IP UPDATE

From ‘best’ to bust: Multiple methods to determine “optimal/best” render claims indefinite

by Lauren Hong | Dec 4, 2025 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court’s judgment of invalidity and grant of summary judgment of noninfringement, concluding that even if excluded portions of expert testimony were considered, the judgments would remain proper. Akamai Technologies, Inc. v. MediaPointe, Inc., AMHC, Inc., Case No. 24-1571 (Fed. Cir. Nov. 25, 2025) (Taranto, Stoll, Cunningham, JJ.)

AMHC owns two patents that address systems and methods for efficiently routing streamed media content over the internet using an “intelligent distribution network” that centrally manages requests for streamed media from geographically dispersed users to mitigate bandwidth problems inherent in transmitting large volumes of data. Akamai sued AMHC and its subsidiary MediaPointe (collectively, MediaPointe) seeking a declaratory judgment of noninfringement for both patents. MediaPointe counterclaimed for infringement of both patents, after which Akamai counterclaimed for declaratory judgment of invalidity of all claims of both patents.

At the claim construction stage, the district court determined that claim limitations using “optimal/best” language were invalid for indefiniteness because the specification failed to provide a procedure or boundaries to determine what is “optimal/best.” For the remaining asserted claims, the district court granted summary judgment of noninfringement. In doing so, the district court:

Excluded as untimely presented key portions of MediaPointe’s technical expert’s testimony, without which MediaPointe could not reasonably establish infringement
Ruled that even if the testimony was considered, the record entitled Akamai to summary judgment of noninfringement.

MediaPointe appealed.

MediaPointe contended that the claims using “optimal/best” language were not indefinite, arguing that the requirement to use measurable performance data (specifically “trace-route results”) provided an objective standard. The Federal Circuit disagreed, finding that this requirement did not supply a reasonably clear and exclusive definition of “optimal/best.” The Court explained that the “trace-route results” requirement was not sufficiently clear because multiple methods could be used to determine compliance, and the patent offered no guidance on which measures to apply.

MediaPointe also challenged the summary judgment of noninfringement for the remaining claims, arguing that the district court applied an improperly narrow construction instead of the ordinary meaning of the disputed limitation. The Federal Circuit rejected this argument, finding that a skilled artisan would not have reasonably understood the claim language more broadly and that the district court’s construction was correct in light of the patent’s context. The Court concluded that because there was no evidence that Akamai’s system met this narrower limitation, even considering the excluded expert testimony, there was no triable issue of fact and no reasonable jury could find infringement.

The Federal Circuit therefore affirmed the district court’s judgment.

USPTO introduces voluntary search disclosure declarations in Board proceedings

by Amol Parikh | Dec 4, 2025 | Patents

The Director of the US Patent and Trademark Office (USPTO) issued a memorandum announcing a new initiative aimed at improving examination quality and transparency in Patent Trial & Appeal Board proceedings.

Effective immediately, petitioners in inter partes review (IPR) and post-grant review (PGR) proceedings may submit a search disclosure declaration (SDD) that explains in detail:

Databases and repositories consulted
Search approach, search terms, filters, queries, and classification pathways used
Analytics or publicly accessible resources referenced
Time spent searching and reviewing results
Any other relevant methodology details

The submission is voluntary, and petitioners that do not provide an SDD will not be penalized. However, when deciding whether to institute a proceeding, the Board will view submission of an SDD as a favorable discretionary factor, especially if the SDD reveals new or underutilized search pathways relevant to USPTO practices. The SDD may also help demonstrate potential USPTO error during examination, according to the memorandum.

The SDD can be filed confidentially under 37 C.F.R. § 42.14, with a motion to seal and request for in camera review. Protective orders must allow the USPTO to use the information for internal training and analytics. Confidential SDDs will not be publicly disclosed except as required by law, and deposition testimony related to an SDD will generally not be permitted.

Practice note: While optional, submitting an SDD can strengthen an IPR or PGR petition by signaling transparency and contributing to improved USPTO practices. Consider incorporating this step into your Board strategy, especially when leveraging sophisticated search tools or methodologies that the USPTO does not typically use during examination.

No escape from fees and sanctions for reckless litigation conduct

by Hannah Hurley | Dec 4, 2025 | Patents

The US Court of Appeals for the Federal Circuit affirmed attorneys’ fees awards against EscapeX IP, LLC, finding the case “exceptional” under 35 U.S.C. § 285, and upheld sanctions under 28 U.S.C. § 1927 based on counsel’s reckless litigation conduct. EscapeX IP, LLC v. Google LLC, Case No. 24-1201 (Fed. Cir. Nov. 25, 2025) (Taranto, Stoll, Stark, JJ.)

EscapeX brought suit against Google in the Western District of Texas, alleging that Google’s YouTube Music product infringed its patent directed to systems for generating artist-specified dynamic albums. After Google pointed out that the accused features were absent from YouTube Music and later demonstrated that the accused “Auto-Add” feature predated the patent’s priority date, EscapeX amended its complaint to list the correct product and refused to dismiss the case.

