On Feb. 12, a jury in the U.S. District Court for the Eastern District of Texas cleared Apple Inc. of patent infringement in an action brought by Optis Wireless Technology LLC involving standard-essential 4G cellular patents.

The dispute is notable for several reasons, including multiple jury trials and the U.S. Court of Appeals for the Federal Circuit's prior guidance on damages apportionment last year. But one consequential feature of the Federal Circuit's opinion has received little attention: how juries must be instructed on patent eligibility under Title 35 of the U.S. Code, Section 101.

Although the jury ultimately did not need to resolve eligibility, how the district court modified its Step 2 instruction — prompted by the Federal Circuit — warrants scrutiny.

At first glance, the change will appear modest. But viewed in light of the governing framework, it does more than clarify existing law. It aligns Step 2 of the Alice framework with the structured, two-step approach long used for claim construction and infringement or invalidity, with meaningful implications for trial practice and appellate review.

This article examines the Federal Circuit's guidance, its application on remand and its likely downstream effects.

Section 101: A Familiar but Unstable Framework

Despite persistent criticism regarding its unpredictability, the two-step framework established by the U.S. Supreme Court's 2014 decision in Alice Corp. v. CLS Bank International and 2012 decision in Mayo Collaborative Services v. Prometheus Laboratories Inc. remains black-letter law.

At Step 1, courts determine whether claims are directed to a patent-ineligible concept, such as an abstract idea. At Step 2, courts assess whether the claim elements — individually or as an ordered combination — contain an inventive concept sufficient to transform the ineligible idea into patent-eligible subject matter.

While the framework is well known, its application is often indeterminate. That uncertainty is not new. What Optis adds is not a doctrinal shift in what must be decided, but a structural clarification of how juries must be instructed when Step 2 is submitted to them.

The Federal Circuit's Decision in Optis v. Apple

In June 2025, after two prior trials, the Federal Circuit vacated a $300 million damages award, and directed the Texas district court to reconsider patent eligibility.[8] The district court found the claims not abstract at Step 1. The Federal Circuit disagreed, holding that the claims were directed to a mathematical formula and remanding for Step 2.

The court added a critical instruction in a footnote: "If the jury is to decide whether the alleged inventive concept is well-understood, routine, and conventional, it must be instructed what the abstract idea is and that the abstract idea cannot contribute to the inventive concept."

This guidance — though buried in a footnote — is significant. In the 12 years since Alice was decided, this appears to be the first time the Federal Circuit has provided explicit guidance to district courts on how juries must be instructed at Step 2.

The Impact of Footnote 11

Alignment With Claim Construction Framework

The Federal Circuit's instruction effectively imports the logic of claim construction into the Alice analysis. In infringement and invalidity, courts first resolve claim scope as a matter of law; the jury then applies that construction to the facts. A jury cannot evaluate infringement without knowing what the claims mean.

The same principle now applies at Step 2. If the jury is asked whether the claims contain something more, it must be told what cannot count — i.e., the abstract idea — and what that idea is. Without that instruction, the jury lacks the baseline against which to measure "something more."

This is not merely helpful; it is necessary. A jury cannot determine whether a claim adds an inventive concept beyond an abstract idea if it is not told what the abstract idea is. The omission is functionally equivalent to asking a jury to decide infringement without construing the claims.

Implications for Post-Trial Review

The instruction also addresses a recurring problem in reviewing Step 2 verdicts. Jury instructions must be legally correct and sufficiently complete. If the jury is not instructed on the abstract idea, it is unclear whether its verdict rests on a permissible inventive concept or on the abstract idea itself repackaged as something more. That ambiguity complicates both judgment as a matter of law and appellate review. Courts may be unable to determine whether the jury's reasoning was legally sound.

By requiring identification of the abstract idea and its exclusion from the inventive concept analysis, Optis reduces that ambiguity. It creates a clearer record and constrains the jury's analysis in a way that is reviewable.

