Patent News

USPTO Guidance on subject matter eligibility declarations (SMEDs) (posted 02/09/26)

On December 4, 2025, the USPTO released a memo regarding best practices for submitting SMED declarations and a separate internal memo for Examiners regarding treatment of SMEDs. The memo clarifies key practices for practitioners navigating § 101 requirements. SMEDs are voluntary, claim-specific declarations under 37 C.F.R. § 1.132 and must present objective facts demonstrating eligibility (e.g., technical improvements in computational performance, data storage, or AI architecture) without introducing new disclosure.

2025 Precedential CAFC Rulings

Categories

101 Eligibility

CAFC Precedential - 2025 - 101 Eligibility

101 Eligibility

PowerBlock Holdings, Inc. v. iFit Inc.: Machine is eligible when it is “sufficiently specific” and “consists of parts, or of certain devices and combination of devices.”

The Federal Circuit reversed the district court’s dismissal of PowerBlock’s claims under § 101, holding that claims directed to selectorized dumbbells with motorized weight selection were not abstract ideas. The court emphasized that claim 1 recited a specific mechanical configuration—nested weight plates, a movable selector, and an electric motor physically coupled to move the selector—that constituted a “technological improvement” rather than a result-oriented abstraction. Unlike prior cases involving “do it on a computer” patents, the claims here were directed to a concrete machine with defined structural limitations. The court also rejected iFit’s argument that conventional dumbbell components should be ignored, clarifying that § 101 does not allow old elements to be read out of the eligibility inquiry. Because the claims as a whole recited a specific implementation of a mechanical improvement, they were patent-eligible at Alice step one.

Court holdings

Recentive Analytics, Inc. v. Fox Corp.: Claims that do no more than apply established methods of machine learning to a new data environment are not patent eligible.

The Federal Circuit affirmed the district court's holding that the claims were ineligible under Alice because they are directed to the abstract idea of applying generic machine-learning techniques in a particular data environment with no inventive concept.

Recentive argued in its briefs that its application of machine learning is not generic because “Recentive worked out how to make the algorithms function dynamically. . . .” But the court held:

Even if Recentive had not conceded the lack of a technological improvement, neither the claims nor the specifications describe how such an improvement was accomplished. That is, the claims do not delineate steps through which the machine learning technology achieves an improvement.“

Patent Docs (linked below) notes that the Court hints that more detail in the claim and the specification regarding the technical improvement, such as the training process, could avoid a finding of ineligibility.

Additional Holdings:

Whether claims applying conventional machine-learning techniques to event scheduling and network-map generation are directed to an abstract idea (Alice step one).: Claims are directed to an abstract idea where they merely invoke conventional, generic machine-learning techniques as a tool to perform longstanding scheduling/mapping tasks in a particular field of use, without claiming a specific improvement in computer or machine-learning technology.
Whether iterative training and real-time updating limitations supply a technological improvement at Alice step one.: Generic features inherent to machine learning—such as iterative training on selected data and updating outputs based on new inputs—do not, without more, constitute a specific technological improvement that renders the claims non-abstract.
Whether the claims recite an inventive concept (Alice step two): A claimed “inventive concept” that amounts to restating the abstract idea (e.g., using generic machine learning to dynamically generate and update optimized schedules/maps) does not transform the claim into eligible subject matter when the claims add only conventional, functionally described techniques and generic computing components.
Whether applying existing technology to a new data environment or achieving faster, more efficient performance supplies eligibility.: Limiting an abstract idea to a particular technological environment or new dataset, and achieving only generic speed/efficiency gains from computerization, does not confer patent eligibility absent an improved computer technique or other nonconventional implementation.

Blogs:

US Synthetic v. ITC: It's legal error to require patentee to prove patent eligibility when invalidity is asserted

The Federal Circuit reversed the ITC's § 101 holding that asserted composition-of-matter claims were not directed to an abstract idea at Alice Step One where quantified material properties correlate to structure. The court applied APA review to ITC determinations, noting that § 101 Step One was resolved from the intrinsic record rather than expert testimony relied upon at the hearing.

Blogs:

United Services Automobile Association v. PNC Bank: Mobile check deposit using cell phone lacks inventive concept

The Federal Circuit held the asserted claim is directed to an abstract idea (mobile check deposit) and lacks an inventive concept under Alice step two, reversing the district court’s contrary § 101 summary-judgment ruling.

Holding:

Whether claim 20 of the '638 patent is directed to an abstract idea at Alice step one. A claim that recites the conventional practice of depositing a check—collecting an image, extracting/checking information (e.g., via OCR), and transmitting/storing it—implemented on a generic handheld mobile device is directed to the abstract idea of mobile check deposit rather than a specific technological improvement.
Whether claim 20 contains an inventive concept at Alice step two.: Routine image capture, OCR, and generic data processing performed on generic mobile hardware, described in result-oriented “configured to” terms without specific technical means, do not supply an inventive concept or transform an abstract idea into a patent-eligible application.

In Alice step one, the court concluded that the claim merely automated conventional human and banking activities such as photographing, recognizing, and verifying check data, implemented through generic mobile-device functions. The specification’s discussion of optical character recognition and error checking did not supply a technological improvement because the claim failed to specify how those operations were performed. The court distinguished Enfish and McRO, emphasizing that the claim recited results, not the specific rules or algorithms that would make the process non-abstract. In Alice step 2, the court found no inventive concept in the ordered combination of elements. Use of routine components (mobile phones, OCR, and wireless networks) to carry out known data-capture and transmission functions was conventional and insufficient to confer eligibility. The court rejected arguments that factual disputes over conventionality precluded summary judgment, noting that OCR and mobile capture systems were well known in the art.

Because all asserted patents in the consolidated appeals had been found unpatentable or ineligible, the panel dismissed the remaining cross-appeal on damages as moot and entered judgment reversing the district court and invalidating the ’638 patent under § 101.

Blogs:

Summary
Oral Arguments: AICT (substantive arguments begin at 23:52)

Optis Cellular Tech. v. Apple: Formula for identifying LTE PDCCH candidates is ineligible (abstract mathematical formula)

The Federal Circuit reversed the district court's Step One conclusion and held that the claims are directed to an abstract mathematical formula, but remanded back to the district court for Alice step Two analysis.

Alice step one for ’332 patent claims reciting an equation used to determine a decoding start position in LTE control channels.: Claims whose focus/advance is the use of a mathematical formula to generate a value for use in a communication process are directed to an abstract idea at Alice step one; reciting generic UE/receiver/decoder context does not by itself change that focus.

Read more:

Blogs:

102 Anticipation

CAFC Precedential - 2025 - § 102 - Anticipation

Restem v. Jadi Cell: Anticipation of product-by-process claims

The Federal Circuit affirmed the lower court's ruling of no inherent anticipation because petitioner failed to show the prior-art process necessarily and inevitably yields cells meeting the claimed marker-expression/non-expression profile.

For validity of a product-by-process claim, anticipation turns on whether the prior art discloses (expressly or inherently) the claimed product and its limitations; inherency is not “automatic” from disclosure of similar process steps and requires proof that the claimed properties inevitably and necessarily result from practicing the prior art.

Blogs:

Summary - “For invalidity, the focus is on the product, not the process. [. . .] For infringement, the focus is on the process and the product.”
Summary
Summary

Sage Products v. Coke Morgan Stewart et al.: “Sterile” means “sterilized”

The Federal Circuit affirmed the Board's finding that claims were anticipated because the prior art disclosed each challenged limitation and could rely on expert testimony to interpret what the prior art reference disclosed for anticipation purposes, including limitations not expressly spelled out. In particular, the court found that a foreign regulatory document's use of the term “sterile” can satisfy claims requiring “sterilized,” as understood by a person of ordinary skill in the art.

Blog:

Summary

Sigray v. Carl Zeiss X-Ray Microscopy: Magnification of 1X - 10X includes 1

The court held claims anticipated due to inherent disclosure of prior art, finding that the Board improperly and implicitly construed the claimed numeric magnification range (between 1 and 10) to exclude small magnification and held that construction erroneous under the claim's plain meaning.

Blogs:

Summary

103 Obviousness

CAFC Precedential - 2025 - 103 - OBVIOUSNESS

AliveCor v. Apple: It is obvious to apply known machine-learning techniques to detect arrhythmia whether the heartbeat data originates from PPG, motion-sensor, or ECG.

The Federal Circuit affirmed PTAB findings that challenged claims were obvious where evidence supported motivation-to-combine and reasonable-understanding findings regarding machine-learning and ECG confirmation limitations.

