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Patent Like You Mean It, But Also Show the Structure
Preliminary stuff
Means-plus-function claiming is a way of writing a patent that describes what something does, not how it does it. For example, describing a machine that opens a jar, rather than describing all the parts- a motor, a gripper, and how they work together, you just say: “A means for opening a jar”. This is to say you want to protect whatever part does the opening of the jar, without naming the exact part.
However, the actual parts, the structure, must be described elsewhere in the patent. This is a way to write less in the claims, but the downside is if it doesn’t describe how it works well enough, the claim might be invalid.
Section 112(f) addresses means-plus-function claiming. The courts have a two-step analysis for such claims. First, determine whether the claim limitation is drafted in a means-plus-function format, which would invoke Sec 112(f). Second, if it is, identify what structure, if any, disclosed in the specification corresponds to the claimed function.
In any cases lacking disclosed structure, the claim is invalid under Sec 112(b), dealing with claim definiteness. In simple terms, a patent must clearly tell others what is being claimed so they know the boundaries of the invention. Clear claims can be understood, competitors can avoid infringement, and courts can enforce the patent consistently.
Vague or ambiguous claims can be ruled invalid for indefiniteness, which is especially relevant in means-plus-function claims. If the patent application doesn’t describe the structure that performs the function, it may be invalid.
Fintive v. PayPal
In a significant ruling that reinforces the high bar for software claim clarity, the Federal Circuit recently affirmed the invalidation of several Fintiv, Inc. patents due to indefiniteness. The decision in Fintiv, Inc. v. PayPal Holdings, Inc. (No. 2023-2312, Apr. 30, 2025) is a clear message to patent drafters: functional language in software claims needs structural backing—or risk getting wiped out under 35 U.S.C. § 112.
The Core Issue: Functional Terms with No Structure
At the heart of the case were terms like “payment handler” and “payment handler service,” found in Fintiv’s asserted patents. These terms were intended to cover components that interface with various payment APIs. But the court found they lacked inherent structural meaning and instead described what the component does rather than what it is.
This triggered the court’s application of the means-plus-function analysis under § 112(f)—even though the word “means” wasn’t used.
Why Fintiv Lost
Fintiv tried to argue that “payment handler” had a recognized meaning in the art, citing dictionaries, examples from the patent, and even the Internet Open Trading Protocol. But the court was unconvinced. It found that these terms merely recited functions—such as wrapping APIs or exposing common interfaces—without explaining how the functions were implemented. Essentially, “payment handler” was treated like a black box.
The specification didn’t help either. Instead of disclosing a specific algorithm or structure, it restated the functional goals. According to the court, that’s not enough under § 112(f). A person of ordinary skill in the art (POSA) wouldn’t be able to implement the invention based solely on the description provided.
So functional terms, even if they sound technical, can lead to invalidation if the specifications don’t back them up with a structure, which for software patents, usually means an algorithm. It should also remind you that just because you avoided the word ‘means’ doesn’t mean you’ve avoided ‘means-plus-function’ treatment. The court will look at substance, not just form.
Who Gets Credit When AI Invents? A Look at the History—and Future—of Inventorship
For centuries, governments have tried to encourage innovation by offering inventors something valuable in return: ownership. The earliest forms of state-recognized intellectual property—like patents—were meant to reward people for coming up with new solutions to problems. But it hasn’t always worked the way we’d like to imagine.
From Royal Favors to Inventor Rights
Between the 14th and 17th centuries, the English crown handed out patents. But these weren’t always about protecting brilliant ideas—sometimes they were just political favors, granting monopoly rights to the well-connected.
Things began to shift in the 18th century. Under Queen Anne, inventors had to submit detailed specifications explaining how their inventions worked. This marked a move toward recognizing patents not as tools of privilege, but as protections for genuine intellectual contributions.
In the U.S., this principle was written into the Constitution. The Patent and Copyright Clause gave Congress the power to protect inventors’ rights “to promote the progress of science and the useful arts.” James Madison himself argued that useful inventions belonged to those who created them. By the late 1800s, several countries—including England, France, and Germany—had formal patent laws recognizing inventors’ intellectual ownership.
