November 2025 | IP UPDATE

Month: November 2025

Precedential shift: USPTO clarifies patentability of AI training methods

by Hannah Hurley | Nov 20, 2025 | Patents

On November 4, 2025, the Director of the United States Patent and Trademark Office (USPTO) designated as precedential an appeals review panel (ARP) decision vacating the Patent Trial & Appeal Board’s § 101 rejection of claims directed to training machine learning models. Ex parte Desjardins, Appeal No. 24-000567 (ARP Sept. 26, 2025) (precedential).

The Board had previously concluded that claims covering continual learning techniques (such as adjusting model parameters to maintain performance across sequential tasks) were directed to an unpatentable abstract idea. The ARP, which included the USPTO Director, reversed that determination, holding that the claims integrated the abstract concept into a practical application by improving the functioning of machine learning models themselves. However, the ARP still rejected the claims under § 103 for obviousness.

Key takeaways

Technical improvements matter. Artificial intelligence (AI)-related inventions can satisfy Alice Step 2A when they demonstrate technical improvements, such as mitigating catastrophic forgetting and reducing storage complexity.
No blanket exclusion. The opinion cautions against categorically excluding AI innovations under § 101 and emphasizes that §§ 102, 103, and 112 remain the proper tools for assessing patent scope.
Precedential impact. The decision signals the USPTO’s commitment to aligning examination practices with US Court of Appeals for the Federal Circuit precedent while fostering innovation in AI and machine learning.

Practice note: For applicants, this precedential designation underscores the importance of framing AI-related claims around specific technical improvements rather than abstract concepts, which can be pivotal in overcoming § 101 challenges.

Well, well, well: Indefinite claims turn out to be a typo

by Dexter Hamilton | Nov 20, 2025 | Patents

The US Court of Appeals for the Federal Circuit reversed a district court ruling that invalidated patent claims for indefiniteness, finding that the disputed language was a minor clerical error. Canatex Completion Solutions, Inc. v. Wellmatics, LLC, et al., Case No. 24-1466 (Fed. Cir. Nov. 12, 2025) (Moore, Prost, Taranto, JJ.)

Canatex sued Wellmatics and several GR Energy entities for infringing its patent directed to a releasable connection for a downhole tool string. The patent covers a two-part device used in oil and gas wells that allows operators to disconnect and retrieve the upper part of the tool string while leaving the lower part in the well if it becomes stuck.

The patent’s claims, abstract, and specification include the phrase “the connection profile of the second part.” During claim construction, the defendants argued that the phrase lacked an antecedent basis, rendering the claims indefinite. Canatex responded that the phrase should have read “the connection profile of the first part” and that a skilled artisan would immediately recognize the error. Canatex asked the district court to construe the phrase accordingly.

The district court disagreed, finding that the “pervasiveness of the error” in both the claims and the specification suggested that the error “was an intentional drafting choice and not an error at all.” The district court added that Canatex’s failure to seek correction from the United States Patent and Trademark Office suggested that the error was neither minor nor evident on the face of the patent. The district court found all asserted claims invalid for indefiniteness. Canatex appealed.

The Federal Circuit reversed. The Court found the error obvious and determined that a skilled artisan would recognize only one reasonable correction, which was changing “second” to “first.” The Court characterized the mistake as a minor clerical or typographical error and rejected arguments that alternative interpretations were plausible. The Court emphasized that its conclusion was consistent with the intrinsic evidence.

Pick a lane: USPTO Director nixes IPR for inconsistent claim construction positions

by Lauren Hong | Nov 20, 2025 | Patents

The Director of the United States Patent and Trademark Office (USPTO) vacated a Patent Trial & Appeal Board decision instituting an inter partes review (IPR) proceeding after finding that the petitioner advanced inconsistent claim construction positions before the Board and in parallel district court litigation without adequate justification. Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340 (PTAB Nov. 5, 2025) (Stewart, USPTO Dir.)

Intellectual Ventures II LLC (IV), the patent owner, requested director review of the Board’s decision granting institution, arguing that the decision should be reversed because Tesla, Inc., the petitioner, failed to adequately explain why it advanced inconsistent claim construction positions before the district court and the Board.

In the district court, Tesla opposed IV’s plain and ordinary meaning construction of the claim limitation “generating said target feature information from said data statistics” in independent claim 1. Tesla argued that the limitation was indefinite because a person of ordinary skill in the art could not determine its meaning and scope with reasonable certainty. In contrast, before the Board, Tesla asserted that “no claim term requires express construction” and that the challenged claims should be given their plain and ordinary meaning.

IV contended that Tesla’s justification (that it was statutorily prohibited from raising indefiniteness challenges in an IPR) was insufficient to explain the divergent positions. While the Board’s rules do not categorically prohibit petitioners from taking inconsistent claim construction positions across forums, petitioners must explain why those differences are warranted.

