Recent Case Highlights

What do you call a 21-year-old with good taste? Thirsty for more.

Patent Defenses turned 21 in 2025!

2025 Q2 Patent Defenses Update

Alice Meets AI: Applying Established Machine Learning Methods to a New Data Environment Is an Ineligible Abstract Idea:

“This case presents a question of first impression: whether claims that do no more than apply established methods of machine learning to a new data environment are patent eligible.  We hold that they are not.” Recentive Analytics (Fed. Cir. 04/18/25) (aff’g R. 12(b)(6) dismissal where claims recite “use of generic machine learning technology in carrying out the claimed methods for generating event schedules and network maps.” “Today, we hold only that patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101.”).

Alice: Correcting EDTX’s Standard Jury Instruction on Step Two: Judges in the Eastern District of Texas instruct juries that a patent eligibility challenge “must show that the claims involve nothing more than the performance of activities which a person of ordinary skill in the art would have considered well-understood, routine, and conventional at the time the patent application was filed.” This misstates the subject of an Alice step two analysis which is not the entire claim but rather the “additional elements” beyond the claim’s abstract idea. The Federal Circuit now has directed the EDTX to correct this practice as follows:

Optis Cellular (Fed. Cir. 06/16/25) (“If on remand the district court chooses to have the jury decide whether what Optis alleges is the inventive concept is well-understood, routine, and conventional, then the jury should be instructed what the abstract idea is (i.e., a mathematical formula) and that the abstract idea cannot contribute to the inventive concept.”).

Alice Drought Followed by Alice Downpour: Eight Federal Circuit opinions this quarter—after a seven-month lull—held claims patent ineligible for abstract ideas, including three reversing EDTX summary judgments of eligibility. A table of all 178 such opinions post-Alice is at https://patentdefenses.com/patent-eligible-subject-matter-sec-101/#a-emaliceem-step-one.

20^th Federal Circuit Opinion Finding Claim Language Triggered Sec. 112(6/f) Despite Lacking “Means for”: The Federal Circuit has issued 20 opinions applying Williamson to rule claims invoke Sec. 112(6/f) despite the absence of “means for” language, including two this quarter. See https://patentdefenses.com/1126f-claim-language/#a-whether-sec-1126f-treatment-invoked.

Optis Cellular (Fed. Cir. 06/16/25) (finding “a selecting unit configured to randomly select a sequence from a plurality of sequences …,” invokes Sec. 112(6/f) because “unit” is a generic nonce term and surrounding claim language is functional and “does not impart any particular structure”).

Fintiv (Paypal) (Fed. Cir. 04/30/25) (finding “payment handler service operable to,” “payment handler configured to,” and “payment handler that” phrases each triggers Sec. 112(6/f) because they “recite function without reciting sufficient structure for performing that function,” technical dictionaries demonstrate that term “handler” does not impart any structure, prefix “payment” describes function not structure, “the purely functional claim language reciting that the payment-handler terms are configured or operated to complete an action provides no structure,” and neither expert testified that the payment-handler terms connoted structure).

Scope of Enablement Limits Claim Scope: This non-precedential decision is notable because it applies the “full-scope enablement” doctrine (normally applied as an invalidity defense) at the claim-construction stage to limit scope of otherwise generic claim terms.

“It is well established by our precedent that the scope of the claims must align with the scope of the enablement.” Stylwan (Fed. Cir. 05/27/25) (non-precedential) (aff’g construction of “program,” “programming,” “programmed,” “programmable,” “processor,” and “material features acquisition system”—to require three specific equations disclosed in the Spec. in part because “the inventors [did not] enable[] the use of any formulas beyond the three disclosed identifier equations”).

Lesson from Supreme Court on Identifying Terms of Art: One reason for patent lawyers to track non-patent-law Supreme Court decisions is the overlap between statutory construction and patent claim construction, including determining whether a term (in a statute or a patent claim) qualifies as a term of art.

Medical Marijuana (U.S. 04/02/2025) (rejecting argument that “injured” in RICO statute is term of art with specialized meaning based on law dictionaries defining “injury” in that manner (but also in ordinary sense of term): “It is hard to make a term-of-art argument without the term of art.”).

IPR Estoppel Precludes Asserting in District Court the Same Grounds, Not the Same Prior Art: Speaking of statutory construction:

“IPR estoppel does not preclude a petitioner from asserting the same prior art raised in an IPR in district court, but rather precludes a petitioner from asserting grounds that were raised or reasonably could have been raised during an IPR…. IPR estoppel does not preclude a petitioner from relying on the same patents and printed publications as evidence in asserting a ground that could not be raised during the IPR, such as that the claimed invention was known or used by others, on sale, or in public use.” Ingenico (Fed. Cir. 05/07/25) (aff’g anticipation verdict based on public use prior art described by printed publications).