Blog:

Summary
Oral Argument: - Transcript

Honeywell Int'l v. 3G Licensing: Any need or problem that the patent addresses can supply a reason to make the claimed modification; the patentee's avowed purpose does not control.

The Federal Circuit reversed a Board's determination that claims directed to codeword formatting for error correction is not obvious, finding the Board improperly relied on the motivation of the patent in suit. The Board acknowledged that the only difference between claim 1 and the prior art is that the 1 and 0 in the last row of basis sequences table were switched. The court held that, contrary to KSR, the Board ignored principle that any need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.

Patent in suit: 7,319,718

Claim 1 reads, in part:

[…] encoding the information bits by combining the information bits with the basis sequences; […] wherein the basis sequences Mi,n are defined as:

I	Mi,0	Mi,1	Mi,2	Mi,3	Mi,4
0	1	0	0	0	1
1	0	1	0	0	1
[. . .]
18	0	0	0	0	1
19	0	0	0	0	1

.

Holdings:

A motivation to modify/combine for obviousness need not be the same as the inventor’s motivation; any known need or problem in the field that the patent addresses can supply a reason to make the claimed modification, and the patentee’s avowed purpose does not control.
Obviousness does not require showing the prior art combination/modification was the best, preferred, or subject to contemporaneous consensus; it is enough that the prior art as a whole suggests the desirability of the claimed change.
In an obviousness analysis, the fact that a reference does not itself disclose the precise claimed difference (which would be required for anticipation) cannot be treated as weighing against obviousness; doing so reflects an impermissible anticipation-like requirement.

Blogs:

ImmunoGen v. Coke Morgan Stewart: Known dosing methodology to address a known problem in a predictable way is obvious to try

The Federal Circuit affirmed a bench-trial judgment that method claims were obvious where prior art disclosed similar dosing parameters and adjusted ideal body weight (AIBW) dosing was within routine optimization, including where the claimed dose is necessarily met for some patients under a prior-art TBW regimen.

Blogs:

Janssen Pharma. v. Teva Pharma USA: Presumption of obviousness where ranges overlap

The Federal Circuit held that, in overlapping-range cases, a challenger may establish a presumption of obviousness, i.e., a prima facie case of obviousness, by showing that the claimed values fall within or near prior-art ranges under circumstances where a skilled artisan would have been motivated to optimize and would reasonably expect similar properties. That showing shifts the burden of production, not the burden of persuasion.

Read more:

Blogs:

Summary

Shockwave Medical v. Cardiovascular Systems: Routine design choice

The Federal Circuit reversed the Board's determination of non-obviousness as to claim 5, saying “The Board [failure] to consider the combined teachings of the prior art led it to improperly discount CSI’s argument in its petition that modifying Uchiyama to place the electrodes outside the lumen would have been a routine design choice. Stated the court:

When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” KSR, 550 U.S. at 421. We explained in Uber Technologies, Inc. v. X One, Inc., ¹⁾ that when there are a limited number of well-known design choices in the prior art it would have been obvious to substitute one for the other.

On July 31, 2025, the USPTO issued a memo noting that Rule 104(b)(4) would be strictly enforced. The memo clarifies that “As a practical matter, enforcement of Rule 104(b)(4) means that applicant admitted prior art (AAPA), expert testimony, common sense, and other evidence that is not “prior art consisting of patents or printed publications” ( collectively, “general knowledge”) may not be used to supply a missing claim limitation.”

102 Prior Art

CAFC Precedential - 2025 - Prior Art

ams-OSRAM USA v. Rensas Electronics America: “Proper accessibility” in Texas

The Federal Circuit reversed Judge Mazzant in the Eastern District of Texas on his holding that a trade secret first became accessible when Intersil successfully reverse-engineered the trade secret from TAOS' product. The court held that:

Under Texas law, information that is generally known or readily available by independent investigation is not secret for purposes of trade secrecy. Information cannot be the subject of a trade secret if it is readily ascertainable without engaging in tortious behavior. The practical focus of the inquiry reflects the need to ensure that a tradesecret remedy is tailored to preventing or negating the unfair advantage derived from improper acquisition. A trade secret becomes “properly accessible” where the secret is embodied in a publicly available product: Under Texas trade-secret principles, information is not secret once it is readily ascertainable by proper means, including straightforward reverse engineering after public release; proper accessibility does not depend on when the misappropriator actually succeeded in reverse engineering.

In Re Riggs: The provisional application relied upon for priority must provide written description support for portions of the reference relied upon for the rejection

The Federal Circuit held that a published application's pre-AIA § 102(e) date can reach back to a provisional only for subject matter in the published application that is actually supported in the provisional, and vacated the Board's decision for lacking that analysis.

Lynk Labs v. Samsung Electronics Co.: Pre-AIA 102(e)(1) reference is prior art as of its filing date, even if published after the challenged patent's priority date

The Federal Circuit affirmed the Board's unpatentability determination in an inter-partes review applying pre-AIA §§ 102/103 prior art rules within the AIA IPR framework.

In particular, the Federal Circuit held that, in an IPR, a published U.S. application qualifies as a prior-art printed publication as of its U.S. filing date by virtue of pre-AIA § 102(e)(1), even if published after the challenged patent's priority date. Because a published patent application is a “printed publication” and pre-AIA § 102(e)(1) accords such applications prior-art effect as of their U.S. filing date, § 311(b)'s “prior art consisting of patents or printed publications” includes published applications with § 102(e)(1) filing-date priority even if publication post-dates the challenged patent’s priority date.

Merck Serono v. Hopewell Pharma Ventures: Pre-AIA § 1-2(a)/(3): “by another” includes overlapping inventors

The Federal Circuit clarified the pre-AIA meaning of “by another” or “by others” under § 102(a)/(e) when a reference and the challenged patent have overlapping inventors. Specifically, the court held that, for joint-inventor patents, a reference disclosure is excluded as not “by another” only if the relied-upon disclosure reflects the work of the same inventive entity as the challenged claims. Any mismatch in inventive entity (whether inventors are added or omitted) makes the disclosure “by another” unless the patentee proves teh disclosure was the joint invention of the later inventive entity.

In addition, the court held that the PTAB did not violate the APA by applying identity of inventive entity rule without additional opportunity for evidence or argument. Stated the court: “Land controls the legal definition of 'by others' or 'by another' in §§ 102(a), (e). Merck thus cannot claim a lack of knowledge of the rule of law based on some arguably contrary language int he MPEP.”

112 Enablement and Written Description

CAFC Precedential - 2025 - § 112 Enablement and Written Description

Patent in suit: 8,167,141

Claim 1: A gravity-fed water filter, comprising:

filter media including at least activated carbon and a lead scavenger;

wherein the filter achieves a Filter Rate and Performance (FRAP) factor of about 350 or less according to the following formula: [metric].

Brita LP v. ITC: Single enabled embodiment is insufficient to meet written description or enablement requirements for a broad functional claim

The Federal Circuit affirmed the ITC's holding that Brita's patent for a gravity-fed filter is invalid for lack of written description, lack of enablement, and indefiniteness. The patent lacked written description support for a functionally-defined genus claim that extended beyond the single disclosed species.

Duke Univ. v. Sandoz: Adequate written description of claimed chemical genus/subgenus

The Federal Circuit reversed the lower District of Colorado decision that claim 30 was non invalid. Specifically, the Federal Circuit held that claim 30 lacked adequate written description support for a claimed chemical genus/subgenus because the written description failed to present either a representative number of species within the claimed scope or disclosure of common structural features with enough precision (i.e., sufficient blaze marks) for a skilled artisan to visualize or recognize the claimed members.

Read more:

In re Riggs: Priority date of prior art reference limited by support in the priority document

The Federal Circuit reversed the PTAB's finding of invalidity based on a § 102(e) prior art reference. To predate the critical date, the Board accorded to the reference a priority date based on the filing date of the provisional application, and cited Dynamic Drinkware for the proposition that so long as a single claim is supported by the priority document (i.e., the provisional application) then all of the content of the application is accorded that priority date.

The Federal Circuit vacated PTAB's assertion that a previously filed patent application qualifies as prior art under Dynamic Drinkware. Stated the court: “to claim priority to the provisional filing date, the portion of the application relied on by the examiner as prior art must be supported by the provisional application.”

Summary (cross-post )
Summary and analysis (cross-post)

Sage Products v. Stewart: Enablement when demonstrated by a second reference.

Here, the Federal Circuit held that enablement of an anticipatory reference may be supported by a second references that demonstrates the claimed subject matter was in the public’s possession or could be practiced by skilled artisans using routine/known techniques; considering additional references to assess the state of the art is permissible and does not necessarily constitute impermissible gap-filling.

