Stephen G. Adrian | August 13, 2025
Shocking-Applicant Admitted Prior Art Sinks Own Patent
Case Name: SHOCKWAVE MEDICAL, INC. v. CARDIOVASCULAR SYSTEMS, INC.
Decided: July 14, 2025
Before: LOURIE, DYK, and CUNNINGHAM, opinion by DYK
Background
Shockwave owns US patent no. 8,956,371 directed to treatment of atherosclerosis through intravascular lithotripsy. Lithotripsy is a technique used to break up kidney stones by using shockwaves induced by plasma. Atherosclerosis is a buildup of fatty deposits in blood vessels. Balloon angioplasty is a method of treating atherosclerosis by guiding a balloon catheter to the location of a blood vessel containing calcified plaque buildup.
Shockwave’s claimed device uses a typical over-the-wire angioplasty balloon catheter and adds electrodes within a fluid-filled balloon with a pulse generator to generate shockwaves to break up calcified plaque deposits. Claims 1 and 5 state:
1. An angioplasty catheter comprising: an elongated carrier sized to fit within a blood vessel,
said carrier having a guide wire lumen extending there through;
an angioplasty balloon located near a distal end of the carrier with a distal end of the balloon being sealed to the carrier near the distal end of the carrier and with a proximal end of the balloon defining an annular channel arranged to receive a fluid therein that inflates the balloon; and
an arc generator including a pair of electrodes, said electrodes being positioned within and in non-touching relation to the balloon,
said arc generator generating a high voltage pulse sufficient to create a plasma arc between the electrodes resulting in a mechanical shock wave within the balloon that is conducted through the fluid and through the balloon and wherein the balloon is arranged to remain intact during the formation of the shockwave.
5. The catheter of claim 2, wherein the pair of electrodes is disposed adjacent to and outside of the guide wire lumen.
Claim 2 requires that the “pair of electrodes” include a “pair of metallic electrodes.
CSI filed an inter partes review (IPR) petition challenging all claims of Shockwave’s ‘371 patent as obvious over EP 0571306 to Levy. The EP patent describes using laser-generated pulses to disintegrate plaque in blood vessels. CSI’s petition pointed to Shockwave’s ‘371 patent disclosure discussing “typical prior art over-the-wire angioplasty balloon catheter[s] … [that] are usually non-compliant with a fixed maximum dimension when expanded with a fluid such as saline.” The petition argued that it would have been obvious to modify Levy with the well-known angioplasty balloon catheter disclosed by the applicant admitted prior art (AAPA). (Keep in mind that a rejection in an IPR petition can only be based on patents and printed publications).
The Patent Trian and Appeal Board (PTAB) issued a final decision finding claims 1-4 and 6-17 were unpatentable as obvious. The PTAB stated that AAPA qualified as “prior art consisting of patents or printed publications.” After the decision, the USPTO issued “AAPA Guidance” stating that AAPA is not “prior art consisting of patents or printed publications.” The PTAB thereafter initiated rehearing, relying on AAPA only as evidence of the background knowledge in the art to typical over-the-wire balloon catheters. The PTAB then again concluded that claims 1-4 and 6-17 had been shown to be unpatentable as obvious.
Shockwave appealed the finding of unpatentability while CSI appealed the finding that claim 5 was not unpatentable.
Discussion
AAPA as a basis vs. evidence in an IPR petition
Shockwave argued that both CSI and the PTAB improperly relied on AAPA as a basis for the IPR petition. As set forth in 35 U.S.C. 311(b), a petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents and printed publications. The Federal Circuit has explained that “[a]lthough the prior art that can be considered in [IPRs] is limited to patents and printed publications, it does not follow that we ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art.” Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1337 (Fed. Cir. 2020). This is because the obviousness analysis “requires an assessment of the . . . ‘background knowledge possessed by a person having ordinary skill in the art.’” Dow Jones & Co. v. Ablaise Ltd., 606 F.3d 1338, 1349 (Fed. Cir. 2010) (quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 401 (2007)).