Defining PHOSITA? Don’t Stop at Education and Experience: Don’t overlook an opportunity to define the person of ordinary skill in the art in part by their knowledge.

Sage Products (Fed. Cir. 04/15/25) (aff’g PTAB anticipation finding and finding that PHOSITA would know that a prior art UK publication’s use of word “sterile” would comply with UK standards for labeling a product “sterile”: to decide “the question of how a skilled artisan would have understood ‘sterile’ as used in the PAR …, the Board decided it had to delve into not just the undisputed identification of who is the pertinent skilled artisan, but also had to assess what that skilled artisan would know.”).

Non-Obviousness Objective Indicia Nexus: Licenses Are Evaluated Under a Less Exacting Nexus Standard Than Other Objective Indicia:

“Licenses to the challenged patent then, unlike products or other forms of objective evidence of nonobviousness, do not require a nexus with respect to the specific claims at issue, nor does our nexus law require that a particular patent be the only patent being licensed or the sole motivation for entering into a license.” Ancora (Fed. Cir. 06/16/25) (PTAB erred in finding no nexus where “evidence reflected that the licenses were directed to the ’941 patent, were all entered into near the end of litigation involving the same claims and prior art as at issue in this case, and were for ‘payments [that] far exceeded the cost of litigation.’”).

Hatch-Waxman: Open Question Whether Submitting ANDA Is Artificial Infringement Even If It Does Not Seek Approval of Drug Claimed in Orange Book Patent:

While Sec. 271(e)(1)’s “plain language would seem to render any ANDA or paper NDA submitted in the face of any existing patent that claims the applied-for drug or its use to be an act of infringement,” “the placement of § 271(e)(2) within the context of the Hatch-Waxman Act suggests that the provision may only apply where the ANDA or paper NDA seeks approval of a drug claimed in an Orange Book patent.” Jazz Pharm. (Fed. Cir. 05/06/25) (remanding to district court to decide this issue the parties had not briefed).

2025 Q1 Patent Defenses Update

Issues of First Impression

Federal Circuit panels decided the following issues of first impression this quarter.

• Cited Portion of a Sec. 102(e) Prior Art Reference Must Be Supported by the Reference’s Provisional Application: “Even if one demonstrates that a provisional application provides written description support for one claim of the non-provisional application or patent, the provisional application must also provide written description support for the specific portions of the patent specification identified and relied on in the prior art rejection. In other words, to claim priority to the provisional filing date, the portion of the application relied on by the examiner as prior art must be supported by the provisional application.” In re Riggs (Fed. Cir. 03/24/25) (remanding to PTAB to conduct this analysis).
• ITC’s Domestic Industry Determination Must Consider U.S. Labor, Capital, etc., Even if the Product Is Made Abroad: Lashify (Fed. Cir. 03/05/25) (exercising our “independent judgment,” rev’g ITC’s statutory interpretation. In determining domestic industry, ITC must consider patent owner’s employment of labor and capital even when they are used in sales, marketing, warehousing, quality control, or distribution of products made outside U.S.)
• Section 156 Patent Term Extension Is Based on Length of Regulatory Review After Issuance of Original Patent, Not Reissue: In Sec. 156(c) (“The term of a patent eligible for extension under subsection (a) shall be extended by the time equal to the regulatory review period for the approved product which period occurs after the date the patent is issued”), the “date the patent is issued” is the original patent’s issue date not that of the reissue patent. Merck Sharp (Fed. Cir. 03/13/25) (agreeing with USPTO interpretation).
• Jepson Preambles Require Written Description Support: “We hold that the limiting preamble of a Jepson claim must be supported with sufficient written description.” In re Xencor II (Fed. Cir. 03/13/25) (aff’g PTAB’s Appeals Review Panel on law and aff’g rejection of claims for lack of written description support of Jepson preamble (“In a method of treating a patient by administering an anti-C5 antibody with an Fc domain, the improvement comprising.”)).

“The Principle of Stuff”

Information has no mass. It’s not stuff. Neither are functions. Computer science often glosses over these distinctions harmlessly, but patent law cannot always afford to. Courts sometimes remind us of this.

