NEWS

Federal Circuit Clarifies Limits on Prosecution Disclaimer Across Patent Families

April 9, 2025

Federal Circuit Limits Cross-Family Prosecution Disclaimer

In Maquet Cardiovascular LLC v. Abiomed Inc., the Federal Circuit clarified prosecution history disclaimer across related patents. The court vacated a district court judgment of non-infringement. It also provided guidance for patent prosecutors and litigators.

Case Background and District Court Ruling

Maquet sued Abiomed for infringing U.S. Patent No. 10,238,783 and its parent, U.S. Patent No. 9,789,238.

The district court relied on prosecution history from related patents. It applied two negative limitations to the asserted claims. Those added limitations narrowed claim scope. As a result, the court found non-infringement in favor of Abiomed.

Federal Circuit Reverses the Claim Construction

On appeal, the Federal Circuit rejected that approach. The court emphasized that prosecution disclaimer does not automatically extend across related patents.

Instead, disclaimer applies only when claim language is substantially similar.

Key Takeaways on Prosecution History Disclaimer

This decision reinforces several important principles.

Substantial Similarity Between Claims Is Required

First, parity between claims matters. Prosecution disclaimer carries over only when claim language is substantially similar. Without that similarity, importing limitations from an earlier patent is improper.

Disclaimer Requires Clear and Unmistakable Statements

Second, disclaimer must be clear and unmistakable. Mere silence does not create disclaimer.
Failure to dispute an examiner’s statement is not enough. Therefore, applicants do not need to respond to every reason for allowance.

IPR Statements Must Meet the Same High Standard

Third, the court addressed disclaimer during inter partes review. Statements made during IPR can support disclaimer. However, they must meet the same clear and unmistakable standard. Vague or broad statements generally will not limit claim scope.

Practical Guidance for Patent Prosecutors

This case offers practical guidance for patent professionals. First, differentiate claim language across related patents when appropriate. Doing so may reduce the risk of unintended limitations. Second, draft prosecution and IPR statements carefully. Avoid broad or ambiguous language that could narrow claim scope.

Finally, remember that silence is not automatic acquiescence. In many cases, there may be no need to contest every examiner comment.

Why the Maquet Decision Matters

Ultimately, Maquet helps preserve control over claim scope. It also limits the automatic spread of disclaimer across patent families.

As a result, patent owners have clearer boundaries when litigating related patents.

The Harsh Reality of § 101 Appeals: Why Fighting a Rejection at the PTAB Is an Uphill Battle

March 4, 2025

PTAB § 101 Affirmance Rates Continue to Climb

For inventors and patent practitioners, securing a patent has always been challenging. Overcoming a § 101 rejection is even harder. The latest 2023 data confirms a troubling trend. The Patent Trial and Appeal Board upheld examiner § 101 rejections 91% of the time. That number rose from 87.1% in 2021 and 88.4% in 2022. The trend makes one thing clear. Appealing a § 101 rejection usually ends in disappointment.

Why the PTAB Is So Tough on § 101 Appeals

The high affirmance rate is not just about weak applications. It reflects deeper structural problems.

Since the Supreme Court’s Alice Corp. v. CLS Bank decision, patent eligibility law has been unstable. The framework remains confusing and inconsistent.

The Federal Circuit has issued conflicting rulings. Meanwhile, the PTAB often disregards the USPTO’s own eligibility guidance. This inconsistency has produced strange outcomes. In some cases, a diamond-encrusted drill bit and a camera phone were labeled “abstract ideas.” As a result, applicants face unpredictable decisions. Outcomes often feel arbitrary rather than grounded in clear legal standards.

The Patent Beast as the PTAB

Which USPTO Technical Centers Are the Harshest?

Not all USPTO Technical Centers treat § 101 appeals equally. Some are significantly tougher than others.

TC3600 and TC3700: Business Methods and Financial Technology

These centers have the worst outcomes. Affirmance rates exceed 95%. Business method patents frequently land in these centers. Inventors in these fields face especially steep odds.

TC2100: Computing and Software Technologies

TC2100’s affirmance rate climbed to 85% in 2023. It stood at 80% in 2022. This increase suggests broader trouble for software patents. The impact extends beyond business methods.

