“Opco Offers a Claim-Drafting Lesson for AI Patents”

Concrete claim language can make a meaningful difference in the patent-eligibility analysis. Marshall Gerstein Partner Ryan Phelan examines this takeaway from the Federal Circuit’s recent decision in Ceiva Opco, LLC v. Amazon.com, Inc. in his latest contribution to IPO Daily News, a members-only newsletter published by the Intellectual Property Owners Association.

Ryan discusses the court’s decision reversing an ineligibility ruling for one digital picture frame claim while affirming the ruling for representative claims of three related patents. The surviving claim specified the interactions among a physically separable user interface, server, and digital frame, which the court found addressed technological limitations of earlier devices. By contrast, the related claims broadly described desired functions without sufficiently specifying how those results were achieved.

Although Ceiva did not involve artificial intelligence, the decision offers a practical lesson for AI patent applicants: identify the technical improvement, connect it to shortcomings in existing technology, and claim the features and relationships that produce that improvement.

Ryan is a regular contributor to IPO Daily News’ “AI Insights” column, where he provides timely analysis of court decisions, regulatory developments, and other issues affecting patents and emerging technologies. He also authors PatentNext, Marshall Gerstein’s blog covering patent and intellectual property law involving artificial intelligence and other next-generation technologies.

Members can read Ryan’s latest AI Insights article on IPO’s website.