News & Analysis as of

Means-Plus-Function Written Descriptions

McDermott Will & Emery

“Payment Handler”: A Nonce Term Without Instructions

The US Court of Appeals for the Federal Circuit affirmed a district court’s ruling that a software term was a “nonce” term that invoked 35 U.S.C. § 112, sixth paragraph (i.e., a means-plus-function claim element). The Court...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Patent Prosecution Tool Kit: Capturing After-Discovered Embodiments in Biotech Patents by Careful Prosecution

A Maddening Habit  - Biotechnology is an unpredictable science. When its practitioners wish to enforce their patents, they often run into a serious problem. Unlike chemists or pharmacologists, who for a century or so have...more

Sunstein LLP

January 2019 IP Update - New Guidelines Proposed for Functional Claiming in Computer-Related Inventions

Sunstein LLP on

In a second notice of proposed rulemaking (besides the one for patent eligibility) announced January 4, 2019 and published in the Federal Register on January 7, 2019, the Patent and Trademark Office has proposed guidelines...more

Schwabe, Williamson & Wyatt PC

2017 and Early 2018 Supreme Court and Precedential Patent Cases From the Federal Circuit

Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more

Schwabe, Williamson & Wyatt PC

2017 Supreme Court and Precedential Patent Cases From the Federal Circuit, With Some Significant Cases from 2016

Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more

McDonnell Boehnen Hulbert & Berghoff LLP

Driessen v. Sony Music Entertainment (Fed. Cir. 2016)

On February 10, 2016, the Federal Circuit issued a nonprecedential opinion in a case captioned Driessen v. Sony Music Entertainment, Best Buy Stores, Fye, & Target Corp. addressing issues related to means-plus-function claims...more

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