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Exploring the latest in intellectual property law
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From genus to subgenus: When written description and enablement demand more

by | Dec 11, 2025 |

The US Court of Appeals for the Federal Circuit reversed a district court’s denial of a motion for judgment as a matter of law (JMOL), finding that the patent specification failed to provide an adequate written description to practice the full scope of the claimed invention. Seagen Inc. v. Daiichi Sankyo Co., Ltd., Case Nos. 2023-2424; 2024-1176 (Fed. Cir. Dec. 2, 2025) (Lourie, Reyna, Chen, JJ.)

In 2020, Seagen sued Daiichi for infringing its patent covering antibody-drug-conjugates (ADCs). The patent claims priority to a 2004 application that broadly describes ADCs. The application lists 83 possible amino acids and includes more than 47 million possible tetrapeptide combinations. A Texas jury sided with Seagen, finding that Daiichi willfully infringed at least one claim, and awarded more than $41 million in damages plus an 8% running royalty. The district court denied Daiichi’s post-trial motion for JMOL and entered final judgment. Daiichi appealed.

Daiichi argued that no reasonable jury could have found that the 2004 application provided an adequate written description that would enable a skilled artisan to make and use the full scope of the claimed treatment. The Federal Circuit agreed, finding that the 2004 application did not provide written description support for a narrow Gly/Phe-only tetrapeptide subgenus. The application disclosed an enormous genus (approximately 47 million potential tetrapeptides derived from 83 amino acids) without identifying or singling out any tetrapeptide composed exclusively of Gly and Phe. The Court found that the mere appearance of Gly and Phe somewhere within the large list of amino acids was insufficient. The Court determined that Seagen’s claimed 81-member subgenus was merely an infinitesimal fraction of the millions of encompassed species, and that nothing in the 2004 disclosure singled out or directed a skilled artisan toward the Gly/Phe-only species claimed in the patent. Testimony from the named inventors also confirmed that, as of the application’s priority date, they had never contemplated a treatment using only the 81 tetrapeptides later claimed in the patent.

The Federal Circuit also found that the patent did not enable a skilled artisan to make and use the full scope of the claimed ADCs without undue experimentation. The district court had construed “D is a drug moiety” to encompass any drug, and the claims required that the drug be intracellularly cleaved in a patient. Together, these elements defined an extraordinarily broad genus of ADCs: any drug moiety paired with the required intracellular cleavage.

The specification, however, did not identify any common structural features predictive of intracellular cleavage across all possible drug-linker-antibody combinations. Instead, the evidence showed that ADC behavior was highly unpredictable, and scientists had to conduct assays to determine whether a given ADC satisfied the functional limitation.

Under long-standing Federal Circuit precedent where a patent disclosure requires researchers to conduct the undue experimentation doctrine, it does not satisfy the written description requirement. Because skilled artisans would need to evaluate enormous numbers of ADC permutations to determine whether they achieved the claimed intracellular cleavage, the patent failed the enablement requirement.



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IPR estoppel doesn’t extend to ongoing ex parte reexamination

by | Dec 11, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a decision by the Patent Trial & Appeal Board, concluding that inter partes review (IPR) estoppel under 35 U.S.C. § 315(e)(1) does not apply to ongoing ex parte reexamination proceedings and that the Board may retain jurisdiction over a patent even after its expiration. In re Gesture Tech. Partners, LLC, Case No. 25-1075 (Fed. Cir. Dec. 1, 2025) (Lourie, Bryson, Chen, JJ.)

Gesture Technology owns a patent covering methods and apparatus for rapid TV camera and computer-based sensing of objects and human input for applications such as handheld devices, automotive systems, and video games. Samsung requested ex parte reexamination, which the United States Patent & Trademark Office (USPTO) granted.

While the ex parte reexamination was pending, Unified Patents, an organization that includes Samsung as a member, filed two IPR petitions. After the Board issued a final written decisions on the IPRs, Gesture Technology petitioned to terminate the ex parte reexamination, asserting that Samsung was estopped under 35 U.S.C. §315(e)(1) from “maintain[ing] a proceeding” at the USPTO challenging the patent on grounds it could have raised in the IPRs. The USPTO denied the petition, concluding that the estoppel provision does not apply to continuing ex parte reexamination proceedings.

