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.
China's Anti-Unfair Competition Law Amended, Effective October 15, 2025
China's legislature passed an amended Anti-Unfair Competition Law ("Amended Law") on June 27, 2025, which will take effect on October 15, 2025. This marks the third amendment to the law since its initial implementation in 1993. The number of Articles has increased from 33 to 41 by this amendment, reflecting an effort to adapt to new developments in the internet industry and directly address emerging issues of unfair competition online. The amendment aims to further improve fair competition rules within the digital economy.
Applying Machine Learning to a New Field Does Not Impart Patent Eligibility
The U.S. Court of Appeals for the Federal Circuit recently affirmed a district court's dismissal of a complaint for infringement of machine learning patents based on subject matter ineligibility of the patent claims under the Patent Act, 35 U.S.C. § 101. The district court had concluded that the claims recited known machine learning algorithms and did not provide a specific method for improving the algorithm, nor did they add "significantly more" to the abstract idea of using a generic machine learning algorithm in a specific field. Thus, the claims were deemed to be invalid. On appeal, the Federal Circuit distilled the matter down to the question of whether applying established methods of machine learning to new fields imparts patent eligibility, concluding that it does not. This decision highlights the importance of drafting claims related to machine learning algorithms to avoid "generic" language and, where possible, tying inventive methods to physical improvements of the computer or system. In addition, Recentive Analytics, Inc. v. Fox Corp. provides guidance to patent drafters regarding the need for adequate description of methods using machine learning (ML) and/or artificial intelligence (AI) algorithms. Finally, the decision raises broader questions regarding patent subject matter eligibility of claims directed towards ML and/or AI algorithms.
Tokyo District Court Grants Unprecedented Injunction in SEP Case
In a rare outcome, the Tokyo District Court granted a landmark injunction against Google on June 23, 2025, in a patent infringement suit brought by Pantech. It is unusual for the Japanese court to grant such relief; however, the facts of the case played an important role in reaching the result. Pantech's asserted patent is classified as SEP and declared under FRAND terms.
