October 2025

Instacart Challenges USPTO’s Discretionary IPR Denials in Seventh Pending Mandamus Petition

by Dennis Crouch

In re Maplebear Inc. (d/b/a Instacart), No. 26-105 (Fed. Cir., petition filed Oct. 21, 2025), adds another voice to the chorus of technology companies asking the Federal Circuit to rein in the Patent Office's increasingly restrictive approach to IPR institution. The mandamus petition was filed a few days after the USPTO published a Notice of Proposed Rulemaking (NPRM) that further curtails access to inter partes review (IPR) proceedings, and argues that the denial of its institution was improperly based upon grounds not supported by the statutory framework.  The petition argues that Dir. Stewart's novel denial criteria were imposed without the notice-and-comment rulemaking required by the Administrative Procedure Act, exceed the Director's statutory authority under 35 U.S.C. § 314(a), and were applied retroactively to Instacart's petition in violation of due process. The petition argues that the NPRM is tacit admission of the rulemaking requirement.

The Maplebear case is the seventh mandamus on the same issue -- arguing that the USPTO's broadened discretionary denial approach is ultra vires. (SAP, Motorola , Google, Samsung, HighLevel, SanDisk, Western Digital, Cambridge Industries, and now Instacart).  These petitions are all sitting before the Federal Circuit - none have been decided yet.  The wave began after Acting Director Coke Morgan Stewart rescinded former Director Kathi Vidal's June 2022 guidance memoranda, which had provided "safe harbors" for petitioners who stipulated not to pursue the same prior art in parallel litigation (so-called Sotera stipulations).  Following that rescission, the PTAB expanded its use of discretionary denials based on expanded Fintiv factors, which balance whether to institute IPR when parallel district court litigation is pending.  But then the policy shift went well beyond Fintiv with Acting Director Stewart introducing two additional discretionary denial grounds through individual PTAB decisions rather than formal rulemaking.

  • Settled expectations: IPR petitions are denied if the challenged patent had been in force for several years (roughly seven+ years in practice), on the theory that patent owners develop stronger reliance interests as their patents age.
  • Roadmapping: IPRs were denied if any prior party (related or unrelated to the current petitioner) had previously challenged the same patent, on the theory that later petitioners would impermissibly benefit from the roadmap provided by earlier proceedings.

These two factors represented a dramatic departure prior IPR practice with the result of hundreds of IPR institution denials.


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Empty Formalism: How Patent Eligibility Lost Touch with Preemption

by Dennis Crouch

Earlier this year, the Federal Circuit decided its first "do it on AI" case - holding that Recentive Analytics' inventions were ineligible. The key patents at issue focused on training machine learning models for specific applications (event scheduling and network maps).

Recentive has now petitioned the Supreme Court for writ of certiorari.  Conventional wisdom is that a good certiorari petition needs to show the legal error below and also show why the case is important and timely.  The petition follows this dual framing strategy: (1) a doctrinal claim that the Federal Circuit has abandoned preemption as the touchstone of patent eligibility; and (2) a policy argument tied to what I think of as the "new great game" and what the Trump Administration calls "Winning the AI Race."  The case also arrives at the Supreme Court as the USPTO has begun to move aggressively toward limiting its use of eligibility in patent prosecution.

The petition particularly asks whether eligibility doctrine requires model-architecture improvements, whether it is enough to create a practical tool by applying machine learning to new data environments.


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Executive Branch Ethics: Why PTAB Judges Can Own Stock That Would Disqualify Article III Judges

by Dennis Crouch

In Centripetal Networks, LLC v. Palo Alto Networks, Inc., No. 2023-2027 (Fed. Cir. Oct. 22, 2025), the Federal Circuit held that an administrative patent judge's stock ownership in petitioner did not required vacatur of the PTAB institution and final written decisions.  The case is almost exactly parallel to a prior federal circuit decision vacating a $1.9 billion district court judgment -- with the court explaining the difference being that Article III judges are held to a different ethical standard than PTAB judges.

Although the patentee lost lost the recusal argument, it won on a separate argument -- that the PTAB failed to consider specific evidence of copying in its obviousness analysis. This part of the case thus reinforces the idea that secondary considerations evidence must always be evaluated if presented.


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Call for Applications: 2026–2027 Thomas Edison Innovation Law & Policy Fellowship

By Dennis Crouch

The University of Akron School of Law’s Intellectual Property Policy Institute (IPPI) is now accepting applications for the 2026–2027 Thomas Edison Innovation Law & Policy Fellowship—a year-long, non-resident program supporting rigorous scholarship on intellectual property, creativity, and innovation law.

Now entering its twelfth year, the Edison Fellowship brings together a small group of U.S. scholars for three intensive, invitation-only roundtables with senior commentators including Professors John Duffy, Erika Lietzan, Michael Risch, and Mark Schultz. Fellows develop a research project from proposal to near-publication, producing a paper suitable for submission to a law or peer-reviewed journal by the end of 2027.