Seegan v. Daiichi Sankyo Co.: Broad genus disclosure insufficient to support/enable later-claimed subgenus

The Federal Circuit reversed the Eastern District of Texas' denial of Daiichi's JMOL motion for dismissal of the jury verdict based on the claims being unsupported by sufficient written description and non-enabled. Because the patent relied on a priority date of a previously-filed application to predate the sale of Daiichi's cancer drug, Enhertu, the court commented that “one cannot avoid the suspicion that the '039 patent was filed specifically to encompass Enhertu, which is permissible if it was entitled to a filing date antedating any public disclosure of Enhertu.”

The court held:

When claims broadly cover any member of a large and unpredictable class and are defined by functional performance, a specification that provides no common quality enabling all functional embodiments and instead requires extensive assay-based, trial-and-error screening does not enable the full scope without undue experimentation under §112(a) (as explained in Amgen v. Sanofi).
A disclosure of a very broad genus (millions of potential species) does not satisfy written description for a later-claimed subgenus absent reasonably specific disclosure or “blaze marks” that direct skilled artisans to the particular subgenus; speculative modification paths or “leaps” to the subgenus are insufficient to show possession as of the priority date.
Expert testimony that skilled artisans could arrive at a claimed subgenus only by making a “straightforward leap” from disclosed examples confirms, rather than cures, the absence of written description because §112(a) requires disclosure of the specific claimed subject matter, not an invitation to infer or modify toward it.

In re: Xencor, Inc.: Jepson claim preambles are limiting and must be enabled.

The Federal Circuit upheld the Appeals Review Panel's ruling that § 112 requires that the specification provide support for the admitted prior art preamble to a Jepson claim as well as the novel subject matter recited after the transitional phrase (e.g., “wherein the improvement comprises”).

Elsewhere:

Analysis
Summary (cross-post)
Oral Arguments: AICT

Mondis Tech. v. LG Electronics: District court reversed on unsupported identifier mapping

The Federal Circuit reversed the District of New Jersey because the amended claim limitation requiring an ID number that identifies at least a type of display unit lacked written-description support in the originally filed specification, which only disclosed one-to-one identification of specific devices and did not reasonably convey possession of type-based identification.

Novartis Pharma. v. Torrent Pharma: Enablement not required as to infringed product

The Federal Circuit reversed the Distr. of Delaware's finding that that the '659 patent was required to describe the full scope of the asserted claims, including the accused complexes sold by Novartis.

Specifically, the Federal Circuit held that § 112 written description requires that the specification reasonably conveys possession of the claimed subject matter; it need not describe unclaimed later-discovered features (such as a complexed form) even if an accused product practicing those features may infringe the properly construed claims.

112 Indefiniteness

CAFC Precedential - 2025 - § 112 INDEFINITENESS

Akamai Tech. v. MediaPointe: Objective boundaries needed for “optimal” or “best” in claim

Claim 1. A system [. . .] wherein the management center comprising a mapping engine that is configured to map trace routes between the management center, at least one of the nodes, and at least the first client so as to determine one or more optimal routes. . . .“

The Federal Circuit affirmed invalidity where degree terms (“optimal,” “best”) lacked objective boundaries in the intrinsic record, despite reference to trace-route measurements. The court held that terms of degree are indefinite unless the specification/prosecution history supply objective boundaries that allow a skilled artisan to determine scope with reasonable certainty; merely requiring use of trace-route data does not cure indefiniteness where the intrinsic record leaves open-ended which factors apply and how to resolve tradeoffs among metrics that can diverge. A claim’s requirement to use a tool or dataset (here, trace routes) does not provide an objective boundary if it is non-exclusive (other factors may be considered) and does not specify how to choose among multiple potentially conflicting measurement methods or combinations.

Canatext Completion Solutions v. Wellmatics: Antecedent basis error non-fatal

The Federal Circuit reversed an indefiniteness holding based on missing antecedent basis error by concluding the claim contained an obvious error that can be judicially corrected. Because the issue was resolved on intrinsic evidence without fact findings, the court treated the matter as de novo claim interpretation and rejected reliance on expert testimony not supplying extrinsic facts. The court also confirmed that the judicial correction is unavailable if the prosecution history suggests a different interpretation, and found no such prosecution-history indication here.

The court held that it may judicially correct claim language only under a demanding standard: the error must be evident on the face of the patent to a skilled artisan, the correction must not be subject to reasonable debate based on the claims and specification, and the prosecution history must not suggest a different interpretation (and, at least here, the correct is a simple or minor textual change).

112(f) - Means + Function

112(f) Means Plus Function

Fintiv v. PayPal Holdings: “handler” is a nonce term

The Federal Circuit held that the district court correctly analogized “handler” with the nonce term, “module” which was previously determined to be a generic description of software or hardware that performs a specified function. The prefix “payment” (for “payment handler”) did not impart structure and merely describes the function of the handler: to perform payment functions. The Federal Circuit further agreed with the district court that the specifications of the asserted patents do not disclose any algorithm to perform the recited function, and held the payment-handler terms indefinite.

Optis Cellular Technology v. Apple: District court's reasoning that “selecting unit” does not invoke § 112 ¶ 6 failed to explain how the selecting unit operates

The Federal Circuit held that “selecting unit” invoked § 112 ¶ 6 and remanded for the corresponding structure and indefiniteness analysis. More specifically, the court found that a “unit” term modified only by functional language (e.g., “selecting”/“configured to randomly select”) is a nonce term that fails to connote sufficiently definite structure and therefore invokes § 112 ¶ 6; remand is appropriate for the district court to determine whether the specification discloses adequate corresponding structure (and resulting definiteness).

Steuben Foods v. Shibuya Hoppmann: District court's JMOL reversed; infringement found under § 112 ¶ 6 “equivalents” standard

The Federal Circuit reversed the district court's JMOL of noninfringement for a § 112 ¶ 6 “means for filling” limitation where substantial evidence supported that accused structures were equivalent in the context of the claimed function. For a § 112 ¶ 6 limitation, structural differences must be assessed in the context of the claimed function and the overall corresponding structure; substantial evidence can support equivalence where accused components perform the identical function in substantially the same way with substantially the same result, even if component-level details differ.

Claim Construction

CAFC Precedential - 2025 - Claim Construction

Akamai Technologies v. MediaPointe: “Received by a management center” means the “request” is properly limited to an electronic message, not the act of entering a URL into a browser

The Federal Circuit held that the ordinary meaning of an unconstructed limitation still must be a reasonable meaning in context. Here, it was reasonable for a jury to find that “request . . . received by a management center” is limited to a computer message. Even when a limitation is left to ordinary meaning, the factfinder may adopt only meanings that are reasonable in context; language requiring a “request” to be “received by” a management center reasonably denotes a computer message capable of being received, not a user’s generalized “attempt” to access content.

Alnylam Pharmas. v. Moderna: Claim term limited to express definition despite being qualified by “unless otherwise specified” and dependent claim differentiation argument

The Federal Circuit affirmed the Delaware district court's ruling that the specification's “Definitions” section controls the meaning of the claimed term where it appears unless the patent clearly and explicitly says otherwise. Here, the court rejected the logic that, where a dependent claim is presumed to further narrow the asserted independent claim, the defined term must be more broadly construed because the dependent claim, in this case, can still narrow the independent claim in a different way without contradicting the definition.

Posts:

Thorough analysis
- cross-post

Apple v. Gesture Techn. Partners: Plain meaning does not import implication

The Federal Circuit affirmed the lower court's interpretation of a dependent claim requiring “a light source for illuminating said object” as not requiring that the light source illuminate the object while the camer means obtains an image of the object. The court held that it will not import an unstated temporal or antecedent-basis limitation into a dependent claim.

Bayer Pharma v. Mylan Pharmas.: Functionally unrelated limitations; “product comprising” two ingredients must be a single dosage form or product containing both ingredients

The Federal Circuit held that adding the limitation “clinically proven effective” cannot confer patentability to an otherwise anticipated or obvious treatment method, making inherent anticipation analysis unnecessary. The court distinguished Allergan Sales v. Sandoz ²⁾ stating that the phrase “clinically proven effective” does not further limit the claimed invention since the claims already specify exact dosages to be administered and therefore the additional limitation “clinically proven effective” does not further define the dosages that are administered.

The Federal Circuit also found that the phrase “a first product comprising rivaroxaban and aspirin” requires a single dosage form/product containing both rivaroxaban and aspirin; construing it to cover separate dosage forms would improperly render “a first product comprising” meaningless and is inconsistent with the specification’s distinction between separate dosage forms and a combination dosage form.

