Federal Circuit disposition — 24-2107

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: BRIAN DAVID MCFADDEN,
Appellant
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2024-2107
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 16/231,749.
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Decided: September 5, 2025
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BRIAN MCFADDEN, Miami, FL, pro se.
MONICA BARNES LATEEF, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Coke Morgan Stewart. Also represented by
KAKOLI CAPRIHAN, AMY J. NELSON.
______________________
Before REYNA, BRYSON, and STOLL, Circuit Judges.
PER CURIAM.
Brian McFadden appeals the decision of the Patent
Trial and Appeal Board affirming the examiner’s rejection
of certain claims of U.S. Patent Application No. 16/231,749
as unpatentable under 35 U.S.C. §§ 101 and 112. For the
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IN RE: MCFADDEN 2
following reasons, we reverse-in-part, vacate-in-part, and
remand.
BACKGROUND
U.S. Patent Application No. 16/231,749 claims a “sys-
tem and methods for controlling and optimizing infor-
mation distribution between users in an information
exchange.” J.A. 70 (capitalization normalized). The speci-
fication states that information exchange networks, such
as social media networks, lack the ability to “precisely and
optimally regulate the flow of information between produc-
ers and consumers.” Id. As a solution, the ’749 application
discloses an information exchange that facilitates the flow
of information between producers and consumers. The
specification generally teaches a producer entering infor-
mation into the exchange, a consumer indicating what in-
formation she would want or not want to receive, and
various matrices and loops facilitating the optimal flow of
information between the producer and consumer.
Claims 10 and 18 are illustrative. Claim 10 recites:
10. A social network system, comprising:
a post or other equivalent information item from a
first user of the social network;
a subsystem configured to use the method of
claim 1 to determine an include region for a second
user of the social network; [and]
a module capable of using the include region to de-
termine inclusion of the post into a news feed or
equivalent information stream directed to the sec-
ond user.
J.A. 32. Claim 18 recites:
18. An information exchange apparatus for gener-
ating an include region comprising:
a distribution of information items;
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IN RE: MCFADDEN 3
a subsystem configured for processing a region of
the distribution to:
(a) determine a number of items for the region,
(b) determine an expected item value for the re-
gion,
(c) compute a metric for the region, wherein the
metric computation depends on the expected item
value and the number of items; and
a module for selecting the include region, wherein
the include region is preferred over other regions of
the distribution at least in part according to the
metric.
J.A. 33–34.
In the Final Office Action, the examiner rejected
claims 10–18 of the ’749 application based on two grounds.1
First, the examiner rejected claims 10–17 as indefinite un-
der 35 U.S.C. § 112(b), determining they were mixed
claims reciting both apparatus limitations and method
steps. The examiner also rejected claims 10–18 under
35 U.S.C. § 101. According to the examiner, the claims
were directed to software without any hardware or struc-
tural limitations and thus did not fall within the four cate-
gories of patent eligible subject matter (process, machine,
manufacture, or composition of matter).
The Board affirmed the examiner’s rejection of
claims 10–18 under both §§ 101 and 112. Regarding § 101,
the Board determined that the claims recited “‘software
per se,’ i.e., a product without any structural recitations.”
J.A. 5 (citing Manual of Patent Examining Procedure
1 The examiner also rejected other claims in the Fi-
nal Office Action, but those claims are not at issue on ap-
peal.
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IN RE: MCFADDEN 4
(MPEP) § 2106.03)). The Board concluded that the claims
did not “explicitly recite any limitations directed to hard-
ware, such as circuitry, computers, CPUs, memory, or com-
puter-readable storage medium,” nor did they “use the
words ‘means’ or ‘step’ to tie the claim limitations to any
hardware structure described in the Specification.” J.A. 6–
7; see also J.A. 16 (“[The] Specification [] does not contain
any description of structural limitations that would change
the characterization of [] claim 18 to something other than
software per se.”).
The Board also agreed with the examiner that the
claims were indefinite under § 112 because they claimed
both an apparatus and a method of using the apparatus in
a single claim. The Board analogized the claims to those
held indefinite in IPXL Holdings, L.L.C. v. Amazon.com,
Inc., 430 F.3d 1377 (Fed. Cir. 2005), determining that the
claims at issue here, like those in IPXL, “not only allow[ed]
one to practice the method steps of [the method claim—i.e.,
recited the capability of the structure], but also recite[d]
practicing the method steps of [the method claim].” J.A. 8–
9, 21–22.