The fellowship provides travel and lodging for in-person sessions and a $3,000 honorarium upon completion of program requirements. Applications are open to tenure-track or tenured law and economics professors, Ph.D. scholars, and practitioners pursuing research agendas in IP or innovation policy.

Application materials—a research proposal (max 5 pages) and CV—should be submitted as a single PDF to IPPI@uakron.edu by Sunday, November 23, 2025 (5:00 p.m. ET).

More information: https://blogs.uakron.edu/ualawip/edison-fellowship/

2025 Economics Nobel: What the Industrial Revolution Teaches About Patent Policy

by Dennis Crouch

Economic historian Joel Mokyr recently received the 2025 Nobel Prize in Economics (shared with Philippe Aghion and Peter Howitt) for reshaping our understanding of why historic sustained technological progress and economic growth emerged in Europe in the 1700s.  For patent law scholars and practitioners, Mokyr's work offers critical historical perspective on a question that echoes through modern IP policy debates: what institutional arrangements best promote innovation? His historic answer from the Industrial Revolution push against any patent-centric narrative, but still argue that knowledge dissemination is the key factor.

Mokyr's central insight is that the explosion of sustained economic growth beginning around 1750 resulted from an unprecedented accumulation and circulation of what he terms "useful knowledge." Joel Mokyr, Intellectual Property Rights, the Industrial Revolution, and the Beginnings of Modern Economic Growth, 99 Am. Econ. Rev. 349 (2009). This useful knowledge encompasses both propositional knowledge (understanding laws of nature and scientific principles) and prescriptive knowledge (understanding how to do things through practical techniques and skills). What made the Industrial Revolution revolutionary was not simply the existence of clever inventions, but rather the creation of positive feedback loops between scientific understanding and practical application, amplified by new institutions and cultural norms that encouraged the wide dissemination of both types of knowledge. The Enlightenment subsequently fostered what Mokyr calls an "Industrial Enlightenment" where artisans began engaging with natural philosophy and knowledge became viewed as a public good meant to improve human welfare rather than a proprietary secret to be guarded.

At this time, encyclopedias, technical journals, public lectures, and open demonstrations allowed practical knowledge to spread rapidly. The Royal Society of Arts promoted useful inventions through prizes and encouraged inventors to publish their methods rather than seek patents. Scientific academies in France and elsewhere operated similarly, offering pensions and honors to inventors who contributed to public knowledge. What emerges from Mokyr's account is a picture of innovation as fundamentally a social and cumulative process, with inventors standing on the shoulders of giants, as captured by Newton's famous phrase.


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Supreme Court on Patents Fall 2025

by Dennis Crouch

The Supreme Court's docket heading into its November and December conferences includes six pending certiorari petitions focusing on patent law and Federal Circuit procedure. I have loosely ranked them here according to some combined score that considers both the importance of the case and its likelihood of being granted certiorari.

The leading contender is Hikma Pharmaceuticals USA Inc. v. Amarin Pharma, Inc., No. 24-889, which asks whether a generic drug manufacturer that fully carves patented uses out of its FDA-approved label can nonetheless face induced infringement liability simply by calling its product a "generic version" of the brand-name drug or referencing publicly available information about the branded product's sales. The petition challenges a Federal Circuit decision that permitted inducement claims to proceed even when Hikma's FDA-approved label omitted all direct references to Amarin's patented method of use. Under the Hatch-Waxman Act's framework, generic manufacturers can obtain approval with so-called "skinny labels" that exclude patented indications, allowing them to market their products for unpatented uses only. 35 U.S.C. § 271(e)(2).


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Automated Search Pilot: USPTO’s First Step Toward AI-Assisted Examination

By Dennis Crouch

The USPTO Automated Pre-Examination Search Pilot Program launched today.  Here is how it works: Applicants filing original utility applications can petition to receive an Automated Search Results Notice (ASRN) before human examiner review. The pilot is currently limited to only 1,600 applications over the next six months. [PTO-P-2025-0011].  The ASRN program represents a modest but significant implementation of AI-assisted examination concepts I explored in a February 2025 proposal for pre-filing certification. While my proposal envisioned a comprehensive automated pre-filing examination, the ASRN happens after filing.  While both approaches share the core insight that automated prior art analysis before human examiner review can streamline prosecution and provide applicants with earlier intelligence about patentability, the timing shift from pre-filing to post-filing reflects the USPTO's preference particularly for streamlining the examination processes. This first step allows the agency to evaluate AI performance within established quality frameworks before considering more radical reforms.

