Wednesday, July 29, 2009

PTO Inter Partes Reexamination Statistics: only 5% with all claims confirmed!

USPTO's Inter Partes Reexamination Filing Data - June 30, 2009:

Average pendency: 36.1 months

Certificates with all claims confirmed: 5%
Certificates with all claims canceled: 60%
Certificates with claims changes: 35%

Click here to view the PTO statistics.

Monday, July 27, 2009

Written Description for a Means-Plus-Function Claim: What Is (Not) Sufficient?

Blackboard, Inc. v. Desire2Learn Inc., Nos. 2008-1368, -1396, -1548 (Fed. Cir. July 27, 2009):


“[W]hen a computer is referenced as support for a function in a means-plus-function claim, there must be some explanation of how the computer performs the claimed function.” Slip op. at p. 23 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008)).

“That ordinarily skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in ‘means-plus-function’ form must disclose the particular structure that is used to perform the recited function.” Slip op. at 26.

Relevant Facts:

Blackboard asserted that the structure that performs the recited “means for assigning” function is the server computer’s software feature known as the “access control manager” or “ACM.”

The entirety of the description of the access control manager in the specification is contained in a single paragraph, which reads as follows:

Access control manager 151 creates an access control list (ACL) for one or more subsystems in response to a request from a subsystem to have its resources protected through adherence to an ACL. Education support system 100 provides multiple levels of access restrictions to enable different types of users to effectively interact with the system (e.g. access web pages, upload or download files, view grade information) while preserving confidentiality of information.
Slip op. at 20.

The Federal Circuit affirmed the district court’s finding that the disclosure of structure described in that paragraph to be inadequate to satisfy section 112, paragraph 6, as it failed to describe “how the levels themselves are assigned to the data files in the first place.”


This case shows the difficulty in drafting means-plus-function claims in software-related patents. “[W]hen a computer is referenced as support for a function in a means-plus-function claim, there must be some explanation of how the computer performs the claimed function.” The Federal Circuit explained:

To avoid purely functional claiming in cases involving computer-implemented inventions, we have consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor. Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to the corresponding structure, material, or acts that perform the function, as required by section 112 paragraph 6. Thus, in a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm. Consequently, a means-plus-function claim element for which the only disclosed structure is a general purpose computer is invalid if the specification fails to disclose an algorithm for performing the claimed function.
Slip op. at 23 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008)).

Thursday, July 16, 2009

Zero CAFC Precedential Patent Opinions in the First Half of July, 2009

For the first half of the month of July, the Federal Circuit has not issued a single precedential opinion in a patent case. We will continue to monitor the Federal Circuit opinions and will blog any new important opinions in patent cases once they become published. Stay tuned!

Friday, July 10, 2009

VIZIO Wins U.S. Customs Ruling

On July 8, 2009, the United States Customs and Border Protection agency (“CBP”) issued a ruling in agreement with VIZIO that all current models of VIZIO televisions do not infringe U.S. Patent No. 6,115,074 (‘074) held by Funai Electric Company, enabling VIZIO to continue importing its televisions without interruption.

Click here for VIZIO's press release.

Previously, in ITC Inv. No. 337-TA-617, on April 10, 2009, the International Trade Commission issued a limited exclusion order (click here for a copy), ordering VIZIO and other companies not to import any infringing products.

Although we have not seen the CBP decision letter, it appears that CBP essentially rules that VIZIO's new, re-designed products do not infringe Funai's '074 patent, and thus are not within the scope of the ITC's limited exclusion order.

The CBP ruling is even more remarkable because the '074 patent was purportedly an essential patent covering an ATSC standard that every Digital TV sold in the US must comply with under a FTC requirement. Therefore, by this ruling, it appears that CBP believes that the '074 patent is not an essential patent to the ATSC standard.

We at Mei & Mark LLP have a full analysis on the impact of this CBP ruling on the DTV industry. Please contact Lei Mei, Esq. at for more information.