The Core of Modern Inventorship: Conception
Today, especially in U.S. patent law, inventorship hinges on a key concept: conception. The inventor isn’t necessarily the person who builds the invention, but the one who conceives it—the one who had the original idea.
Some ground rules:
- Only someone who contributes to the mental formulation of the invention can be an inventor.
- There can be multiple inventors, but each must contribute to at least one claim in the patent.
- Simply carrying out instructions or building a prototype? That’s not inventorship.
Over time, the legal system evolved from handing out monopolies to truly honoring the individuals behind technological progress—those whose ideas shaped the future.
Then Came Generative AI
In recent years, AI has complicated things.
Autonomous AI systems can now generate ideas, designs, and even prototypes. But who’s the inventor when a machine contributes core ideas? Most global patent offices, including the U.S. Patent and Trademark Office (USPTO), say only a natural person—a human—can be listed as an inventor.
The courts have backed this up. In Thaler v. Vidal, the Federal Circuit ruled that AI can’t be an inventor under current U.S. law. However, that ruling left a critical question open: What about inventions developed by humans working with AI?
The USPTO’s 2024 AI Guidance
In early 2024, the USPTO released new guidance aimed at clarifying this gray area. The agency said that a human can be listed as an inventor of an AI-assisted invention if they make a “significant contribution” to the final invention—even if they didn’t fully conceive it.
This marks a shift. Under this standard, a person could take AI-generated output, shape it meaningfully, and claim inventorship—even if their input alone wouldn’t qualify as an invention.
Legal Risks on the Horizon
This softer standard raises eyebrows in the legal community. Critics argue it contradicts patent law’s long-standing requirement of full human conception. And because USPTO guidance doesn’t carry the force of law, patents issued under this standard might not hold up in court.
There’s also risk for patent attorneys. Filing patents based on this weakened inventorship standard could raise ethical issues under the duty of disclosure rules, especially if the AI did most of the heavy lifting.
And here’s a surprising twist: the USPTO’s standard for inventorship may now be lower than the standard for patentability itself.
Looking Ahead
We’re at a crossroads. On one hand, AI is a powerful tool for accelerating innovation. On the other, our current legal framework still centers on human inventorship.
Without new legislation or clearer judicial rulings, this tension will likely grow. For now, inventors, companies, and patent attorneys should tread carefully. The future of inventorship in the AI era is still being written—and it’s far from settled.
The Impact of Third-Party Litigation Funding on Patent Disputes
A Patent’s Value Means Little Without the Means to Defend It
Valuing a patent isn’t simple—methods like the cost, market, and income approaches are commonly used—but even a high-value patent may be worthless if its owner can’t afford to enforce it in court. Legal battles over patent rights are notoriously expensive, with median costs surpassing $3 million in some cases. For small patent holders, this financial barrier can put them at a major disadvantage when facing infringement by larger, better-resourced companies.
What Is Third-Party Litigation Funding (TPLF)?
Third-party litigation funding offers a potential solution. These firms provide financial support to litigants in exchange for a portion of any settlement or award. Importantly, TPLF is usually non-recourse—if the case is lost, the litigant owes nothing. Returns for funders can be significant, ranging from 200% to 400% or more. The growing number of TPLF firms in the U.S. since 2013 reflects the profitability of this model. For under-resourced patent owners, TPLF can level the playing field, enabling them to pursue cases they would otherwise have to abandon.
The Rise of Patent Trolls
However, TPLF has also fueled concerns about abuse. Non-practicing entities (NPEs), often called “patent trolls,” acquire patents not to use them in production, but to generate income through licensing or litigation. These entities exploit the system, and when backed by TPLF, they gain the resources to aggressively pursue lawsuits—raising ethical and legal questions.
TPLF: Leveler or Enabler?
TPLF firms aren’t altruists; their funding decisions are driven by expected returns, not justice. As a result, they’re more likely to fund cases with a high likelihood of success, regardless of whether the claims serve a broader social good. When TPLF and NPEs align, the result may be more predatory litigation and fewer cases that actually promote innovation or fairness. The lack of required disclosure about funding arrangements in most courts makes it even harder to determine whether TPLF is helping or harming the system.
