IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
Results for "Patent"
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Feel the burn: Mechanical improvement is patent eligible under § 101

by | Aug 21, 2025 |

The US Court of Appeals for the Federal Circuit reversed a district court’s partial dismissal of the plaintiff’s patent claims under 35 U.S.C. § 101, finding that the claims were not directed to an abstract idea under Alice step one. PowerBlock Holdings, Inc. v. iFit, Inc., Case No. 24-1177 (Fed. Cir. Aug. 11, 2025) (Taranto, Stoll, Scarsi, JJ.)

PowerBlock sued iFit for allegedly infringing its patent related to dumbbells. IFit moved to dismiss the claims under § 101. The district court found that the challenged claim was broadly directed to the idea of automated weight stacking, and that it purported to cover any system having a few basic components for selecting and adjusting weights, rather than describing a specific method or design for how the system actually worked. Applying the Supreme Court’s two-step framework for determining patent eligibility, the district court determined that all but one claim of the asserted patent were ineligible under § 101. PowerBlock appealed.

The Federal Circuit reversed, finding that the district court erred in its Alice step one analysis under § 101. The Court explained that the crux of the district court’s incorrect determination was that the challenged claim was directed to the abstract idea of automated weight stacking, which in turn led to misplaced preemption concerns. The Court found instead that the claim was limited to a specific implementation of a technological improvement – namely, a particular type of selectorized dumbbell featuring nested left and right weight plates, a handle, a movable selector, and an electric motor operatively connected to the selector that adjusts the weight based on user input.

Distinguishing the challenged claim from prior cases in which claims were found ineligible, the Federal Circuit emphasized that the claim was directed to an “eligible mechanical invention” and “focused on a specific mechanical improvement,” not merely an abstract or generalized concept. The Court also rejected iFit’s argument that limitations should be discounted simply because they appear in the prior art. The Court reiterated that it is inappropriate to dissect claims into old and new elements and then ignore the old when assessing eligibility under § 101. Rather, under Alice, the “step one inquiry involves consideration of the claims ‘in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.’” The Court cautioned against conflating the patent eligibility inquiry under § 101 with the separate questions of novelty and nonobviousness under §§ 102 and 103.



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Federal Circuit lacks jurisdiction over award that doesn’t raise issue of patent law

by | Aug 7, 2025 |

The US Court of Appeals for the Federal Circuit determined that it lacked appellate jurisdiction over a district court judgment confirming an arbitration award stemming from a dispute over royalties paid under patent license and supply agreements. The Court concluded that the petition did not “necessarily raise” a substantial issue of patent law. Acorda Therapeutics Inc. v. Alkermes PLC, Case No. 2023-2374 (Fed. Cir. July 25, 2025) (Taranto, Hughes, Stark, JJ.)

Acorda Therapeutics, the developer of Ampyra®, a treatment for multiple sclerosis, licensed a patent from Alkermes covering Ampyra’s active ingredient. In exchange, Acorda paid running royalties and sourced the active ingredient directly from Alkermes. Although the patent expired in July 2018, Acorda continued making royalty payments for two years without formal protest.

In July 2020, Acorda challenged the ongoing payments and initiated arbitration. Acorda sought a declaration that the licensing royalty provision was unenforceable after the patent’s expiration and sought recovery of royalties paid after July 2018, invoking unjust enrichment. The arbitration tribunal agreed that the royalty provision was unenforceable after the patent’s expiration. However, it limited Acorda’s recovery to payments made under formal written protest, which only started in July 2020. This ruling relied on a state law principle that payments made with full knowledge of the facts, even if under a mistake of law, are not recoverable unless accompanied by written protest.

Acorda filed suit in federal district court under the Federal Arbitration Act, invoking diversity jurisdiction. It sought confirmation of the tribunal’s findings, except for the denial of recoupment of more than $65 million in unprotested payments made between 2018 and 2020. Acorda argued that the tribunal’s refusal to allow full recoupment constituted “manifest disregard” of the law and offered two alternative theories: the tribunal improperly applied state law in derogation of federal patent law, and the award effectively enforced an illegal licensing agreement. The district court upheld the tribunal’s award. Acorda appealed.

The Federal Circuit declined to reach the merits and instead examined its jurisdiction. Under the “well-pleaded complaint” rule, the Federal Circuit’s jurisdiction applies only if patent law creates the cause of action or the plaintiff’s right to relief necessarily depends on resolving a substantial question of patent law.In its 1988 decision in Christianson v. Colt Industries and 2013 decision in Gunn v. Minton, the Supreme Court made clear that situations falling within the “special and small” second category (where right to relief necessarily depends on resolution of a substantial question of patent law) are “extremely rare.”