As set forth in Qualcomm Incorporated v. Apple Inc., 24 F.4th 1367 (Fed. Cir. 2022) (“Qualcomm I”), AAPA can be used as evidence of background knowledge of an ordinarily skilled artisan, but that AAPA cannot be the “basis” of a ground in an IPR petition. Shockwave had noted that the PTAB’s written decision included a table with a column labeled Relevance/Basis to assert that the AAPA was the basis of the ground of rejection. The CAFC, however, distinguished the reference to “basis” by noting that it is an IPR petitioner, not the PTAB, that must comply with what defines the metes and bounds of an IPR. Here, CSI properly relied on general background knowledge to supply missing claim limitations and used AAPA as evidence of that general background in the IPR petition. As such, the IPR petition did not violate section 311(b).
Claim construction of “angioplasty balloon”
Shockwave argues that the Board erred in denying its construction for “angioplasty balloon” as “a balloon that displaces the plaque into the vessel wall to expand the lumen of the vessel” and adopting CSI’s construction of the term as “an inflatable sac that is configured to be inserted into a blood vessel for use in a medical procedure to widen narrowed or obstructed blood vessels.” This argument was dismissed because there is nothing in the language of the claims or specification which supports requiring that an angioplasty balloon press plaque into the vessel wall.
Challenge to Fact Findings
Shockwave challenges three of the PTAB’s fact findings: (1) that an ordinarily skilled artisan would have been motivated to incorporate Levy’s shockwave system into the over-the-wire balloon catheter, (2) that Levy discloses shockwaves, and (3) that Shockwave’s secondary considerations evidence did not outweigh CSI’s obviousness showing. The standard of review for fact findings is substantial evidence. The CAFC found that substantial evidence supports each of the findings.
CSI’s Cross-Appeal
CSI cross-appeals the PTAB’s conclusion that claim 5 had not been shown to be unpatentable as obvious over Levy implemented in an over-the-wire balloon catheter in view of Uchiyama. The PTAB found that the prior art combination did not disclose claim 5’s limitation relating to the placement of electrodes.
Initially, Shockwave argued that CSI lacks Article III standing. As we have discussed in other decisions related to Article III standing, a party does not need Article III standing to receive a PTAB decision, but does need Article III standing to seek review of a PTAB decision. Parties seeking relief before the CAFC have the burden of establishing the existence of an Article III case or controversy. Regarding this, when a party challenging an IPR decision “relies on potential infringement liability as a basis for injury in fact, but is not currently engaging in infringing activity, it must establish that it has concrete plans for future activity that creates a substantial risk of future infringement or would likely cause the patentee to assert a claim of infringement.” Gen. Elec. Co. v. Raytheon Techs. Corp., 983 F.3d 1334, 1341 (Fed. Cir. 2020) (quoting JTEKT Corp. v. GKN Auto, LTD., 898 F.3d 1217, 1221 (Fed. Cir. 2018)).
CSI says it has standing because it has developed an intravascular lithotripsy (IVL) device, and Shockwave’s President publicly commented that the company would aggressively assert claim 5:
We are very pleased that the [Board] validated claim 5 of our ’371 patent, which protects the broad embodiment of our IVL technologies. Specifically, claim 5 describes a device that is delivered over a guidewire and generates shockwaves with electrodes inside of a balloon catheter. We believe that any viable, much less commercially viable, IVL device must contain these elements[.] . . . We believe that our robust portfolio of 40 issued U.S. patents and 50 issued foreign patents captures and protects the truly unique and sophisticated IVL technology[.]
The CAFC found that CSI’s circumstances had constituted sufficiently concrete plans coupled with a substantial likelihood of a suit of infringement of claim 5. Shockwave’s President’s statement reflected the company’s view of claim 5 as reading broadly on IVL technology, and that CSI had sufficiently shown that it was engaging in activity that creates a substantial risk of future infringement to likely cause the patentee to assert infringement.
Regarding obviousness of claim 5, the CAFC found that the PTAB’s analysis was predicated on the teaching of a prior art reference Uchiyama alone as not disclosing electrodes positioned adjacent to and outside of the guidewire lumen. The standard of obviousness requires consideration of the prior art combination as a whole (that is, the combination of Levy with Uchiyama). CSI’s expert had testified that it would have been obvious to implement the features of Uchiyama as a routine design choice. Shockwave did not present contrary evidence. Since there was no evidence in the record supporting the finding as to claim 5, the PTAB is reversed.
