Written By: Derek Richmond
Over the last few years, the Court of Appeals for the Federal Circuit (“CAFC”) has held that a means-plus-function term in a claim relating a computer implemented invention must be supported by a corresponding structure, which can be an algorithm, explicitly or implicitly disclosed in the specification. However, the Federal Circuit’s recent execution of this “corresponding algorithm” rule might be a bit strict in view of the history of the rule. The CAFC recently interpreted a software means-plus-function claim in Triton Tech of Texas, LLC v. Nintendo of America, Inc., 2013-1476 (Fed. Cir. June 13, 2014). The rule that the CAFC currently follows is that something more than a general purpose computer, i.e., an algorithm, must be disclosed as the “means” to perform a function. However, in deciding Triton Tech, the CAFC might have required a bit more disclosure than was required in the past. Read more »
A unanimous Supreme Court today ruled that software patents based on abstract ideas that merely require generic computer implementation are ineligible for patent protection, affirming the U.S. Court of Appeals for the Federal Circuit’s recent en banc decision in Alice Corp. v. CLS Bank Int’l. This ruling does not render all software-related inventions ineligible for patent protection, but does call into question the validity of countless number of patents asserted by so called patent “trolls” against U.S. and foreign businesses.

Read more »

Written By: Gleb Epelbaum and Rex Donnelly
In POM Wonderful LLC v. The Coca Cola Co., 572 U.S. ___ (Jun. 12, 2014), a unanimous Supreme Court held that a private suit brought by a competitor under § 43 of the Lanham Act is not precluded by the Food, Drug, and Cosmetic Act (FDCA) and the FDA regulations.

Read more »

Valley Forge, PA | June 2014 Kenneth N. Nigon, a familiar contributor of the Practising Law Institute and Shareholder at RatnerPrestia, will co-chair and speak at PLI’s Advanced Patent Prosecution Workshop 2014: Claim Drafting & Amendment Writing. The program is scheduled for July 17-18, 2014 in New York City and marks Nigon’s seventh year participating in the event and his second year as co-chair of the New York workshop. Read more »
Brian P. O’Shaughnessy, Managing Shareholder of RatnerPrestia’s Washington, DC office, and LES Regional Vice President, USA will present LES on Capitol Hill – Working with Legislators toward Sound & Effective Patent Policies that Encourage Innovation. The event takes place on Wednesday, June 11 at Basking Ridge Country Club in New Jersey. Read more »
Today, a unanimous Supreme Court reversed the Federal Circuit and held that induced infringement of a method claim cannot be found in the absence of direct infringement by a single party under §271(a). Limelight Networks, Inc. v. Akamai Technologies, Inc., 572 U.S. __(June 2, 2014). Read more »
The U.S. Supreme Court issued a unanimous decision today in Nautilus, Inc. v. Biosig Instruments, Inc. (No. 13-369), a closely watched case involving the statutory requirement of distinct patent claiming. This is the latest in a series of recent cases in which the Supreme Court has overruled the Federal Circuit on critical patent issues. Read more »
Valley Forge, PA | May 2014 – RatnerPrestia is pleased to announce that James Matthew Gould has joined their Valley Forge, PA office as Counsel. James joins RatnerPrestia after twenty years with Merck & Co./Schering-Plough, most recently as a Legal Director at Merck, where he was responsible for strategic patent portfolio management, patent due diligence, freedom-to-operate assessments, validity and infringement opinions; client counseling, patent prosecution, tech transfer and licensing, data exclusivity matters, Hatch-Waxman ANDA pharmaceutical litigation, and global patent litigation. He has handled complex pharmaceutical and biotech patent cases throughout his career, most recently specializing in global patent litigation and IP licensing at Merck and Schering-Plough. Read more »
Valley Forge, PA | June 2014Joshua L. Cohen presented Integrating IP Strategy into the Design Cycle: Reinforced Brand as a Natural Byproduct of the Design Process to an audience of IP attorneys at the American Intellectual Property Law Association (AIPLA). Mr. Cohen was invited to share his strategies for securing valuable protection for consumer products as a key component of brand reinforcement. In his words, “Your company’s brand is a crucial asset, and it can be nurtured and reinforced organically when IP strategies are integrated into the design cycle.” In his presentation, Mr. Cohen explained how design protection and risk management strategies are best integrated into design teams and the processes they use to create new technology and design innovations. Read more »

Written By: Brian S. Seal & Bruce T. Wieder

Indefiniteness is evaluated under a different standard for an issued patent claim than for a pre-issuance claim.  On May 6, the Federal Circuit issued its opinion in In re Packard.[1]  Packard involved claims of a patent application in prosecution at the United States Patent and Trademark Office (“USPTO”).  The USPTO rejected the claims as being indefinite under 35 U.S.C. § 112(b), applying the standard that “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.”[2]  Packard appealed arguing that the USPTO should have applied the Federal Circuit’s “insolubly ambiguous” standard.  The Federal Circuit approved the USPTO’s standard and affirmed.  Read more »