TrackTime, LLC v. Amazon.com Svcs. LLC, Appeal No. 2024-1102 (Fed. Cir. July 2, 2026)

In a lengthy, 26-page opinion, a panel of the Federal Circuit restated and synthesized precedent concerning the functionality/structure duality in Section 112(f).  In particular, the Court covered how to analyze these issues in relation to claim terms that concern computer code.  Ultimately, the Court remanded the case for further proceedings, to analyze whether the claim terms at issue connoted sufficient structure.

The patents in suit claim methods and systems for use on a mobile phone to navigate within a multimedia file by using a time-correlated transcript.  TrackTime sued Amazon for patent infringement.  The district court held two claim terms to be subject to 35 U.S.C. ¶ 112(f):  “executable program code configured to facilitate annotation,” and “executable program code configured to synchronously play . . . multimedia.”  In so doing, the district court found that these terms recited function without corresponding structure.  The district court further found that there was insufficient structure in the form of an algorithm in the specification that corresponded with these functions.  Therefore, the court held these claim terms to be indefinite.

The parties proceeded to trial on claim 9 of a related patent.  A jury found that claim invalid as anticipated by LiveNote software, among other bases.

On appeal, the Federal Circuit considered the district court’s finding that the “executable program code configured to . . .” language was subject to Section 112(f).  The Court concluded that intervening authority—in the form of Dyfan, LLC v. Target Corp., 28 F.4th 1360 (Fed. Cir. 2022)—necessitated further analysis, and remanded the case for further factual development and legal briefing.

At issue is whether a claim term invokes structure or merely recites a function and seeks to capture all means of performing that function.  To the extent a claim term invokes sufficiently definite structure—or even a defined class of structures, it is construed as covering that structure or class of structures.  To the extent the claim term recites only a function, it is construed to cover the structures that correspond with that function as described in the specification.

But there are grey areas, including terms that appear to invoke functions, but that are well understood in the art to refer to specific structures, including, for example, a “screwdriver,” or a “container,” or “detector.”  This has resulted in a substantial body of case law concerning when a term recites structure and when its verbiage recites only a function.  This has been a particular issue in relation to software patents.  The Court provided ten pages of legal analysis, framework, and synthesis of its prior holdings on Section 112(f) to help guide the district court in re-evaluating the issue.

Specifically, the Court reinforced that, in evaluating whether a claim term invokes sufficiently definite structure, a court should look both to intrinsic and extrinsic evidence.  The Court also referred to a “function-operation distinction,” noting that computer operations perform functions, and that descriptions of computer operations that perform specifically claimed functions may provide sufficiently definite structure to avoid invoking Section 112(f).

Finding the record insufficiently developed, the Court remanded for further analysis in light of its explication of the law.

As to the jury’s finding that claim 9 was invalid as anticipated by LiveNote, the Federal Circuit affirmed, finding there was substantial evidence to support the jury’s verdict.

The opinion can be found here

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Otsuka America Pharmaceutical, Inc. v. Hetero Labs Limited, Appeal No. 2025-2016 (Fed. Cir. Jul. 1, 2026)

The Federal Circuit affirmed the District of Delaware’s preliminary injunction prohibiting defendant Hetero Labs from introducing a generic version of Otsuka’s Nuedexta drug, but reversed the lower court’s decision to waive the requirement to post a bond pending appeal, as provided by Federal Rule of Civil Procedure 65(c).

In evaluating the lower court’s decision to waive the bond, the panel applied the regional circuit law of the Third Circuit. The panel relied on Third Circuit precedent for the proposition that waiver of the bond pending appeal is “so rare that the requirement is almost mandatory,” and that the requirement has consistently applied where “an injunction prevents commercial, money-making activities.” Because Hetero sought to enter the market with a generic pharmaceutical product, the panel determined that at least under Third Circuit precedent, it must post a bond pending appeal.

The panel also affirmed the lower court’s construction of “dextromethorphan” and “quinidine” in weight-to-weight ratio limitations as referring to the compounds in either free base or salt form. However, Judge Dyk filed a dissenting opinion arguing that the weight-to-weight ratio of “dextromethorphan” and “quinidine” refers to the active moieties.

The opinion can be found here.