Federal Circuit Clarifies Patent Eligibility: Concrete Implementations Survive Abstract Idea Challenges While Broad Result-Oriented Claims Falter

1. In Constellation Designs, LLC v. LG Electronics Inc., the Federal Circuit addressed patent eligibility under 35 U.S.C. § 101 for multiple patents related to digital communication systems employing "constellations"—visual representations mapping digital bits to analog broadcast symbols. The patents claimed innovations using non-uniform constellations optimized for "parallel decoding capacity" (PD capacity) to improve signal decoding despite noise and signal degradation during transmission.

The court divided the asserted claims into two categories: (1) the "optimization claims" from U.S. Patents Nos. 8,842,761 and 10,693,700, which broadly recited optimizing constellations using PD capacity, and (2) the "constellation claims" from U.S. Patents Nos. 11,019,509 and 11,018,922, which recited specific non-uniform constellations developed by the inventors.

Applying the Alice framework, the court found at Step One that the optimization claims were directed to the abstract idea of optimizing constellations for PD capacity and preempted all uses of that idea. At Step Two, the court determined that the claims lacked an inventive concept beyond the abstract idea itself. The court rejected Plaintiff’s arguments that novelty and non-obviousness equated to an inventive concept, vacated the district court’s summary judgment of eligibility for these claims, and remanded for further proceedings.

Conversely, the court held that the constellation claims were directed to specific technological solutions—particular non-uniform constellations with overlapping point locations—that addressed capacity constraints and improved coding gains. These claims were found eligible at Step One, obviating the need for Step Two analysis.

The court also affirmed the district court’s denial of Defendants’ motions for judgment as a matter of law (JMOL) on non-infringement and no damages. It upheld the use of standards-related evidence alongside product-specific evidence to prove infringement, consistent with Fujitsu Ltd. v. Netgear Inc. Additionally, the court affirmed the denial of Defendants’ motion to exclude Plaintiff’s damages expert, who relied on comparable third-party licenses and a built-in apportionment theory supported by testimony on technical and economic similarities.

Defendants’ late-raised argument that invalid claims should vacate the damages award was rejected, as the court found the argument untimely and Plaintiff’s expert testimony tying damages to the technology rather than specific claims undisputed.

2. In Federal Express Corporation v. Qualcomm Incorporated, the Federal Circuit declined to review Appellant’s challenge to the Patent Trial and Appeal Board’s (PTAB) denial of a request to terminate inter partes review (IPR) proceedings based on alleged failure to identify all real parties in interest. The court held that challenges under 35 U.S.C. § 312(a)(2) concerning real party in interest fall within the unreviewable scope of § 314(d), as they are integral to the institution decision.

Distinguishing SAS Institute, Inc. v. Iancu, the court reasoned that the challenge here pertained to whether institution should have occurred, not how the Board proceeded post-institution, rendering it unreviewable.

However, the court vacated and remanded the Board’s obviousness determination for claims 6, 17, and 28 of U.S. Patent No. 8,766,797. The Board had relied on an erroneous assumption that Appellant did not contest the prior art combination of Lau and Buford, but both parties agreed that Appellant did contest it. The court rejected Appellant’s argument for reversal based on unresolved factual disputes, finding vacatur and remand appropriate.

3. In Enviro Tech Chemical Services, Inc. v. Safe Foods Corp., the Federal Circuit affirmed the district court’s finding that asserted claims of U.S. Patent No. 10,912,321 were indefinite due to the use of the term "about" in specifying pH ranges.

The court held that the claim language—altering acidity to a "pH of about 7.6 to about 10 by adding an alkaline source"—failed to provide reasonable certainty regarding permissible deviation. The parties agreed "about" meant "approximately," but the specification’s conflicting guidance and exceptions prevented a skilled artisan from determining claim scope with reasonable certainty.

The court emphasized that the amendment of claim 1 to avoid prior art close to pH 7.0 heightened the need for clarity. The inconsistent use of "about" during prosecution and lack of explanation for its meaning further supported indefiniteness. Plaintiff’s argument that "about" should be limited to ±0.3 pH was unsupported by prosecution history.

These decisions collectively underscore the Federal Circuit’s rigorous approach to patent eligibility and claim definiteness, emphasizing concrete technological implementations over broad abstract ideas and clear claim language over vague terms.