According to 35 U.S.C. § 101, “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” may be patentable. Courts and litigants often struggle in determining what falls outside this scope—i.e., what is unpatentable subject matter. The Federal Circuit Court of Appeals dealt with this issue in a series of appeals between USAA v. PNC Bank (CAFC Nos. 2023-1639, 2023-1778, 2023-1866, 2025-1276, 2025-1277, and 2025-1341), held that the claims in the patents at issue recite unpatentable subject matter, and reversed the entries of judgment for the US$218M and US$4.3M jury verdicts that issued out of the Eastern District of Texas.

We previously reported how the PTAB’s institution rate has fallen to approximately 40% in the new administration, with many of those denials stemming from the PTAB’s increased usage of its discretionary denial processes to deny IPR challenges without otherwise addressing the merits of the identified prior art. The latest grant of discretionary denial continues that trend and exemplifies the current challenges in pursuing IPR/PGR invalidity challenges at the U.S. Patent Office. 

In an unusual order recently issued by the U.S. International Trade Commission (ITC), the ITC vacated an ALJ’s Final Initial Determination (ID) on sub-prongs (A) and (B) of the economic prong of the domestic industry requirement, finding error in his decision to exclude investments made prior to issuance of the asserted patents. In Certain Oil Vaporizing Devices, Components Thereof, and Products Containing the Same, the ALJ had found infringement, validity, and satisfaction of the technical prong, but he recommended no exclusion order solely because certain of the complainant’s investments under sub-prongs (A) and (B) were incurred prior to the issue date of the asserted patents. See Inv. No. 337-TA-1392, Comm’n Order at 2 (May 16, 2025). That decision broke from over a decade of precedent, the ITC’s order explained.