• Qualcomm (Fed. Cir. 01/24/25) (non-precedential) (“in explaining the patent’s words, neither party delves beneath the terminology of “buffer” and “memory” in their functional meaning to describe concretely the potential makeup and configuration of the physical components and steps used to perform the functions. Cf. PETER J. DENNING & CRAIG H. MARTELL, GREAT PRINCIPLES OF COMPUTING 59 (2015) (“The terminology of abstractions [common in computer science] often obscures the principle of stuff: the reality that computational actions are implemented as physical processes controlled by programs.”)).

This “principle of stuff” (and “principle of how”) is embedded in Sections 112(b) and 112(f).

• In re Raiz (Fed. Cir. 02/11/25) (aff’g rejection of “means” element for failure of Spec. to “provide a step-by-step explanation of the contract software” that supposedly performs the function on conventional hardware).

Federal Circuit Continues Avoiding a Definitive Ruling on RDOE’s Survival

If the Supreme Court were to decide whether the reverse doctrine of equivalents (RDOE) survived the 1952 Patent Act, it would almost certainly say yes. The 1952 Act introduced nothing mandating that literal compliance with claim language conclusively proves infringement. This may explain the Federal Circuit’s reluctance to tee up this question for Supreme Court review by definitively declaring RDOE dead.

• Federal Circuit Panel Nearly Declares That RDOE Did Not Survive 1952 Act: “We find Steuben’s arguments [that RDOE did not survive] compelling, but need not decide whether RDOE survived the 1952 Patent Act. We have never ‘affirmed a decision finding noninfringement based on the reverse doctrine of equivalents.’” Steuben Foods (Fed. Cir. 01/24/25) (rev’g JMOL of non-infringement because patent owner’s evidence on principle of operation supported jury verdict).
• The panel referred to RDOE as a “defense” to infringement. But that is not how the Supreme Court described RDOE. As recognized by the Federal Circuit predecessor court that considered issues of infringement: “It is well settled that more than a literal response to the terms of the claims must be shown to make out a case of infringement.” Leesona (Ct. Cl. 01/28/76) (citing Supreme Court precedents).

Parallel PTAB and District Court Actions

A final PTAB ruling of patent claim unpatentability—once affirmed or left unappealed—moots district court assertions of those claims because the ruling inevitably leads to claim cancellation. But as this is not on account of issue preclusion the ruling does not bar asserting other claims of the patent.

• PTAB Final Unpatentability Decision on Some Claims of a Patent Is Not Issue Preclusion as to Validity of Immaterially Different Other Claims of the Same Patent: “A prior final written decision of the Board that certain patent claims are unpatentable [does not] preclude[] a patentee from asserting other claims from the same patent, even assuming the asserted claims are immaterially different from the unpatentable claims for purposes of invalidity.” Kroy IP (Fed. Cir. 02/10/25) (rev’g dismissal of Complaint for issue preclusion: “Collateral estoppel generally does not apply when the second action involves application of a different legal standard, such as a different burden of proof.”).

“Comparable Licenses” in Reasonable Royalty Determinations

As we await the en banc Court’s decision in EcoFactor v. Google addressing district court gatekeeping of expert testimony in the context of allegedly “comparable licenses,” a non-precedential ruling reminds us that comparable-license analysis must be rigorous.

• Roland (Fed. Cir. 03/27/25) (non-precedential) (granting infringer new trial on damages on reasonable royalty where damages expert relied on three patent licenses but expert failed to account for those licenses including three non-asserted patents, failed to explain how she accounted for one license being in settlement of litigation, and failed to “coherently explain” how she derived her asserted rate from those in the license agreements).

2024 Q4 Patent Defenses Update

Thinning the Orange Book 

Teva Branded (Fed. Cir. 12/20/24).

• When a pharmaceutical company lists a patent in the Orange Book, it can block the introduction of competing drug products for 30 months. To be listed, the patent must “claim[] the drug for which the applicant submitted the [NDA] application.” This decision interprets that statutory requirement and is an excellent primer on the ANDA statutory regime including the Orange Book.
• A patent “claims the drug” when it “particularly points out and distinctly claims the drug as the invention,” not merely “if it reads on the approved drug.” Teva Branded (Fed. Cir. 12/20/24) (aff’g judgment delisting patents from Orange Book where NDA product was combination of “albuterol sulfate (the active ingredient) with a propellant, ethanol, and an inhaler device to administer the drug” but the claims were directed to improvements in metered-dose inhalers and did not require the presence of the NDA product’s active ingredient).
• FTC press release: “Removal of junk patent listings is critical to ensuring drugmakers can fairly compete to offer generic drugs at a lower price for consumers. This decision is important not only for lowering asthma inhaler costs, it also sets the stage for removal of junk listings on a range of other critical medications where junk device listings impede competition.”