Shortly after EscapeX sued Google, its patent was invalidated under § 101 in a separate litigation. EscapeX did not appeal that ruling, and Google requested that EscapeX dismiss the case. In response, EscapeX filed what it characterized as a “joint stipulation of dismissal,” which Google contested because it had not agreed to such a filing. Google moved for attorneys’ fees under § 285, arguing that EscapeX had filed frivolous claims and unreasonably prolonged the litigation. The district court agreed, awarding Google its fees.

EscapeX then filed a Rule 59(e) motion to amend the judgment, attaching declarations from its CEO and an engineer to show pre-suit diligence. The district court denied the motion, finding that the evidence was not “newly discovered” and the motion was frivolous. Google successfully sought additional fees and sanctions under § 1927, resulting in an additional $63,525 jointly and severally against EscapeX and its attorneys. EscapeX appealed.

The Federal Circuit affirmed the district court decisions and found no abuse of discretion. The Court concluded that the record supported the finding that EscapeX had not conducted any pre-suit investigation and that the case was “frivolous from the start.” This conclusion was also supported by Google’s early, detailed warnings against filing the suit and EscapeX’s general nonresponsiveness.

Regarding the Rule 59(e) motion, the Federal Circuit agreed that the declarations were not “newly discovered evidence” because they were always within EscapeX’s control and knowledge. The Court rejected arguments of “manifest injustice,” which were not raised in district court and had no merit.

Finally, the Federal Circuit affirmed the sanctions under § 1927, finding that EscapeX’s counsel acted recklessly by filing a frivolous motion that multiplied proceedings. The Court noted that zealous advocacy does not excuse filing baseless motions. The Court upheld Google’s fees and sanctions in their entirety, with costs related to the appeal also awarded to Google.

Precedential shift: USPTO clarifies patentability of AI training methods

by Hannah Hurley | Nov 20, 2025 | Patents

On November 4, 2025, the Director of the United States Patent and Trademark Office (USPTO) designated as precedential an appeals review panel (ARP) decision vacating the Patent Trial & Appeal Board’s § 101 rejection of claims directed to training machine learning models. Ex parte Desjardins, Appeal No. 24-000567 (ARP Sept. 26, 2025) (precedential).

The Board had previously concluded that claims covering continual learning techniques (such as adjusting model parameters to maintain performance across sequential tasks) were directed to an unpatentable abstract idea. The ARP, which included the USPTO Director, reversed that determination, holding that the claims integrated the abstract concept into a practical application by improving the functioning of machine learning models themselves. However, the ARP still rejected the claims under § 103 for obviousness.

Key takeaways

Technical improvements matter. Artificial intelligence (AI)-related inventions can satisfy Alice Step 2A when they demonstrate technical improvements, such as mitigating catastrophic forgetting and reducing storage complexity.
No blanket exclusion. The opinion cautions against categorically excluding AI innovations under § 101 and emphasizes that §§ 102, 103, and 112 remain the proper tools for assessing patent scope.
Precedential impact. The decision signals the USPTO’s commitment to aligning examination practices with US Court of Appeals for the Federal Circuit precedent while fostering innovation in AI and machine learning.

Practice note: For applicants, this precedential designation underscores the importance of framing AI-related claims around specific technical improvements rather than abstract concepts, which can be pivotal in overcoming § 101 challenges.

Well, well, well: Indefinite claims turn out to be a typo

by Dexter Hamilton | Nov 20, 2025 | Patents

The US Court of Appeals for the Federal Circuit reversed a district court ruling that invalidated patent claims for indefiniteness, finding that the disputed language was a minor clerical error. Canatex Completion Solutions, Inc. v. Wellmatics, LLC, et al., Case No. 24-1466 (Fed. Cir. Nov. 12, 2025) (Moore, Prost, Taranto, JJ.)

Canatex sued Wellmatics and several GR Energy entities for infringing its patent directed to a releasable connection for a downhole tool string. The patent covers a two-part device used in oil and gas wells that allows operators to disconnect and retrieve the upper part of the tool string while leaving the lower part in the well if it becomes stuck.

The patent’s claims, abstract, and specification include the phrase “the connection profile of the second part.” During claim construction, the defendants argued that the phrase lacked an antecedent basis, rendering the claims indefinite. Canatex responded that the phrase should have read “the connection profile of the first part” and that a skilled artisan would immediately recognize the error. Canatex asked the district court to construe the phrase accordingly.

The district court disagreed, finding that the “pervasiveness of the error” in both the claims and the specification suggested that the error “was an intentional drafting choice and not an error at all.” The district court added that Canatex’s failure to seek correction from the United States Patent and Trademark Office suggested that the error was neither minor nor evident on the face of the patent. The district court found all asserted claims invalid for indefiniteness. Canatex appealed.

The Federal Circuit reversed. The Court found the error obvious and determined that a skilled artisan would recognize only one reasonable correction, which was changing “second” to “first.” The Court characterized the mistake as a minor clerical or typographical error and rejected arguments that alternative interpretations were plausible. The Court emphasized that its conclusion was consistent with the intrinsic evidence.