To participate, applicants must file original, noncontinuing, nonprovisional utility applications electronically through Patent Center and enroll in the Patent Center e-Office Action Program. The petition also requires a $450 petition fee under 37 CFR 1.17(f) (discounted for small/micro entities) that should be filed with the application. The USPTO will process petitions after pre-examination processing completes, granting the petition if eligibility requirements are met or dismissing it without opportunity to correct deficiencies.


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Assignment of Future Patents: Continuations-in-Part

by Dennis Crouch

Causam Enterprises, Inc. v. International Trade Commission, No. 23-1769 (Fed. Cir. Oct. 15, 2025).

This case is ultimately about patent ownership -- and turns on whether a 2007 assignment covers "continuations-in-part."  The assignment document lists  certain covered patents along with "divisions, reissues, continuations and extensions," but does not particularly list "continuations-in-part."  Holding: The assignment does not include continuations-in-part.


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CSU Law’s IP+ Conference 2025

On Friday, November 14, I’ll be in Cleveland to speak at CSU|LAW’s annual IP+ Conference (with a simultaneous livestream).  I’m excited about the line up with Professors Donald Chisum and Janice Mueller as a keynote duet, followed by a fireside chat with retired Federal Circuit Judges Kathleen O’Malley and Richard Linn. I’ll join them for an afternoon “State of IP” panel that will dig into the ongoing generational shift in our patent and copyright systems. It’s a huge honor to share a stage with scholars and jurists whose work shapes so much of what we teach and practice.  In my patent law course I assign Janice Mueller’s hornbook; in class we work through opinions authored by Judges O’Malley and Linn; and like nearly everyone in our field, I regularly lean on Chisum on Patents as the treatise of record.

The event is organized by CSU Law Professor Christa Laser, the school’s IP Program Director.  Many thanks to Prof. Laser for putting this program together. Registration is free for students and cheap ($25) for attendees seeking CLE. In-person and virtual options are available.

Unexplained and Unreviewable: The New Normal for IPR Institution

by Dennis Crouch

The USPTO continues to move quickly with sweeping changes to its "popular" inter partes review (IPR) process.  On October 17, 2025, the agency announced that Director John Squires  is reclaiming personal authority over all IPR and PGR institution decisions. In an "Open Letter" titled "Bringing the USPTO Back to the Future," Director Squires announced that effective October 20, 2025, he will personally determine whether to institute trial proceedings rather than delegating this function to PTAB panels. The announcement came on the same day that the agency published a notice of proposed rulemaking (NPRM) to create mandatory bars to IPR institution in multiple categories.  These actions follow a rapid ramping-up of discretionary denials over the past nine months under President Trump.  Together, these developments represent a coordinated effort to dramatically restrict access to IPRs in ways that favor patent owners under the banner of restoring "quiet title" to issued patents.

I believe we will see a major downturn in IPR petitions in the coming months.  Over the past decade, the IPR process has been an extremely effective tool used by accused infringers to cancel patents as obvious. Director Squires has argued that it is too effective with high institution rates and successful invalidity challenges destabilizing patent rights and undermined validity confidence that issued patents should enjoy. From this perspective, patents survive examination by expert examiners only to face a "second bite at the apple" through PTAB review, creating uncertainty that discourages innovation and investment. The Director frames these reforms as restoring proper respect for the Patent Office's examination process and the presumption of validity that issued patents deserve.  But there's a reason accused infringers prefer IPRs to litigation: although obviousness can also be challenged in court, history shows that a novice jury is much less likely to find the claims obvious than would a PTAB panel of subject matter experts.

Background:


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Prosecution Disclaimer Across Time: Later Continuation Statements Limit Already-Issued Patents

by Dennis Crouch

In Barrette Outdoor Living, Inc. v. Fortress Iron, LP, No. 2024-1231 (Fed. Cir. Oct. 17, 2025), the FedCir affirmed a non-infringement judgment based on prosecution disclaimer, holding that statements made during prosecution of a later-filed continuation application limited the scope of already-issued patents from the same family.  This reinforces a similar holding in Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015) (statements in prosecution files of related patents are relevant to claim construction "regardless of whether the statement pre- or post-dates the issuance of the particular patent at issue.").  Most US patents are part of a larger family and the risk created by these decisions has potential implications for a large number patent holders.

What are your best practices when making an argument in a continuation case about the scope of a particular claim limitation that part of an already issued patent?  In this case, one solution would have been to amend the continuation to spell out the limitation rather force the limitation by argument. This path would have separated the two patents and better protect against that carry over.


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All Quiet on the PTAB Front: USPTO Proposes More Major Restrictions to Inter Partes Review Institution

by Dennis Crouch

The USPTO has published a notice of proposed rulemaking (NPRM) that would dramatically restrict access to inter partes review proceedings. Revision to Rules of Practice before the Patent Trial and Appeal Board, 90 Fed. Reg. [TBD] (Oct. 17, 2025).  The proposed amendments to 37 CFR Part 42 would create mandatory bars to IPR institution in three categories:

  1. When claims of the challenged patent have previously been found valid in other proceedings;
  2. Where parallel litigation involving the patent will likely reach a validity decision first; and
  3. Where petitioners refuse to stipulate against raising any anticipation or obviousness challenge against the patent in other venues.