Here, Acorda’s complaint did not assert a patent cause of action. The request to confirm the arbitration award could be resolved without judicial interpretation of patent law. The Federal Circuit also noted that even the modification request, although it was premised on the award’s finding of unenforceability, presented two alternative arguments, only one of which involved patent law. Because the district court could have ruled for Acorda without addressing patent law, the Federal Circuit concluded that patent law was not “necessarily raised.” As a result, the Federal [...]

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Don’t get too comfy: Prosecution disclaimer also applies to design patents

by | Jul 24, 2025 |

Concluding that the principles of prosecution history disclaimer apply to design patents, the US Court of Appeals for the Federal Circuit reversed a district court’s denial of judgment as a matter of law and entry of a jury verdict that found liability for design patent infringement. Top Brand, LLC v. Cozy Comfort Company, LLC, Case No. 24-2191 (Fed. Cir. July 17, 2025) (Dyk, Reyna, Stark, JJ.)

Top Brand and Cozy Comfort compete in the market for oversized hooded sweatshirts. Cozy Comfort owns a design patent directed to “the ornamental design for an enlarged over-garment with an elevated marsupial pocket.” It accused Top Brand of infringing the patent through its sale of certain hooded sweatshirts and wearable blankets. In response, Top Brand filed a declaratory judgment action seeking findings of noninfringement and invalidity. Cozy Comfort counterclaimed for design patent and trademark infringement.

During prosecution, Cozy Comfort overcame an anticipation rejection by distinguishing the prior art under the ordinary observer test, pointing to specific features such as the shape and placement of the marsupial pocket and the bottom hem line. Top Brand argued that these statements constituted a clear disclaimer of claim scope, and that the accused products fell within the surrendered subject matter.

The district court disagreed, instructing the jury to compare the accused products to the design as claimed (without considering any prosecution disclaimer). The jury found infringement, and the court entered judgment accordingly, denying Top Brand’s motion for judgment as a matter of law. Top Brand appealed.

Top Brand argued that the district court erred by failing to apply prosecution history disclaimer, asserting that the accused design was within the scope of the subject matter Cozy Comfort had disclaimed. Cozy Comfort responded that the disclaimer doctrine does not apply to design patents and, even if it did, Cozy Comfort’s prosecution statements were not sufficiently clear to constitute a disclaimer.

The Federal Circuit disagreed, concluding that prosecution history disclaimer applies to design patents. The Court reasoned that allowing patentees to recapture disclaimed subject matter in litigation would undermine the integrity of the patent system. The Court emphasized that Cozy Comfort’s statements during prosecution clearly surrendered the identified features as supporting a finding of overall similarity. Because the accused design incorporated those surrendered features, the Court concluded that no reasonable jury could find infringement.

Accordingly, the Federal Circuit reversed the district court’s denial of judgment as a matter of law and vacated the jury’s verdict.



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New Administration, Same Patent Reform Bill

by | May 8, 2025 |

A bipartisan group of senators and congressional representatives reintroduced the Patent Eligibility Restoration Act (PERA), which aims to reform the law of patent eligibility under 35 U.S.C. § 101. PERA seeks to address the challenges posed by recent Supreme Court decisions and restore clarity and predictability in the US patent system.

PERA preserves the existing categories of subject matter currently enumerated in § 101 but adds several categories of excluded subject matter. PERA proposes to eliminate all judicial exceptions to patent eligibility, specifying that certain categories, such as mathematical formulas that are not part of an invention, processes that a human could perform, mental processes, unmodified human genes, and unmodified natural material, are not eligible for patents.

A separate bipartisan group of senators and congressional representatives reintroduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act, which aims to protect and increase the value of US intellectual property rights by making significant reforms to the Patent Trial & Appeal Board.

PREVAIL seeks to limit Board challenges to entities that have been sued or threatened with a patent infringement lawsuit, close the statutory bar joinder loophole to prevent time-barred entities from joining instituted inter partes review (IPR) proceedings, and prevent serial petitions by applying estoppel at the time the challenge is filed instead of when the Board issues its final written decision.



