What happens when the Federal Circuit doesn\u2019t follow the guidance of the Supreme Court? It puts patent prosecutors in a tough spot. Consider the Federal Circuit\u2019s recent guidance on functional claiming in Mastermine v. Microsoft that<\/em> reversed lower court\u2019s finding of indefiniteness \u2014 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.<\/p>\n Some experts find it difficult to follow the Federal Circuit\u2019s reasoning that distinguishes Mastermine\u2019s claims as valid, and more fundamentally, worry that the Federal Circuit is disregarding the Supreme Court\u2019s finding in Nautilus<\/em> (2014) that a patent is indefinite if it doesn\u2019t describe the invention with \u201creasonable certainty.\u201d Already the PTAB has explained that it believes that the proper test for indefiniteness remains the test outlined by the Federal Circuit in\u00a0In re Packard<\/em>, which predates\u00a0Nautilus<\/em>. And lately, patent eligibility concerns\u00a0usually limited to section 101 are cropping up in decisions regarding functional claiming.\u00a0The panel will discuss this month\u2019s decision\u00a0BASF v. Johnson Matthew<\/em>\u00a0involving catalytic converter technology where the Federal Circuit reversed an indefiniteness finding.<\/p>\n Our panel will also discuss this tangled knot, and in untangling it, give their best advice for how patent prosecutors should proceed.<\/p>\n Speakers:<\/p>\n What happens when the Federal Circuit doesn\u2019t follow the guidance […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"footnotes":""},"categories":[1],"tags":[],"class_list":["post-22020","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"acf":[],"yoast_head":"\n\n