Causam Enterprises v. Ecobee Techs: PTAB's refusal to accept patent owner's proposed construction incorporating temporal component

The Federal Circuit affirmed the Board's construction of a key limitation, rejecting an added restriction not supported by the claim language and disfavored because it would exclude disclosed embodimetns. The court held that claim language requiring data to “correspond” to a power reduction does not, without more, impose a temporal restriction on when the data are generated, and constructions that would exclude disclosed embodiments (e.g., estimates or database-derived values measured before or after an event) are disfavored.

In re Xencor: “Treating a patient” in preamble is limiting because another portion of the preamble is referred from the claim body, and the two preamble portions cannot, in this instance, be split into limiting and non-limiting parts

The Federal Circuit agreed with the ARP that “the preamble term 'treating a patient by' is limiting. First, it is important that Xencor does not dispute that the second part of the preamble, 'administering an anti-C5 antibody,' is limiting. The claim language refers back to this section of the preamble—'wherein said anti-C5 antibody with said amino acid substitutions has increased in vivo half-life as compared to said antibody without said substitutions.' At least one portion of the preamble is therefore limiting. Although we may split a preamble into limiting and non-limiting parts, and have done so in cases such as TomTom, Inc. v. Adolph, ³⁾, the preamble here 'cannot be neatly packaged into two separate portions.' Bio-Rad Lab’ys, Inc. v. 10X Genomics Inc., ⁴⁾. Here, the phrase 'treating a patient' is directly connected with the word 'by' to the phrase 'administering an anti-C5 antibody.' And given our 'disinclination' to 'splic[e]' a preamble into limiting and non-limiting parts, id. at 1371, this lends credence to the argument that the entire preamble should be considered limiting.”

Merck Serono v. Hopewell Pharma Ventures: Claimed dosing of an amount in mg/kg does not require weight-based dosing steps

The Federal Circuit rejected an implied patient-weight determination limitation when a claim recited a dose expressed in mg/kg amounts. The court held that claims reciting a “total dose reached” expressed in mg/kg do not, without an explicit step, require determining patient weight or performing weight-based dosing calculations; a prior-art disclosure (or infringement) can satisfy the limitation based on the administered dose fitting the claimed range regardless of how that dose was determined.

Regeneron Pharmas. v. Mylan Pharmas.: Becton presumption applies to pharmaceutical formulation claim that separately formulation components

The Federal Circuit affirmed a denial of preliminary injunction based on a substantial question of noninfringement because the accused product lacked separately claimed component under the adopted construction, where separately recited “VEGF antagonist” and “buffer” are presumed to be distinct under Becton.

The court held:

When a claim recites a composition as comprising separately listed elements, there is a rebuttable presumption (a “clear implication”) that those elements are distinct components; that framework applies to pharmaceutical formulation claims that list “VEGF antagonist” and “buffer” separately.
To rebut the presumption of separateness, the patent record must support that a single structure/component can satisfy both limitations; where the claims and specification consistently treat the limitations as separate (including different concentration units and embodiments always using a plus-separate component), the presumption is not overcome.

Rex Medical v. Intuitive Surgical: A “beam [that] comprises an upper portion and a lower portion and a web coupled between the upper portion and the lower portion . . . configured to cause the staple pusher to move a staple” does not imply an I-beam shape

Here, the Federal Circuit held that, absent intrinsic evidence clearly narrowing scope, courts should not import limitations from a depicted embodiment to confine a broader claim term (here, “lower portion”) to a specific I-beam substructure when the claim does not require an I-beam.

Shockwave Medical v. Cardiovascular Systems: “Angioplasty balloon,” in the context of a device for pulverizing hardened vascular plaque, does not require that the balloon press plaque into the vessel wall

The Federal Circuit held that absent clear claim language, specification support, or prosecution disclaimer, “angioplasty balloon” is not limited to balloons that displace plaque into the vessel wall; adding “angioplasty” during prosecution without clear narrowing statements does not create a disclaimer of broader scope.

Sierra Wireless v. Sisvel: “Mutually exclusive” conditional language in claims

Claim 1: A method of performing automatic repeat request (ARQ) in a wireless communication system, the method performed by a receiver and comprising:

[a] detecting whether at least one data block to be received from a transmitter is missed;

[b] starting a timer when the at least one data block is detected as missed;

[c] stopping the timer when the at least one data block is received from the transmitter while the timer is running, in order to prevent a triggering of a status report before the timer expires; and

[d] transmitting the status report to the transmitter after the timer expires, wherein the status report comprises a positive acknowledgement indicating receipt of at least one received data block.

The Federal Circuit rejected the Board's reasoning that limitations 1[c] and 1[d] are mutually exclusive and “cannot both occur i response to the same set of stimuli” because the timer either stops . . . or expires.“ The court said “that conclusion does not follow from the premise describing the claim language. [. . .] Here, we reject the Board's conclusion because the plain and unambiguous language of claim 1 requires that a method, to come within the claim, must perform both limitations 1[c] and 1[d] where their preconditions apply.” This opinion effectively supersedes the PTAB's precedential ruling in Ex Parte Schulhauser.

The opinion also reinforces procedural rigor at the PTAB: expert testimony on anticipation and obviousness must come from at least a person of ordinary skill in the art as defined by the Board. Because the Board credited testimony from a declarant who lacked the required qualifications without making a specific finding that his experience sufficed, the Federal Circuit vacated the decision for abuse of discretion.

Click here for court holdings:

Summary and analysis
Oral arguments: AICT

Sigray v. Carl Zeiss X-Ray Microscopy: Magnification of 1X - 10X includes 1

The court held claims anticipated due to inherent disclosure of prior art, finding that the Board improperly and implicitly construed the claimed numeric magnification range (between 1 and 10) to exclude small magnification (that was inherent to the prior art due to non-parallel rays) and held that construction erroneous under the claim's plain meaning. A tribunal engages in claim construction when its reasoning effectively narrows a claim term’s scope (e.g., by requiring divergence “enough” to produce a certain level of magnification); absent intrinsic evidence to the contrary, a numeric range’s plain meaning controls and includes even very small values within the endpoints.

Claim Construction - Intrinsic Evidence

CAFC Precedential - Claim Construction - Reliance on Intrinsic Evidence

Aortic Innovations v. Edwards Lifesciences: Implied narrowing of term by interchangeable use in specification

Patents in suit:

The Federal Circuit affirmed construing “outer frame: as a “self-expanding frame” based on clear implied lexicography via consistent interchangeable use in the specification. Because the accused device's frame expanded only with the assistance of a balloon, it did not read on the claimed “outer frame.”

Holdings:

A patent’s clear and consistent interchangeable use of a claim term with a narrower term in the specification can constitute implied lexicography that equates the terms, supporting a construction that imports that narrower meaning into the claim.
Where the specification repeatedly characterizes the claimed “outer frame” in transcatheter-valve embodiments as a self-expanding frame and the claim’s “inner frame” (undisputedly) is balloon-expandable, construing “outer frame” as “self-expanding frame” is proper.

FMC v. Sharda USA: Importing a narrowing definition dropped from provisional application is improper

The Federal Circuit reversed the lower court's claim construction that relied on a narrowed interpretation based on a discussion in the provisional application but not in the asserted patent. The court held that when the patentee materially deletes limiting terminology (here, stability-related disclosures) between a provisional application and the issued patent’s specification, those deleted disclosures cannot be used to re-impose the deleted limitation in claim construction; the claim term should receive its plain and ordinary meaning absent other intrinsic support. Although similar claim terms in related patents are often construed consistently, that presumption yields where the patentee materially altered the specification in certain family members in a way that would direct a skilled artisan to understand a different intended meaning.

The court also rejected an attempt by FMC to narrow the claim scope based on a use in the pramble. Preamble language that merely states a purpose or intended use generally is not limiting. Moreover, differences in preamble wording across claims do not make the preamble limiting absent a basis to treat the preamble as claim scope-defining.

HD Silicon Solutions v. Microchip Tech.: Intrinsic evidence controls interpretation of “comprising tungsten” as “elemental tungsten” and not compounds thereof

The Federal Court construed “comprising tungsten” to require elemental tungsten and held the Board's broader construction was incorrect, emphasizing intrinsic evidence over extrinsic evidence. Where the intrinsic record uses explicit compound nomenclature when compounds are intended (e.g., “titanium nitride”) and otherwise discusses a material only as the element with element-specific properties, “comprising [element]” is properly construed to require the elemental form (allowing incidental impurities) rather than encompassing compounds of that element. Extrinsic evidence (including other patents/publications) may assist understanding but cannot be used to vary or expand a claim meaning that is indicated by the patent’s claims/specification/prosecution history.

