What happens when the Federal Circuit doesn’t follow the guidance of the Supreme Court? It puts patent prosecutors in a tough spot. Consider the Federal Circuit’s recent guidance on functional claiming in Mastermine v. Microsoft that reversed lower court’s finding of indefiniteness — holding that the claims were not improperly simultaneously directed to both an apparatus and a method of using the apparatus. That decision could provide helpful guidance to patent prosecutors on how to claim user-driven hardware features in the first instance, as well as how to impress upon a patent examiner that functional language of such claims does not cross the line to reciting a separate statutory class.
Some experts find it difficult to follow the Federal Circuit’s reasoning that distinguishes Mastermine’s claims as valid, and more fundamentally, worry that the Federal Circuit is disregarding the Supreme Court’s finding in Nautilus (2014) that a patent is indefinite if it doesn’t describe the invention with “reasonable certainty.” Already the PTAB has explained that it believes that the proper test for indefiniteness remains the test outlined by the Federal Circuit in In re Packard, which predates Nautilus. And lately, patent eligibility concerns usually limited to section 101 are cropping up in decisions regarding functional claiming. The panel will discuss this month’s decision BASF v. Johnson Matthew involving catalytic converter technology where the Federal Circuit reversed an indefiniteness finding.
Our panel will also discuss this tangled knot, and in untangling it, give their best advice for how patent prosecutors should proceed.
Speakers:
- Charles Bieneman, Bejin Bieneman
- Dennis Crouch, University of Missouri
- Scott McKeown, Ropes & Gray
