November 2014
Claim with Omitted Material Limitation May Not Be Asserted Before Correction
When a patent issues with a mistake, a certificate of correction can be obtained to correct it under certain circumstances. 35 U.S.C. §§ 254, 255. When an issued claim “omits a material limitation, and such omission is not evident on the face of the patent, the patentee cannot assert that claim until it has been corrected by the PTO.”
H-W Tech., L.C. v. Overstock.com, Inc., 758 F.3d 1329, 1335 (Fed. Cir. 2014).
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Means-Plus-Function Claims Require Disclosure of Means
In its decision in
Robert Bosch, LLC v. Snap-On Inc., No. 2014-1040 (Fed. Cir. Oct. 14, 2014), the Federal Circuit considered whether certain claim elements (“program recognition device” and “program loading device”) should be interpreted as means-plus-function terms under 35 U.S.C.
§ 112, ¶ 6 (pre-AIA designation), notwithstanding the absence of the word “means” in these elements. In finding that the elements were indeed properly interpreted as “means-plus-function” claims, the lack of corresponding structure for the means in the specification doomed the claims as indefinite under 35 U.S.C. § 112, ¶ 2 (pre-AIA designation).
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