Our Patent Case Summaries provide a weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Ex parte Desjardins, et al.
No. 2024-000567 (PTAB ARP Sept. 26, 2025) (designated precedential on Nov. 4, 2025). Decision by Squires, joined by Wallace and Kim.
The Appeals Review Panel (ARP) of the Patent Trial and Appeal Board convened to review the Board’s Decision on Appeal and Decision on Request for Rehearing for an application directed to methods for training machine learning models. The Board had affirmed the Examiner’s rejection of all pending claims under 35 U.S.C. § 103 and entered a new ground of rejection under § 101. For its § 101 rejection, the Board found the claims directed to an abstract idea—a mathematical concept—and found that the claims did not integrate that abstract idea into a practical application.
On review, the ARP vacated the § 101 rejection while leaving the Board’s other determinations undisturbed. Applying the Alice framework and relevant MPEP guidance, the ARP agreed that the claims recite an abstract idea but found that, when considered as a whole, the claims “integrate [the] abstract idea into a practical application.” Specifically, the claims improve “continual learning and model efficiency by reducing storage requirements and preserving task performance across sequential training,” which involves a training strategy that addresses “the technical problem of ‘catastrophic forgetting.’”
The ARP emphasized that “this case highlights what is at stake” in considering patentability of AI-related inventions. The ARP said:
Categorically excluding AI innovations from patent protection in the United States jeopardizes America’s leadership in this critical emerging technology. Yet, under the panel’s reasoning, many AI innovations are potentially unpatentable—even if they are adequately described and nonobvious—because the panel essentially equated any machine learning with an unpatentable “algorithm” and the remaining additional elements as “generic computer components,” without adequate explanation. … Examiners and panels should not evaluate claims at such a high level of generality.
The ARP noted, however, that the claims at issue nonetheless “stand rejected under § 103.” The ARP then explained: “This case demonstrates that §§ 102, 103 and 112 are the traditional and appropriate tools to limit patent protection to its proper scope. These statutory provisions should be the focus of examination."
Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc.
No. IPR2025-00632 (Nov. 3, 2025) (designated precedential on Nov. 3, 2025). Order by Squires.
Revvo Technologies filed an IPR petition challenging claims in a patent owned by Cerebrum Sensor Technologies. The Board instituted the proceeding but Director Squires sua sponte initiated Director Review “to address the claim construction issues implicated in this case.”
The Director noted that Petitioner did not propose its own claim constructions in the Petition, but instead accepted Patent Owner’s proposed constructions from the parties’ district court litigation. Petitioner did so without “explain[ing] why it was taking a different position here.”
The Director ruled that “although the Board’s trial rules ‘do not necessarily prohibit petitioners from taking inconsistent claim construction positions before the Board and a district court,’ when a petitioner takes alternative positions before the Board and a district court, that petitioner should, at a minimum, explain why alternative positions are warranted.” “Simply noting that the petitioner is adopting a patent owner’s claim construction proposals from district court … is not a sufficient reason for advancing different positions in the two forums.”
Applying that rule here, the Director ruled that Petitioner “does not explain sufficiently why the different positions were warranted,” which “ordinarily … would mean a denial of institution.” But because this decision clarifies how a petitioner should approach different claim construction positions, the Director vacated the institution decision and remanded with instructions allowing the Board to “authorize additional briefing, as necessary, to determine whether Petitioner has provided a sufficient reason why different claim construction positions are warranted.”
Tesla, Inc. v. Intellectual Ventures II LLC, et al.
No. IPR2025-00340 (Nov. 5, 2025) (designated informative on Nov. 5, 2025). Order by Squires.
Tesla filed an IPR petition challenging the claims in a patent owned by Intellectual Ventures. The Patent Trial and Appeal Board granted institution, after which Patent Owner filed a request for Director Review of the institution decision.
The Director granted review and considered whether Petitioner had sufficiently explained why it advanced inconsistent claim construction positions before the Board and in the parties’ parallel district court litigation. In district court, Petitioner had argued that the claim limitation “generating said target feature information from said data statistics” was indefinite, but in the Petition, Petitioner argued that the claims should be given their plain and ordinary meaning. Petitioner explained that the different claim construction positions were warranted because Petitioner is statutorily prohibited from raising indefiniteness challenges in an IPR.
Citing the Board’s precedential Order in Revvo Technologies (summarized above), the Director stated that “when a petitioner advances different positions before the Board and a district court, that petitioner is required to explain why those different positions are warranted.” The Director then ruled that “Petitioner’s statement that it cannot raise indefiniteness challenges in an inter partes review is not a sufficient explanation.” “Allowing a petitioner to advance a claim construction before the Board when that petitioner has made inconsistent indefiniteness arguments in district court fails to further, but instead detracts from, the Office’s goal of ‘providing greater predictability and certainty in the patent system.’” Thus, the Director ruled that “denial of institution is appropriate in this case.”