Iqris Techs. v. Point Blank Enterprises: Discussion of prior art is not clear and unequivocal disavowal

The Federal Circuit held that the district court improperly imported limitations into the term “pull cord,” rejecting a construction requiring direct pulling by a user and excluding cords with handles. The court held that, absent claim language or clear intrinsic evidence of lexicography/disavowal, a court may not limit “pull cord” to cords directly pulled by a user merely because the specification’s preferred embodiments depict direct pulling or use different labels for other cords.

Lynk Labs v. Samsung Electronics Co.: Intrinsic evidence shows “match” not limited to numerical equivalence

The Federal Circuit construed the claim term “matches” to mean “equal to or less than,” rather than strict equivalence, because the intrinsic evidence consistently describes “matching” in functional, tolerance-based terms rather than exact numerical identity. Reading the claim language in light of the specification as a whole, the court explained that the invention is concerned with avoiding over-driving LEDs, which is satisfied when the rectified input voltage does not exceed the aggregate forward voltage of the LEDs. Nothing in the intrinsic record limits “matches” to exact equality, and multiple passages expressly contemplate a “less than or equal to” relationship, making a broader construction not only reasonable but required.

Claim Construction - Disclaimer

CAFC Precedential - 2025 - Claim Construction - Prosecution disclaimer

Azurity Pharmas v. Alkem Labs.: Adding “consisting of” to avoid prior art is a clear and unmistakable disclaimer

The Federal Circuit held that Azurity clearly and unmistakably surrendered claim scope covering any presence of propylene glycol by inserting “consisting of” the list of ingredients to avoid prior art wherein propylene glycol was used as a stabilizer, even though th list of ingredients included a flavoring agent. Because the accused device included a flavoring agent containing propylene glycol it was non-infringing.

Barrette Outdoor Living v. Fortress Iron: criticism in spec of prior art feature does not justify construing claims as avoiding that feature

The Federal Circuit affirmed noninfringement based broadly construing “boss” not necessarily fastener-less, despite the patent's discussion of multiple advantages of fastener-less bosses. The court held that a patent's discussion of multiple advantages does not justify importing one advantage-related feature into claims absent absent clear and unmistakable disclaimer; here, criticism of fastener-based prior art did not clearly limit “boss” to fastener-less structures.

Eye Therapies v. Slayback Pharma: “Consisting essentially of” narrowed by prosecution disclaimer

The Federal Circuit relied on prosecution history statements accompanying an amendment define the scope of “consisting essentially of,” treating explanatory remarks and definitional “i.e.” usage as limiting. The court held that although “consisting essentially of” is typically semi-open, the intrinsic record can assign it an atypically restrictive meaning; here, the prosecution history establishes that the phrase excludes use of active ingredients other than brimonidine in the claimed methods. When the applicant uses “i.e.” to equate a claim phrase with a particular meaning in prosecution arguments, that usage is strongly definitional and supports construing the claim phrase consistently with the stated definition. Where claims were narrowed during prosecution, claims need not cover every described embodiment.

Focus Products Group Internat'l v. Kartri Sales Co.: Election of species without objection is disclaimer of non-elected species

The Federal Circuit reversed the District Court for the Southern District of NY based on corrected claim scope for a shower curtain “ring.” The court held that prosecution history including restriction and an election to withdraw nonelected species, and prosecution of a divisional application excluding the elected species can constitute clear and unmistakable disclaimer of the claim scope. Here, because the properly construed claims exclude a feature present in the accused product (i.e., rings with flat upper edges) summary judgment of infringement cannot stand and must be reversed as to the party preserving the noninfringement issue.

Maquet Cardiovascular v. Abiomed: Related applicant's prosecution history is relevant only when the earlier prosecution addresses a limitation in common with the claim term being construed

The Federal reversed and remanded to the district court's claim construction claims with added negative limitations. The court held that prosecution disclaimer from a related patent's prosecution is relevant only when the earlier prosecution addresses a limitation in common with the claim term being construed; material differences in claim language (e.g., claiming an “entire elongate lumen distal to” a component versus a “guide mechanism comprising a lumen”) defeat reliance on that history to import a negative limitation.

Restem v. Jadi Cell: Applicant's acquiescence to Examiner's repeated characterization constituted disavowal

The Federal Circuit held that clear examiner statements characterizing the allowed claim scope, coupled with applicant acquiescence during prosecution, can narrow claim scope (here, to a “cell population”), and that narrowed understanding may control over broader specification disclosures/definitions.

IPR reality check (posted 11/25/25)

Kilpatrick recently posted about a briefing recently made to industry leaders by attorneys Justin Krieger and Nicki Kennedy on how discretionary denials have surged under recent leadership. They noted that institution rates, once around 75%, have plummeted, with former Acting Director Stewart’s net rate dropping to roughly 32% and Director Squires recording zero institutions out of 34 petitions to date.

The briefing highlighted:

Increased scrutiny on the timing of filings, especially for older patents or situations where a challenger is viewed as having long been aware of the invention.
A new two-track briefing process that separates discretionary issues from the merits while offering little transparency into how decisions are made.
Proposed rule changes that would significantly limit petitioners’ strategic options and recent decisions signaling stricter requirements around disclosures and consistency across forums.

Overall, they emphasized that the IPR system is experiencing its most significant shift in years, with petitioners facing unprecedented front-end hurdles and patent owners seeing dramatically higher survival rates. It is clear from the Kilpatrick post that the IPR framework is no longer functioning as a neutral, predictable alternative to district court validity litigation. Instead, it is operating as a discretionary, policy-driven filter that strongly favors patent owners and dramatically limits the circumstances in which petitioners can obtain PTAB review:

An institution rate of 0/34 under the current Director is not subtle; it suggests that policy priorities outweigh the traditional merits-based inquiry.
Front-end procedural filters are now more influential than substantive prior-art arguments. The emphasis on timing, “settled expectations,” knowledge of the patent, multi-step briefing, and disclosure requirements means the process determines outcomes before the PTAB ever considers obviousness or anticipation.
Predictability and transparency have decreased. Bulk denials without explanation and a process that masks which judges participate make it harder for practitioners to understand the standards being applied.
The system appears designed to sharply curtail IPR usage. Proposed rules, like mandatory stipulations preventing petitioners from raising any prior-art invalidity grounds elsewhere, indicate a deliberate policy shift to discourage or even deter IPR filings in parallel with district court litigation.
Appeal rights are shrinking. The Director can vacate a Final Written Decision after the fact⁵⁾, without judicial review.

Federal Circuit construes Pre-AIA 102(a) and 102(e) "by another" in precedential ruling (posted 11/02/25)

In Merck Serono S.A. v. Hopewell Pharma Ventures, Inc.⁶⁾, The court affirmed the Board, holding that under pre-AIA 35 U.S.C. § 102(a) and (e), a reference counts as work “by another” unless the inventive entity is identical to that of the patent at issue. A disclosure made by only a subset of the named inventors—or by some inventors plus others not named on the later patent—remains prior art.

USPTO's Automated Search Pilot Program

On October 20, the USPTO launched a pilot program enabling applicants early access to relevant prior art listed in an AI-generated pre-examination search report. Under the program, applicants filing new, noncontinuing utility applications may petition to receive an Automated Search Results Notice (ASRN)—a listing of up to ten potentially relevant prior-art references identified by a USPTO-developed AI system—before any examiner reviews the case. The automated search uses the application’s classification and content to identify similar documents across U.S. and foreign patent databases, ranking them by relevance.

The USPTO's Streamlined Claim Set Pilot Program is live (posted 11/02/25)

On October 27, 2025, the USPTO announced a new pilot program enabling applicants to obtain streamlined prosecution for new patent applications with a limited set of claims.

Participation requirements:

Confirm application eligibility:
- The application is an original, noncontinuing utility application.
- The application was filed before October 27, 2025.
- The application has not yet been assigned to an examiner.
- The application was filed electronically in DOCX format.
- The application will be published (file a rescission if a non-pub request was submitted).
- No inventor on the application was named on more than three other pilot petitions
Confirm claim-set compliance (a preliminary amendment may be submitted simultaneously with the below petition to meet these requirements):
- No more than 1 independent claim and 10 total claims, no multiply-dependent claims.
- Each dependent claim refers to the a previous claim in the preamble and are in the same statutory class. The preamble requirement is strict; refer to the Notice for details.
Electronically file petition (with non-refundable fee undder 37 C.F.R. § 1.17(h)) using form PTO/SB/472, including certification statements and agreement to maintain streamlined claim limits through pendency

CAFC: Using mobile device to deposit checks is abstract (posted 11/02/25)

In United Services Automobile Association, v. PNC Bank, the Federal Circuit reversed the Eastern District of Texas’s summary-judgment ruling that U.S. Patent No. 10,402,638 was patent-eligible under 35 U.S.C. § 101. The panel applied the Alice two-step framework and held that the asserted claim, directed to using a handheld mobile device to remote deposit a check, was drawn to the abstract idea of depositing a check and lacked any inventive concept that could transform that idea into patent-eligible subject matter.

