe Flash or any other mechanism by which the abstract idea is accomplished, and this failure was "fatal." The court applied the principle from Intellectual Ventures I LLC v. Symantec Corp. that when a claim directed to an abstract idea contains no restriction on how the result is accomplished and the mechanism is not described in the claim despite being stated as the essential innovation, the claim is not patent-eligible. The court declined to address whether the district court improperly resolved factual issues about Adobe Flash's conventionality because the step-two analysis rested independently on the claims' failure to recite any implementing mechanism.

The Federal Circuit affirmed the PTAB's determination that claims 1–24 of VL Collective IP's U.S. Patent No. 7,440,559—directed to controlling multimedia content flow between a server and a remote terminal—are unpatentable as obvious over Huston. VL Collective argued the Board implicitly misconstrued the claim limitation requiring the processor to send "a response to the content status," contending it must be "triggered by" the terminal's transmission of content status information, which Huston allegedly failed to teach. The court rejected this construction and affirmed on the Huston ground alone, declining to reach VL Collective's separate argument regarding the Board's anticipation and obviousness findings based on Cassin.

The court's claim construction analysis turned on whether "response to the content status" required the terminal's content status transmission to be the triggering event for the processor's response. The court found no such limitation in the claim language, particularly noting that claim 1 requires the response to be "based upon" both terminal status information and server status information, which undercuts a requirement that the terminal's communication alone triggers the response. The court likewise found the specification described only that responses occur "after" receiving content status, not that content status necessarily triggers them, and concluded that "response" means merely a communication sent after the terminal sends content status—a temporal, not causal, relationship.