Gesture Technology appealed both IPR final written decisions where the Board invalidated all but two claims. In the ex parte reexamination, the examiner rejected the two remaining claims as anticipated by Liebermann, a patent directed to an electronic communication system designed for deaf individuals that enables real-time interaction using sign language and speech translation. The Board affirmed. Gesture Technology appealed.

Gesture Technology argued that:

  • Estoppel under 35 U.S.C. §315(e)(1) should bar the reexamination because Samsung had previously participated in an IPR.
  • The Board had no jurisdiction because the patent expired.
  • The Board erred in finding anticipation based on Liebermann.

The Federal Circuit rejected Gesture Technology’s estoppel argument, explaining that § 315(e)(1) applies to an IPR “petitioner” maintaining a proceeding before the USPTO. In contrast, under 35 U.S.C. § 305, the USPTO – not the requester – maintains an ex parte reexamination. Thus, estoppel does not bar ongoing ex parte reexamination proceedings.

Gesture Technology argued that Liebermann did not correlate information with a function of the apparatus because its sending function was always selected. The Federal Circuit disagreed, finding substantial evidence that Liebermann disclosed a transmitter/receiver device with a camera performing initial image processing and transmitting processed data. Liebermann’s description of reducing images to pertinent data and sending that data to a processing center supported the conclusion that its device correlated image information with a transmission function, satisfying the claim limitations.

Finally, the Federal Circuit concluded that the Board retains jurisdiction over ex parte reexaminations even after patent expiration. Patent owners maintain rights such as the ability to sue for past damages, creating a live case or controversy that an ex parte reexamination can resolve.

Practice note: Ex parte reexamination remains a viable tool for challengers even after an IPR concludes because estoppel [...]

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From ‘best’ to bust: Multiple methods to determine “optimal/best” render claims indefinite

by | Dec 4, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s judgment of invalidity and grant of summary judgment of noninfringement, concluding that even if excluded portions of expert testimony were considered, the judgments would remain proper. Akamai Technologies, Inc. v. MediaPointe, Inc., AMHC, Inc., Case No. 24-1571 (Fed. Cir. Nov. 25, 2025) (Taranto, Stoll, Cunningham, JJ.)

AMHC owns two patents that address systems and methods for efficiently routing streamed media content over the internet using an “intelligent distribution network” that centrally manages requests for streamed media from geographically dispersed users to mitigate bandwidth problems inherent in transmitting large volumes of data. Akamai sued AMHC and its subsidiary MediaPointe (collectively, MediaPointe) seeking a declaratory judgment of noninfringement for both patents. MediaPointe counterclaimed for infringement of both patents, after which Akamai counterclaimed for declaratory judgment of invalidity of all claims of both patents.

At the claim construction stage, the district court determined that claim limitations using “optimal/best” language were invalid for indefiniteness because the specification failed to provide a procedure or boundaries to determine what is “optimal/best.” For the remaining asserted claims, the district court granted summary judgment of noninfringement. In doing so, the district court:

  • Excluded as untimely presented key portions of MediaPointe’s technical expert’s testimony, without which MediaPointe could not reasonably establish infringement
  • Ruled that even if the testimony was considered, the record entitled Akamai to summary judgment of noninfringement.

MediaPointe appealed.

MediaPointe contended that the claims using “optimal/best” language were not indefinite, arguing that the requirement to use measurable performance data (specifically “trace-route results”) provided an objective standard. The Federal Circuit disagreed, finding that this requirement did not supply a reasonably clear and exclusive definition of “optimal/best.” The Court explained that the “trace-route results” requirement was not sufficiently clear because multiple methods could be used to determine compliance, and the patent offered no guidance on which measures to apply.

MediaPointe also challenged the summary judgment of noninfringement for the remaining claims, arguing that the district court applied an improperly narrow construction instead of the ordinary meaning of the disputed limitation. The Federal Circuit rejected this argument, finding that a skilled artisan would not have reasonably understood the claim language more broadly and that the district court’s construction was correct in light of the patent’s context. The Court concluded that because there was no evidence that Akamai’s system met this narrower limitation, even considering the excluded expert testimony, there was no triable issue of fact and no reasonable jury could find infringement.

The Federal Circuit therefore affirmed the district court’s judgment.



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USPTO introduces voluntary search disclosure declarations in Board proceedings

by | Dec 4, 2025 |

The Director of the US Patent and Trademark Office (USPTO) issued a memorandum announcing a new initiative aimed at improving examination quality and transparency in Patent Trial & Appeal Board proceedings.