Click here to read more

Summary
Oral Arguments: AICT (substantive arguments begin at 23:52)

Polarized - Proposed IPR Rule Analysis (posted 10/22/25)

The USPTO's proposed IPR rulemaking has been very polarizing among patent experts.

In one view, the proposed IPR rulemaking would substantially restrict access to post-grant review, prioritizing administrative efficiency and “quiet title” over patent quality and fairness to accused infringers. By converting prior, possibly flawed challenges into de facto final determinations of validity, the rules risk insulating questionable patents from further scrutiny, empowering non-practicing entities, and shifting the burden and cost of validity disputes back to district courts. While the goal of reducing duplicative proceedings is understandable, the proposal would foreclosing legitimate, later-arising challenges and undermine the corrective purpose that Congress intended the IPR system to serve.

On the other side, patent rights advocates, such as IPWatchdog’s Gene Quinn, see the proposed rule as a long-overdue correction to what they view as an over-weaponized IPR system that eroded confidence in patent rights and encouraged serial “death-by-a-thousand-cuts” challenges. They argue the proposed rule restores the balance Congress intended by forcing challengers to pick a single forum and by strengthening the presumption of validity for patents that have already withstood scrutiny.

ARP reverses PTAB panel on AI ineligibility (posted 10/02/25)

In Ex parte Desjardins ⁷⁾, the USPTO’s Appeals Review Panel (ARP) reversed a PTAB panel’s new § 101 rejection of claims directed to methods for training machine learning models to avoid catastrophic forgetting. While the panel accepted that the claims recite some abstract mathematical concepts, it held that, viewed as a whole, they integrate those concepts into a “practical application” — specifically, improving how machine learning models are trained to sequentially learn multiple tasks while preserving prior knowledge, reducing storage requirements, and lowering system complexity. The ARP emphasized that innovations improving the functioning of the machine learning model itself can be patent-eligible under Enfish and related cases, and cautioned against categorically dismissing AI advancements as mere “algorithms.”

Click here to read more

Stated the Panel:

Enfish ranks among the Federal Circuit's leading cases on the eligibility of technological improvements. In particular, Enfish recognized that '[m]uch of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes.' 822 F.3d at 1339. Moreover, because '[s]oftware can make non-abstract improvements to computer technology, just as hardware improvements can,' the Federal Circuit held that the eligibility determination should turn on whether “the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.” Id. at 1336.
Paragraph 21 of the Specification, which the Appellant cites, identifies improvements in training the machine learning model itself. Of course, such an assertion in the Specification alone is insufficient to support a patent eligibility determination, absent a subsequent determination that the claim itself reflects the disclosed improvement. See MPEP § 2106.05(a) (citing Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316 (Fed. Cir. 2016)). Here, however, we are persuaded that the claims reflect such an improvement. For example, one improvement identified in the Specification is to 'effectively learn new tasks in succession whilst protecting knowledge about previous tasks.' Spec. ,r 21. The Specification also recites that the claimed improvement allows artificial intelligence (AI) systems to 'us[e] less of their storage capacity' and enables 'reduced system complexity.' Id. When evaluating the claim as a whole, we discern at least the following limitation of independent claim 1 that reflects the improvement: 'adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task.' We are persuaded that constitutes an improvement to how the machine learning model itself operates, and not, for example, the identified mathematical calculation.

On December 5, 2025, the USPTO issued a memo outlining upcoming changes to the MPEP based on the Desjardins decision.

Federal Circuit implicitly rejected reasoning in Schulhauser (posted 09/05/25)

On March 10, 2025, the Federal Circuit, in Sierra Wireless v. Sisvel,⁸⁾ clarified how claims with alternative conditions must be construed. The Board had treated alternative method claim limitations as mutually exclusive and therefore satisfied if the prior art disclosed either one. The Federal Circuit rejected that reasoning, holding instead that where a claim recites multiple steps in the conjunctive, a method must perform both steps when their respective conditions arise. The court emphasized that conditional or alternative outcomes do not relieve the claim of requiring each recited step; they operate together when their triggering conditions apply. This opinion effectively supersedes the PTAB's precedential ruling in Ex Parte Schulhauser.

The opinion also reinforces procedural rigor at the PTAB: expert testimony on anticipation and obviousness must come from at least a person of ordinary skill in the art as defined by the Board. Because the Board credited testimony from a declarant who lacked the required qualifications without making a specific finding that his experience sufficed, the Federal Circuit vacated the decision for abuse of discretion.

Click here for court holdings:

Summary and analysis
Oral arguments: AICT

POPA Sues Trump (posted 09/03/25)

On September 2, 2025, the Patent Office Professional Association, representing nearly 9,000 patent examiners, along with the National Weather Service Employees Organization, sued the Trump administration for declaratory and injunctive relief in opposition to the President's August 28th executive order stripping the National Weather Service, the National Environmental Satellite, Data and Information Service, and the U.S. Patent and trademark Office employees of their collective bargaining rights under the Federal Service Labor Management Relations Statute. The Complaint seeks to overturn multiple Executive Orders as unlawful and ultra vires, restore collective bargaining rights and agreements, and stop the administration from retaliating against them for exercising their First Amendment rights to petition and advocate on behalf of their members.

CAFC opines on derivations (posted 08/26/25)

In Global Health Solutions LLC v. Selner, the CAFC issued its first precedential opinion on derivation proceedings under the America Invents Act, clarifying their distinct role in the first-to-file regime. The court emphasized that AIA derivation is not a replay of pre-AIA interferences; rather, the inquiry centers on whether the first-filer’s conception was independent or derived from another. The panel also confirmed that an inventor may prove conception without actual reduction to practice, provided the invention is defined with sufficient clarity.

Click here for holdings:

Analysis
Oral Argument: AICT

CAFC holds that a mechanical apparatus is non-abstract, reversing district judge (posted 08/20/25)

In PowerBlock Holdings, Inc. v. iFit Inc., the Federal Circuit reversed the district court’s dismissal of PowerBlock’s claims under § 101, holding that claims directed to selectorized dumbbells with motorized weight selection were not abstract ideas. The court emphasized that claim 1 recited a specific mechanical configuration—nested weight plates, a movable selector, and an electric motor physically coupled to move the selector—that constituted a “technological improvement” rather than a result-oriented abstraction. Unlike prior cases involving “do it on a computer” patents, the claims here were directed to a concrete machine with defined structural limitations. The court also rejected iFit’s argument that conventional dumbbell components should be ignored, clarifying that § 101 does not allow old elements to be read out of the eligibility inquiry. Because the claims as a whole recited a specific implementation of a mechanical improvement, they were patent-eligible at Alice step one.

Court holdings

Deputy Comm. for Patents issues memo on AI eligibility (posted 08/13/25)

The Patent Office released an internal memo reminding examiners that “a claim does not recite a mental process when it contains limitation(s) that cannot practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitation(s)” and further “[c]laim limitations that encompass AI in a way that cannot be practically performed in the human mind do not fall within [the mental process] grouping.” With respect to Step 2A prong 2, the memo reminds examiners that “Step 2A Prong Two considers claims as a whole” (emphasis in original).

Precedential CAFC opinion specifies necessary evidence for 35 U.S.C. § 112(a) rejection (posted 08/11/25)

In Mondis Technology Ltd. v. LG Electronics Inc., the Federal Circuit reversed a jury verdict upholding the validity of U.S. Patent No. 7,475,180, finding claims 14 and 15 invalid for lack of written description. The court emphasized that when the face of a patent shows the claimed limitation is unsupported—as confirmed by the patentee’s own expert—no reasonable jury could find otherwise, even without contrary expert testimony from the challenger. It also rejected arguments that the presumption of validity allows a patentee to rest without evidence in such a posture, and held that an examiner’s allowance of an amendment does not itself supply substantial evidence of § 112 compliance. The case serves as a caution that unsupported claim amendments and trial omissions can be fatal, regardless of jury findings.