Takeaways
- Avoid having an admission of prior art in your specification. If there is prior art disclosing a certain aspect that serves as a background of the invention, refer to that prior art itself instead of creating an admission.
- AAPA cannot be used as a basis of an IPR petition, but can be used as evidence of the state of art.
- Advise your clients to refrain from making statements following a PTAB decision. The President’s statement allowed CSI to establish standing to file the cross appeal which ultimately struck down the last standing claim.
- Expert testimony is important in any IPR petition. CSI had expert testimony regarding obviousness of claim 5 which was not refuted by testimony from Shockwave.
No Going Back!
Adele Critchley | July 30, 2025
Eye Therapies, LLC v. Slayback Pharma, LLC (Precedential)
Date of Decision: June 30, 2025
Before TARANTO and STOLL, Circuit Judges, and SCARSI, District Judge. Opinion drafted by SCARSI, District Judge.
Summary:
Eye Therapies appeals from a final written decision of the Patent Trial and Appeal Board (the “Board”) holding all claims of U.S. Patent No. 8,293,742 (“the ’742 patent”) unpatentable. Eye Therapies challenges (1) the Board’s construction of the phrase “consisting essentially of” and (2) the Board’s conclusion that all claims of the ’742 patent would have been obvious over the prior art. For reasons explained below, the CAFC reversed the Board’s claim construction of the “consisting essentially of” limitation, vacate its obviousness finding, and remand for further proceedings. The first challenged by Eye Therapies will be discussed in detail.
As relevant to the appeal, independent claim 1 recites in part “A method for reducing eye redness consisting essentially of administering brimonidine…” Independent claim 3 has a similar limitation.
During patent prosecution, the examiner rejected a prior version of these claims that used the open-ended transition phrase “comprising” instead of the current “consisting essentially of” language. In view of the open-ended claim language, the examiner found the claims anticipated by U.S. Patent No. 6,242,442 (“Dean”), which disclosed the administration of both brimonidine and brinzolamide. In response, the applicant replaced “comprising” with the phrase “consisting essentially of”. Thereafter, the examiner allowed the amended claims, citing the applicant’s argument “that the presently claimed methods do not require the use of any other active ingredients in addition to brimonidine,” i.e., brinzolamide.
Slayback filed an inter partes review petition of the ’742 patent and the Board entered a final written decision determining all challenged claims were unpatentable. On claim construction, “the parties dispute[d] whether the scope of the claims includes the use of additional drugs along with low-dose brimonidine.” The Board noted that “the use of ‘consisting essentially of’ ‘signals that the invention necessarily includes the listed ingredients [but] is open to unlisted ingredients that do not materially affect the basic and novel properties of the invention,’” in accordance with the phrase’s typical meaning. The Board rejected Eye Therapies’ arguments that the prosecution history demonstrated that “consisting essentially of” in this context should be read to claim a method for administering brimonidine as the sole active ingredient, reasoning:
During prosecution, the patentee asserted that “[o]ne of the basic and novel characteristics of the presently claimed methods is that they do not require the use of any other active ingredients (emphasis added) in addition to brimonidine.” But, unlike Patent Owner, we do not read the prosecution history as prohibiting the use of any other active ingredients besides brimonidine. To do so would construe the semi-open-ended transition phrase “consisting essentially of” to have the same scope as the closed transition phrase “consisting of.”
Rather, the Board concluded that “under the proper scope of the claims and consistent with the prosecution history, the claimed methods cannot include additional active ingredients that are required to perform the method.” Here, the Board took the position that “because the Specification states that low-dose brimonidine alone can significantly reduce hyperemia, if there are additional agents beyond low-dose brimonidine administered to a patient that may also reduce eye redness . . . those additional agents would not materially affect the basic and novel characteristics of the invention.” Thus, the Board ultimately held that “the transitional phrase ‘consisting essentially of’ does not preclude the use of additional active agents that may also cause vasoconstriction and reduction of hyperemia along with low-dose brimonidine.” The CAFC disagreed.