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PTO Accelerates Patent Issuance Timeline

by | Apr 24, 2025 |

The US Patent & Trademark Office (PTO) announced that it has shortened the time between the issue notification and the issue date for patents. Historically, the time between these two events averaged about three weeks. Seeking to provide earlier protection for inventions, the PTO intends to reduce that time to about two weeks. The PTO is making the move because publishing electronic grants via the PTO online platform has allowed the PTO to eliminate redundancies and reduce the time between grant notification and the issuance date. The shortened wait time has the added benefit of potentially allowing patent applicants to avoid the Quick Path Information Disclosure Statement (IDS), which attempts to streamline filing an IDS after payment of the issue fee.

Practice Note: Given the accelerated timeline, the PTO recommends that applicants file continuation applications before payment of the issue fee to ensure codependency.



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Broadcast Alert! Applying Conventional Machine Learning to New Data Isn’t Patent Eligible

by | Apr 24, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s ruling that patents applying established machine learning methods to new data are not patent eligible under 35 U.S.C. §101. Recentive Analytics, Inc. v. Fox Corp. et al., Case No. 23-2437 (Fed. Cir. Apr. 18, 2025) (Dyk, Prost, Goldberg, JJ.)

Recentive sued Fox, alleging infringement of four patents designed to tackle long-standing challenges in the entertainment industry – namely, optimizing the scheduling of live events and refining “network maps,” which determine the content aired on specific channels across various geographic markets at set times. These patents aim to streamline broadcast operations and enhance programming efficiency.

The patents at issue can be divided into two categories: network maps and machine learning training. The machine learning training patents focus on generating optimized event schedules by training machine learning models with parameters such as venue availability, ticket prices, performer fees, and other relevant factors. The network map patents describe methods for dynamically generating network maps that assign live events to television stations across different geographic regions. These methods utilize machine learning to optimize television ratings by mapping events to stations and updating the network map in real time based on changes to the schedule or underlying criteria. The patents’ specifications explain that the methods employ “any suitable machine learning technique” using generic computing machines.

Fox moved to dismiss on the grounds that the patents were subject matter ineligible under § 101. Recentive acknowledged that the concept of preparing network maps had existed for a long time. Recentive also recognized that the patents did not claim the machine learning technique. Nonetheless, Recentive argued that its patents claimed eligible subject matter because they involve using machine learning to generate custom algorithms based on training the machine learning model. Recentive characterized its patents as introducing “the application of machine learning models to the unsophisticated, and equally niche, prior art field of generating network maps for broadcasting live events and live event schedules.”

The district court disagreed and granted Fox’s motion. Applying the Alice framework, at step one, the court determined that the asserted claims were “directed to the abstract ideas of producing network maps and event schedules, respectively, using known generic mathematical techniques.” At step two, the court determined that the machine learning limitations were no more than “broad, functionally described, well-known techniques” that claimed “only generic and conventional computing devices.” The court denied Recentive’s request for leave to amend because it determined that any amendment would be futile. Recentive appealed.

For the Federal Circuit, this case presented a question of first impression: whether claims that do no more than apply established methods of machine learning to a new data environment are patent eligible.

Step One

While Recentive claimed that its machine learning approach was uniquely dynamic and capable of uncovering hidden patterns in real time, the Federal Circuit found these features to be merely standard aspects of how machine learning operates. The Court explained that iterative training and model updates are not [...]

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A Patent Without a Pulse: Provisional Rights Don’t Outlive the Patent

by | Apr 10, 2025 |

The US Court of Appeals for the Federal Circuit dismissed an appeal from a patent applicant seeking provisional rights on a patent that would issue only after it had already expired, finding that the applicant lacked the necessary exclusionary rights to support a claim for provisional rights. In re: Donald K. Forest, Case No. 23-1178 (Fed. Cir. Apr. 3, 2025) (Taranto, Schall, Chen, JJ.)

Donald K. Forest applied for a patent on December 27, 2016. Forest’s patent application claimed priority through a chain of earlier-filed patent applications dating back to March 27, 1995. If Forest’s patent application matured into a patent, it would have expired 20 years after the 1995 priority date (i.e., prior to the 2016 filing date). The patent examiner nevertheless examined and rejected the proposed claims. The Patent Trial & Appeal Board partially affirmed the examiner’s rejection of certain claims on grounds of obviousness and double patenting. Forest appealed.

The Patent & Trademark Office raised a threshold issue that since Forest’s application could only result in an expired patent, he lacked a personal stake in the appeal sufficient to establish jurisdiction. Forest countered that he could still acquire “provisional rights” under 35 U.S.C. § 154(d) – a limited right to royalties for certain pre-issuance activities – despite the expiration of any issued patent as it issued.