Court Holdings:

Summary
Oral arguments: AICT

Festoed again: CAFC reverses jury verdict on prosecution history estoppel (posted 07/28/25)

In Colibri Heart Valve LLC v. Medtronic Corevalve LLC, the CAFC (echoing an earlier decision involving Medtronic, Cross Medical) reversed a jury verdict and the trial judge's holding that Colibri's reliance on the doctrine of equivalents was improper under the Supreme Court's Festo decision. During prosecution of the '294 patent, the applicant withdrew a claim a claim directed to retracting an outer sheath due to a § 112 written description rejection, even though the Examiner did not reject a similar claim directed to pushing out the valve from the outer sheath. Cancellation of the claim directed to retracting the sheath triggers Festo, and therefore barred Colibri from asserting DoE.

Summary (cross-post)
Oral arguments: AICT

Fed. Cir. PTAB on prior art enablement (posted 07/20/25)

In Agilent Tech. v. Synthego Corp. the Federal Circuit, in a precedential opinion, upheld an IPR ruling that a contested prior art reference was enabling, and therefore valid prior art.

Stated the court (internal citations omitted):

A finding of anticipation “does not require the actual creation or reduction to practice of the prior art subject matter; anticipation requires only an enabling disclosure.
Proof of efficacy is not required in order for a reference to be neabled for the purpose of anticipation.
Enablement of prior art requires that the reference teach a skilled artisan—at the time of filing—to make or carry out what it discloses in relation to the claimed invention without undue experimentation.
For a prior-art reference to be enabling, it need not enable the [challenged] claim in its entirety, but instead the reference need only enable a single embodiment of the claim.
Prior art disclosures are presumed enabling. (reaffirming that an anticipating prior art patent is presumptively enabled)

Summary with takeaways (“Prior art enablement arguments have rarely succeeded . . .”).
Summary and practice note.
Detailed summary
Oral arguments: AICT

Director declines to discretionarily deny based on petitioners "settled expectations" (posted 07/20/25)

In POSCO Co. Ltd., v Arcelormittal, the Acting Director noted that “[t]he fact that the Board previously determined related claims to be unpatentable—prior to the issuance of the cchallenged cliams in this proceeding—tips the balance against discretionary denial.”

Summary and analysis (cross-post)

Fed. Cir. reverses PTAB on basis of prosecution history estoppel (posted 07/10/25)

In Eye Therapies, LLC v. Slayback Pharma, LLC, the Fec. Cir., in a precedential opinion, reversed the PTAB's construction of “consisting essentially of,” on the basis of prosecution history estoppel in which the applicant had argued the phrase excludes a combination with an unclaimed eomponent.

Read more:

Fed. Cir.: Specification must support Jepson preamble (posted 07/09/25)

In In re: Xencor, Inc., the Fed. Cir., in a precedential opinion, upheld the Appeals Review Panel's ruling that § 112 requires that the specification provide support for the admitted prior art preamble to a Jepson claim as well as the novel subject matter recited after the transitional phrase (e.g., “wherein the improvement comprises”).

Analysis
Summary (cross-post)
Oral Arguments: AICT

Fed. Cir., en banc, reverses itself and district court; excludes expert testimony (posted 06/02/25)

In Ecofactor, Inc. v. Google LLC., J. Moore, writing for a majority of the en banc court, found that the expert witness testimony of David Kennedy to be unreliable and therefore inadmissible. Stated the court:

The “whereas” recital of each license provides no indication that the licensees agreed to pay the $X rate or shared EcoFactor's belief that $X constituted a reasonable royalty. The licenses therefore do not, individually or in combination, provide support for Mr. Kennedy's testimony that the licensees agreed to pay the $X rate or that the licensees agreed that $X was a reasonable royalty. This analysis does not usurp the province of the jury, nor does it involve this court deciding disputes of fact. It involves the gatekeeping function of the court to ensure that there are sufficient facts or data for Mr. Kennedy's testimony that the licensees agreed to the $X royalty rate.“

Judges Reyna and Stark dissented in part, arguing:

The en banc court's sudden shift deprives EcoFactor of notice and opportunity to be heard, and avoids what this appeal is really about, i.e., the extent to which district courts have discretion to decide fact-based questions of admissibility under Rule 702 and Daubert. And after only finding fault with a narrow point of Mr. Kennedy's testimony on contract interpretation grounds, the en banc court appears to inexplicably rule that Mr. Kennedy's entire testimony should have been excluded.”

This criticism is answered in footnote 6 of the majority opinion, which sates, “The three licenses Mr. Kennedy interpreted are in fact contracts. The question presented focused on whether Mr. Kennedy's expert opinion about the interpretation of the licenses satisfies rule 702 and Daubert. Interpretation of the licenses is fairly included within the question presented.”

Oral arguments: Deriving a royalty rate from a lump sum payment amount

Oral Arguments: AI transcription

The Federal Circuit, en banc, held oral arguments in Ecofactor v. Google LLC. The case hinges on whether Ecofactor's damages expert, David Kennedy, relied on sufficient facts to support his conclusion of an “$X” “reasonable royalty rate,” based on lump-sum payment amounts cited in prior license deals. The prior license deals, in recitals, specified that the lump sum is based on a royalty rate, while in the body of the licenses, which relate to terms to which both parties agreed, states the opposite – i.e., that the lump sum is not related to a reasonable royalty rate.

In her arguments, Google's attorney summed it as follows: the approach challenged here allows experts to transform unilateral assertions in the recitals (which the licensee has little incentive to challenge) into authoritative expert testimony that the licensee actually agreed to a particular rate and that this “undermines the jury's ability to reach a fair apportionment verdicts.”

Procedural History

At trial, Google raised a Daubert motion to exclude from trial Ecofactor's expert witness, David Kennedy. The jury returned a verdict resulting in a $20M verdict for Ecofactor. Google raised the issue again post-verdict in a motion for a new trial on damages, which was denied from the bench without explanation by Judge Albright.
On Appeal, the Federal Circuit panel majority's opinion held that the trial judge did not abuse his discretion in denying Google's Rule 59 motion for a new trial on damages because “Mr. Kennedy's opinion concerning the $X royalty rate was sufficiently reliable for admissibility purposes.” Judge Prost dissented, stating:
On this record, it’s impossible to establish that these lump-sum payments were calculated using any royalty rate, let alone the specific $X rate. The self-serving recitals reflect only EcoFactor’s transparent attempt to manufacture a royalty rate using its “belief.”

Blogs:

Summary of en banc and dissenting opinions
Nice summary
Summary and takeaway
Summary of arguments
Oral arguments: AICT

USPTO "Turmoil" (posted 05/23/25)

An increasing volume among patent professionals and USPTO watchers are sounding the alarm that the dismantling of the U.S. government has reached the Patent Office, with big changes occurring now and potentially bigger changes in the near future:

Hiring freezes
Backlog increases
Low morale among examiners
Leadership exodus

President Trump's pick to become the next Director of the USPTO, John Squires, wants to improve efficiency and produce “born strong” patents. At his Senate confirmation hearing on May 21, 2025, Squires stated:

That nearly 7 in 10 patents are defective. (A USPTO spokesperson told IP Watchdog that they were not sure where the number comes from.)

That troll practices are exploitative of inventors.

That PTAB is in need of reform.

USPTO institutes widespread 5% fee increases, other fee adjustments, and new fees (posted 04/29/25)

The USPTO implemented significant new and increased fees. Widespread fee increases of 5% or around 5% are included plus targeted fee adjustments in excess thereof.

Fed. Cir. issues precedential opinion finding AI training to be abstract (posted 05/06/25)

In Recentive Analytics, Inc. v. Fox Corp. the Federal Circuit held that claims that do no more than apply established methods of machine learning to a new data environment are not patent eligible.

USPTO Announces acceleration of publication processing (posted 04/26/25)

The USPTO announced that, effective May 13, 2025, patents will grant in two weeks from the date of Issue Notification, down from a current processing time of an average of about three weeks.

Priority date of prior art reference limited by support in the priority document (posted 04/04/25)

In In re Riggs, the Federal Circuit vacated PTAB's assertion that a previously filed patent application qualifies as prior art based on the earlier filing of a provisional application. Stated the court: “to claim priority to the provisional filing date, the portion of the application relied on by the examiner as prior art must be supported by the provisional application.”

Summary (cross-post )
Summary and analysis (cross-post)

Discretionary denials since rescission of Vidal's memorandum (posted 03/27/25)

Kyle W. Kellar of Womble Bond Dickinson surveyed recent PTAB decisions post the rescission of Vidal's “Interim Guidelines” memorandum by the PTO regarding discretionary denials of IPR petitions. “In short, recission of the Interim Guidelines has had no impact, yet” according to Kellar.