The rules formalize and expand practices that have emerged through both PTAB decisions and recent Director-level denials, converting discretionary factors into more categorical requirements.  Comments are due in a short 30 day window via www.regulations.gov (docket number PTO-P-2025-0025).  Notably, the USPTO simultaneously withdrew a proposed rule on discretionary denial under Former Director Vidal citing changes in administrative priorities.

Meanwhile the Federal Circuit is in the midst of considering a bolus of mandamus petitions arguing that the USPTO's already ramped-up discretionary denial approach has moved past the ultra vires threshold into the realm of actionable shenanigans. Director Vidal (back at Winston) recently filed an amicus brief to the FedCir on behalf of the Public Interest Patent Law Institute (PIPLA) arguing that the Settled Expectations denial doctrine goes too far: "The USPTO's own data reveals that its new 'settled expectations' rule protects the very patents most likely to be invalid."


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IPR Fact Findings Don’t Bind District Courts (What about IPR Legal Conclusions?)

by Dennis Crouch

Issue preclusion (also called collateral estoppel) prevents parties from relitigating issues already decided in prior proceedings. To apply issue preclusion, courts generally require: (1) the issue was actually litigated and decided in the prior proceeding; (2) the determination was essential to the judgment; (3) the party against whom preclusion is asserted had a full and fair opportunity to litigate; and (4) the party against whom preclusion is asserted was a party (or in privity) in the prior proceeding. Issue preclusion can sometimes dispose of an entire case, but it can also apply more narrowly -- operating to prevent relitigation of any individual issue of law or fact that was already resolved in a prior proceeding.

Issue preclusion has the potential of arising often in patent cases -- especially because most patent cases these days involve two different proceedings (1) the IPR; followed by (2) the district court litigation.

A key way this comes up is when an IPR cancels several claims, but then the patentee subsequently amends the lawsuit to assert other claims that are similar but not identical to those cancelled. An example here might be that the cancelled claim involved elements A, B, C, and D; and the newly asserted claim covers A, B, C, and Δ.  The accused infringer would hope to invoke issue preclusion, arguing that it is a settled fact that the prior art teach A, B, C, and D, leaving only the question of whether the Δ modification is obvious.

But, the Federal Circuit has generally prohibited this approach because in IPRs facts are are decided under the lower preponderance-of-the-evidence standard while invalidating a patent in court requires the higher clear-and-convincing standard for invalidity. In issue preclusion lingo, this means that the IPR decision is not the same issue being decided in litigation.   The court has addressed this issue in some prior cases, including ParkerVision, Inc. v. Qualcomm Inc., 116 F.4th 1345 (Fed. Cir. 2024), and Kroy IP Holdings, LLC v. Groupon, Inc., 127 F.4th 1376 (Fed. Cir. 2025).

The court's newest decision makes clear the broad scope of the rule:


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Once Upon a Time, Consumers Had Standing

by Dennis Crouch (This is a long blog post about TM opposition standing - buried inside though is a roadmap for how Director Squires could administratively restrict IPR petitioner standing using the same Lexmark framework).

Professor Rebecca Curtin has filed her petition for writ of certiorari  seeking rights to challenge United Trademark Holdings' application to register RAPUNZEL for dolls and toy figures.  Curtin has a great case that the mark is generic. The problem with Curtin's case is procedural.  Curtin is a consumer, not a competing doll maker, and the Federal Circuit ruled that consumers do not have standing to oppose trademarks based upon their genericness, descriptiveness, or failure to function as a trademark. Curtin v. United Trademark Holdings, Inc., 137 F.4th 1359 (Fed. Cir. 2025).

The statute allows opposition proceedings to be filed by "[a]ny person who believes that he would be damaged by the registration of a mark upon the principal register."  15 U.S.C. § 1063.  And, a textual approach would seem to allow consumer oppositions -- and even those who would read an implicit "reasonableness" into the statute ("reasonably believes he would be damaged"). Here, for instance, Curtin offered a clear basis for harm that is particularized to her as a longtime, avid collector of classic fairy-tale dolls and toy figures, including those depicting Rapunzel. She demonstrated that registration would reduce marketplace competition for Rapunzel products she collects, likely increase costs for such dolls, and chill the creation of new interpretations of the character that she values and seeks to add to her collection.

But, the Federal Circuit offered a narrow interpretation of the standing requirement  (eliminating consumer standing) that stems from a somewhat parallel situation in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014).  The basic question to the Supreme Court is whether they intended the litigation standing requirements of Lexmark to extend to administrative actions before the USPTO.