The Federal Circuit dismissed the appeal, explaining that since Forest could not be granted a patent until after the patent’s expiration date, he would never receive any exclusionary rights. The Court clarified that provisional rights only arise once a patent issues and crucially do not extend beyond the statutory patent term. Because Forest sought the issuance of a patent that would confer no enforceable rights – either exclusionary or provisional – the Court dismissed the appeal for lack of jurisdiction.

The Federal Circuit’s primary conclusion was predicated on the principle that provisional rights are only available when a patent issues with enforceable exclusionary rights, meaning the patent must issue before its expiration date. The Court emphasized that provisional rights under § 154(d) are expressly provided “in addition to other rights provided by” the patent statute. Because this statutory language indicates that provisional rights are not standalone, the Court determined that provisional rights depend on the existence of a valid, enforceable patent.

According to the Federal Circuit, the entire purpose of provisional rights is to provide temporary relief to the patentee during the gap between publication of a patent application and issuance of a patent. However, such rights only arise if the issued patent provides enforceable rights. The Court reasoned that provisional rights are meant to encourage early publication and protect patentees from pre-issuance infringement, but only as a precursor to full patent protection.

The Court rejected Forest’s interpretation of § 154(d), explaining it would create an anomalous situation where provisional rights could survive without any corresponding enforceable rights, allowing a patentee to collect royalties on a patent that could never be asserted in infringement litigation.

Practice Note: Patent rights, whether provisional [...]

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What’s the (Re)issue? Patent Term Extensions for Reissue Patents

by | Mar 27, 2025 |

Addressing the calculation of patent term extensions (PTEs) under the Hatch-Waxman Act, the US Court of Appeals for the Federal Circuit affirmed a district court decision that under the act the issue date of the original patent should be used to calculate the extension, not the reissue date. Merck Sharp & Dohme B.V. v. Aurobindo Pharma USA, Inc., Case No. 23-2254 (Fed. Cir. Mar. 13, 2025) (Dyk, Mayer, Reyna, JJ.)

Merck owns a patent that is directed to a class of 6-mercapto-cyclodextrin derivatives. Four months after the patent issued, Merck applied to the US Food & Drug Administration (FDA) for approval of sugammadex, which it intended to market as Bridion®. During FDA’s review of Merck’s new drug application (NDA), Merck filed a reissue application that included narrower claims. The reissue application issued and included all the original claims and 12 additional claims. FDA regulatory review continued throughout the examination of the reissue application and extended almost two years beyond the date the patent reissued. In all, the FDA regulatory review lasted nearly 12 years.

The Hatch-Waxman Act provides owners of patents related to pharmaceutical products a process to extend the term of their patent rights to compensate for time lost during regulatory review of their NDAs. The act contains a clause providing that “the term of a patent . . . shall be extended by the time equal to the regulatory review period . . . occur[ring] after the date the patent is issued.” Having been unable to market the invention covered by the patent for almost 12 years because of FDA’s regulatory review, Merck filed a PTE application for its reissue patent seeking a five-year extension (the maximum allowed under the act) based on the patent’s original issue date. The US Patent & Trademark Office (PTO) agreed and granted the five-year extension.

Between the reissue date and the PTO’s grant of the five-year extension, Aurobindo and other generic manufacturers had filed abbreviated new drug applications (ANDAs) seeking to market generic versions of Bridion®. Merck sued for infringement. At trial, Aurobindo argued that the PTO improperly calculated the PTE by using the original issue date instead of the reissue date because only 686 days of FDA’s regulatory review occurred after the reissue date, as opposed to the almost 12 years which had passed since the initial issue date. The district court disagreed, finding that Aurobindo’s proposed construction “would undermine the purpose of the Hatch-Waxman Act.” Aurobindo appealed.

Aurobindo argued that the act’s reference to “the patent” referred to the reissue patent because that is the patent for which the patentee was seeking term extension. Merck argued that the act’s text, read in light of other patent statutes and the history of patent reissue, required the opposite conclusion (i.e., a PTE based on the original issue date).

The Federal Circuit agreed with Merck, explaining that while the language of the PTE text may be ambiguous, that ambiguity may be resolved by considering the PTE text in light of the history of [...]

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Senate Judiciary Subcommittee Advances Two Patent Reform Bills

by | Dec 5, 2024 |

This post has been updated since its original publication date.

On November 15, 2024, the US Senate Judiciary Subcommittee on Intellectual Property advanced the Inventor Diversity for Economic Advancement (IDEA) Act, one of three significant bills it considered this year to reform the patent system. On November 21, 2024, that same subcommittee advanced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act. No action has been taken by the subcommittee yet regarding the Patent Eligibility Restoration Act (PERA). It is unlikely any of these bills will become law before the new Congress begins on January 3, 2025.

