Federal Circuit Issues Simple Ruling on Patent Eligibility That Appears to Contradict Previous Decisions
Patent eligibility, as defined by 35 U.S.C. § 101, includes new and useful processes, machines, manufactures, and compositions of matter. Various Supreme Court decisions have sought to define the scope of this statute, most notably in Alice Corp. v. CLS Bank Int'l, which provided the current two-step framework for determining patent eligibility. The first step involves determining if the claimed subject matter is directed towards a judicial exception, such as an abstract idea, and the second step involves determining if the claims recite significantly more than the judicial exception. The Alice framework has been used in many court cases over the past decade, including a controversial decision issued in August of this year by the United States Court of Appeals for the Federal Circuit (CAFC).
How to Handle "Close Calls" on § 101: USPTO Provides Reminders for Patent Examiners on Evaluating Subject Matter Eligibility
On August 4, 2025, the Deputy Commissioner of Patents, Charles Kim, sent a memorandum (hereinafter "August 4 Memo") to the examining corps regarding the USPTO's subject matter eligibility guidance. The August 4 Memo includes several important reminders pertaining to examining software-related inventions as articulated in the Manual of Patent Examining Procedure (MPEP) and other USPTO guidance. In particular, the August 4 Memo provides guidance on the following topics that arise when examiners assess Step 2A of the USPTO's subject matter eligibility analysis: (a) reliance on the mental process grouping of abstract ideas; (b) distinguishing claims that "recite" a judicial exception from claims that merely "involve" a judicial exception; (c) analysis of the claim as a whole; and (d) consideration of whether a claim is directed to an improvement in the functioning of a computer or "any other technology or technical field," or whether a computer is merely being used as a tool to perform the recited abstract idea (i.e., "apply it"). In addition, the August 4 Memo includes a discussion of when a subject matter eligibility rejection should be made.
Patent Rights Retained For "First-To-File" Inventor in First Review of AIA Derivation Proceeding
On August 26, 2024, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) affirmed a ruling made by the Patent Trial and Appeal Board ("Board") against a first-inventor, second-filer claim in its first review of a derivation proceeding.
USPTO Clarifies Boundaries of IPR Petitions in Response to Federal Circuit's Shockwave Decision
The United States Court of Appeals for the Federal Circuit clarified in Shockwave Medical, Inc. v. Cardiovascular Sys., Inc. how Applicant Admitted Prior Art (AAPA) fits into inter partes review (IPR) practice. In response, the United States Patent and Trademark Office issued a memorandum that narrows the use of AAPA in IPR petitions. The USPTO explained that while AAPA can still be used in a limited way for background information and to show motivation to combine references, it can no longer be used to supply a claim limitation missing from the prior art patents and printed publications raised by the petitioner.
Federal Circuit Limits Overlapping-Range Presumption in Multi-Dose Regimen Claims
While there is a presumption of obviousness that typically applies when claimed and prior-art ranges overlap, the U.S. Court of Appeals for the Federal Circuit recently held that the presumption did not apply to claims covering an integrated multi-dose regimen with a specific dose sequence. In particular, the court found that the presumption was inapplicable because the prior art did not teach the claimed combination of doses in sequence.
Inventors' Intended Claim Scope is Irrelevant in Determination of Broadening in Reissue Applications
The U.S. Court of Appeals for the Federal Circuit recently affirmed a decision of the Patent Trial and Appeal Board sustaining the examiner's rejection of a claim of a reissue application under 35 U.S.C. § 251 because the reissue claim broadened the scope of the original patent. The court held that when considering whether a claim presented in a reissue application broadens the scope of the original patent under 35 U.S.C. § 251(d), one must look to the "actual scope of the claim-at-issue, not the subjective intended scope of the inventors."
Understanding Fair Use in the Age of Generative AI: The U.S. Copyright Office's Perspective
The rise of generative artificial intelligence (AI) has sparked a pivotal legal debate that now stands on the edge of a major turning point. At the heart of the issue is a fundamental question: can the use of copyrighted works to train generative AI models be considered fair use, or does it constitute infringement? For years, developers have trained these models on vast datasets that include copyrighted materials, largely under the assumption that such use falls within fair use doctrine. Moreover, many have argued that impeding free access to these materials would be catastrophic to technological progress and place the U.S. at a disadvantage on the global stage. Copyright holders and creators, on the other hand, have voiced their concern that their own works are being used without their permission to produce content with which they must compete, placing their livelihoods at risk.
Federal Circuit Elaborates on Claiming Priority of a Design Patent Application to an Earlier-Filed Utility Patent Application
On April 22, 2025, the Federal Circuit ruled in In re Bonnie Iris McDonald Floyd that a design patent application could not claim priority to an earlier-filed utility patent application for lack of sufficient written description, affirming a decision of the Patent Trial and Appeal Board.
Federal Circuit Clarifies Concept of "Conception"
The U.S. Court of Appeals for the Federal Circuit recently issued a significant opinion in Regents of the University of California v. Broad Institute, Inc., providing fundamental guidance on the legal standard of "conception" in patent law. The decision vacates the Patent Trial and Appeal Board's (PTAB) 2022 interference ruling in the long-running CRISPR-Cas9 patent dispute and remands the case for further consideration under the clarified standard. While interferences are close to becoming obsolete as there are few pending pre-AIA applications still eligible for interference proceedings, the decision is still highly relevant in other post-AIA contexts.
Sigray – Implicit Claim Construction and Anticipation by Inherency
In Sigray, Inc. v. Carl Zeiss X-Ray Microscopy, Inc., the U.S. Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) engaged in implicit and erroneous claim construction, and concluded that the claimed magnification range of an X-ray imaging system of a patent owned by Zeiss is inherently disclosed in an anticipatory prior art reference. The Sigray decision is an important reminder of two principles: (1) that an inherent disclosure can anticipate claims even if the inherent feature is unrecognized, unintentional, or undesirable, and (2) that the claim language governs the scope and meaning of the claim.