That is, the CAFC concluded the Board erred in its construction of the phrase “consisting essentially of” as allowing the coadministration of active ingredients other than brimonidine. That, given the prosecution history, the phrase as used in the ’742 patent precluded the use of active ingredients other than brimonidine.
The CAFC stated that the transitional phrase “consisting essentially of” generally “has long been understood to permit inclusion of components not listed in the claim, provided that they do not ‘materially affect the basic and novel properties of the invention.’” However, “a patentee can alter that typical meaning” That, limiting statements in the patent prosecution history can “inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.”
Thus, the CAFC agreed with Eye Therapies that the prosecution history here supported an atypical meaning of “consisting essentially of.”
Comments:
- A prosecution history of a patent comes into play in the context of claim construction. While this could be a good thing (as in the case here) always be mindful of making statements or argument that unnecessary define or characterize the claimed invention that may unintentionally cause a narrower than desired claim construction. In this same regard, be mindful of statements made by an Examiner that also unnecessarily define or characterize the claimed invention.
Less Heightened Standard for the Nexus Requirement regarding the Licenses Offered as Objective Indicia of Nonobviousness
Sung-Hoon Kim | June 18, 2025
Case Name: ANCORA TECHNOLOGIES, INC. v. ROKU, INC., VIZIO, INC., NINTENDO CO., LTD., NINTENDO OF AMERICA INC.
Date of Decision: June 16, 2025
Panel: Lourie (author), Reyna, and Hughes
Summary:
The CAFC held that unlike products, actual licenses to the subject patent do not demand the same heightened standard as products. The CAFC held that licenses to the challenged patent do not require a nexus with respect to the specific claims at issue, and that nexus case law does not require that a particular patent be the only patent being licensed or the sole motivation for entering into a license. Therefore, the CAFC vacated and remanded for the PTAB to reconsider the nexus requirement regarding the licenses offered as objective indicia of nonobviousness for Ancora’s patent.
Details:
Ancora owns U.S. Patent No. 6,411,941 (“’941 patent), which is directed to the restriction of unauthorized use of licensed software programs on computers by preventing hackers from copying a software program that was licensed for use on a computer.
This patent describes a method of restricting use of a licensed software program on a computer that has at least two “non-volatile memory areas” (inside BIOS module) and one volatile area.
At issue are claims 1-3, 6-14, and 16 of the ’941 patent, and claim 1 is an independent claim. Independent claim 1 reads:
1. A method of restricting software operation within a license for use with a computer including an erasable, non-volatile memory area of a BIOS of the computer, and a volatile memory area; the method comprising the steps of:
selecting a program residing in the volatile memory,
using an agent to set up a verification structure in the erasable, non-volatile memory of the BIOS, the verification structure accommodating data that includes at least one license record,
verifying the program using at least the verification structure from the erasable non-volatile memory of the BIOS, and
acting on the program according to the verification.
PTAB
In 2021, Nintendo Co., Ltd. and Nintendo of America, Inc. (collectively, “Nintendo”) and Roku, Inc. and VIZIO, Inc. (collectively, “Roku”) filed petitions for IPR of the ’941 patent.
In 2023, the PTAB issued two final written decisions finding that claims 1-3, 6-14, and 16 are unpatentable as obvious over Hellman, Chou, and a third prior art.
In each decision, the PTAB construed the claim term “agent” as “a software program or routine.” Based on this construction, the PTAB determined that the challenged claims of the ’941 patent are unpatentable as obvious.
Ancora appealed both decisions.
CAFC
Ancora raised three issues on appeal.
First, Ancora argued that the PTAB erred in construing the claim term “agent.”
Second, Ancora argued that, even if the PTAB correctly construed the term “agent,” the PTAB nonetheless erred in determining obviousness under 35 U.S.C. § 103 based on a combination of Hellman and Chou.
Third, Ancora argued that the PTAB erred in its analysis of secondary considerations of nonobviousness.
With regard to the first issue, Ancora argued that the “agent” should be construed as a software program or routine limited to use at the OS-level and that excludes hardware.
