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* DISTRICT COURT ERRONEOUSLY DISCOUNTED CORRESPONDING STRUCTURE THAT PERFORMED THE CLAIMED FUNCTION
Gramm v. Deere & Co., 24-1598 — On Wednesday in an opinion by Judge REYNA, the Federal Circuit reversed a district court order that Reaper’s patent for an apparatus that kept the header of a crop harvester at a certain height above the ground was invalid as indefinite. Reaper argued the district court erred in identifying corresponding structure for “control means” beyond that which was necessary to perform the claimed function.
The Federal Circuit disagreed. The district court had instead erred by discounting structure that performed the claimed function of “raising and lowering the header . . . a designated height above the soil.” It discounted corresponding structure that performed this function because that structure “did not perform the unclaimed function of controlling ‘lateral position’ of the header.” Deere’s counsel confirmed the district court’s erroneous analysis and admitted a lateral positioning capability was not necessary for performing the claimed function.
(1 to 4 stars rate impact of opinion on patent & trademark law)
USPTO ADDS U.S. MANUFACTURING AND SMALL-BUSINESS FACTORS TO AIA INSTITUTION DECISIONS
On Wednesday U.S. Patent and Trademark Office (USPTO) issued guidance outlining additional discretionary considerations for deciding whether to institute inter partes reviews and post grant reviews. The memorandum explains that when exercising discretion on whether to institute an inter partes review (IPR) or other AIA proceeding, the Director may consider whether the challenged patent is being used to support domestic manufacturing, commercialization, or employment in the United States, as well as whether the patent owner is a small business, startup, or individual inventor. These considerations may weigh against instituting a challenge in some circumstances.
USPTO ISSUES GUIDANCE ON EXAMINATION OF DESIGN PATENT APPLICATIONS FOR COMPUTER-GENERATED INTERFACES AND ICONS
Today the USPTO issued guidance for examiners clarifying how design patent applications covering computer-generated electronic images, including graphical user interfaces (GUIs) and computer icons, satisfy the statutory requirement that a design be embodied in an “article of manufacture” under 35 U.S.C. § 171. Under the guidance, computer-generated images may qualify for design patent protection when they are shown as part of a display panel or portion of a display and function as an integral component of a programmed computer, such as a GUI element or icon used in operation of a device. By contrast, images or pictures claimed by themselves or merely displayed on a screen do not satisfy the article-of-manufacture requirement and therefore are not statutory subject matter for design patents. The guidance instructs examiners to evaluate the entire disclosure, including the title, claim language, and drawings, to ensure the design is properly presented as embodied in an article of manufacture.
IPO filed comments related to this issue with USPTO in November of 2024 and in February of 2021.
SAVE THE DATE FOR IPO’S EUROPEAN PRACTICE CONFERENCE ON 28 MAY IN FRANKFURT, GERMANY
Mark your calendars for IPO’s 13th annual European Practice Conference entitled “Watch Your Words – Claim Interpretations, Estoppel, Information Sharing, Chat Bots and Much More.” The 2026 event will take place on 28 May in Frankfurt, Germany. The conference will include presentations from in-house and outside counsel as well as experts from the courts. Visit the conference website for more information.
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DON’T WRITE ILLITERATE EMAILS
The omnipresent BRYAN GARNER believes you shouldn’t stray far from standard, educated English in your emails. He thinks sloppiness in grammar, spelling, and punctuation in emails leads to laziness in editing and proofreading more formal communications.
The Wall Street Journal took it further in its March 11 article, “Why the Global Elite Gave Up on Spelling and Grammar.” The WSJ reproduced emails by famous people. It concluded, “The rich and powerful share a seeming disregard for proper English.” DEBORAH TANNEN, professor at Georgetown, said disregarding spelling and grammar conveys, “I’m important, you’re not so I don’t have to bother” or “We’re so friendly, I don’t have to worry . . .”. The Curmudgeon tries to use proper English in all communication. That’s what IP professionals expect.
Quote of the Week — “The Oxford comma is what separates us from the animals.” — Author unknown.
Next week we’ll catch up on reader comments. Click on “Curmudgeon” at the bottom of this column for my email address. Click here for the Curmudgeon Archives.
Your friend,
The Curmudgeon