That said, the benefit depends on procedure. If Step 1 is never resolved pretrial, the jury cannot be instructed on it. In that scenario, the absence of a Step 1 instruction may not constitute reversible error — it may simply reflect the parties' litigation choices.

Effects on Pretrial Strategy

The most immediate impact of Optis is on pretrial strategy.

On remand, the district court's implementation, by all accounts, will be shown to be straightforward. The verdict form asked whether the claim elements, "after removing the abstract mathematical formula," were well-understood, routine and conventional.[ The parties' proposed instructions likewise identified the abstract idea and instructed the jury to exclude it.

The filings in the Optis district court case therefore suggest that the district court incorporated three additional components into its historically standard Step 2 instruction.

The court must state that the claims are directed to an abstract idea; it must identify that idea; and it must instruct the jury to exclude that idea from the inventive concept analysis.

But Optis also raises a more difficult issue: How specifically must courts define the abstract idea?

At a minimum, the court must identify the category, e.g., a mathematical formula. In other contexts — such as economic practices or human activity — greater specificity may be required. That question remains open, and it is not trivial: The framing of the abstract idea may influence how a jury evaluates whether the claims add something more.

This creates a new battleground for advocacy. Parties will have incentives to frame the abstract idea at different levels of abstraction, knowing that the framing may shape the jury's perception of the inventive concept.

Waiver and Strategic Risk

Optis also introduces a meaningful waiver risk for patent challengers.

A challenger is not required to seek summary judgment on Section 101. If it declines to do so, Step 2 may proceed to the jury without a prior Step 1 determination. In that case:

  • The challenger cannot insist on a Step 1 instruction;
  • The jury will not be told what the abstract idea is; and
  • The challenger will likely be unable to argue instructional error post-trial.


In short, because courts are not required to resolve issues that parties do not present, any resulting prejudice from the court not instructing the jury on Step 1 is likely self-inflicted.

Conversely, where a challenger secures a favorable Step 1 ruling pretrial, Optis provides a basis to demand a corresponding jury instruction. If the court fails to provide one, a new trial may be warranted.

The practical takeaway is straightforward: To obtain the full benefit of Optis, a challenger should seek pretrial resolution of Step 1. Otherwise, it risks being confined to a deferential sufficiency-of-the-evidence review following on post-trial motions and appeal.

Implications for District Courts

District courts, in turn, will need to adjust their approach in at least two respects.

First, when Step 1 is resolved pretrial and Step 2 is submitted to the jury, courts must ensure that the instructions include the three components discussed above. Simply stating that the claims are direct to an abstract idea are not enough.

But, at the same time, courts must balance clarity against prejudice. Overly specific or illustrative descriptions of the abstract idea could risk influencing the jury. Optis sets a floor, not a ceiling, for how courts should navigate that balance.

Second, district courts may no longer be permitted to defer resolution of Step 1 until after trial. Such deferrals, which are not unheard of, may very well create scenarios that prejudice patent challengers and run afoul of the Federal Circuit's quiet guidance in Optis.

Final Thoughts

Whether viewed as a modest clarification or a structural refinement, the Federal Circuit's guidance in Optis will affect Section 101 practice.

For district courts, it imposes a clearer requirement: When Step 2 is submitted to the jury, after a patent challenger seeks pretrial resolution on Step 1, and Step 1 is resolved, the abstract idea must be identified and excluded from the analysis.

For litigants, it creates both opportunity and risk. The characterization of the abstract idea becomes a point of strategic importance, and the decision whether to seek pretrial resolution of Step 1 carries real consequences.

At minimum, Optis brings greater coherence to the jury's role in the Alice framework by aligning Step 2 with established principles governing other two-step inquiries in patent law. Whether that coherence translates into greater predictability in jury outcomes remains to be seen.

"Apple Verdict May Inform Jury Instruction in Patent Suits," by Joshua S. Reisberg was published in Law360 on April 2, 2026. Reprinted with permission.