Federal Circuit Refines Section 101 Eligibility of
Machine Learning Inventions
Nick Palmieri, Chris Palermo
On April 18, 2025, the United States Court of Appeals for the
Federal Circuit ("Federal Circuit") issued a significant
decision in Recentive Analytics, Inc. v. Fox Corp., Case
No. 2023-2437 (Apr. 18, 2025), affirming dismissal by the District
Court of Delaware of patent infringement claims brought by
Recentive Analytics, Inc. ("Recentive") against Fox Corp.
and affiliates (collectively, "Fox"). The case centered
on four patents owned by Recentive relating to using machine
learning for generating event schedules and network maps,
particularly in the context of television broadcasts and live
events.
Read more on this decision and its implications here.
Use of Amazon Warehouses for Distribution Alone Won't
Establish Patent Venue, Court Rules
Eileen Hyde, Lauren Dreyer
Key Takeaway: Just as over a million businesses use Amazon web
servers, many independent sellers also use Amazon warehouses to
store their inventory. More than 60% of sales in the Amazon store
come from independent sellers, many of which are small and
medium-sized businesses. A recent ruling offers crucial clarity for
these sellers who have an Amazon store: simply using Amazon
warehouses and distribution facilities in a region does not
automatically establish it as a proper venue for patent
infringement cases.
Read the full article here.
Amazon Teams Up With IP Owners to Sue Infringers
Tommy Martin
In a little-publicized but powerful campaign, Amazon has been
teaming up with intellectual property owners to take counterfeiters
to court—often footing the legal bill itself. The lawsuits
have targeted a wide range of counterfeit goods, from unauthorized
copies of the now-ubiquitous "Stanley" cup to unlicensed
replicas of the WWE heavyweight champion belt. But these lawsuits
also can be a windfall for intellectual property rights owners, who
are able to obtain relief from infringement in exchange for little
more than agreeing to join Amazon's complaint.
Read a complete copy of the article from Law.com here.
Impact of New USPTO Interim Procedures on Discretionary
Denial of AIA Proceedings
William Gaines
Key Takeaway: The USPTO has reinstated earlier discretionary denial
standards (including Fintiv) and introduced a new two-phase review
process, which is expected to lead to more frequent denials of IPR
petitions. Both patent challengers and owners should prepare for
increased procedural complexity, tighter briefing deadlines, and
heightened scrutiny in post-grant proceedings.
Read the full article here.
Seeking Royalties Beyond Patent Expiration: A Refreshed Look at
Patent Misuse
Ben Bafumi*, Paul Ragusa
Key Takeaway: A recent Ninth Circuit decision in C.R. Bard v.
Atrium reinforces the long-standing Brulotte rule against
post-expiration patent royalties but clarifies that courts should
assess this strictly as a legal question, not based on intent or
negotiation history. This decision underscores the importance of
clearly drafted licensing terms, particularly in industries like
life sciences where regulatory timelines may interact unpredictably
with patent expiration.
Read the full article here.
*Ben Bafumi is a law clerk at Baker Botts
First Quarter 2025 Federal Circuit Law Snapshot
Michael Hawes
Since serving as a Federal Circuit clerk, Michael Hawes has
monitored that court's precedential opinions and prepares a
deeply outlined index by subject matter (invalidity, infringement,
claim construction, etc.) of relevant legal points - in order to
assist clients seeking to identify recent law relevant to a
particular problem.
Read the full article here.
This Month: Our Take on AI
Joseph Cahill
NO FAKES Act Reintroduced to Combat Digital
Replicas: Federal lawmakers have reintroduced the Nurture Originals, Foster Art, and Keep
Entertainment Safe (NO FAKES) Act in early April 2025. This
legislation aims to create a federal intellectual property right,
similar to a right of publicity, granting individuals control over
unauthorized, realistic AI-generated replicas of their voice or
visual likeness. The Act seeks to replace varying state laws with a
unified federal standard, establishing liability for those who
create or distribute unauthorized digital replicas. It incorporates
a notice-and-takedown system modeled after the Digital Millennium
Copyright Act (DMCA), providing safe harbor protections for online
platforms that comply with takedown requests, implement repeat
infringer policies, and use technology like digital fingerprinting
to prevent re-uploads of removed content. The Act would generally
preempt state laws on the matter, though it includes exceptions for
specific existing state laws and statutes concerning sexually
explicit or election-related deepfakes. Read more about the details
of this reintroduction here: "Federal Lawmakers Reintroduce NO FAKES Act to
Combat Unauthorized Digital Replicas."
EU Announces Major AI Infrastructure
Initiatives:The European Commission has unveiled
significant plans aimed at enhancing Europe's competitive
standing in the global AI landscape. Central to this strategy is a
proposal for a €20 billion fund dedicated to establishing a
network of "AI gigafactories" across Europe. These
large-scale facilities are intended to provide the substantial
computing power necessary for developing advanced AI models. This
funding is part of a larger €200 billion pledge for AI
development within the EU. Additionally, the Commission plans to
set up specialized labs to generate large, GDPR and EU AI
Act-compliant datasets. Furthermore, EU lawmakers are planning a
"Cloud and AI Development Act" designed to ease
regulatory hurdles and encourage private investment into AI-focused
data center infrastructure, with the goal of significantly
expanding Europe's data processing capabilities. Coleman Strine discusses these European
developments further here: "European Union Moves to Bolster its AI
Infrastructure."
AI Counsel Code Podcast
In the episode "Legal Challenges in AI Partnerships"
Maggie Welsh and Steve Mann discuss best practices for engaging
with AI vendors, focusing on data protection, ownership of
AI-generated outputs, and the importance of clear, enforceable
contracts. They emphasize proactive measures to protect data and
intellectual property in the evolving AI landscape. Listen to the
full episode here.
April 2025 Intellectual Property Report Recap
In case you missed it, here is a link to our April 2025 Intellectual
Property Report that looked at:
- Patent Apportionment: Anything You Say in a License Agreement May Be Used Against You in a Court of Law
- When Can District Courts Cancel Trademark Applications?
- The Impact of Prosecution Length on Infringement Outcomes in Patent Litigation
- AWS Servers Alone Won't Establish Patent Venue in Virginia, Court Rules
- Tech M&A in the Digital Age: Navigating Regulatory and Strategic Challenges
- Liability for Patent Infringement: System vs. Method Claims
- This Month: Our Take on AI
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