The Debate Over Disclosure
A December 2024 Government Accountability Office (GAO) report examined TPLF’s role in patent litigation. It found that requiring disclosure of litigation funding could uncover conflicts of interest, reveal foreign involvement, and encourage settlements—especially if defendants realize their opponents are well-funded. On the other hand, funders argue that disclosure has no bearing on a case’s legal merits and could unfairly tip the scales in favor of defendants while adding administrative burdens to the courts.
The GAO report also noted a rise in TPLF-backed patent cases over the past five years, though precise data is elusive due to the lack of disclosure requirements. One estimate suggests that over 60% of patent infringement lawsuits filed since 2020 have received third-party funding.
A Tool for Smaller Players—With Caveats
For small patent holders facing possible infringement, TPLF can provide a much-needed lifeline to defend their rights. Still, the system’s increasing complexity and potential for misuse raise valid concerns about transparency and fairness. As the debate over regulation continues, both benefits and drawbacks of TPLF remain under scrutiny.
Generic Drug Label Doesn’t Induce Patent Infringement Just by Listing Optional Refrigeration
In the ever-evolving world of pharmaceutical patent law, a recent Federal Circuit decision offers some clarity on when a generic drug label might be considered to induce patent infringement. The case, Metacel Pharmaceuticals LLC v. Rubicon Research Private Ltd., centered around the storage instructions on the label of Rubicon’s generic version of Metacel’s Ozobax® (an oral baclofen solution).
Metacel held a patent (U.S. Patent No. 10,610,502) with a claim that included storing the baclofen solution at a refrigerated temperature of 2 to 8°C. When Rubicon sought approval for its generic version through an ANDA, its label included the standard room temperature storage instructions but also stated the product “can also be stored at 2°C to 8°C.”
Metacel argued that this optional refrigeration instruction would lead doctors and other healthcare providers to infringe their patented method. However, both the District Court and the Federal Circuit disagreed, ultimately affirming the lower court’s decision that Rubicon’s label wouldn’t induce infringement.
The Key Takeaway: Permissive Language Isn’t Inducement
The Federal Circuit’s reasoning hinged on the distinction between encouraging or recommending infringement versus merely permitting it. In their view, Rubicon’s label primarily directed users to store the drug at room temperature, a non-infringing condition. The statement about refrigeration was presented as an option, not a directive.
Judge Lourie, writing for the panel, stated that the label indicated that “if a downstream user decides to refrigerate the product, despite instructions to store the product at room temperature (which is noninfringing), then it should store the product at temperatures from 2°C to 8°C. That is not inducement.”
This aligns with previous Federal Circuit precedent, notably the HZNP Meds. LLC v. Actavis Lab’ys UT, Inc. case, which established that permissive statements in a label don’t necessarily encourage infringement, especially when the label doesn’t mandate the potentially infringing use.
ANDA Filings Don’t Dictate Label Interpretation
Interestingly, Metacel also pointed to statements Rubicon made in its ANDA filing regarding the storage temperature. However, the court, like the District Court, focused solely on the language of the actual drug label that healthcare professionals would see. The court emphasized that the pertinent question is whether the label instructs users to perform the patented method.
Plain Language Prevails
The court also noted that when the label language is clear and unambiguous, circumstantial evidence (like statements in the ANDA) cannot override its plain meaning.
What This Means for Generic Drug Labels
This decision reinforces the idea that generic drug manufacturers have some leeway in including optional information on their labels without automatically being held liable for inducing patent infringement. As long as the label’s primary instructions guide towards non-infringing uses and any mention of potentially infringing uses is clearly presented as a permissible option rather than a recommendation, it’s less likely to be considered inducement.
This case serves as a reminder that the specific wording of a drug label is crucial in determining potential patent infringement liability in the generic drug context.
Federal Circuit to AI Innovators: Generic Machine Learning Isn’t Enough for a Patent
In a closely watched decision, the Federal Circuit just made it clear: simply applying machine learning to a new domain—without improving the ML itself—won’t get you a patent.
In Recentive Analytics, Inc. v. Fox Corp. (No. 2023-2437, Apr. 18, 2025), the court affirmed the dismissal of four patents held by Recentive Analytics, all centered on using machine learning for TV broadcast scheduling and event planning. While the decision acknowledges the growing importance of AI, it draws a hard line on what qualifies as patent-eligible under 35 U.S.C. § 101.
