News & Analysis as of

Means-Plus-Function

Five-Judge PTAB Panel Interprets “Module” As Non Means-Plus Function

by Jones Day on

On September 13, 2017, the PTAB, a five-judge panel, granted a petition to institute an inter partes review brought by HTC America, Inc. (“Petitioner”) against Virginia Innovation Sciences, Inc. (“Patent Owner”) regarding...more

Federal Circuit Review - August 2017

by Knobbe Martens on

District Court Abused Discretion in Ignoring Federal Circuit Mandate to Reconsider Attorneys’ Fees Under Octane Fitness - In Adjustacam, LLC v. Newegg, Inc., Appeal No. 2016-1882, the Federal Circuit held that a district...more

Disclosed Structure Restricts Breadth of Means-Plus-Function Limitations

by McDermott Will & Emery on

In an opinion addressing claim construction and Patent Trial and Appeal Board (PTAB) jurisdiction, the US Court of Appeals for the Federal Circuit concluded that while the PTAB had the authority to consider the patentability...more

[Webinar] Functional Claiming: The Turbulent Seas of Prosecution and Claim Construction - September 13th, 10:00am China, CST

Two years have passed since the U.S. Court of Appeals for the Federal Circuit decided Williamson v. Citrix Online, LLC, a landmark case redefining the standard for determining whether claim terms should be construed as...more

PTAB Requires Identification of Structure for Function for Means-Plus-Function Terms

by Jones Day on

In a decision dated August 17, 2017, the Board denied institution of Kingston Technology Company, Inc.’s petition requesting inter partes review of claims 1-3, 6-8, 11-15, 23-28, and 36-39 of U.S. Patent No. 6,088,802 (“the...more

Federal Circuit Review - July 2017

by Knobbe Martens on

District Court Abused Discretion in Not Finding Case Exceptional - In Rothschild Connected Devices v. Guardian Protection Services, Appeal No. 2016-2521, the Federal Circuit held that a district court abused its discretion...more

Skky Found the Limit for “Means” Terms

by McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit agreed that the Patent Trial and Appeal Board (PTAB) did not err in its conclusions that a claim element reciting “means” did not invoke § 112 ¶ 6 and that the challenged claims...more

BRI-Proof Your Claims

By Bryan K. Wheelock, Principal There are many benefits to employing means + function claiming under 35 USC §112(f).  The Federal Circuit recently pointed out a new one: protecting your claims from the application by the...more

PTO Erred by Not Identifying Algorithm Corresponding to §112, ¶ 6 Element Before Invalidating Claims

In IPCOM GmbH & Co. v. HRC Corp., [2016-1474] (July 7, 2017) the Federal Circuit found that the Board failed to conduct a proper claim construction of the “arrangement for reactivating the link” claim limitation, and...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

In AdjustaCam v. Newegg, the Circuit reverses the denial of attorney fees where Judge Gilstrap simply adopted a pre-Octane Fitness determination by a prior judge, despite the Circuit’s post-Octane Fitness remand of the case...more

Interpretation of Means-Plus-Function Claim Limitations

by McDermott Will & Emery on

Addressing claim construction issues in connection with “means-plus-function” limitations, the US Court of Appeals for the Federal Circuit affirmed the district court’s decision to uphold a non-infringement verdict based on a...more

Federal Circuit Upholds IPR Decision of Unpatentability in Skky v. MindGeek

by Knobbe Martens on

The Federal Circuit upheld an IPR final written decision by the PTAB holding that MindGeek’s claims were unpatentable in Skky, Inc. v. MindGeek, S.A.R.L., No. 2016-2018 (Fed. Cir. June 7, 2017). ...more

“Means” Does Not Always Mean “Means Plus Function”

In Skky, Inc. v. Mindgeek, S.A.R.L. [2016-2018] (June 7, 2017), the Federal Circuit affirmed the PTAB decision in IPR 2014-01236 that all of the challenged claims in U.S. Patent 7,548,875 were invalid for obviousness....more

Summaries of All Supreme Court and Precedential Federal Circuit Patent Cases Decided Since Jun. 1, 2016

This paper is based on reports on precedential patent cases decided by the Federal Circuit distributed by Peter Heuser on a weekly basis. Please see full publication below for more information....more

Boilerplate Language Saves “Controller” From Being Deemed Functional Language

In a recent decision from the District of Delaware, the Court held that the term “controller” did not invoke pre-AIA 35 U.S.C. § 112(6). The specific claim element recited...more

PTAB Invokes 35 U.S.C. § 112(6) To Construe Patent Claim Term During IPR Proceeding

In a recent decision (IPR2016-01372) to institute an Inter Partes Review (IPR), The United States Patent Trial and Appeal Board (“PTAB”) invoked pre-AIA 35 U.S.C. § 112 paragraph 6 (now 35 U.S.C. § 112(f)) to interpret the...more

Managing Patent Portfolios and Drafting Applications To Withstand IPR Challenges

by Brinks Gilson & Lione on

Since implementation of the Leahy-Smith America Invents Act, inter partes review (“IPR”) and other post-grant proceedings have been used successfully to challenge and invalidate thousands of patent claims. Over 2,000 IPR...more

Gerundtology

§112(f) allows a patent applicant to claim an element by the function it performs. Functionally claimed elements using §112(f), however, are limited to what is disclosed in the specification and equivalents. The classic...more

Structural Element Does Not Make Method Claims Indefinite

In Cox Communications, Inc. v. Sprint Communication Company LP, [2016-1013] (September 23, 2016), the Federal Circuit reversed the district court’s determination that the asserted claims of U.S. Patent Nos. 6,452,932;...more

Federal Circuit Review | August 2016

by Knobbe Martens on

Federal Circuit Holds That Using A Contract Manufacturer Does Not Trigger An On-Sale Bar - In The Medicines Co. v. Hospira, Inc., Appeal Nos. 2014-1469, -1504, the Federal Circuit, en banc, held that the patentee’s deal...more

Indefiniteness of Means-Plus-Function Claims

by McDermott Will & Emery on

Addressing both the circumstances that lead to a claim limitation invoking a means-plus-function construction and indefiniteness issues for means-plus-function claims, the US Court of Appeals for the Federal Circuit affirmed...more

Packing Your Patent Application for Europe: Avoiding Problems Under European Patent Law

by Hodgson Russ LLP on

Planning an extended European vacation for your patent application? A lengthy stay in Munich with possible outings to The Hague, Berlin, Vienna, or Brussels? While your patent application won’t be strolling through the...more

Forecast Unfavorable for Inventory Software Patent

Ever since the Supreme Court’s decision in Alice Corp. v. CLS Bank shifted the contours of patent-eligible subject matter, district courts have wielded the two-part test set forth in that decision to dispatch scores of...more

Judge Rakoff Holds a 3-D “Magic Trick” Implemented With Software Is Not Equivalent to One Implemented With Hardware

On April 24, 2016, District Judge Jed S. Rakoff (S.D.N.Y.) ruled that defendants Nintendo Co., Ltd. and Nintendo of America, Inc.’s (collectively, “Nintendo”)’s 3DS pocket gaming console does not infringe Tomita Technologies...more

Functional Claim Language Does Not Render Apparatus Claim Indefinite For Including Both Method And Apparatus

Patent applications involving electrical and/or computer related inventions often involve functional claim language. For example, software may be claimed in terms of its function. One or more components of an electrical...more

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