Effective immediately, petitioners in inter partes review (IPR) and post-grant review (PGR) proceedings may submit a search disclosure declaration (SDD) that explains in detail:

  • Databases and repositories consulted
  • Search approach, search terms, filters, queries, and classification pathways used
  • Analytics or publicly accessible resources referenced
  • Time spent searching and reviewing results
  • Any other relevant methodology details

The submission is voluntary, and petitioners that do not provide an SDD will not be penalized. However, when deciding whether to institute a proceeding, the Board will view submission of an SDD as a favorable discretionary factor, especially if the SDD reveals new or underutilized search pathways relevant to USPTO practices. The SDD may also help demonstrate potential USPTO error during examination, according to the memorandum.

The SDD can be filed confidentially under 37 C.F.R. § 42.14, with a motion to seal and request for in camera review. Protective orders must allow the USPTO to use the information for internal training and analytics. Confidential SDDs will not be publicly disclosed except as required by law, and deposition testimony related to an SDD will generally not be permitted.

Practice note: While optional, submitting an SDD can strengthen an IPR or PGR petition by signaling transparency and contributing to improved USPTO practices. Consider incorporating this step into your Board strategy, especially when leveraging sophisticated search tools or methodologies that the USPTO does not typically use during examination.



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No escape from fees and sanctions for reckless litigation conduct

by | Dec 4, 2025 |

The US Court of Appeals for the Federal Circuit affirmed attorneys’ fees awards against EscapeX IP, LLC, finding the case “exceptional” under 35 U.S.C. § 285, and upheld sanctions under 28 U.S.C. § 1927 based on counsel’s reckless litigation conduct. EscapeX IP, LLC v. Google LLC, Case No. 24-1201 (Fed. Cir. Nov. 25, 2025) (Taranto, Stoll, Stark, JJ.)

EscapeX brought suit against Google in the Western District of Texas, alleging that Google’s YouTube Music product infringed its patent directed to systems for generating artist-specified dynamic albums. After Google pointed out that the accused features were absent from YouTube Music and later demonstrated that the accused “Auto-Add” feature predated the patent’s priority date, EscapeX amended its complaint to list the correct product and refused to dismiss the case.

Shortly after EscapeX sued Google, its patent was invalidated under § 101 in a separate litigation. EscapeX did not appeal that ruling, and Google requested that EscapeX dismiss the case. In response, EscapeX filed what it characterized as a “joint stipulation of dismissal,” which Google contested because it had not agreed to such a filing. Google moved for attorneys’ fees under § 285, arguing that EscapeX had filed frivolous claims and unreasonably prolonged the litigation. The district court agreed, awarding Google its fees.

EscapeX then filed a Rule 59(e) motion to amend the judgment, attaching declarations from its CEO and an engineer to show pre-suit diligence. The district court denied the motion, finding that the evidence was not “newly discovered” and the motion was frivolous. Google successfully sought additional fees and sanctions under § 1927, resulting in an additional $63,525 jointly and severally against EscapeX and its attorneys. EscapeX appealed.

The Federal Circuit affirmed the district court decisions and found no abuse of discretion. The Court concluded that the record supported the finding that EscapeX had not conducted any pre-suit investigation and that the case was “frivolous from the start.” This conclusion was also supported by Google’s early, detailed warnings against filing the suit and EscapeX’s general nonresponsiveness.

Regarding the Rule 59(e) motion, the Federal Circuit agreed that the declarations were not “newly discovered evidence” because they were always within EscapeX’s control and knowledge. The Court rejected arguments of “manifest injustice,” which were not raised in district court and had no merit.

Finally, the Federal Circuit affirmed the sanctions under § 1927, finding that EscapeX’s counsel acted recklessly by filing a frivolous motion that multiplied proceedings. The Court noted that zealous advocacy does not excuse filing baseless motions. The Court upheld Google’s fees and sanctions in their entirety, with costs related to the appeal also awarded to Google.



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Precedential shift: USPTO clarifies patentability of AI training methods

by | Nov 20, 2025 |

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.



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

by | Nov 20, 2025 |

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.



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

by | Nov 20, 2025 |

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.”



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

by | Nov 13, 2025 |

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 | Nov 6, 2025 |

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.



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