Federal Circuit Issues Precedential Decision Reframing Patent Eligibility Analysis Under Section 101

Patent eligibility decisions are not new. Courts have grappled with what can and cannot be patented for years, especially in the technology and software spaces. A recent decision from the U.S. Court of Appeals for the Federal Circuit, U.S. Patent No. 7,679,637 LLC v. Google LLC, builds on the previous framework, affirming a district court’s holding that the asserted patent is invalid. In doing so, the court articulated the standard in a potentially new way, holding that patent claims “need not explicitly recite” a technological improvement to be nonabstract and encouraging courts to review the specification and determine whether an improvement is “embodied in the claims.”

Background on Federal Circuit’s Precedential Patent Eligibility Ruling

The patent at issue relates to web conferencing systems with “time-shifting capabilities,” allowing participants to watch streaming data live, on a delay, or after completion.

The patentee sued for infringement in the Western District of Washington. The defendant moved to dismiss, arguing that the patent was directed to ineligible subject matter and invalid. Judge John H. Chun granted the motion, holding that the claims were directed to an abstract idea and lacked an inventive concept.

The Federal Circuit applied the two-step Alice framework and came to the following conclusions:

1. Abstract Idea: The court held that the claims were directed to the abstract idea of asynchronous review of presentations. The patentee argued that the claims disclose a specific technological improvement, but the court disagreed and held they were “result-oriented,” i.e., reciting outcomes without explaining how they were achieved.
2. Inventive Concept: The patentee pointed to the use of multiple applications and a “time-scale modification component” for audio as being inventive, but the court found these were conventional elements and algorithms, not an inventive concept.

Fresh Articulation of the Patent Eligibility Determination

The Federal Circuit’s decision is noteworthy not because of its conclusion but because of the statements it made to get there. For years, courts have held that patent eligibility depends on what is claimed. Under that framework, a patent might be invalid if the specification discusses improvements over the prior art, but the claims are broadly written and do not capture those improvements. Here, the court wrote that while the eligibility question focuses on the claim language, “the claim itself need not explicitly recite the improvement.” The court wrote that its precedent supports a variety of approaches, including looking to the written description to understand the problem addressed, what the patent describes as the invention, and whether any technological improvement is “embodied” in the claims and described in the specification.

Notably, this articulation of the legal standard was not directly relevant to the court’s analysis of the patent at issue. The court’s language also tracks a “reminder” issued by the USPTO in August 2025, stating that (1) the “claim itself does not need to explicitly recite the improvement described in the specification” and (2) patent examiners should “consult the specification to determine whether the disclosed invention improves technology or a technical field, and evaluate the claim to ensure it reflects the disclosed improvement.”

Key Takeaways for IP Holders and Litigants

• It remains to be seen whether courts and litigants will treat this new decision as a departure from precedent or an affirmation of previous approaches. Previous decisions from the Federal Circuit suggested that a technological improvement must be claimed to be relevant in the eligibility analysis. The decision states that “the claim itself need not explicitly recite the improvement,” but suggests that courts should continue to assess whether an improvement is “embodied in the claims.”
• Courts will need to assess what it means for a claim to “embody” an unrecited technological improvement. Another unanswered question is whether patentees can rely on unrecited features to avoid invalidity, and if so, whether the patentee must also prove those unrecited features for purposes of infringement.
• The decision otherwise reaffirms basic principles of patent eligibility, including that patentees may not point to nonasserted patents as support for the eligibility of the patent at issue and that courts may address eligibility challenges at the pleading stage if there are no factual disputes or claim construction issues needing to be resolved.