NEWS

Federal Circuit to AI Innovators: Generic Machine Learning Isn’t Enough for a Patent

April 23, 2025

In a closely watched decision, the Federal Circuit delivered a clear message. Simply applying machine learning to a new domain is not enough. Unless the ML itself improves, the invention will not qualify for a patent.

In Recentive Analytics, Inc. v. Fox Corp. (No. 2023-2437, Apr. 18, 2025), the court affirmed dismissal of four patents. Those patents were held by Recentive Analytics. Each focused on using machine learning for TV broadcast scheduling and event planning.

Although the court acknowledged AI’s growing importance, it drew a firm boundary. Patent eligibility under 35 U.S.C. § 101 still requires more.

Federal Circuit Decision on AI Patent Eligibility

At its core, the case addresses a pressing question. When does applying artificial intelligence make an invention patent-eligible?

According to the Federal Circuit, Section 101 applies fully to AI-related inventions. Merely invoking machine learning will not suffice. Instead, the patent must claim a concrete technological improvement.

In other words, automation alone is not innovation.

The Patents at Issue in Recentive Analytics v. Fox

Recentive’s patents fell into two categories.

Machine Learning Training Patents

First, the training patents claimed systems for generating optimized live event schedules. These schedules relied on historical data. The goal was dynamic, real-time optimization.

Network Map Patents

Second, the network map patents addressed channel assignments. They focused on how television programs were distributed across regions and times.

Overall, the inventions aimed to replace manual scheduling. In its place, they proposed automated optimization using machine learning.

Why the Federal Circuit Found the AI Patents Ineligible

The court emphasized a central principle. Generic machine learning methods are abstract ideas. Without a specific technological improvement, they remain ineligible. Applying ML to a manual task, such as TV scheduling, did not change the outcome. Section 101 requires more than digitizing an existing process. As the court explained:

“Patents that do no more than claim the application of generic machine learning to new data environments… are patent ineligible under § 101.”

That language leaves little room for doubt.

Why the Machine Learning Patents Failed Under Section 101

Several deficiencies proved fatal to the claims.

No New Machine Learning Technology

Importantly, Recentive admitted it did not invent a new ML algorithm. Rather, it used existing techniques. The court viewed this as little more than saying “do it with AI.” A new application alone was not enough.

No Specific Implementation Details

Equally problematic, the patents lacked technical detail. They did not explain how the ML models operated.

Nor did they describe any improvement to computer functionality. Without that specificity, the claims remained abstract.

Limiting AI to a Field of Use Is Not Enough

Recentive argued that applying ML to broadcasting made the invention patentable. However, the court disagreed. Limiting an abstract idea to one industry does not make it less abstract. This principle has appeared repeatedly in Section 101 cases.

Increased Speed Does Not Equal Patent Eligibility

The patents also emphasized efficiency and automation. Yet faster processing does not automatically create eligibility. Courts have long rejected speed alone as an inventive concept. That reasoning applied here as well.

No Inventive Concept Under the Alice Framework

Finally, the court considered step two of the Alice framework. Even there, it found nothing “significantly more” than the abstract idea itself. As a result, the claims failed both steps of the analysis.

What This Decision Means for AI and Machine Learning Patents

Taken together, the ruling draws a bright line. Using AI is not the same as improving AI.

For patent eligibility, applicants must identify a specific technological advance. Simply automating a manual workflow will not suffice. Likewise, applying known techniques to new data will not qualify.

Importantly, the decision does not eliminate AI patents altogether. Innovations that enhance machine learning technology may still succeed. However, the claims must show real technical progress.

Key Takeaways for AI Patent Applicants

As AI becomes embedded in more industries, scrutiny will increase. Section 101 remains a powerful filter.

Therefore, patent applicants should focus on technical improvements. Detailed implementation matters. Concrete advances in machine learning matter even more.

Without those elements, AI-based claims may struggle to survive.

The Fintiv Pendulum Swings Back — What Patent Litigators Need to Know

April 11, 2025

The rule book and the black box

The Use of the Inter Partes Review in Infringement Accusations

You’re facing an infringement suit. A common defensive tactic is to challenge the validity of the patent claims asserted against you through an Inter Partes Review (IPR). In an IPR, the petitioner asks the PTAB to cancel one or more patent claims that are asserted in court.

Discretionary Denial of an IPR

Given that this is such a common tactic, the PTAB can’t just institute an IPR upon request. This would tie up too many resources on frivolous, time-wasting challenges. So the rule, 35 U.S.C. § 314(a), says:

“The Director may not authorize an IPR… unless…there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.”

The Director first assesses whether the petition meets the merits threshold. Even if that threshold is met, the Director may still exercise discretion to deny institution based on policy factors.

2020 Apple v. Fintiv Produces the “Fintiv factors” for IPR Denial

Fintiv sued Apple for infringement in late 2018, and the case was still pending into 2019.
Apple filed for an IPR, as one does, to challenge the validity of Fintiv’s patents, at the end of Oct 2019.
Then the District Court set the trial date for Nov 2020.

The November 2020 trial date caused Fintiv to argue that the PTAB should deny institution. The PTAB articulated six “Fintiv factors” to guide discretionary denials in situations with parallel litigation. These factors apply only when overlapping court proceedings exist—not to every IPR—but because parallel litigation is so common, the framework affects many contested petitions. Fintiv structured discretionary denials based on efficiency and overlap, though a petition could still be instituted if the factors favored it.

2022 Vidal Memorandum Reduces Fintiv Factor Denials

Director Vidal issued a memorandum limiting the aggressive use of Fintiv factors. The guidance emphasized that compelling evidence of unpatentability or procedural safeguards like a Sotera stipulation should generally prevent denial based solely on parallel litigation.

2025 The Return of the Fintiv Framework

Acting Director Coke Stewart rescinded the Vidal Memorandum. She explained that the 2022 guidance was interim and tied to possible rulemaking, which never occurred. With its withdrawal, the PTAB returns to the broader discretionary denial practice under Fintiv, allowing the Board to fully consider the factors without the limitations imposed by Vidal’s memo.

Implications for Patent Stakeholders

For patent owners, the return of the Fintiv framework means timing is more important than ever. Accelerating district court proceedings or managing trial schedules strategically can influence whether a parallel IPR is instituted. For accused infringers, filing early IPR petitions and considering procedural tools—like Sotera stipulations or early motions to stay in court—can be critical to reduce risk of discretionary denial. Overall, both sides must now coordinate litigation and PTAB strategy carefully, because the Board once again has broad discretion to deny institution when overlapping litigation exists. Staying agile and planning for both forums simultaneously can make the difference in protecting or enforcing patent rights.

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.

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.

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.