Other Technical Centers

Some technical centers show lower affirmance rates. However, the data is limited. TC2400 and TC2600 may offer slightly better outcomes for software-related applications. Still, results vary.

The Most Common “Abstract Idea” Categories

The PTAB typically relies on three main categories when affirming § 101 rejections.

Mathematics (17% of affirmances)
Mental processes (48%)
Methods of organizing human activity (68%)

These categories often overlap. Some applications are rejected under multiple rationales.

Mental process rejections are common in TC2100. Organizing human activity dominates TC3600 decisions.

The Hidden Risk: New § 101 Rejections on Appeal

Even if an examiner does not issue a § 101 rejection, risk remains. The PTAB can introduce one. In 10% of cases, the PTAB issued a new § 101 rejection. These applicants were caught off guard. This risk is especially high in TC2100. Examiners there may be more lenient during prosecution. The PTAB often is not.

Strategic Options for Responding to a § 101 Rejection

Given these statistics, appealing is rarely the best first move. Strategic prosecution decisions matter more than ever.

Applicants should consider several approaches.

Work with the examiner to amend claims and pursue allowance before appealing.
Use TC steering tools to anticipate assignment outcomes.
Avoid TC3600 and TC3700 when possible.
Carefully evaluate claim amendments before filing any appeal.

When an appeal is unavoidable, preparation is critical. Expect a difficult path.

Final Thoughts on § 101 Appeals at the PTAB

The PTAB’s 91% affirmance rate in 2023 is a serious warning. The system remains inconsistent and difficult to navigate.

Legislative or judicial reform may eventually bring clarity. Until then, early prosecution strategy is essential.

Once an application reaches the PTAB, the odds of reversal are slim.

Check out our FishFAQ video: Rejections

New Mexico LEEP

February 27, 2025

AI and Copyright: Court Rules Against Fair Use in Training AI Models

February 26, 2025

On February 11, 2025, the U.S. District Court for the District of Delaware delivered a landmark decision in Thomson Reuters Enterprise Centre GmbH v. Ross Intelligence Inc.

The court ruled that the use of copyrighted materials to train AI models does not qualify as fair use. This ruling represents a significant development in the ongoing legal debate over AI and intellectual property rights.

Background of the Case

Thomson Reuters owns the legal research platform Westlaw.

Westlaw provides users with legal texts, statutes, and editorial content, including headnotes that summarize key aspects of cases. Westlaw also employs a proprietary classification system called the “Key Number System” to organize legal materials.

Ross Intelligence, an AI-powered legal research platform, sought to develop a competing tool. Initially, Ross attempted to license Westlaw’s data for training purposes. When Reuters declined, Ross turned to a third-party company, LegalEase. LegalEase compiled “Bulk Memos,” which contained legal questions and answers based on Westlaw headnotes. Ross then used these memos to train its AI system.

Reuters filed a lawsuit in May 2020, alleging copyright infringement. The company argued that Ross used proprietary Westlaw content without authorization to build its AI-driven research tool.

Court Ruling and Rejection of Fair Use

Judge Stephanos Bibas granted Reuters’ motion for partial summary judgment and rejected Ross’s fair use defense. The court applied the four-factor test under U.S. copyright law.

1. Purpose and Character of the Use

The court found Ross’s use to be commercial and non-transformative. Ross used Reuters’ copyrighted material to create a directly competing product. The court concluded that the AI training process did not add a new or distinct purpose.

2. Nature of the Copyrighted Work

This factor slightly favored Ross because Westlaw headnotes contain factual elements. However, the court noted that the headnotes also reflect editorial judgment.

3. Amount and Substantiality of the Work Used

The court ruled in Ross’s favor on this factor. The headnotes were used only in training and were not displayed to end users.

4. Market Effect

The ruling heavily favored Reuters, as Ross’s tool directly competed with Westlaw, threatening its market share. The court emphasized that Ross could have developed its AI training data independently or through licensed sources. Because the fourth factor carried significant weight, the court ruled against Ross. The opinion made clear that fair use does not protect unauthorized use of copyrighted content for AI training.

Implications for AI and Copyright Law

This ruling is a major victory for copyright holders. It affirms their rights over proprietary content and may open new licensing revenue streams. On the other hand, AI developers now face stricter limitations on sourcing training data. They must rely on non-copyrighted works or obtain proper licensing agreements.