U.S. Court May Enjoin Patent Owner from Enforcing Foreign Court’s Patent-Infringement Injunction on Patents Subject to FRAND Obligation if U.S. Lawsuit Presents an Issue That Might Bar the Patent Owner from Seeking Such a Patent-Infringement Injunction

Telefonaktiebolaget LM Ericsson (Fed. Cir. 10/24/24).

• After Ericsson-Lenovo negotiations to cross-license their standard-essential 5G patents [SEPs] failed, Ericsson filed patent infringement suits in Brazil and Columbia and obtained preliminary injunctions within weeks. Lenovo then (in Ericsson’s pending U.S. patent litigation) moved for an injunction against Ericsson enforcing these foreign-court injunctions on the ground that Ericsson had violated its FRAND obligation by failing to negotiate in good faith.
• The district court denied Lenovo’s motion on the ground that the U.S. lawsuit would not necessarily result in a global cross-license and therefore would not necessarily resolve the foreign actions. The Federal Circuit vacated the district court’s denial as misinterpreting the governing Microsoft (Motorola) (9th Cir. 07/30/15) FRAND antisuit injunction framework.
  • “[T]he ‘dispositive’ requirement [of this framework] can be met even though a foreign antisuit injunction would resolve only a foreign injunction (and not the entire foreign proceeding), and even though the relevant resolution depends on the potential that one party’s view of the facts or law prevails in the domestic suit.”
  • The “dispositive” requirement is met here because as a matter of contract interpretation “Ericsson’s [ETSI] FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first complied with the commitment’s obligation to negotiate in good faith over a license to those SEPs,” and Lenovo might show that Ericsson failed to negotiate in good faith.

Does a Vendor or Customer “Use” a Claimed Distributed System? Is a Vendor Vicariously Liable for a Customer’s Use?

Patent nerds reading these questions will think of Centillion Data (Fed. Cir. 01/20/11) (“We hold that to ‘use’ a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it.”) and Akamai Tech. IV (Fed. Cir. 08/13/15) (en banc) (a party is liable for another’s performance of a method step if [other paths omitted] it “contracts with another to perform one or more steps of a claimed method”). This new decision addresses both of these rules.CloudofChange (Fed. Cir. 12/18/24)

• Merchants, not defendant supplier (NCR) offering Web-based POS [point-of-sale]-builder system, used the system.
  • Merchants “initiate at the POS terminal a demand for service (for example, building or editing a POS) and benefit from the back end providing that service.”
  • While the defendant system-supplier benefitted financially, it did not receive as a benefit the patent-recited purpose of the use of the POS-builder system.
• Defendant system-supplier was not vicariously liable for the merchants’ use.
  • It did not “direct or control its merchants to subscribe to the [POS-builder] system, download the [POS-builder] app on their POS terminals, or put the [POS-builder] system into use by initiating action at the POS terminals to cause the [POS-builder] software to modify its POS terminals,” despite the defendant system-supplier requiring merchants to get own Internet connection.
  • Distinguishing Akamai as directed to method claim where supplier performed all but one step of claimed method and controlled performance of that one step.
• At our January 9 Patent Defenses presentation, we’ll explain the patent drafting mistake that partly led to this result.

False Assertion that a Product Feature Is Patented in Manner Misleading Consumers About Nature, Characteristics, or Qualities of Product, Supports a Lanham Act Counterclaim

• “A cause of action arises from Section 43(a)(1)(B) where a party falsely claims that it possesses a patent on a product feature and advertises that product feature in a manner that causes consumers to be misled about the nature, characteristics, or qualities of its product.” Crocs (Fed. Cir. 10/03/24) (rev’g Summ. J. against counterclaim, distinguishing precedents that false patent assertions which mislead about inventorship or authorship do not support Lanham Act cause of action).

Showing that Unpatented Features Were Conventional Does Not Suffice to Support Using the Entire Market Value Rule

• Provisur (Fed. Cir. 10/02/24) (rev’g denial of new trial on damages: “use of the entire market value rule was impermissible because [plaintiff] failed to present sufficient evidence demonstrating the patented features drove the demand for the entire slicing line,” and instead showed only that unpatented features were conventional).