Whether a party desiring to participate in an administrative agency proceeding, including a trademark opposition proceeding at the United States Patent and Trademark Office, must satisfy the zone-of-interests and proximate-causation tests set forth in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), for causes of action in federal court.

Curtin Cert Pet.  Curtin is a trademark law professor and so it's not surprising that the brief is well written.  Folks at Workman Nydegger (Salt Lake City) filed the brief with a team that included John Stringham, Matthew Barlow, David Todd, and Ryan Morris.


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Human Authorship Requirement for AI-Generated Works

by Dennis Crouch

Computer scientist Dr. Stephen Thaler has petitioned the Supreme Court to resolve whether artificial intelligence systems can generate copyrightable works without traditional human authorship. In Thaler v. Perlmutter, No. 25-___ (petition filed Oct. 9, 2025), Thaler seeks review of the D.C. Circuit's March 2025 decision affirming the Copyright Office's denial of registration for a visual artwork titled "A Recent Entrance to Paradise," which was autonomously created by Thaler's AI system known as the "Creativity Machine." Thaler v. Perlmutter, 130 F.4th 1039 (D.C. Cir. 2025). The petition asks:

Whether works outputted by an AI system without a direct, traditional authorial contribution by a natural person can be copyrighted.

Thaler-v-Perlmutter-Petition.


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Systems Theory, Equilibrium and the New Eligibility Shock

by Dennis Crouch

We are now a decade past the Supreme Court’s eligibility revolution in Alice and Mayo. Legislative efforts have coalesced around the Patent Eligibility Restoration Act of 2025 (PERA), while USPTO Director John Squires has simultaneously launched a campaign of administrative reinterpretation to restore what he calls “expansive eligibility.” The Federal Circuit, once reluctant to embrace the new eligibility approach, now serves as the principal stabilizing force and is the principle backstop to Patent Office experimentation.

I recently wrote about the Senate Hearing on PERA.  I wanted to follow up to discuss written submissions by two leading commentators: USPTO Director John Squires , and Stanford Law Professor Mark Lemley.  Squires written statement calls for restoration of "expansive eligibility."  In addition to the potential for legislation, Squires also highlights his ongoing administrative reinterpretation of eligibility doctrine and suggests doctrinal correction by the courts to correct what he sees as a misinterpretation of Alice/MayoLemley takes the opposite view on virtually all issues.  He argues that current judicial doctrine is working well and that the real problem lies in the USPTO's refusal to follow existing law, particularly its recent pattern of denying inter partes review (IPR) petitions in violation of the AIA.

Director Squires' statement opens with a personal narrative. He recounts surviving the September 11, 2001 terrorist attacks three times that morning: walking through the North Tower of the World Trade Center just sixteen minutes before the first plane struck, watching the second plane hit from his office at 1 New York Plaza, and fleeing the collapse of the South Tower. Squires describes how, in the aftermath of 9/11, he and his colleagues at Goldman Sachs developed the Risk Data Consortium, filing forty patents "expedited by the USPTO as inventions to combat terrorism" and deploying them as "instruments of war" against terrorist financing networks. This experience, Squires argues, demonstrates that "patent eligibility is not an abstract debate" but rather "a matter of national security, of resilience, and of ensuring that America's system of innovation remains robust enough to confront the challenges of the twenty-first century." For Squires, the question of what is patent-eligible is inseparable from the question of whether America can deploy its private sector innovation capacity to meet existential threats—from terrorism to artificial intelligence competition with China.

Lincoln famously said that the patent system adds “the fuel of interest to the fire of genius.” For Squires, the post-9/11 patent response shows that it can also channel the fire of patriotism.  In this account, the patent system became a mechanism for channeling the nationalistic urgency into concrete counterterrorism tools. Patent protection meant that innovators could rapidly deploy their systems against an immediate threat while retaining some assurance of eventual compensation -- satisfying that other urge of self-interest.

Director Squires' statement explicitly advocates for institutional and doctrinal change through USPTO leadership and administrative decisions, independent of congressional action. He highlights is recent actions to restore "expansive eligibility" through agency policy and adjudication.  One example is Squires’s recent Director Review decision in Ex parte Desjardins, where the PTAB had rejected claims directed to AI training methods under § 101. In his decision overturning that rejection, Squires emphasized that Section 101 should not be misused as a blunt instrument to exclude entire technological fields and that examiners should use Sections 102, 103, and 112—rather than Section 101—to police patent quality.  Squires' testimony frames this approach as a return to historical practice.

Regarding the Supreme Court's duo of Alice and Mayo, Squires argues that these cases have been misconstrued and that instead courts should read them narrowly as simply restating the old decisions in cases such as O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1854), Diamond v. Chakrabarty, 447 U.S. 303 (1980) ("anything under the sun") and Diamond v. Diehr, 450 U.S. 175 (1981).


