The US Court of Appeals for the Federal Circuit (the Federal Circuit) is an appeals court that was established under Article III of the US Constitution on October 1, 1982. The Federal Circuit is a merger of the US Court of Customs and Patent Appeals and the appellate division of the US Court of Claims. While there are many Supreme Court cases that every patent attorney should know, the Federal Circuit has also issued many decisions determining important and diverse patent issues. The five cases discussed herein span a wide range of patent topics from design patent obviousness analysis to what statements can constitute prosecution disclaimer.

1) Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022)

Only Persons – and not Artificial Intelligence – can Invent

In this appeal from the Eastern District of Virginia, the Federal Circuit determined that artificial intelligence (AI) cannot be an inventor of a patent. Steven Thaler failed to list a human being as an inventor on patent applications he filed with the United States Patent and Trademark Office (USPTO) and instead listed that the patent applications were “generated by artificial intelligence.” The sole issue on appeal was whether AI software can be an inventor of a patent application. The Federal Circuit determined that the Patent Act expressly provides that inventors are individuals. The Federal Circuit interpreted the term “individuals” to be a human being or a person. Thus, AI cannot be an inventor of a patent application at the USPTO.

2) Star Tech. Int’l Ltd. v. Latham Pool Prods., No. 2023-2138, 2025 U.S. App. LEXIS 9755 (Fed. Cir. Apr. 24, 2025)  

Obviousness Test is the Same for Design and Utility Inventions

This appeal from the USPTO Patent Trial and Appeal Board (PTAB) rejects the Rosen-Durling test previously used to assess obviousness in design patent prosecution. The Rosen-Durling test required a primary reference to be “basically the same” as a challenged design and secondary references to be “so related” to the primary reference that features in one would suggest application of those features in the other. The Federal Circuit determined that conditions for patentability of design patents should be consistent with those for utility patents. Thus, the Graham four-part obviousness test for utility patents, as discussed in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 167 L. Ed. 2d 705 (2007), is now adopted for consideration of design patents.

3) Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205 (Fed. Cir. 2025)

The use of Machine Learning in New Data Environments is an Abstract Idea

This appeal from the US District Court for the District of Delaware is one of many Federal Circuit cases discussing the eligibility requirement of 35 USC § 101. The Federal Circuit applied the 2-step test set forth in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014) to determine that iterative training and dynamic adjustments are inherent to machine learning and do not represent a technological improvement to confer patent eligibility under 35 USC § 101. The two-step test first requires a determination of whether patent claims are directed to a patent ineligible concept of either a law of nature, a natural phenomenon, or an abstract idea. If the claims are directed to an ineligible concept, the claims must then be analyzed to determine whether the claims possess an inventive concept that is sufficient to ensure that the claims amount to significantly more than the ineligible concept. Here, the patent claims describe the use of machine learning to the data environment of event scheduling and the creation of network maps. However, there is no description in the claims of an improvement to a machine learning technique. Thus, the Federal Circuit applied the two-part test to determine that claims that do no more than apply established methods of machine learning to a new data environment are patent ineligible as they are abstract ideas without significantly more.  

4) Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010)

Written Description and Enablement are Independent Requirements

This appeal from the US District Court for the District of Massachusetts reaffirmed that 35 USC § 112 includes both a written description requirement and an enablement requirement. In the lower court, the patent at issue was found valid and infringed. This decision was reversed by a panel at the Federal Circuit and was affirmed in this en banc decision. The Federal Circuit affirmed its earlier decisions which specified that 35 USC § 112 includes a written description requirement separate from an enablement requirement. In particular, the written description requirement is satisfied when a disclosure reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date of the application. The invention must also be sufficiently enabled under 35 USC § 112. Here, the patent at issue was found invalid for lack of written description.

5) Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1355 (Fed. Cir. 2017)

Prosecution Disclaimer Can Occur in an IPR

This appeal from the US District Court for the Northern District of California held that statements made by a patent owner during an inter partes review (IPR) proceeding can be relied upon to support a finding of prosecution disclaimer during claim construction. Prosecution disclaimer arises when the inventor limits the invention during the course of prosecution, making the claim scope narrower that it may otherwise appear to be.  In this case, the patent owner made statements related to the patent claims during an IPR proceeding and then argued that statements made during an IPR cannot be relied on to support a finding of prosecution disclaimer. Prior to this case, it was well established that prosecution disclaimer applies to statements made before issuance of a patent as well as after issuance in reexamination proceedings. In this case, the Federal circuit determined that statements during IPRs are also covered by prosecution disclaimer to ensure that patent claims cannot be argued one way in order to maintain patentability and another to be enforced against potential infringers. Thus, the statements made by the patent owner in the IPR proceeding could be relied on for prosecution disclaimer and resulted in a summary judgment decision of non-infringement.