Precedential and Key Federal Circuit Decisions
1. SAGE PRODUCTS, LLC v. STEWART [OPINION] (2023-1603, -1604, 04/15/2025) (Reyna, Cunningham, Stark)
Stark, J. Sage Products, LLC (“Sage”) challenged a Patent Trial and Appeal Board (“Board”) decision finding two of Sage’s patents unpatentable. After the original appellee, Becton, Dickinson and Co., withdrew, the Director of the U.S. Patent and Trademark Office exercised her right to intervene and continued the appeal. The challenged patents relate to a packaged, sterilized chlorhexidine product.
The court’s decision focused on whether substantial evidence supported the Board’s finding that a skilled artisan would have understood a piece of prior art to describe a “sterilized” composition. That prior art was a publication of the United Kingdom’s Medicine and Healthcare Products Regulatory Agency granting a marketing license for a chlorhexidine product. As part of that license, the document described the product’s packaging, which stated the product was “sterile.”
Sage argued that “sterile” did not necessarily satisfy the Board’s construction of “sterilized.” The Board found, over Sage’s argument to the contrary, that a person of skill in the art would have understood the UK regulatory standards applicable to the prior art and would have known that the “sterile” product described in the prior art would satisfy the “sterilized” requirement in the claims. In rejecting Sage’s arguments, the Federal Circuit explained that substantial evidence supported the Board’s assessment of what a skilled artisan would know. The Federal Circuit also found that there was substantial evidence to support the Board’s decision regarding certain dependent claims and that Sage’s arguments that the Board committed procedural errors did not warrant vacating the Board’s decision. Accordingly, the Federal Circuit affirmed.
2. RECENTIVE ANALYTICS, INC. v. FOX CORP., FOX BROADCASTING CO., FOX SPORTS PRODUCTIONS, LLC [OPINION] (2023-2437, 04/18/2025) (Dyk, Prost, Goldberg)
Dyk, J. Recentive Analytics. Inc. (“Recentive”) sued Fox Corp., Fox Broadcasting Co., and Fox Sports Productions, LLC for alleged infringement of certain patents describing the generation of network maps and live performance schedules for television broadcasts using machine learning. The district court found that the challenged claims merely applied established machine learning algorithms in a new context and concluded that the patents were ineligible under 35 U.S.C. § 101. The Federal Circuit affirmed.
At step one of the Alice inquiry, the Federal Circuit found that the patents were directed to abstract ideas. The court explained the claimed application of known machine learning algorithms did not provide a specific method for improving those algorithms. The Federal Circuit also explained that the patents were not patent eligible merely because “they appl[ied] machine learning to [a] new field of use.”
At step two of the Alice inquiry, the Federal Circuit concluded that the alleged inventive concept identified by Recentive was nothing more than the abstract idea itself and that that the claims did not add “significantly more” to the abstract idea. The court held “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.”
3. QUALCOMM INC. v. APPLE INC. [OPINION] (2023-1208, -1209, 04/23/2025) (Lourie, Prost, Reyna)
Reyna, J. Patent owner appealed from a final written decision of the Patent Trial and Appeal Board (“Board”) finding certain claims unpatentable based on combinations involving Applicant Admitted Prior Art (“AAPA”). An initial appeal in this case ruled that AAPA is not “patent or printed publication” art under 28 U.S.C. § 311(b) and thus can only be used in an inter partes review for the limited purpose of informing on the general knowledge of a skilled artisan. On remand, the Board found the challenged claims unpatentable as obvious over combinations that included AAPA. It found the use of AAPA was proper because it was used in combination with a prior art patent.
The Federal Circuit reversed. First, the Federal Circuit found the Board’s unpatentability determination reviewable because the patent owner was challenging the merits of the Board’s determination not its threshold determination to institute an IPR.
Second, the Federal Circuit held the Board had misinterpreted § 311(b). The court explained that it was error for the Board to find that AAPA does not constitute the basis of a ground under § 311(b) when combined with prior art patents or printed publications. Instead, the court clarified that the Board could rely on AAPA as informing on the general knowledge of a skilled artisan, but not as “the basis or part of the basis of a ground” of unpatentability.
Third, the court concluded AAPA was used as a basis for the ground at issue because the petition described the “basis” of the grounds at issue being AAPA in combination with a prior art patent. Accordingly, the Federal Circuit held that the Board erred by considering a ground barred by § 311(b) and reversed the Board’s unpatentability determination.