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Case1Tech: Changing Claim Construction Position on Appeal

by Dennis Crouch

Quick post in a trio of non-precedential decisions. Case1Tech, LLC v. Squires, Nos. 23-2305, 23-2294, 23-2335 (Fed. Cir. Oct. 9, 2025) (all nonprecedential).

The basic holding: A party may not alter the scope of the claim construction positions it took before the Board. Claims constructions not presented to the lower tribunal (here the PTAB) will not be considered on appeal in the absence of exceptional circumstances.

Samsung had petitioned for IPR of ST Case1Tech’s always-on recording patents, arguing that the claimed “audio forensics analysis system” encompassed speech-to-text functionality disclosed in the prior art. Before the Board, Case1Tech argued that “analysis” means “calculation of noise dosage” using a specific measurement used for hearing protection.  After losing at the Board, Case1Tech altered its position on appeal, arguing that audio forensics analysis merely “includes” noise dosage calculation and encompasses any “analysis that uses all captured acoustic data.”  I think that their idea on appeal is that this broader construction would be more defensible, while still being narrow enough to avoid the prior art speech-to-text analysis system.

The appellate panel rejected this maneuver based upon forfeiture. Case1Tech told the Board that audio forensics analysis “is the calculation of noise dosage,” it could not later argue on appeal that such analysis merely “includes” noise dosage calculation.

Despite finding forfeiture, the appellate panel also looked at the argument and found it lacked merit. The specification explicitly stated that “audio forensics analysis system” includes “all, either or a combination of” enumerated functionalities, specifically listing “a speech-to-text analysis system.” This intrinsic evidence was dispositive. (more…)

PERA 2025: Eligibility Reform Returns to Capitol Hill

by Dennis Crouch

On October 8, 2025, the Senate Judiciary Subcommittee on Intellectual Property held a hearing on the Patent Eligibility Restoration Act (PERA) of 2025 (S. 1546), legislation that would fundamentally reshape 35 U.S.C. § 101 and effectively overturn the Supreme Court's Mayo, Myriad, and Alice decisions.  The hearing featured testimony from former USPTO Directors Andrei Iancu and David Kappos, China IP expert Mark Cohen, biotech executives, patient advocates, and retail industry representatives, all addressing whether Congress should replace the judge-made "abstract idea" and "law of nature" exceptions with a set of narrow statutory exclusions. Chairman Thom Tillis (R-NC) and ranking member Adam Schiff (D-CA) both acknowledged the widespread confusion in current eligibility jurisprudence, with Tillis noting that the status quo "continues to be hopelessly confused" and expressing determination to move the bill forward to committee markup. The Bill has bipartisan support in the Senate, but it is unclear  how hard those in opposition would push if the bill started to move forward.

PERA was originally introduced back in 2019 as a draft proposal. It was later reintroduced as S.4734 in 2022 and has been refined through successive versions, with the current 2025 bill (S.1546) representing a more measured approach than earlier drafts while still fundamentally overhauling § 101. The 2019 proposal included explicit language stating that all judicially created exceptions were "hereby abrogated." Later versions achieve the same result more subtly by specifying that eligibility is determined "subject only to" the enumerated statutory exclusions. The 2022 version would have made isolated human genes patent-eligible, directly contradicting Myriad's core holding, but the 2025 bill narrows this by removing "isolated" from the human gene provision—meaning mere isolation of natural DNA wouldn't suffice for eligibility, though purified, modified, or engineered genes used in inventions would still qualify. Similarly, where the 2022 draft used the ambiguous term "non-technological" to define excluded business methods, the 2025 version asks whether the machine is "necessary to practically perform" the invention. Probably most importantly, the 2025 bill adds new guardrails against patenting superficial computerization of otherwise abstract ideas.


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Guest Post by Ryan Abbott: Reflections on Recentive v. Fox: To Do or not To Do it with AI?

By Ryan Abbott. Professor Abbott, MD, JD, MTOM, PhD, is Professor of Law and Health Sciences at the University of Surrey School of Law, Adjunct Associate Professor of Medicine at the David Geffen School of Medicine at UCLA, partner at Brown, Neri, Smith & Khan, LLP, and a mediator and arbitrator with JAMS, Inc.

Recently, the Federal Circuit handed down its decision in Recentive v. Fox which the Court stated presented a question of first impression: “whether claims that do no more than apply existing methods of machine learning to a new data environment are patent eligible.” Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205 (Fed. Cir. 2025). As the framing of the question suggests, the Court answered in the negative, confirming that patents that simply take an abstract idea and “do it with AI” are not statutory subject matter.

