It's been a while since I last posted, and I apologize for that. (If interested, here's an alert about what's kept me away: a CFAA trial we wrapped up in late July.) But I am back, so let's look at the latest on the Section...more
There now is increased interest about the written description and enablement requirements for patent applications claiming antibodies. This may stem from the recent U.S. Supreme Court decision in Amgen v. Sanofi, finding lack...more
The United States Patent and Trademark Office’s (“USPTO”) Appeals Review Panel (“the Panel”) recently clarified that means-plus-function claims do not require that the specification disclose equivalents. See Ex parte...more
On May 17, 2024, an Appeals Review Panel (ARP) of the United States Patent and Trademark Office (“USPTO”) released its decision in Ex parte Chamberlain (referred to in Federal Circuit proceedings as In re Xencor;...more
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
Means-plus-function claim elements can be a sticky wicket during an inter partes review, to borrow a phrase from the cricket lovers out there. These are claim elements drafted under 35 U.S.C. § 112(f) (or its predecessor...more
The US Court of Appeals for the Federal Circuit reiterated that in the context of construing computer-implemented means-plus-function limitations, if the specification discloses some arguable algorithm, even if a party...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
The Federal Circuit issued two cases this week providing more clarity to when a functional claim feature should be considered a de facto means-plus-function claim that requires structural detail to meet the indefiniteness...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...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
Hunting Titan, Inc. v. DynaEnergetics Europe GMBH, Appeal Nos. 2020-2163, -2191 (Fed. Cir. March 24, 2022) - In a notable review of the USPTO’s new Precedential Opinions Panel, the Federal Circuit discussed the...more
Last week wrapped up a busy January for the Federal Circuit. Oral arguments returned to a telephonic format, and arguments next month will be by video (although still audio-only for the public). As the month is now in the...more
In a new precedential Federal Circuit decision, Kyocera Senco Industrial Tools Inc. v. ITC, that impacts both patent prosecutors and litigators, the court again demonstrated the reach of its recent expansion of language that...more
On December 28, in Intel Corp. v. Qualcomm Inc., the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) may not decline to consider the patentability of a claim challenged in an inter partes review (IPR)...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
The US Court of Appeals for the Federal Circuit issued decisions in two separate inter partes reviews (IPRs), one involving a patent related to radio frequency communication systems and the other involving a patent related to...more
Intel Corp. v. Qualcomm Inc., Appeal Nos. 2020-1828, -1867 (Fed. Cir. Dec. 28, 2021) - The Federal Circuit issued two precedential decisions this week—both arising from IPRs filed by Intel against patents owned by...more
The US Court of Appeals for the Federal Circuit affirmed a lower court’s findings of noninfringement, in part because the plaintiff had failed to prove the “way” element of the function-way-result test for a first...more
Precedential Federal Circuit Opinions KANNUU PTY LTD. v. SAMSUNG ELECTRONICS CO., LTD. [OPINION] (2021-1638, 10/7/21) (Newman, Prost, Chen) - Chen, J. Denying motion for preliminary injunction. Patentee sought to compel...more
The Federal Circuit has its August sitting this week—its last before September’s scheduled return to in-person arguments. Before taking the virtual bench for the final time, the Court issued six opinions last week. Below we...more
In Rain Computing, Inc. v. Samsung Elecs. Am., Inc., the Federal Circuit held that the claimed language “user identification module” was a means-plus-function element with no corresponding structure disclosed in the...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