Patent Prosecution Update
June 2015
A Change in What “Means” Means: The En Banc Federal Circuit Reverses Itself
The Federal Circuit panel deciding Williamson v. Citrix Online, LLC, 770 F.3d 1371 (Fed. Cir. 2014), in November 2014 overturned a district court claim construction that treated the term “distributed learning control module” as a means-plus-function expression under (pre-AIA) 35 U.S.C. § 112, ¶ 6. The patent-in-suit, U.S. Patent No. 6,155,840 (“the ’840 patent”), describes methods and systems for distributed or distance learning, enabling presenters to connect to audiences via virtual classrooms. The patent owner conceded that the district court’s construction rendered the relevant claims invalid as indefinite, and stipulated to final judgment, followed by an appeal. More
Inter Partes Review: Indefinite Claims Can’t Play
In a petition for inter partes review (IPR), the petitioner may challenge a patent claim only on grounds of anticipation or obviousness under 35 U.S.C. § 102 or 103, and using only patents and printed publications. 35 U.S.C. § 311(b). The statute does not allow IPR petitioners to challenge a patent claim for failure to comply with the requirements of § 112. Nevertheless, petitioners and patent owners that believe § 112 issues have no impact on whether an IPR is instituted are missing part of the picture. Decisions from the Patent Trial and Appeal Board (Board) illustrate that a claim’s failure to comply at least with § 112’s definiteness requirement has a substantial impact whether an IPR can be instituted and lead to a finding from the Board that could be used to challenge the patent in subsequent proceedings. More
A Change in What “Means” Means: The En Banc Federal Circuit Reverses Itself
The Federal Circuit panel deciding Williamson v. Citrix Online, LLC, 770 F.3d 1371 (Fed. Cir. 2014), in November 2014 overturned a district court claim construction that treated the term “distributed learning control module” as a means-plus-function expression under (pre-AIA) 35 U.S.C. § 112, ¶ 6. The patent-in-suit, U.S. Patent No. 6,155,840 (“the ’840 patent”), describes methods and systems for distributed or distance learning, enabling presenters to connect to audiences via virtual classrooms. The patent owner conceded that the district court’s construction rendered the relevant claims invalid as indefinite, and stipulated to final judgment, followed by an appeal. More
Inter Partes Review: Indefinite Claims Can’t Play
In a petition for inter partes review (IPR), the petitioner may challenge a patent claim only on grounds of anticipation or obviousness under 35 U.S.C. § 102 or 103, and using only patents and printed publications. 35 U.S.C. § 311(b). The statute does not allow IPR petitioners to challenge a patent claim for failure to comply with the requirements of § 112. Nevertheless, petitioners and patent owners that believe § 112 issues have no impact on whether an IPR is instituted are missing part of the picture. Decisions from the Patent Trial and Appeal Board (Board) illustrate that a claim’s failure to comply at least with § 112’s definiteness requirement has a substantial impact whether an IPR can be instituted and lead to a finding from the Board that could be used to challenge the patent in subsequent proceedings. More
IP5 Offices
Preparing an IP5-Compatible Patent Application: Disclosure Requirements
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Design Patents
Understanding the Hague: Should We Hug It or Hate It?
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Rule Review
An Appealing Trade: The Expedited Patent Appeal Pilot Program
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EPO Practice
Examination of Clarity in EPO Opposition Proceedings - Enlarged Board of Appeal Decision, G3/14
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At the Federal Circuit
Reviewing the Law of Anticipation of Ranges
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Eric P. Raciti, Editor-in-Chief
J. Derek McCorquindale, Associate Editor
Clara N. Jiménez, Associate Editor
Eric P. Raciti, Editor-in-Chief
J. Derek McCorquindale, Associate Editor
Clara N. Jiménez, Associate Editor
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