Tag Archives: patent assertion entities

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 Appeals Court Raises Bar on Functional Claiming

The “Patent Assertion Escrow” as a Limit against Abusive, Coercive Litigation

By Stephen C. Hall

How would the dynamic of patent infringement litigation change if Patent Assertion Entities, who file lawsuits serially, faced a higher level of scrutiny over their pre-lawsuit investigation? This post explains how to accomplish this with due regard for attorney-client privilege and attorney work product.

Illustration_SteveHall_v5In its study of the Patent Assertion Entity (“PAE”), the Federal Trade Commission defined PAEs as firms that acquire patents to generate revenue through litigation. Like any patent holder, a PAE must reasonably investigate before filing a lawsuit. However, a serial PAE might sue dozens or hundreds of players in an industry with a cookie-cutter complaint, and some attempt to exploit the fact that Continue reading The “Patent Assertion Escrow” as a Limit against Abusive, Coercive Litigation