Mr. McFadden, appearing pro se, appeals. We have ju-
risdiction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
“We review the Board’s legal determinations de novo,
and the Board’s factual findings underlying those determi-
nations for substantial evidence.” Honeywell Int’l Inc.
v. Mexichem Amanco Holding S.A. DE C.V., 865 F.3d 1348,
1353 (Fed. Cir. 2017) (internal citations omitted). After re-
view, we determine that the Board erred in affirming the
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IN RE: MCFADDEN 5
examiner’s rejection of claims 10–18 under §§ 101
and 112.2
I
Turning first to the rejection under § 101, the Board
erred in concluding that apparatus and system claims 10–
18 are ineligible under § 101 solely because they lack any
structure and thus do not fall within a statutorily provided
category. Under § 101, an inventor may obtain a patent for
“any new and useful process, machine, manufacture, or
composition of matter.” 35 U.S.C. § 101. “[A] § 101 analy-
sis begins by identifying whether an invention fits within
one of the four statutorily provided categories of patent-el-
igible subject matter.” Aatrix Software, Inc. v. Green
Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018)
(citation omitted). Once a claim meets that threshold, the
§ 101 analysis continues under the two-step Alice/Mayo
framework. Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
573 U.S. 208, 216–18 (2014); see Aatrix, 882 F.3d at 1125
(citing post-Alice cases that addressed the threshold statu-
tory category question).
Applying this framework, “[w]e have held that claims
to pure data and claims to transitory signals embedded
with data are directed to ineligible subject matter under
§ 101.” Aatrix, 882 F.3d at 1125 (first citing Digitech Im-
age Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344,
2 We note that while Mr. McFadden appears to ap-
peal the examiner’s rejections of claims 10–17 under
35 U.S.C. §§ 102 and 103, see Appellant’s Br. 11–12, the
Board did not sustain the examiner’s rejections under
those sections. J.A. 9–10. We therefore will not address
that portion of Mr. McFadden’s appeal because generally,
a party may not appeal from a favorable decision. See Elec.
Fittings Corp. v. Thomas & Betts Co., 307 U.S. 241, 242
(1939).
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IN RE: MCFADDEN 6
1348–50 (Fed. Cir. 2014); and then citing In re Nuijten,
500 F.3d 1346, 1353–57 (Fed. Cir. 2007)). But here, the
Board erred by concluding that the claims at issue lack the
necessary structure to fall within one of the statutorily pro-
vided categories. Like many claims that focus on software
innovations, these claims are system and apparatus claims
that recite hardware as well as software.
Mr. McFadden asserted both before the Board and on
appeal that the claim limitations should be interpreted as
means-plus-function limitations under 35 U.S.C. § 112(f).
J.A. 15; Appellant’s Br. 16. We agree with Mr. McFadden.
“The first step of a [§ 112(f)] analysis is to determine
whether the claim term at issue is in means-plus-function
format.” Fintiv, Inc. v. PayPal Holdings, Inc., 134 F.4th
1377, 1381 (Fed. Cir. 2025). When, as here, a claim does
not use the word “means,” a rebuttable presumption arises
that § 112(f) does not apply. Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in
part). “We have not, however, blindly elevated form over
substance when evaluating whether a claim limitation in-
vokes [§ 112(f)].” Id. The presumption can be overcome if
a claim term “fails to ‘recite[] sufficiently definite structure’
or else recites ‘function without reciting sufficient struc-
ture for performing that function.’” Id. at 1349 (alteration
in original) (quoting Watts v. XL Sys., Inc., 232 F.3d 877,
880 (Fed. Cir. 2000)). For example, when a claim uses a
nonce word analogous to “means” followed by functional
language, it invokes § 112(f). Id. at 1350 (noting that the
claim at issue replaced the term “means” with the nonce
word “module,” then recited “functions performed” by the
module).
Here, claim 10, for example, recites “a subsystem con-
figured to use the method of claim 1 to determine an in-
clude region for a second user of the social network.”
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IN RE: MCFADDEN 7
J.A. 32.3 The term “subsystem” as used in the claims is not
a term of art that conveys a particular structure to a person
of ordinary skill. Rather, as the Board recognized, much
like the term “means,” the term “subsystem” is a term de-
void of particular structure. See, e.g., J.A. 7 (“[I]ndepend-
ent claim 10, which recites a system comprising . . . a
subsystem to determine an include region, . . . does not re-
cite any hardware structure.”). Accordingly, this claim lim-
itation is properly understood as being written in means-
plus-function format.
Having determined the claims invoke § 112(f), “we pro-
ceed to the second step of the analysis: identifying the cor-
responding structure described in the specification.”
Fintiv, 134 F.4th at 1384. We thus turn to the specification
to determine what structure corresponds to the claimed
“subsystem,” that is, what structure in the specification
performs the recited claim functions such as “processing a
region of the distribution” or “us[ing]” the method of
claim 1 to determine the include region. J.A. 32–34. The
specification teaches a system that can operate as a “sub-
system [that] interact[s] with the information exchange.”