The Director agreed with IV, finding Tesla’s rationale inadequate. The Director explained that simply asserting that indefiniteness cannot be raised in an IPR does not explain why a petitioner should be permitted to raise inconsistent invalidity challenges in two forums. In vacating the institution decision, the Director emphasized that permitting such inconsistencies without proper justification would undermine the USPTO’s goal of “providing greater predictability and certainty in the patent system.”

Complete inventive entity required to avoid “by another” prior art under pre-AIA § 102(e)

by Kyle Sorenson, PhD | Nov 13, 2025 | Patents

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s decision finding claims directed to cladribine regimens for treating multiple sclerosis unpatentable as obvious. The Court clarified that a disclosure can only be excluded as prior art under pre-AIA § 102(e) if it reflects the collective work of the same inventive entity as the challenged patent. Merck Serono S.A. v. Hopewell Pharma Ventures, Inc., Case No. 25-1210 (Fed. Cir. Oct. 30, 2025) (Hughes, Linn, Cunningham, JJ.)

Merck holds patents covering methods for treating multiple sclerosis using specific oral cladribine dosing regimens. Hopewell Pharma filed inter partes review (IPR) petitions challenging these patents, asserting that the claims were obvious in light of two prior art references disclosing similar cladribine dosing schedules.

Merck argued that one reference, Bodor, was not prior art because one of the named inventors on the challenged patents, De Luca, allegedly contributed to the six-line dosing disclosure in Bodor. The Board rejected this argument, finding that Merck failed to provide corroborated evidence of De Luca’s inventive contribution and concluding that the Bodor disclosure was “by another.” The Board ultimately found all claims unpatentable as obvious over the two prior art references. Merck appealed.

On appeal, Merck contended that the Board erred by applying a “bright-line rule” requiring complete identity of inventive entities to exclude a reference as not “by another.” The Federal Circuit disagreed, reaffirming the long-standing principle from In re Land (CCPA 1966): Any difference in inventive entity, whether by adding or omitting inventors, renders the prior disclosure “by another” under pre-AIA § 102(e).

The Federal Circuit explained that when a patent results from collaboration among joint inventors, a reference can be excluded only if the relied-upon portions of the reference represent the collective efforts of the same inventive team named as inventors in the patent. While evidence from fewer than all inventors may suffice, it must demonstrate that the disclosure embodies their joint contribution. Thus, even partial overlap of inventors does not prevent the earlier disclosure from being prior art.

Merck also argued that the Board’s interpretation conflicted with language in the Manual of Patent Examining Procedure (MPEP), which suggests that the work of “at least one joint inventor” could avoid prior art treatment. The Federal Circuit rejected this claim, noting that the MPEP cites Land and defines “by another” as “a different inventive entity.” Because this rule has been long established, the Court concluded that Merck had sufficient notice and was not deprived of a fair opportunity to respond.

Finally, Merck asserted that the Board failed to apply the “rule of reason” when assessing whether De Luca contributed to Bodor. The Federal Circuit disagreed, finding that the Board properly considered all evidence, including declarations, meeting minutes, and testimony, and reasonably concluded that De Luca’s alleged role was not corroborated or significant enough to make him a co-inventor.

Practice note: This decision reinforces that under the pre-AIA statute, the phrase “by another” requires complete identity of the inventive entity to [...]

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Spooky silence: USPTO Director summarily denies 13 IPR petitions

by Amol Parikh | Nov 6, 2025 | Patents

On October 31, 2025, the Director of the United States Patent and Trademark Office (USPTO) issued a notice denying institution of inter partes review (IPR) in 13 separate proceedings. The notice listed only the docket numbers of the affected IPRs and offered no substantive explanation for the denials, stating simply: “Pursuant to 35 U.S.C. § 314(a), institution of inter partes review is denied in the [listed] proceedings.” The summary denial follows the Director’s October 17, 2025, memorandum, which stated that the authority to determine whether to institute trial for IPR and post-grant review (PGR) proceedings rests solely with the USPTO Director.

Practice note: The October 17 memorandum signaled a shift in procedural control and reflected a broader policy approach to discretionary denials. While the October 31 notice provides limited insight into the basis for denial, it underscores the importance of understanding the USPTO’s evolving stance on institution discretion. Practitioners and petitioners alike should monitor future developments closely, as they may impact strategic considerations for filing and defending IPRs.

Stocks, recusal, and copycats: ‘No problem’ on APJ conflict

by Courtney Seams | Nov 6, 2025 | Patents

The US Court of Appeals for the Federal Circuit found that an administrative patent judge’s (APJ) recusal in an inter partes review (IPR) based on ownership of stock in one of the defendant’s corporations in an amount below the statutory monetary threshold was not erroneous but remanded the case for further consideration of the copying evidence. Centripetal Networks, LLC v. Palo Alto Networks, Inc., Case No. 23-2027 (Fed. Cir. Oct. 22, 2025) (Moore, Hughes, Cunningham, JJ.)

Palo Alto Networks petitioned for IPR of Centripetal’s patent. The assigned three-member Patent Trial & Appeal Board panel instituted an IPR proceeding on the petition. Cisco sought joinder to the then-pending petition. Centripetal requested rehearing of the institution decision by either the Precedential Opinion Panel or the Board panel. The Precedential Opinion Panel denied the request.