The IDEA Act, sponsored by Senator Mazie Hirono (D-HI) and garnering bipartisan support, would require the US Patent & Trademark Office to seek demographic data from patent inventors residing in the United States on a voluntary basis. The bill also includes safeguards to protect the confidentiality of the collected information and ensure it is not used as part of the examination process, with a report to be submitted to Congress biannually.

By the time of the November 21 action, the subcommittee sent the PREVAIL Act, sponsored by Senators Christopher Coons (D-DE) and Thom Tillis (R-NC), to the full US Senate. In the words of Coons, the PREVAIL Act is intended to make proceedings before the Patent Trial & Appeal Board “cheaper, swifter, more efficient alternatives to federal district court.” The PREVAIL Act would enact substantial changes to post-grant and inter partes review proceedings at the Board, including by introducing a standing requirement, aligning standards more closely with district court standards, and strengthening estoppel provisions to prevent re-litigation of validity issues.

The substance of PERA and the PREVAIL Act have been reported on previously here and here, respectively. PERA would revise the standards related to patent eligibility under 35 U.S.C. § 101, which have been broadly criticized as providing insufficient predictability and certainty. PERA would overturn Supreme Court precedent by establishing specific categories of exceptions to broad patent eligibility for inventions or discoveries.

At the November 15 hearing, Coons and Tillis explained that they continue to receive feedback on PERA, which has been unsuccessfully introduced in previous years. Coons and Tillis both telegraphed optimism that PERA was moving toward being voted out of the subcommittee. After the November 21 hearing, both sponsors indicated that they hoped PERA would be voted on soon.



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Promises, Promises: Covenant Not to Sue for Patent Infringement Includes Downstream Users

by | Oct 31, 2024 |

The US Court of Appeals for the Tenth Circuit affirmed that a district court did not err in applying ordinary rules of contract construction to a covenant not to sue and properly found that under the patent exhaustion doctrine, the covenant encompassed downstream users. Fuel Automation Station, LLC v. Energera Inc., Case Nos. 23-1123; -1358 (10th Cir. Oct. 21, 2024) (Carson, Rossman, Federico, JJ.)

Fuel Automation Station (FAS) and Energera compete in the manufacture of automated fuel delivery equipment and related services. Energera holds patents related to its fuel delivery equipment. In 2016 and 2018, Energera sued FAS, alleging that it infringed two of its patents. The parties resolved the suits with a single settlement agreement in 2019. The agreement described the scope of the patent rights at issue and provided mutual covenants not to sue.

Less than a year later, FAS contracted with a Canadian corporation to operate its fuel automation equipment. Energera sued the Canadian corporation for infringement of one of its patents. FAS intervened, then separately sued Energera seeking a declaration that the covenant not to sue authorized FAS to sell or lease its own equipment and, therefore, the patent exhaustion doctrine prohibited Energera from suing downstream users, such as the Canadian corporation. FAS also brought two breach of contract claims asserting that Energera violated the settlement agreement and its included covenant since it was prohibited from suing the Canadian corporation for downstream use or from suing or “otherwise engag[ing]” FAS in legal proceedings.

FAS moved for summary judgment on its declaratory judgment count, which the district court granted. However, the court denied both parties’ later motions for summary judgment on the issue of whether the settlement agreement covered the asserted patent, finding that an ambiguity in the agreement created genuine issues of material fact. A jury subsequently found that the agreement did cover the asserted patent and that Energera breached the covenant. Energera appealed.

After first determining that the district court’s summary judgment ruling was an appealable legal ruling on the issue of the scope of the covenant, the Tenth Circuit found that the district court correctly interpreted the covenant to include downstream users. In the covenant, Energera promised “not to sue [FAS] or otherwise engage [FAS] in any domestic or foreign legal or administrative proceeding” related to the Patent Rights. Citing dictionary definitions of “engage” in its analysis, the Tenth Circuit found that the term “otherwise engage” reasonably could show the parties’ intent to prohibit Energera from suing FAS’s downstream users. The Court then invoked the patent exhaustion doctrine, which it called “the brooding omnipresence in the sky of patent law.” The Court explained that if a patent holder promises not to sue an entity for patent infringement when the entity sells or leases an item, “the doctrine recognizes an inherent promise not to sue downstream users of those items.” Otherwise, the Court pointed out, no reasonable customer would want to buy or lease a patented item from an authorized seller.

As to whether the [...]

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