January 9, 2017

Patterson + Sheridan Team’s Deep ‘Means-Plus-Function’ Knowledge Instrumental in Infringement Suit Dismissal for Large Tech Client

Patent law is complex and ever changing, especially in the rapidly growing technology sector. When one of our global clients was sued in federal court along with 14 other defendants for patent infringement, we worked in close collaboration with a joint defense group, taking a strategic approach to resolve a key issue in the case.

Leveraging extensive knowledge in means-plus-function claims, our team was instrumental in presenting arguments that asserted the claims were invalid. While means-plus-function is an area of IP law that is in flux (rules have changed multiple times in the past two decades), the statute allows for claims on functionality when complex, technical devices can be better described by the function they perform versus their structure, materials or equivalents.

Citing specific sections of the statute, we argued that the patent didn’t adequately describe the structure associated with the functions in this claim, rendering it invalid as indefinite (invalidated due to lacking definiteness).

Court-appointed special master validates our argument

Initially, the judge decided that the patent adequately described the structure at hand. But the court appointed a special master to review the claim. The special master agreed with our argument, finding insufficient structure described to support the claim and declaring it invalid as indefinite. The judge ultimately adopted the special master’s recommendation and dismissed the case in the defendants’ favor.

Our team’s knowledge in this complex, ever-changing area of IP law helped the client win the case before having it go all the way to trial. Working with a joint defense group also provided our client and the other 14 defendants with significant savings in avoiding trial.

Related Team:

Steven E. Roberts