Tag Archives: Federal Circuit Court of Appeals

Patent Appeals Court Raises Bar on Functional Claiming

By Stephen C. Hall

Rarely has such a short word or phrase influenced patent claims to such a degree as the phrase, “means for.” This phrase sits at the intersection of function (what an invention accomplishes) and structure (the materials for accomplishing it). 35 U.S.C. § 112, para. 6 is the basis for its use in patent claims:

An element in a claim for a combination may be expressed as a means or step for performing a specific function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.1

bank vault opening mechanism to a vault.With this provision, Congress created a balance by permitting patentees the option to claim inventions with functional language, which tends to require fewer words. But in exchange for brevity in the claims, the specification must Continue reading

Patent Litigation on Reach of Raging Bull Decision to go to Round Two in Federal Circuit

By Will Gibbons

Could a case on the boxing classic Raging Bull lead to a patent litigation prizefight of sorts? In an en banc hearing ordered on December 30, 2014, the Federal Circuit Court of Appeals, a federal appellate court with special jurisdiction over patents and trademarks, will decide whether the Supreme Court’s essential elimination of a litigation defense involving copyright cases should also apply in patent cases.

intellectualpropertyThe defense in question is the doctrine of laches. Laches is an equitable defense that bars recovery when a party claims it has been legally injured, but unreasonably delays pursuing any legal action in a way that prejudices the opposing party. The defense has been asserted in many kinds of cases, including contract, tort, copyright, and patent cases.

A Supreme Court case involving a copyright and the laches defense, Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), has triggered a ripple effect that may reach into patent law. In that case, Paula Petrella, daughter of the co-author of the screenplay that evolved into Raging Bull, alleged copyright infringement against MGM. MGM countered that Petrella delayed too long in bringing the action, as she had renewed the copyright in 1991 and first threatened suit in 1998. However, the Supreme Court rejected MGM’s position and held that Continue reading