However, the CAFC disagreed with Ancora’s argument because neither the patent nor prosecution history provide a clear disclaimer that “agent” must be limited to exclude hardware.
With regard to the second issue, Ancora argued that (i) the combination of Hellman and Chou is inoperable; (ii) the PTAB’s determination of obviousness based on this combination is erroneous because a person of ordinary skill in the art would not be motivated to combine their teachings because they are redundant; and (iii) the PTAB’s determination of obviousness is also erroneous because Hellman’s memory address H is not a “verification structure.”
However, the CAFC disagreed with Ancora’s arguments.
With regard to the third issue, the PTAB determined that Ancora failed to establish a sufficient nexus between the claimed invention and evidence of two objective indicia of nonobviousness: industry praise and licensing.
Nexus: “[T]o be accorded substantial weight in the obviousness analysis, the evidence of secondary considerations must have a ‘nexus’ to the claims, i.e., there must be a legally and factually sufficient connection between the evidence and the patented invention.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1332 (Fed. Cir. 2019)
With regard to industry praise, the PTAB considered Ancora’s evidence of a “joint press release” from American Megatrends Inc. (“AMI”) and Ancora that directly named the ’941 patent, and an agreement, in which AMI would offer products using the patent.
After reviewing this industry praise, the PTAB found that this praise was directed to “more broadly to the ’941 patent itself,” but not specifically to “the challenged claims.”
The CAFC agreed with the PTAB’s determination and held that the PTAB did not clearly err in finding that Ancora did not link up their products to the challenged claims.
With regard to licensing, the PTAB found that Ancora failed to show a nexus between the challenged claims and two licenses[1] that Ancora entered into with other parties during settlements in other cases. Also, the PTAB did not consider a third license, which Ancora entered into with another party during settlement.
This time, the CAFC agreed with Ancora because the PTAB incorrectly applied a strict nexus standard for license evidence.
The CAFC held that unlike products, actual licenses to the subject patent do not demand the same heightened standard as products. In other words, the CAFC held that licenses to the challenged patent do not require a nexus with respect to the specific claims at issue, and that nexus case law does not require that a particular patent be the only patent being licensed or the sole motivation for entering into a license.
Therefore, the CAFC held that the PTAB applied an improperly heightened nexus standard and concluded that the PTAB’s findings constituted legal error and were not supported by substantial evidence.
Accordingly, the CAFC vacated and remanded for the PTAB to reconsider the nexus requirement regarding the licenses offered as objective indicia of nonobviousness.
Takeaway:
- Unlike products, actual licenses to the subject patent do not demand the same heightened standard as products with regard to the nexus requirement regarding the licenses offered as objective indicia of nonobviousness.
- In other words, the licenses to the challenged patent do not require a nexus with respect to the specific claims at issue, and that nexus case law does not require that a particular patent be the only patent being licensed or the sole motivation for entering into a license.
[1] The ’941 patent was the only patent identified in the first license agreement.
Federal Circuit’s Question of First Impression on the Patent Eligibility of Machine Learning
John Kong | May 22, 2025
Case Name: : Recentive Analytics, Inc. v. Fox Corp.
Date of Decision: April 18, 2025
Before: Dyk, Prost, Goldberg
Summary:
In this precedential opinion, the Federal Circuit addressed “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.” The court held that claiming the application of generic machine learning techniques in a new environment or new field of use, without specific improvements to the machine learning techniques or models themselves, is not patent eligible subject matter.
Procedural History:
Recentive sued Fox for patent infringement. The district court granted Fox’s motion to dismiss the case for failure to state a claim due to the patents being ineligible under 35 USC §101. Recentive appealed.
Background:
Recentive asserted two groups of patents. One group of “Machine Learning Training” patents include USP Nos. 11,386,367, 11,537,960. Another group of “Network Map” patents include USP Nos. 10,911,811 and 10,958,957.
Claim 1 of the ‘367 patent below is representative of the Machine Learning Training patents.