Of the four discretionary denial decisions since the Interim Guidelines memo was rescinded, Kellar found the following results:

Name	Result	Rationale
Savant Technologies LLC v. Feit Electric Co., Inc.	IPR instituted	No trial date set, median time-to-trial statistics suggested a trial would likely occur well after a final written decision would issue.
Mobileye Global, Inc. v. Facet Technology Corp.	IPR instituted	Fintiv factors considered without mention of Interim Guidelines
Adobe Inc. v. Jaffe	IPR instituted	No trial date set
Toyota Motor Corp. v. Emerging Automotive LLC	IPR denied	Petitioner failed to establish a reasonable likelihood that it would prevail.

Kellar notes that the board “at least facially considered median time-to-trial statistics provided by the parties.”

Blogs:

Survey (Cross-post)

9th Circuit: Minimum royalty "until the expiry of the last licensed patent" not a Brulotte violation (posted 03/15/25)

In C. R. Bard Inc. v. Atrium Medical Corp.,⁹⁾ the 9th Circuit found that a provision of a patent license, which requires a $3.75M minimum royalty payment until expiry of the last licensed patent, was not a violation of the Brulotte Rule. The Brulotte rule originates in the Supreme Court ruling Brulotte v. Thys Co., 379 U.S. 29 (1964), and held that patent holders may not contract for royalties on any use of a patented invention that occurs after the patent has expired.

Summary and implications

Düsseldorf Local Division of UPC asserts jurisdiction over (non-EU) UK (posted 02/17/25)

In Fujifilm Corp. v. Kodak GmbH, before the Düsseldorf Local Division of the UPC, the court held that it has jurisdiction to render infringement and enforcement decisions implicating the UK, which is not a UPC or EU member state, because:

“Pursuant to Art. 4(1) Brussels Ibis Regulation, persons domiciled in a Member State [as Kodak is], whatever their nationality, shall be sued in the courts of that Member State. All the Defendants are domiciled in Germany.”
“[I]n relation to claims against defendants domiciled in a Member State, all the bases for jurisdiction contained in Brussels Ibis Regulation also apply to the UPC and the same is true for the applicable case law of the ECJ. [. . .] Under the Brussels Ibis Regulation, the transferring Contracting Member State does indeed have jurisdiction over third state patent infringement actions in accordance with the case law of the ECJ. . . . The jurisdiction of the UPC is therefore not more limited than that of a national patent infringement court, as not all EU Member States have become Members of the UPCA.”

Summary and strategic considerations (Cross-post) (“[T]his decision provides an opportunity to bring all infringement claims before a single court and obtain a comprehensive relief in a single forum, whether or not the claims in question relate to UPC or non-UPC contracting member states.”)

For written description, "the invention is . . . whatever is now claimed." (02/14/25)

In Novartis Pharma. v. Torrent Pharma, the Fed. Cir. reversed the District of Delaware court's finding that the patent at issue failed to meet the written description requirement because it fails to describe the accused product which, while within the scope of the claims, includes improvements not mentioned in the patent. The court reasoned that, “A specification adequately describes an invention when it reasonably conveys . . . that the inventor had possession of the claimed subject matter as of the filing date.” The Fed. Cir. also uphold the lower court's finding that the claims were enabled because “enablement is judged as of the priority date.”

Summary and practice tips (Cross-post)

"Shall be the property of" is not a present assignment of a future interest (posted 02/05/25)

In Omni Medsci, Inc. v. Apple Inc. (Aug. 2, 2021), the Federal Circuit held that an employment agreement stating “Patents . . . acquired as a result of or in connection with . . . research, or other educational activities conducted by members of the University staff . . . shall be the property of the University.” The majority opinion (with J. Newman dissenting) concluded that the language “is most naturally read as a statement of intended disposition and promise of a potential future assignment, not as a present automatic transfer.

* Summary and analysis

D. Ariz.: Failure to mark abolishes past damages (posted 01/21/25)

35 U.S.C. § 287(a): ”[. . .] In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.“

In Lighting Defense Group LLC v. Shanghai Sensi Electronic Engineering Co. Ltd. et al. ¹⁰⁾, the failure of a licensed third party to mark products as patented triggered 35 U.S.C. § 287. LDG licensed its patent in May of 2020 and argued that opposing party SANSI was liable for infringement prior to that date, i.e., prior any legal requirement to mark. Based on the plain meaning of the statute, the court disagreed.

Summary

More . . .

Additional blurbs are accessible in categorized lists by accessing the Index link on the left (or, for small-format screens, below).

¹⁾

957 F.3d 1334, 1338–40 (Fed. Cir. 2020)

²⁾

935 F.3d 170 (Fed. Cir. 2019)

³⁾

790 F.3d 1315, 1323–24 (Fed. Cir. 2015)

⁴⁾

967 F.3d 1353, 1371 (Fed. Cir. 2020)

⁵⁾

Revvo Technologies, Inc. v Cerebrum Sensor Technologies, Inc., IPR2025-00632, Paper 20

⁶⁾

(Fed. Cir. Oct. 30, 2025)

⁷⁾

Appeal 2024-000567

⁸⁾

Sierra Wireless v. Sisvel S.P.A., Appeals 2023-1059, -1085, -1089, -1125 (Fed. Cir. Mar. 10, 2025)

⁹⁾

Case No. 23-16020 (9th Cir. Aug. 23, 2024)

¹⁰⁾

2-22-cv-01476 (D. Ariz. Nov. 27, 2024), modified by this order on motion for limited reconsideration

Patent News

USPTO Guidance on subject matter eligibility declarations (SMEDs) (posted 02/09/26)

2025 Precedential CAFC Rulings

Categories

CAFC Precedential - 2025 - 101 Eligibility

101 Eligibility

CAFC Precedential - 2025 - § 102 - Anticipation

CAFC Precedential - 2025 - 103 - OBVIOUSNESS

CAFC Precedential - 2025 - Prior Art

CAFC Precedential - 2025 - § 112 Enablement and Written Description

CAFC Precedential - 2025 - § 112 INDEFINITENESS

112(f) Means Plus Function

CAFC Precedential - 2025 - Claim Construction

CAFC Precedential - Claim Construction - Reliance on Intrinsic Evidence

CAFC Precedential - 2025 - Claim Construction - Prosecution disclaimer

IPR reality check (posted 11/25/25)

Federal Circuit construes Pre-AIA 102(a) and 102(e) "by another" in precedential ruling (posted 11/02/25)

USPTO's Automated Search Pilot Program

The USPTO's Streamlined Claim Set Pilot Program is live (posted 11/02/25)

Participation requirements:

CAFC: Using mobile device to deposit checks is abstract (posted 11/02/25)

Polarized - Proposed IPR Rule Analysis (posted 10/22/25)

ARP reverses PTAB panel on AI ineligibility (posted 10/02/25)

Federal Circuit implicitly rejected reasoning in Schulhauser (posted 09/05/25)

POPA Sues Trump (posted 09/03/25)

CAFC opines on derivations (posted 08/26/25)

CAFC holds that a mechanical apparatus is non-abstract, reversing district judge (posted 08/20/25)

Deputy Comm. for Patents issues memo on AI eligibility (posted 08/13/25)

Precedential CAFC opinion specifies necessary evidence for 35 U.S.C. § 112(a) rejection (posted 08/11/25)

Festoed again: CAFC reverses jury verdict on prosecution history estoppel (posted 07/28/25)

Fed. Cir. PTAB on prior art enablement (posted 07/20/25)

Director declines to discretionarily deny based on petitioners "settled expectations" (posted 07/20/25)

Fed. Cir. reverses PTAB on basis of prosecution history estoppel (posted 07/10/25)

Fed. Cir.: Specification must support Jepson preamble (posted 07/09/25)

Fed. Cir., en banc, reverses itself and district court; excludes expert testimony (posted 06/02/25)

USPTO "Turmoil" (posted 05/23/25)

USPTO institutes widespread 5% fee increases, other fee adjustments, and new fees (posted 04/29/25)

Fed. Cir. issues precedential opinion finding AI training to be abstract (posted 05/06/25)

USPTO Announces acceleration of publication processing (posted 04/26/25)

Priority date of prior art reference limited by support in the priority document (posted 04/04/25)

Discretionary denials since rescission of Vidal's memorandum (posted 03/27/25)

9th Circuit: Minimum royalty "until the expiry of the last licensed patent" not a Brulotte violation (posted 03/15/25)

Düsseldorf Local Division of UPC asserts jurisdiction over (non-EU) UK (posted 02/17/25)

For written description, "the invention is . . . whatever is now claimed." (02/14/25)

"Shall be the property of" is not a present assignment of a future interest (posted 02/05/25)

D. Ariz.: Failure to mark abolishes past damages (posted 01/21/25)

More . . .

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