In September 2022, Centripetal learned that a member of the Board panel owned stock in Cisco. However, Centripetal did not move for recusal until December 30, 2022, when it sought recusal of the entire panel and vacatur of the institution decision.

In January 2023, the Board panel denied Centripetal’s rehearing request and granted Cisco’s joinder motion. Nevertheless, two of the three members of the panel withdrew to narrow the issues before the Board. The reconstituted panel then denied Centripetal’s motion for vacatur and held that the recusal motion was untimely, because Centripetal had been aware of the potential conflict since September 2022.

In May 2023, the Board found certain claims of Centripetal’s patent to be unpatentable as obvious. Centripetal appealed to the Federal Circuit, arguing that the Board’s decision should be vacated because the allegedly conflicted APJ recused himself only after institution and because the Board failed to address Centripetal’s copying arguments.

The Federal Circuit determined that it had jurisdiction to hear the appeal, noting that the case turned on the interpretation of ethics rules and was not the first instance in which the Court reviewed a conflict-of-interest challenge involving an institution decision. The Court concluded that the Board did not abuse its discretion in determining that Centripetal’s recusal motion was untimely, as Centripetal had been aware of the potential conflict for three months before its filing.

The Federal Circuit also addressed the substance of the recusal motion and explained that the APJ’s stock holding in Cisco was less than the statutory $15,000 threshold at all times. Although Centripetal argued that different statutory provisions applied to APJs, the Court concluded that those provisions did not govern a federal employee’s personal financial holdings. Under the applicable statute, which requires recusal only when an employee owns more than $15,000 in a party, the Court found that the APJ was not required to recuse himself.

The Federal Circuit further found that Centripetal’s due process rights were not violated. The Court explained that ethics rules for Article III judges do not apply to administrative proceedings before APJs. The Court further noted that a recent (USPTO) memorandum directing the Board to avoid empaneling judges with any stock ownership in a party was not [...]

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Reframing the claim: Plain and ordinary meaning falls to lexicography

by Lauren Hong | Nov 6, 2025 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court’s construction of a claim, finding that the plain and ordinary meaning of a disputed term was redefined by the patentee under principles of lexicography and use of intrinsic claim construction evidence. Aortic Innovations LLC v. Edwards Lifesciences Corp., et al., Case No. 24-1145 (Fed. Cir. Oct. 27, 2025) (Prost, Reyna, Chen, JJ.)

Aortic sued Edwards Lifesciences for infringing its patents directed toward a transcatheter valve with a frame component. During claim construction, the district court determined that Aortic had acted as its own lexicographer and redefined the term “outer frame” to be “a self-expanding frame,” based on the interchangeable use of the terms “outer frame,” “self-expanding frame,” and “self-expanding outer frame” when referring to the same structure in two embodiments. Based on this construction, the parties stipulated to noninfringement of the asserted patents since Edwards’ accused valve did not have a self-expanding frame. Aortic appealed the judgment of noninfringement, challenging the district court’s construction of the claim term “outer frame.” Aortic appealed.

Aortic contended that “outer frame” should be given its plain and ordinary meaning of “positioned outside” and argued that the specification did not support limiting “outer” to require “self-expanding.” The Federal Circuit disagreed, relying on both lexicographical and specification-based grounds for its construction.

In applying principles of lexicography, the Federal Circuit reasoned that if a person of ordinary skill in the art (POSITA) would understand that two claim terms were used consistently and interchangeably throughout a patent specification, those terms may be considered definitionally equivalent. Referring to several examples, the Court observed that Aortic used “outer frame,” “self-expanding frame,” and “self-expanding outer frame” interchangeably throughout the specification when describing the frame, and concluded that “outer frame” was properly construed to require “self-expanding.”

With regard to using the specification as intrinsic claim construction evidence, the Federal Circuit reasoned that the specification consistently described the “outer frame” as a “self-expanding frame” and did not restrict that feature to a particular embodiment. From this, the Court concluded that the absence of any express exception or explanation would lead a POSITA to understand that the valve’s construction required a self-expanding outer frame in all embodiments.

Aortic alternatively argued that Edwards should be judicially estopped from arguing for a construction of “outer frame” that departed from its plain and ordinary meaning. Aortic asserted that Edwards had previously argued before the Patent Trial & Appeal Board that “outer frame” should be defined using its plain and ordinary meaning, but later adopted a contrary position in front of the district court, contending that the term referred only to a “self-expanding frame.” The Federal Circuit disagreed and explained that Aortic failed to sufficiently develop its judicial estoppel argument before the district court. Absent any exceptional circumstances, the Court concluded that Aortic had forfeited the argument.

Finding Aortic’s arguments unpersuasive, the Federal Circuit affirmed the district court’s judgment of noninfringement as to the asserted patents, upholding the district court’s construction of the disputed claim [...]

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