1. A computer-implemented method of dynamically generating an event schedule, the method comprising:
receiving one or more event parameters for series of live events, wherein the one or more event parameters comprise at least one of venue availability, venue locations, proposed ticket prices, performer fees, venue fees, scheduled performances by one or more performers, or any combination thereof;
receiving one or more event target features associated with the series of live events, wherein the one or more event target features comprise at least one of event attendance, event profit, event revenue, event expenses, or any combination thereof;
providing the one or more event parameters and the one or more event target features to a machine learning (ML) model, wherein the ML model is at least one of a neural network ML model and a support vector ML model;
iteratively training the ML model to identify relationships between different event parameters and the one or more event target features using historical data corresponding to one or more previous series of live events, wherein such iterative training improves the accuracy of the ML model;
receiving, from a user, one or more user-specific event parameters for a future series of live events to be held in a plurality of geographic regions;
receiving, from the user, one or more user-specific event weights representing one or more prioritized event target features associated with the future series of live events;
providing the one or more user-specific event parameters and the one or more user-specific event weights to the trained ML model;
generating, via the trained ML model, a schedule for the future series of live events that is optimized relative to the one or more prioritized event target features;
detecting a real-time change to the one or more user-specific event parameters;
providing the real-time change to the trained ML model to improve the accuracy of the trained ML model; and
updating, via the trained ML model, the schedule for the future series of live events such that the schedule remains optimized relative to the one or more prioritized event target features in view of the real-time change to the one or more user-specific event parameters.
The Machine Learning Training patents relate to the scheduling of live events and involve “the unique application of machine learning to generate customized algorithms, based on training the machine learning model, that can then be used to automatically create … event schedules that are updated in real-time.”
Claim 1 of the ‘811 patent below is representative of the Network Map patents.
1. A computer-implemented method for dynamically generating a network map, the method comprising:
receiving a schedule for a first plurality of live events scheduled to start at a first time and a second plurality of live events scheduled to start at a second time;
generating, based on the schedule, a network map mapping the first plurality of live events and the second plurality of live events to a plurality of television stations for a plurality of cities,
wherein each station from the plurality of stations corresponds to a respective city from the plurality of cities,
wherein the network map identifies for each station (i) a first live event from the first plurality of live events that will be displayed at the first time and (ii) a second live event from the second plurality of live events that will be displayed at the second time, and
wherein generating the network map comprises using a machine learning technique to optimize an overall television rating across the first plurality of live events and the second plurality of live events;
automatically updating the network map on demand and in real time based on a change to at least one of (i) the schedule and (ii) underlying criteria,
wherein updating the network map comprises updating the mapping of the first plurality of live events and the second plurality of live events to the plurality of television stations; and
using the network map to determine for each station (i) the first live event from the first plurality of live events that will be displayed at the first time and (ii) the second live event from the second plurality of live events that will be displayed at the second time.
The Network Map patents relate to the creation of network maps for broadcasters, which, prior to computers, was done by humans to determine the types of content to be displayed on particular channels at various times. The Network Map patents use training data and user-provided target features, such as overall ratings for the NFL for particular stations, markets, or audience, to generate optimized network maps.
However, Recentive acknowledged that they do not claim the machine learning technique itself and that any machine learning technique may be employed. Rather, the claims use iterative training on its machine learning model with “different event parameters and … event target features” provided by users to “identify relationships within the data.” But, Recentive also acknowledged that “[t]he process of training the machine learning model[] … is required for any machine learning model” “and then the algorithm is actually updated and improved over time based on the input” or training.
Under Alice Step 1, the district court found that the patents were “directed to the abstract ideas of producing network maps and event schedules… using known generic mathematical techniques.” Under Alice Step 2, the claims are not directed to any inventive concept “because the machine learning limitations were no more than ‘broad, functionally described, well-known techniques.’”
Decision:
At Alice step 1, the court examines the “focus of the claimed advance over the prior art.” Here, by Recentive’s own representations, iterative training or dynamic adjustment based on real-time user-specified parameters are “incident to the very nature of machine learning.” Recentive argues that its claims “unearth ‘useful patterns’ that had previously been buried in the data, unrecognizable to humans.” However, Recentive itself acknowledged that its patents do not claim any specific improvements in mathematical algorithms used or improvements to the machine learning itself. Neither does the specification describe any improvements in machine learning. The court did not find any “specific implementation of a solution to a problem in the software arts.” Instead, the court found that “the only thing the claims disclose about the use of machine learning is that machine learning is used in a new environment…event scheduling and the creation of network maps.” And, the court had long recognized that “[a]n abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment.”
