Archive for March, 2019

Using dependent claims to emphasize that an alleged claim term is structural and not MPF

Friday, March 29th, 2019

I think a lot of practitioners will take note of Chief Judge Prost’s precedential opinion for the court today in TEK Global, S.R.L., et al. v. Sealant Systems Int’l. Inc., et al. In assessing whether a phrase invoked 112¶6/112¶(f), Chief Judge Prost looked to the dependent claims to see if they indicated that the purported means plus function phrase was structural:

Even more, the dependent claims suggest that § 112, ¶ 6 does not govern. Indeed, they “add limitations that either describe particular structural features or flesh out whether the term has a particular structural meaning.”Diebold, 899 F.3d at 1298. For example, dependent claim 27 recites “at least one of said conduits . . . comprises a hose.” ’110 patent col. 8 ll. 12–14. And SSI does not dispute that the “hose” disclosed in the ’110 patent is structural.

You can read Chief Judge Prost’s precedential opinion for the court [here].

You can read the referenced Diebold Nixdorf v. ITC opinion [here].

The PTO might want to take note that its recent guidance entitled “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112” does not mention the Diebold case from August 2018 nor the use of dependent claims to analyze purported MPF terms. A discussion of Diebold and TEK Global would be a useful addition to the recent guidance.

Article suggestion

Thursday, March 28th, 2019

I don’t know if the data is available; but, I think it would be a powerful article if someone could tabulate the number of patent eligibility rejections that have been made in the past year relative to inventor city. Interested advocates could then send the data to each congressional member. A congressional member might have a heightened awareness when he/she realized how many inventors, businesses, potential businesses, and potential jobs in that congressional member’s city are being impacted by the patent eligibility quagmire.

Chimeric hindsight

Monday, March 18th, 2019

I was talking with one of my clients today about how patent law allows multiple references to be combined together. His mind immediately jumped to the mythological Chimera — a fire-breathing creature formed from the body of a lion, head of a goat, and tail of a snake. That struck me as quite an appropriate characterization of many §103 invalidity arguments — three things that have nothing to do with one another that are merely cobbled together to make a fire-breathing monstrosity.

I checked the CCPA and CAFC decisions and do not see any references to the mythological Chimera. Perhaps a decision in the future will note that “the section 103 analysis relied upon Chimeric hindsight and is therefore reversed.”

See also [Frankenstraction].