On March 18, 2024, the USPTO issued a memorandum to its Examiners reminding them of the resources and proper analysis for interpreting limitations under 35 U.S.C. § 112(f), which are commonly referred to as...more
On March 18, 2024, the US Patent & Trademark Office (PTO) issued a memorandum to patent examiners addressing means-plus-function and step-plus-function claim limitations and how to clearly articulate, in the prosecution...more
United States Patent and Trademark Office (USPTO) officials recently reiterated to all patent examiners that they must provide clear, consistent analysis regarding means-plus-function and step-plus-function limitations. ...more
When a claim term is construed as a means plus function limitation, the recited “means” is limited to only the specific structures disclosed in the specification for performing the recited function, and a limited range of...more
Reversing a district court finding of indefiniteness under 35 U.S.C. § 112 ¶ 6, the US Court of Appeals for the Federal Circuit found that the district court erred by ignoring unrebutted evidence that the challenged claim...more
The Federal Circuit is holding its first argument session of 2022 this week (with a return to telephonic arguments in light of the Omicron variant). In this post, we take a look back at how the Court closed out 2021 and...more
Claim language is important. Particularly when dealing with software systems, claims may be held invalid as being indefinite when the claim language is characterized as “means-plus-function” under pre-AIA 35 U.S.C. §112 ¶ 6...more
Means-plus-function claim limitations can present troublesome § 112 issues for IPR petitioners, and a recent PTAB decision further demonstrates how § 112 problems can derail an IPR petition. Samsung Electronics America, Inc....more
The US Court of Appeals vacated a Patent Trial and Appeal Board (PTAB) obviousness decision, finding that the disputed means-plus-function term was computer-implemented and therefore required the corresponding structure to...more
PATENT CASE OF THE WEEK - Papst Licensing GMBH & Co. KG v. Samsung Electronics America, Inc., Appeal No. 2018-1777 (Fed. Cir. May 23, 2019) - In a sternly-worded decision this week, the Federal Circuit held claims to...more
Federal Circuit Finds Claims Issued from Reexamination Co-Pending with Appeal Ineligible Where the Changes Did Not Affect Section 101 Eligibility - In SAP AMERICA, Inc. v. InvestPic, LLC, Appeal No. 2017-2081, the...more
Functional Claiming in Software Patents - Software patents are generally directed to a sequence of steps or rules, i.e., an algorithm, performed by a computer programmed to carry out the algorithm. Because algorithms are...more
In August 2016, Google petitioned for Inter Partes Review of U.S. Patent No. 7,552,124 (owned by IXI Mobile), asserting that claims 1–10 are unpatentable. In March 2017, the PTAB instituted the IPR as to claims 1–5, but...more