At Alice step 2, the court did not find any “inventive concept” that would amount to something “significantly more” than the abstract idea itself of generating event schedules and network maps through application of machine learning.
Nevertheless, the court acknowledged that “machine learning is a burgeoning and increasingly important field and may lead to patent-eligible improvements in technology.” But, it concludes that “we hold only that patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under §101.”
Takeaways:
The court’s decision in this “question of first impression” comes as no surprise. Just using machine learning, or for that matter, any other “tool” of artificial intelligence, such as neural networks, AI models, etc., “in new data environments” is not enough to confer patent eligibility. There must be some claimed and disclosed “improvement” in “software arts” or some other technology.
This decision aligns with the recent USPTO AI examples issued July 2024. For instance, USPTO Example 47, claim 2 and Example 48 were ineligible because the mere “use of” a neural network or trained model is just the mere use of a tool/computer, a general link to a technical field, a mere “apply it” feature – all of which are not meaningful limitations for Alice steps 1 and 2 (as reflected in the USPTO Step 2A, Prong 2 and Step 2B analysis in these examples).
Of more interest is the follow-up exploration into the boundaries of patent eligibility for the “improvements” in such AI-related fields. The July 2024 USPTO AI Examples provided some examples for eligible AI-related subject matter where features in a specific technological field are used/impacted/created via the use of the neural network or trained model that leads to some improvement in that specific technological field. This included USPTO Example 47 claim 3’s dropping of potentially malicious packets and blocking of future traffic from the detected source address, which reflected an improvement in the technical field of network intrusion detection by using the information (source address of malicious packets) to enhance security by taking claimed proactive measures to remediate the danger. Other examples of eligible claims reciting AI features leading to improvements in some underlying technology include USPTO Example 48, claims 2 and 3 (speech signal processing). Of course, these are clear cut examples of eligible AI subject matter. We hope to see more Federal Circuit decisions addressing the more grey areas involving AI techniques.
For instance, Recentive tried to argue that that its claims “unearth ‘useful patterns’ that had previously been buried in the data, unrecognizable to humans.” Recentive also focused on the claimed iterative training as conferring patent eligibility. Perhaps an argument could be made that a specific new way for how to train the machine learning model using selected specific data improved the iterative training procedure that would otherwise apply using existing techniques. This, of course, would require a carefully drafted specification spelling out what an existing iterative training might entail, and then, how this new iterative training would improve the accuracy of the model. Again, what does the specification say about the “focus of the claimed advance over the prior art?” If the “focus” is on the new way to perform the iterative training, perhaps the claims might have survived §101.
This is also reminiscent of USPTO Example 39, reciting the creation of first and second training sets and the training of a neural network in first and second stages with those respective training sets. USPTO Example 39 is an example of an eligible claim involving the training of a neural network for facial detection. One key aspect of Example 39 is that it described how prior methods of facial detection using neural networks suffered from an inability to robustly detect human faces in images when the NN was trained with a set of facial and non-facial images. Example 39, instead, focused on expanded training sets of facial images. Under USPTO Step 2A, Prong 1, the “training” in USPTO Example 39 was simply deemed not to fall into any judicial exception category and the claim was deemed patent eligible because no judicial exception was recited.
Contrast, however, with USPTO Example 47, claim 2, where “training” was deemed to fall into the category of math, and the claim was deemed ineligible. One distinction between these two examples is that USPTO Example 39 focused on “how” the “training” led to improvements over the prior training techniques. Such a focus did not exist in Recentive’s case. But, when it is the first time applying AI in “a new data environment,” a next question might be whether there is a way to describe deficiencies in using existing training techniques that would be overcome with newly created sets of training data or a new specific way of changing existing training procedures to improve a desired outcome. This is just one example of a grey area where more Federal Circuit decisions on eligibility would be helpful. Nevertheless, the guidance is clear – spell out the “improvement” in technology in the specification and claim the features that result in that improvement.