What This Decision Means for Generative AI

However, this decision is not the final word on AI copyright disputes. Judge Bibas noted that Ross’s system was not a generative AI tool. Instead, it functioned as a legal search engine.

Future cases involving generative AI may lead courts to take a different approach. That shift may be particularly likely on the transformative use factor. As AI continues to evolve, the legal landscape will likely shift as well.

This case sets an important precedent but leaves open questions about AI-generated content.
For now, AI companies should proceed carefully. They should ensure that their training data complies with copyright law to avoid similar litigation.

AI and Fair Use related articles: Developments in Copyright and Artificial Intelligence

Did Fair Use get a Face-Lift?

Federal Circuit Reverses ITC Decision, Strengthening Patent Eligibility for Composition Claims

February 20, 2025

The Federal Circuit has issued a significant ruling in US Synthetic Corp. v. Int’l Trade Comm’n. It reversed the ITC’s controversial decision that had invalidated composition of matter claims as abstract ideas. This case provides an important clarification on patent eligibility under Section 101 and limits the expansive application of the abstract idea doctrine in composition claims.

Case Overview: ITC Invalidates Composition of Matter Claims Under Section 101

US Synthetic Corp. (USS) had patented polycrystalline diamond compacts (PDCs) used in drill bits. The claims defined the PDCs by their material properties, such as coercivity and thermal stability. The ITC had determined that these claims were abstract because they described the PDCs through functional properties rather than specific manufacturing steps.

This decision drew criticism from industry groups, including PhRMA, for expanding the abstract idea analysis into composition claims. Critics warned that the ruling could have undermined long-standing patent protections for chemical and material innovations.

Federal Circuit Reversal: Material Properties Are Not Abstract Ideas

Writing for a unanimous panel, Judge Chen rejected the ITC’s reasoning. The court affirmed that the claimed material properties were concrete and measurable rather than abstract.

The Federal Circuit emphasized that these properties are inherently tied to the PDC’s physical structure. The court stated that they are “integrally and necessarily intertwined” with the composition itself.

The ITC’s position was that these characteristics were mere “side effects” of manufacturing. However, the Federal Circuit ruled that they meaningfully define the PDC’s structure and composition.

Distinguishing Composition Claims from Software Patent Eligibility

A key takeaway from the decision is that defining a composition of matter by its properties differs from claiming an abstract idea.

Functional limitations alone may be problematic in software patents. But chemistry and materials science inventions often rely on measurable properties to describe structure. The court made clear that this distinction matters under Section 101.

Key Takeaways on Section 101 Patent Eligibility

This decision preserves decades of precedent allowing composition claims to be defined by physical and material properties. The ruling clarifies several important principles.

Material Properties Can Serve as Valid Claim Limitations

When claimed properties correlate with structure, they can function as legitimate definitional elements rather than abstract concepts.

A Perfect Correlation Between Property and Structure Is Not Required

The court acknowledged that no property is a perfect proxy for a composition’s structure. However, a reasonable correlation is sufficient to support patent eligibility.

Issued Patents Are Presumed Valid Under Section 101

The Federal Circuit reaffirmed that issued patents are presumed valid, including with respect to eligibility. The court criticized the ITC for applying an incorrect burden of proof to USS.

Limited Scope: A Narrow but Important Patent Eligibility Ruling

Although this ruling strengthens patent eligibility for chemical and material compositions, it offers little relief for software-related claims.

The court explicitly distinguished this case from software patents, noting that software’s functional limitations are often untethered to physical structures.

The decision also leaves open the broader question of when a composition of matter claim could be considered abstract. Rather than establishing a rigid test, the court provided guidance through example and preserved flexibility for future cases.

Practical Implications for Patent Prosecutors and Litigators

The court’s reversal is a significant win for industries that depend on composition of matter patents, including pharmaceuticals and materials science.

By reinforcing that material properties can define structure, the ruling protects the enforceability of many existing patents.

For patent practitioners, the case underscores the importance of clearly explaining how claimed properties relate to physical structure in the specification. Careful drafting may prove decisive in future Section 101 challenges.