Since this decision, questions have come up about what this might mean for the patenting of inventions relating to artificial intelligence (AI) in the United States, and by extension, America’s leadership in AI development. Even before this case, the argument has been made that getting patents on AI innovations is difficult or impossible under the current law, and therefore patent eligibility reform is needed. These are important questions. As I have argued for years in my work on the Artificial Inventor Project, and as I testified on in Congress, AI technology is playing a rapidly growing role in the innovation process. We want to make sure the patent system is promoting the development and use of AI so that it can be used to generate socially valuable innovation (and that there are no legal concerns when that happens, including related to inventorship).

My view is that current patent eligibility law as it pertains to abstract ideas best supports the AI development and innovation that we need in the United States. The current approach permits the patenting of all aspects of AI technology – from the development and training of machine learning models to the applications of those models. Recentive gave us a glimpse into how patent eligibility law applies at one end of the AI patenting spectrum, and it reached the right conclusion.

Before delving into Recentive, it is helpful to understand the application of patent eligibility law in a traditional software patenting context. Eligibility analysis relies on the two-step Alice/Mayo test, which first determines whether claims are directed to judicial exceptions to eligible matter, namely abstract ideas, laws of nature, or natural phenomena. Alice Corporation v. CLS Bank International, 573 U.S. 208 (2014); Mayo Collab. Servs. v. Prometheus Lab’ys, Inc., 566 U.S. 66 (2012). If claims are directed to a judicial exception then to be patent eligible they must recite additional elements that amount to “significantly more” than the judicial exception. Mayo, 566 U.S. at 72-73. The Supreme Court has described the second part of the test as the search for an “inventive concept”. See MPEP § 2106. This is the Supreme Court’s way of ensuring that a true, technological invention lies at the heart of the patent and that it isn’t just an abstract idea dressed up to look like a real invention.

For more than a decade, the Alice/Mayo two-part test has been the exclusive test for software patent eligibility analysis. It balances patent incentives with the need to allow the public to utilize “the basic tools of scientific and technical work.” Alice Corp., 573 U.S. at 216. Patents on such tools could do more harm than good and “might tend to impede innovation more than it would tend to promote it.” Id. Claims are not ineligible simply because they involve judicial exceptions, the applications of such concepts remain protectable. Indeed, the Federal Circuit has subsequently clarified that claims directed to software and improvements in computer-related technologies are not inherently abstract. See, e.g., Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see also Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1258 (Fed. Cir. 2017). Judicial exceptions have existed for more than 150 years, and a significant amount of case law has now applied Alice/Mayo in the context of software patents.

The Federal Circuit has tended to require patent applications to describe specific improvements over the prior art that improve a process, whether software- or hardware-based, rather than merely performing an existing process on a computer. This has allowed a wide range of computer-implemented claims to be found patent-eligible. See, e.g., McRO Inc. v. Bandai Namco Games America Inc., 837 F. 3d 1299 (Fed. Cir. 2016); Amdocs (Israel) Ltd. v. Openet Telecom Inc., 841 F. 3d 1288 (Fed. Cir. 2016); Ancora Technologies Inc. v. HTC America Inc., 908 F. 3d 1343 (Fed. Cir. 2018). This standard thus encourages research and development into improvements in computer processes, while preventing applicants from broadly tying up the use of computers to perform existing processes and relying on functional claiming (e.g., filtering content on a computer, unless an improvement over the prior art for filtering content; parsing, editing, sorting, and comparing data, absent a specific inventive method for carrying out these functions). See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016); see Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018).

With the foundation of applying patent eligibility law to traditional software patents, we can more fully understand the Federal Circuit’s assessment of patent eligibility in an AI context in Recentive. This case concerned the eligibility of using machine learning, a subset of AI, to generate network maps and schedules for television broadcasts and live events. Recentive was appealing the district court’s ruling that its patents were directed to ineligible subject matter under 35 U.S.C. §101. The Federal Circuit affirmed the lower court on the basis that the patents lacked an inventive concept and were directed to the abstract idea of using a generic machine learning technique in a particular environment.

Preparing network maps is a long-standing practice, if a sophisticated and niche one that has traditionally been performed by human beings. Recentive characterized its patents as applying existing, generic AI approaches to this specific context. In other words, “do it with AI.”

This type of “do it with AI” claim is ineligible under the two-step Alice inquiry.  On the first step, the Court found that the claims were directed to the abstract idea of producing network maps and event schedules using known standard mathematical techniques. Recentive’s patent did not claim or describe how the machine learning technology resulted in a technological improvement. Instead, the patent was just about using AI to perform a task previously done by humans more quickly or efficiently without actually explaining how to accomplish that, which does not create eligibility. This is the same application of the Alice/Mayo test to traditional software patents.

On the second step, which looks at whether additional elements add an “inventive concept” that transforms an otherwise ineligible claim, the Court also found the patents failed. The patents only provided broad, functionally described common computing techniques and devices—again merely claiming an abstract idea.