Several Vehicles Exist for Sanctioning a Patent Owner Who Brings a Bad-Faith Patent Infringement Action

• A district court “can impose sanctions under its inherent power in addition to awarding attorney fees and costs under § 285.” PS Products (Fed. Cir. 12/06/24) (aff’g award of $25K in “deterrence sanctions” payable to district court, under inherent power, in addition to award of attorney fees for bad-faith design patent infringement complaint, where venue plainly was lacking, there was no plausible argument for infringement, plaintiff had filed 25 lawsuits in district, each citing wrong venue statute, and many dismissed voluntarily in response to motions to dismiss, and plaintiff dismissed this action before defendant could file Rule 11 motion, but declining to award fees on the appeal as it was meritless but not quite frivolous).

2024 Q3 Patent Defenses Update

Fed. Cir. Grants En Banc Review on Damages Expert Gatekeeping

The Federal Circuit granted Google’s petition for rehearing en banc to address a district court’s gatekeeping of patent damages experts, here an expert assigning a per-unit royalty rate to the patent owner’s allegedly comparable past lump-sum portfolio license agreements. Klarquist submitted a brief on behalf of seven amici supporting en banc review.EcoFactor (Fed. Cir. 06/03/24) (2-1) (aff’g damages award and admission of patent-owner expert testimony on royalty rate), vacated and en banc review granted (Fed. Cir. 09/25/24) (briefing “limited to addressing the district court’s adherence to Federal Rule of Evidence 702 and Daubert[,] in its allowance of testimony from EcoFactor’s damages expert assigning a per-unit royalty rate to the three licenses in evidence in this case”).

Whiplash! Obviousness-Type Double Patenting

August 2023: A year ago, the talk of the (patent-practitioner) town was In re Cellect, holding that patent term adjustment (PTA) affects the date of patent expiration for obviousness-type double patenting (ODP) purposes, and affirming the ODP rejection of a (’369) patent expiring later (due to PTA) over a later-filed, later-issued, but earlier-expiring (’036) patent in same family having a common priority date. In re Cellect (Fed. Cir. 08/28/23). Patent practitioners were aghast, and a cert. petition was filed. (The Supreme Court was scheduled to consider this petition at its “long conference” this Monday, September 30.)August 2024: But now the Federal Circuit, while standing by its holding on the impact of PTA, has declared that the result in In re Cellect will not be repeated.“

A first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date,” in view of “the purpose of the ODP doctrine, which is to prevent patentees from obtaining a second patent on a patentably indistinct invention to effectively extend the life of a first patent to that subject matter,” and because ruling otherwise would “effectively abrogate the benefit Congress intended to bestow on patentees when codifying PTA.” Allergan (Fed. Cir. 08/13/24) (distinguishing In re Cellect as not addressing this question of law at least in part because no party had presented it).The Patent Office cited Allergan in opposing the In re Cellect cert. petition.

The New “On Sale” Bar (for First-Inventor-to-File Patents) Is Much Like the Old “On Sale” Bar

An applicant’s commercialization of an invention (e.g., through sale of a product of a claimed process) starts the one-year grace period for the applicant to file a patent application, even if it does not publicly disclose the invention.Celanese (Fed. Cir. 08/12/24) (aff’g ITC that patent applicant’s pre-critical date sales of product made outside U.S. in secret by patented process invalidates the claims under AIA section 102(a)(1): “for patented processes, the on-sale bar applies when one commercially exploits the process by seeking compensation from the public for carrying out that process before the critical date”).But it does not defeat the prior art status of a third-party “disclosure” before the application was filed, unless the applicant’s commercialization publicly disclosed the invention.Sanho (Fed. Cir. 07/31/24) (aff’g PTAB obviousness despite inventor having privately (but without confidentiality obligation) sold device embodying claimed invention (and delivered one sample to buyer) before effective filing date of lead prior art reference, in part because “publicly disclosed” is not the same as “public use” (which encompasses a private commercial use), and expressly not deciding “whether to apply the prevailing standard for when a printed publication is sufficiently publicly accessible to qualify as prior art”).

Preliminary Injunction Against a Cancer-Relapse Test in a Two-Supplier Market

Patent preliminary injunctions remain rare, but a new precedential decision may encourage more non-NPE patent owners to seek a preliminary injunction even where that results in a one-supplier market.

Natera (Fed. Cir. 07/12/24) (aff’g preliminary injunction against competing tumor-informed molecular residual disease tests for detecting cancer relapse in two-product market, with carve-out for patients who had already started use with accused product, where direct competitors in two-competitor market, unwillingness to license the patent, potential loss of business relationships, obstacles to customers switching between providers, sufficient causal nexus, and the patentee showed it is more likely than not to prevail over an invalidity challenge, and rejecting argument that accused infringer needed to show “mere vulnerability” of the patent to an invalidity challenge to defeat an injunction).