What Was at Stake?
Recentive’s patents fell into two categories:
- Machine Learning Training Patents: Claimed systems for dynamically generating optimized live event schedules based on historical data.
- Network Map Patents: Targeted how television programs are assigned to channels across regions and times.
Their core idea? Replace manual, static scheduling with real-time, dynamic optimization using machine learning.
The Court’s Message: That’s Not Enough
The court emphasized that generic machine learning methods are “abstract ideas” unless they come with a specific technological improvement. Simply applying ML to a traditionally manual task, like TV scheduling, doesn’t cut it. In the court’s own words:
“Patents that do no more than claim the application of generic machine learning to new data environments… are patent ineligible under § 101.”
Why the Patents Failed
Here’s a breakdown of why the court ruled against Recentive:
- No New ML Tech
Recentive admitted it didn’t invent a new ML algorithm—it just applied existing methods to a new problem. The court saw this as no different than saying “do it with AI.”
- No Implementation Details
The patents didn’t explain how the ML models worked or improved the technology. They lacked any specific steps or mechanisms.
- Just a Field of Use
The court rejected the idea that applying ML to broadcasting makes it patent-worthy. Limiting an abstract idea to a specific industry doesn’t make it less abstract.
- Speed ≠ Innovation
Making a process faster or more efficient—especially with computers—doesn’t make it patentable. This principle has been upheld in multiple cases, and it applied here too.
- No Inventive Concept
Even at step two of the Alice framework (used to assess patent eligibility), the court found nothing “significantly more” than the abstract idea of using ML in scheduling.
Why This Matters for AI Patents
The Federal Circuit drew a clear line in the sand: if you’re using AI or machine learning, you need more than just an idea. You must show a specific, concrete technological improvement—not just automation of a manual process or use in a new domain.
The decision leaves open the possibility that patents could be granted for innovations that actually improve machine learning techniques. But just saying “we used AI” isn’t enough.
Final Thought
This case is a reminder that as AI becomes more integrated into various industries, patent law is holding firm on its standards. Innovators in machine learning must go beyond applying known techniques—they must push the technology itself forward if they want protection.
The Fintiv Pendulum Swings Back — What Patent Litigators Need to Know
In a move that’s sending ripples through the patent world, Acting USPTO Director Coke Stewart has officially rescinded the June 2022 Vidal Memorandum. That memo had put significant limits on the PTAB’s ability to issue discretionary denials of inter partes review (IPR) petitions — especially in cases where there was parallel district court litigation. With its repeal, we’re likely to see a major uptick in those denials as the PTAB regains broader discretion.
So, what does this mean for patent stakeholders?
Essentially, the PTAB can once again lean heavily on the Fintiv framework — a set of six factors that guide whether an IPR petition should be denied when there’s overlapping litigation in district court. These factors consider things like how soon a district court trial is scheduled, how much investment has already gone into the case, and whether the same issues are being raised in both forums. In short: if a case is already moving forward in court, the PTAB might decide it’s better not to get involved.
This isn’t the first time we’ve seen this pendulum swing. Under former Director Kathi Vidal, the USPTO introduced guardrails that made it easier for petitioners to avoid discretionary denials — especially by submitting a Sotera stipulation (which limits their district court defenses to avoid duplication) or showing “compelling evidence” of unpatentability. Those rules made the IPR pathway more predictable and accessible.
But with those protections now gone, both patent owners and petitioners will need to adjust their strategies. Patent holders are likely to push their district court cases forward faster, using quick trial dates to argue against IPR institution. Petitioners, on the other hand, may need to file IPRs earlier and consider requesting early stays in court to minimize Fintiv-related risks.
The takeaway? PTAB policy is, once again, in flux — and those navigating patent disputes need to stay agile. The rules around discretionary denials may be shifting, but one thing remains clear: timing, coordination, and strategy have never been more critical.
Federal Circuit Clarifies Limits on Prosecution Disclaimer Across Patent Families
- Differentiate claim language across related patents to reduce the risk of unintended claim limitations.
- Be mindful of statements made during prosecution and IPR, ensuring they are not overly broad or ambiguous.
- Recognize that silence is not necessarily acquiescence, meaning there may not always be a need to contest an examiner’s reasons for allowance.