Means-Plus-Function Patent Claims: Treatment in Prosecution, Litigation and Post-Grant Proceedings
Recording of a 90-minute CLE webinar with Q&A
This CLE webinar will provide patent counsel with a review of the impact of the Williamson decision on means-plus-function and/or functional claims, and the benefits and risks of using means-plus-function and/or functional claims given district court litigation, actual patent claims issued by the USPTO, and PTAB post-grant proceedings. The panel will offer their experiences and best practices for overcoming the challenges of means-plus-function claims and leveraging §112(f) and functional claims for maximum patent protection.
Outline
- Overview of the use of means-plus-function claims
- Courts
- PTAB
- Means-plus-function claims in the life sciences
- Benefits of using means-plus-function claims
- Link to specification to avoid prior art and to avoid problems under 35 USC §112
- Provide an expansive claim scope when the specification is carefully drafted to encompass all embodiments intended to be covered by the language
- Include statutory equivalents to what is linked in the specification, but such statutory equivalents are considered in the context of literal infringement, not the doctrine of equivalents
- Provide added difficulty for third parties challenging validity at the PTAB or in a district court
- Provide challenges to third-party design-arounds because of the specter of statutory equivalents
- Challenges/limits with applying means-plus-function claims
- Narrowness and linking in the specification
- Determining the scope of statutory equivalents
- USPTO treatment
- Functional claims
- When does §112(f) apply even though no “means” language is present?
- The use of nonce words
- Best practices for preparing, defending and enforcing means-plus-function claims
Benefits
The panel will review these and other noteworthy issues:
- How are means-plus-function claims being used since the Williamson decision?
- What are the benefits and limitations of using means-plus-function patent claims?
- What practices can counsel employ to leverage §112(f) to increase the likelihood of surviving IPRs, PGRs and district court litigation?
Faculty
Thomas L. Irving
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,... | Read More
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.
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Anthony M. Gutowski
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent... | Read More
Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent matters relating to infringement, validity, due diligence, and licensing. He also focuses his practice on strategic patent portfolio growth, management, and utilization. He has prepared and prosecuted patent applications to patent issuance and has significant experience in securing patent protection outside the U.S. He has developed vast experience in complex USPTO proceedings such as interferences, appeals, reissues, and reexaminations.
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C. Brandon Rash
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Rash practices all aspects of patent-related work, including litigation, post-grant proceedings, appeals, and... | Read More
Mr. Rash practices all aspects of patent-related work, including litigation, post-grant proceedings, appeals, and client counseling. His broad experience spans from pre-litigation investigation through trial and appeal, including taking and defending depositions; preparing and arguing discovery, claim construction, and pre-trial motions; presenting and defending witnesses at trial; authoring summary judgment and post-trial motions and appellate briefs; managing fact and expert discovery; and participating in settlement negotiations. He concentrates in the areas of electronics, computer hardware and software, Internet and network communications, semiconductors, and wireless technologies.
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