An Issue Preclusion Profusion

The principles and elements of issue and claim preclusion are well established. For example, under issue preclusion, when an issue of fact or law is actually litigated and determined by a final judgment, the losing party had a full and fair chance to litigate the issue, and the determination is essential to the judgment, the determination (with certain equitable exceptions) is conclusive in a separate, second action between the parties. But the patent-case “fact patterns” to which these principles are applied are quite varied. And panels sometimes seem to disregard the well-settled principles.

• Doctrine of Equivalents Is “Same Issue” as Literal Infringement

Wisconsin Alumni II (Fed. Cir. 08/28/24) (aff’g that later versions of Apple chips accused in second action were “essentially the same” as those accused in first action, and that “doctrine of equivalents” infringement theory in second action is “same issue” as literal infringement issue that plaintiff lost in first action, as they involve same statute, have been treated as same issue by S. Ct., and evidence would be substantially the same).

• Sec. 101 Interlocutory Dismissal Order Became Final for All Dismissed Patent Claims Upon Stipulated Dismissal with Prejudice Despite Amended Complaint Having Dropped Some Claims

Koss (Fed. Cir. 07/19/24) (aff’g that stipulated dismissal of action with prejudice made final the district court’s previously interlocutory order on a motion to dismiss that all claims of three patents were invalid under Section 101 where amended complaint then asserted only limited claims of two of the patents, because order merged with the non-appealed stipulated dismissal, and therefore final order had issue preclusive effect).

• Invalidity-Related Fact Finding Against Patent Owner in IPR Does Not Preclude Patent Owner on That Fact Question in District Court

Due to different standards of proof, “a finding underlying an unpatentability decision in an IPR proceeding [does not] collaterally estop[] a patentee from making validity arguments regarding separate, related claims in district court litigation.” ParkerVision (Fed. Cir. 09/06/24) (rev’g Daubert ruling excluding patent owner expert testimony; the defendant-petitioner proving the capabilities of a prior art apparatus by a preponderance of the evidence (in an IPR proceeding on different patent claims) does not preclude the patent owner on that factual issue where it must be proven by clear and convincing evidence).

• Panel Disregards “Separate, Second Proceeding” Requirement for Issue and Claim Preclusion

Zyxel (Fed. Cir. 07/22/24) (rev’g PTAB non-obviousness as to one original claim and remanding to PTAB to consider whether this creates “collateral estoppel” as to patentability of amended claims with same elements; not forfeited for failure to raise collateral estoppel prior to appeal because not available until Fed. Cir. ruled original claim unpatentable).

101: No “How,” No Way!

Alice in a nutshell: No “how” in the claim, no way it’s valid.

The Federal Circuit insists on what we call “how claims,” i.e., claims that recite as the alleged advance a physical-realm particular way (particular structures, materials, and/or acts) of how to perform a function or achieve a result. Particularity in the mental realm of information and information manipulation, however, does not suffice because even narrow and specific abstract ideas are patent ineligible. Below are excerpts from three of this quarter’s seven Federal Circuit opinions finding claims patent ineligible under these principles:

“Claim 1 does not disclose how to maintain a usage history database, track viewer consumption, or generate a program guide. Instead, the claims recite functions in the abstract.” Broadband (Fed. Cir. 09/03/24).

“These claims consist solely of result-orientated, functional language and omit any specific requirements as to how these steps of information manipulation are performed.” Mobile Acuity (Fed. Cir. 08/06/24).

The claim’s “steps demonstrate that the claims are directed to receiving, storing, transmitting, determining, selecting, and generating information, which place them in the ‘familiar class of claims directed to a patent-ineligible concept.’” Miller Mendel (Fed. Cir. 07/18/24).The Court also reversed a patent ineligibility judgment this quarter emphasizing that the claims were limited to a particular way of performing the claim-recited functions:

Contour IP (Fed. Cir. 09/09/24) (rev’g Summ. J. ineligibility: claims “require specific, technological means—parallel data stream recording with the low-quality recording wirelessly transferred to a remote device—that in turn provide a technological improvement to the real time viewing capabilities of a [point-of-view] camera’s recordings on a remote device.” The “claims do not cover other ways that a camera processor might generate multiple video streams of varying quality for wireless transmission, such as streams created ‘in sequence.’”).