While the Court framed Recentive as a question of first impression, the Federal Circuit has long held that software claims do not become eligible by limiting their application to a particular field or environment – eligibility does not result from taking an abstract idea and throwing in “do it on a computer” or “do it over the internet.” See, e.g., Intell. Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1366 (Fed. Cir. 2015). Similarly, that applying an existing technology to a new database does not create eligibility.  See, e.g., SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Like the software patent cases that came before it, Recentive just applied AI to an existing framework.

While simply describing an abstract idea and adding “do it with AI” is not patentable (nor should it be), patent protection is available for all aspects of AI innovation. Practitioners have outlined best practices for drafting these patent applications, emphasizing the importance of providing sufficient detail and explaining the technical advantage of the claimed solution. https://www.fr.com/insights/thought-leadership/articles/ai-patent-eligibility-observations-and-lessons-for-the-us-and-china/ (“The key for applicants is to clearly show that their claim improves a technological process rather than merely uses technology to perform an existing process.”) https://www.troutman.com/insights/locke-lord-quickstudy-patenting-ai-inventions.html. (“Draft a strong patent application… Focus on technical aspects and algorithms… Provide experimental evidence and results…”). Of course, applicants must also ensure what is being claimed is commensurate with what was actually invented and not improperly tying up the basic tools of further scientific development. The USPTO’s most recent guidance on patent subject matter eligibility in 2024 provided some examples as well.  See, e.g., https://www.uspto.gov/sites/default/files/documents/2024-AI-SMEUpdateExamples47-49.pdf.

Recent district court decisions applying Recentive have also upheld claim eligibility for AI-related claims. Aon Re, Inc. v. Zesty.AI, Inc., No. CV 25-201, 2025 WL 1938214 (D. Del. July 15, 2025) (“The claim thus implements machine-learning technology in a specific way to address a practical technical problem: how to accurately and quickly assess the physical characteristics and condition of a property from an aerial image using machine learning models.”); Nielsen Co. (US), LLC v. Hyphametrics, Inc., No. CV 23-136-GBW, 2025 WL 1672002 (D. Del. June 13, 2025) (Claimed method provides “an improvement to the technical field of image processing, and, in particular, to improving speed and reliability of detecting overlays in images, with reduced or eliminated human oversight… These claims contain structure because they, inter alia, recite the specific [neural] networks used to perform the detection”).

Though all aspects of AI can be patented under Alice – and our patent eligibility law aims to ensure that AI patents do not over-claim in a way that would harm further AI innovation and usage – AI has nonetheless become yet another argument in support of patent eligibility reform. Various changes have been proposed over the past decade to expand the scope of section 101. Most recently, Senator Thom Tillis re-introduced the Patent Eligibility Restoration Act (PERA) in the Senate. https://www.congress.gov/bill/119th-congress/senate-bill/1546/text. This Act would eliminate all judicial exceptions to patent eligibility, replacing them with explicit and narrow statutory exclusions: 1) a mathematical formula not integrated into a claimed invention; 2) a mental process performed solely in the human mind; 3) an unmodified human gene as it exists in the human body; 4) an unmodified natural material as it exists in nature; and 5) a process that is primarily economic, financial, business, social, cultural, or artistic in nature. Most relevant to the issue of AI patenting, and what would be patent-eligible if PERA were to become law, the bill includes an eligibility escape hatch. It states that “the claimed invention shall not be excluded from eligibility for a patent if the invention cannot practically be performed without the use of a machine or manufacture.” This would mean that any abstract ideas could be patented if implemented on a computer leveraging computational capabilities. Effectively all AI inventions “cannot practically be performed without the use of a [computer].” This means that under PERA, “do it with AI” patents like the one found to be ineligible in Recentive would be eligible.

As a result, PERA would be a significant shift for patent eligibility of computer-related patents, and one that would harm rather than help the development and use of AI. Problematically, by untethering patent eligibility for abstract ideas from the requirement that patents be about technological improvements, PERA would allow patents that harm the development and widespread usage of actual technology. This in turn is likely to result in more patent thickets which will make AI development increasingly difficult and expensive, it will give incumbents more leverage over startups, and it risks holdups from foreign adversaries abusing the patent system. This is precisely the type of approach that allowed a flood of “do it on a computer” and “do it on the internet” patents to harm software development and usage for years. It is not a standard that is likely to help the United States remain the world’s leader in AI development.      Nor is it a standard that will support innovators using AI as part of their development process.

And that is where our focus should lie: making sure our patent system is helping to incentivize AI technology development and usage in order to move the field forward. Patent eligibility has a pivotal gatekeeping role in the system, as the Federal Circuit correctly showed in Recentive. The line that has been drawn and applied in a software context for years is also the right one for AI.

The author represents that he is not being paid to take a position in this post. In addition to being an academic, the author is a practicing attorney and represents clients with interests on both sides of the post’s subject matter.