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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Patent

Date & Time
  • event Date

    Thursday, June 24, 2021

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will provide patent counsel with an in-depth look at means-plus-function and/or functional claims, and the benefits and risks of using means-plus-function and/or functional claims given district court litigation, actual patent claims issued by the USPTO, and PTAB post-grant proceedings. The panel will offer their experiences and best practices to overcome the challenges of means-plus-function claims and leverage 112(f) and functional claims for maximum patent protection.

Faculty

Thomas L. Irving
Partner
Marbury Law Group

Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

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Sarah Hooson
Director, Legal
Merck Sharp & Dohme, Corp

Ms. Hooson is director in the Intellectual Property Group at Merck in Rahway, NJ. Her present responsibilities include patent preparation, prosecution, and due diligence support for small molecule, vaccine, and antibody programs in human and animal health. She gained her initial legal patent experience while working at GlaxoSmithKline (GSK). She received her bachelor’s degree in Biomedical Engineering from Georgia Institute of Technology, and her J.D. from Delaware Law School - Widener University. She gained considerable bio-pharmaceutical research and development and vaccine process development experience while working as an engineer at Merck, GSK, and MedImmune.

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Anthony M. Gutowski
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent matters relating to infringement, validity, due diligence, and licensing. He also focuses his practice on strategic patent portfolio growth, management, and utilization. He has prepared and prosecuted patent applications to patent issuance and has significant experience in securing patent protection outside the U.S. He has developed vast experience in complex USPTO proceedings such as interferences, appeals, reissues, and reexaminations. 

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Xiaoguang Michelle Gao
Assistant General Patent Counsel
Eli Lilly and Company

Dr. Gao provides IP support for Lilly BioMedicines assets and the Lilly Biotechnology Center in San Diego.  She obtained her Ph.D. in Molecular Biology from Northwestern University, and J.D. from the University of Illinois.  Prior to joining Eli Lilly, she was a Patent Attorney at Novartis Institutes for BioMedical Research, where she supported ImmunoOncology and Neuroscience programs.  She also worked for Fish & Richardson as an associate, focusing her practice on biopharma-related patent prosecution and litigation there.

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Description

Section 112(f) reads: "An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof."

Section 112(f) provides a statutory tool allowing the patent drafter to write claims reciting a function and refer to the specification for details of the structures, materials, and acts associated with that claimed function. While having a claim construed as a means-plus-function claim may mean a narrower construction (since the patent owner is limited to the structure disclosed in the specification "and equivalents thereof"), the claim format may be useful when the subject matter claimed is best described functionally.

Nearly every technological field uses means-plus-function claiming. Practitioners in all technologies should consider means-plus-function claims with their built-in literal equivalents as a claiming alternative.

As Ms. Hooson, Dr. Gao, and Mr. Irving will emphasize, the perceived “narrowness” of means-plus-function claims can be advantages in the life sciences and particularly for pharmaceutical claims. Mr. Gutowski will be providing his analysis of means-plus-function claims in the mechanical, computer, and electrical fields.

As will be revealed, counsel should weigh the pros and cons of such claims as they are limited to the subject matter described in the specification as being linked to the materials, structures, and uses for accomplishing the function recited in the claims and statutory, i.e., literal, equivalents thereof. Omitting the term "means" apparently no longer provides a "strong" presumption that 112(f) is not applicable, according to the en banc portion of Williamson v. Citrix Online L.L.C. (Fed. Cir. 2015). And the MPEP expressly condones the use of nonce words (those coined for special use), such as "components for," as a placeholder for the "means for."

There is also a danger that failure to identify the structure, materials, or acts corresponding to the claimed function under a 112(f) scenario may result in an invalidated indefinite claim under 112(b).

Listen as our authoritative panel examines how both means-plus-function and functional claims are used in different fields, as mentioned above, and their future potential.

Outline

  1.  Overview of the use of means-plus-function claims
    1. Courts
    2. PTAB
    3. Means-plus-function claims in the electrical, computer, and mechanical fields, as well as in the life sciences, including potential as a strategy in light of the current stance in the U.S. on antibody genus claims as seen in Amgen v. Sanofi (Fed. Cir. 2021)
  2. Benefits of using means-plus-function claims
    1. Link to specification to avoid prior art and to avoid problems under 35 USC 112
    2. Provide an expansive claim scope when the specification may disclose only specific
    3. Include statutory equivalents to what is linked in the specification, but such statutory equivalents are considered in the context of literal infringement, not the doctrine of equivalents
    4. Provide added difficulty for third parties challenging patentability at the PTAB or validity in a district court
    5. Provide challenges to third-party design-around because of the specter of statutory equivalents
  3. Challenges/limits with applying means-plus-function claims
    1. Narrowness and linking in the specification
    2. Determining the scope of statutory equivalents
    3. USPTO treatment
  4. Functional claims
    1. When does 112(f) apply even though no "means" language is present?
    2. The use of nonce words
  5. Best practices for preparing, defending, and enforcing means-plus-function claims

Benefits

The panel will review these and other noteworthy issues:

  • What are the possibilities for means-plus-function claims in life science patents?
  • What are the benefits and limitations of using means-plus-function patent claims in many technical fields?