J.A. 74. The specification elaborates on the various differ-
ent structures that can operate as the computer sys-
tem/subsystem:
In one embodiment, the system is computer coded
software operating on a computer system. The
computer system can be any combination of one or
more physical computer hardware systems, physi-
cal servers, devices, mobile devices, CPUs, auxil-
iary CPUs, embedded processors, workstations,
desktop computers, virtual devices, virtual servers,
3 Claims 11–18 are very similar. Claims 11–17 re-
cite subsystems configured to use the methods of claims 1,
4, and 5, and claim 18 recites “a subsystem configured for
processing a region of the distribution.” See J.A. 32–34.
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IN RE: MCFADDEN 8
virtual machines, or similarly related hardware
with an applicable operating system appropriate
for the specific hardware and, in the case of more
than one, interconnected via a private or public
network.
Id. The specification also discloses that the computer sys-
tem/subsystem uses a decision matrix 70 to determine if an
information item should be included. J.A. 78–79. Because
the specification discloses structure that corresponds to the
recited subsystem—i.e., a computer system running soft-
ware—we conclude that, contrary to the Board’s holding,
the claims recite tangible structure and fall within one of
the statutorily provided categories.
The Board acknowledged that the “[s]pecification
states that the information exchange system ‘is computer
coded software operating on a computer system,’” but it
characterized this recitation as a “generic description of
computer hardware.” J.A. 17. For the purposes of this spe-
cific inquiry under § 101—whether the claims at issue con-
tain enough structure such that they do not constitute
“software per se”—the alleged generic nature of the corre-
sponding structure does not render the structure nonexist-
ent.4 The Board therefore erred in interpreting the claims
to be devoid of physical structure.
The examiner and the Board stopped their § 101 anal-
yses after concluding that the claims fail to fall within any
of the four statutorily provided categories. We thus re-
mand for consideration of whether these claims satisfy
§ 101 under the two-step Alice/Mayo framework.5
4 We do not address whether this is sufficient struc-
ture for purposes of indefiniteness under § 112.
5 Going forward, we encourage the Board to conduct
an analysis under Alice/Mayo whenever presented with an
examiner rejection under § 101.
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IN RE: MCFADDEN 9
Specifically, on remand, the Board should analyze whether
the claims are directed to an abstract idea. We do not de-
cide in the first instance whether claims 10–18 are eligible
under Alice/Mayo.
II
The Board also erred in finding claims 10–17 indefinite
under § 112(b) based on the rationale in IPXL. We held in
IPXL that “a single claim covering both an apparatus and
a method of use of that apparatus is invalid.” 430 F.3d
at 1384. We reasoned that “a manufacturer or seller of the
claimed apparatus would not know from the claim whether
it might also be liable for contributory infringement be-
cause a buyer or user of the apparatus later performs the
claimed method of using the apparatus.” Id.
When evaluating whether a system or apparatus claim
improperly incorporates a method of use, we evaluate the
limitation to see if it is “directed to user actions, not system
capabilities.” In re Katz Interactive Call Processing Pat.
Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011). The claim lim-
itations at issue in IPXL and Katz were directed at user
actions: “the user uses the input means” and “callers digi-
tally enter data,” respectively. IPXL, 430 F.3d at 1384
(emphasis omitted) (citation omitted); Katz, 639 F.3d
at 1318. Conversely, claim limitations that “do not explic-
itly claim the user’s act . . . , but rather, claim the system’s
capability,” do not fall within the rationale of IPXL. Mas-
terMine Software, Inc. v. Microsoft Corp., 874 F.3d 1307,
1316 (Fed. Cir. 2017). “[W]hile a claim directed to both a
method and an apparatus may be indefinite, ‘apparatus
claims are not necessarily indefinite for using functional
language.’” Id. at 1313 (quoting Microprocessor Enhance-
ment Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375
(Fed. Cir. 2008) (“MEC”)). When claims “merely use per-
missible functional language to describe the capabilities of
the claimed system,” the claims are not indefinite because
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IN RE: MCFADDEN 10
they “inform those skilled in the art about the scope of the
invention with reasonable certainty.” Id. at 1316.
The claims at issue here permissibly claim the func-
tionality of the system. Claims 10–17 contain the limita-
tion “a subsystem configured to use the method of” one of
the method claims. J.A. 32–33. The language “configured
to” in the claims indicates that the subsystem must be ca-
pable of using the claimed method. The Board incorrectly
found that the claims “recite practicing the method steps.”
J.A. 9. Properly read, the claims do not require perfor-
mance of the method steps. Rather, the claims are limited
to a system or apparatus “possessing the recited structure
and capable of performing the recited functions.” MEC,
520 F.3d at 1375 (emphasis omitted). We thus reverse the
Board’s affirmance of the examiner’s rejection of
claims 10–17 under § 112(b).
CONCLUSION
For the foregoing reasons, we vacate the Board’s deci-
sion affirming the examiner’s rejection under 35 U.S.C.
§ 101 and reverse the Board’s decision affirming the exam-
iner’s rejection under 35 U.S.C. § 112 and remand for fur-
ther proceedings consistent with this opinion.
REVERSED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
Costs to Appellant.
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