Related patent eligibility articles: USPTO AI subject matter eligibility guidance

Deferred Subject Matter Eligibility Program

Federal Preemption and Fast-Tracked Dismissals: Lessons from BearBox LLC v. Lancium LLC

February 18, 2025

Overview of BearBox LLC v. Lancium LLC

Plaintiffs often prefer federal courts because cases typically move faster than in state courts. But speed can work against weaker claims. That happened in BearBox LLC v. Lancium LLC, where the Federal Circuit dismissed both a state law conversion claim and an inventorship challenge. Federal preemption and strict evidentiary rules played a key role.

The Case at a Glance: How the Dispute Started

The dispute began at a Bitcoin mining conference in 2019. BearBox’s founder, Austin Storms, shared technology details with Lancium’s co-founder after a brief conversation and follow-up email. Five months later, Lancium filed a patent application, which became U.S. Patent No. 10,608,433.

BearBox’s Claims: Inventorship and State Law Conversion

BearBox filed suit, claiming:

Correction of inventorship – arguing Storms should be named as an inventor under federal patent law.
Conversion under Louisiana law – alleging that Lancium “stole” BearBox’s technology.

However, federal law preempted the state law claim, and the inventorship challenge failed due to strict evidentiary requirements.

Why Federal Preemption Blocked BearBox’s State Law Claim

Not all state law conversion claims are preempted. In this case, the court ruled BearBox’s claim too closely resembled a patent infringement case. The Federal Circuit emphasized a key principle: state law cannot create “patent-like” protection for ideas that are not patented or protected as trade secrets.

BearBox had shared its technology without restrictions. Because of that, it could not later claim exclusive rights under state law.

The court cited Bonito Boats, Inc. v. Thunder Craft Boats, Inc., reinforcing the importance of public access to unpatented ideas.

Strict Evidentiary Standards Doomed the Inventorship Challenge

To prove inventorship, BearBox needed clear and convincing evidence, including independent corroboration. The court found the evidence—mainly a single email with attachments—insufficient. This strict standard ensures that inventorship claims are not made lightly and prevents retroactive attribution without strong proof.

Fast-Tracked Federal Court Proceedings: What Happened Step by Step

Federal court speed helped streamline the case:

Early dismissal of the state claim – Federal preemption ended BearBox’s state law argument quickly.
Summary judgment for inventorship – The district court granted summary judgment because the evidence failed to meet the clear-and-convincing standard.
Quick appellate review – The Federal Circuit affirmed the rulings without remanding, showing how efficiently federal courts dispose of meritless claims.

This illustrates that while federal courts move quickly, that speed can be a double-edged sword for plaintiffs.

The Takeaway: Federal Court Speed Cuts Both Ways

Plaintiffs often choose federal courts for faster resolutions. BearBox shows the risk when claims are weak:

✅ Strong claims benefit – Federal courts can advance legitimate cases rapidly.
❌ Weak claims suffer – Cases with insufficient evidence or preempted claims get dismissed just as fast.

For intellectual property disputes, this case highlights the importance of securing patent protection or trade secret safeguards before sharing technology. Otherwise, federal preemption could end your case before it even starts.

Related trade secret articles: When Inventors Leave: A Hard Lesson in Trade Secret Law

Secrets, Secrets Are No Longer Hard to Keep (in Court)

Updated IDS fees

January 21, 2025

The USPTO has changed how fees for Information Disclosure Statements (IDS) work, this change was implemented 2025-01-19.

A brief overview of the changes are as follows:

There are now fees for when the cumulative number of references that the applicant supplies exceed the following thresholds: 50, 100, 200. These fees are not insignificant and do not scale by entity size.

Between 51 and 100 references = $200
Between 101 and 200 references = $500
Over 200 references = $800

However, do note you reduce the larger fee by the smaller. So if you had cited over 50 citations and then cited over 100, but you already paid the $200 fee earlier, you would pay $300 for the second fee instead of $500. This applies to the over $200 fee as well.
These fees apply to applications filed before these changes.

These new fees do not replace the standard IDS filing fee. This is now called the “IDS timing fee” and these new fees are “IDS size fees”.

These numbers do not include references that were filed by the examiner or a “third party”. Duplicate items are counted.