Scott H. Kurland et al.

12 Cited authorities

Finisar v. Directv
523 F.3d 1323 (Fed. Cir. 2008) Cited 424 times 6 Legal Analyses
Holding that "a competent opinion of counsel concluding either [non-infringement or invalidity] would provide a sufficient basis for [the defendant] to proceed without engaging in objectively reckless behavior with respect to the [asserted] patent"
Aristocrat Tech v. Intern. Game
521 F.3d 1328 (Fed. Cir. 2008) Cited 328 times 18 Legal Analyses
Holding that in cases involving means-plus-function claims where structure is "a computer, or microprocessor, programmed to carry out an algorithm," specification must disclose corresponding algorithm to be sufficiently definite
Eplus, Inc. v. Lawson Software, Inc.
700 F.3d 509 (Fed. Cir. 2013) Cited 258 times 1 Legal Analyses
Holding that “black box” labeled “Purchase Orders” was insufficient structure to perform the “generate purchase orders” function
Atmel Corp. v. Info. Storage Devices, Inc.
198 F.3d 1374 (Fed. Cir. 1999) Cited 298 times 5 Legal Analyses
Holding that the determination of whether sufficient structure is disclosed in the specification to support a means-plus-function limitation is based on the understanding of one skilled in the art
Blackboard v. DESIRE2LEARN
368 F. App'x 111 (Fed. Cir. 2009) Cited 164 times 3 Legal Analyses
Holding that even "a cursory motion suffices to preserve an issue on JMOL so long as it 'serves the purposes of Rule 50, i.e., to alert the court to the party's legal position and to put the opposing party on notice of the moving party's position as to the insufficiency of the evidence.'"
Function Media, L.L.C. v. Google Inc.
708 F.3d 1310 (Fed. Cir. 2013) Cited 103 times
Holding that a specification's mere disclosure of "a computer program that transmits" is not structure as a matter of law because it is merely a non-limiting "abstraction that simply describes the function"
Application of Steele
305 F.2d 859 (C.C.P.A. 1962) Cited 2 times
Patent Appeal No. 6719. July 25, 1962. J. Hart Evans, Louis C. Smith, Jr., New York City, and Paul A. Rose, Washington D.C., for appellants. Clarence W. Moore, Washington, D.C. (Joseph Schimmel, Washington, D.C., of counsel), for the Commissioner of Patents. Before WORLEY, Chief Judge, RICH, MARTIN, and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK. United States Senior District Judge for the Eastern District of Pennsylvania, designated to participate in place of Judge O'CONNELL, pursuant to provisions
Section 112 - Specification
35 U.S.C. § 112 Cited 7,420 times 1069 Legal Analyses
Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it
Section 101 - Inventions patentable
35 U.S.C. § 101 Cited 3,547 times 2302 Legal Analyses
Defining patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."
Section 6 - Patent Trial and Appeal Board
35 U.S.C. § 6 Cited 188 times 63 Legal Analyses
Giving the Director authority to designate "at least 3 members of the Patent Trial and Appeal Board" to review "[e]ach appeal, derivation proceeding, post-grant review, and inter partes review"
Section 134 - Appeal to the Patent Trial and Appeal Board
35 U.S.C. § 134 Cited 99 times 30 Legal Analyses
(a) PATENT APPLICANT.-An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. (b) PATENT OWNER.-A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. 35 U.S.C. § 134 July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 98-622
Section 41.50 - Decisions and other actions by the Board
37 C.F.R. § 41.50 Cited 34 times 30 Legal Analyses
Requiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing

Scott H. Kurland et al.

12 Cited authorities

Holding that "a competent opinion of counsel concluding either [non-infringement or invalidity] would provide a sufficient basis for [the defendant] to proceed without engaging in objectively reckless behavior with respect to the [asserted] patent"

Holding that in cases involving means-plus-function claims where structure is "a computer, or microprocessor, programmed to carry out an algorithm," specification must disclose corresponding algorithm to be sufficiently definite

Holding that “black box” labeled “Purchase Orders” was insufficient structure to perform the “generate purchase orders” function

Holding that the determination of whether sufficient structure is disclosed in the specification to support a means-plus-function limitation is based on the understanding of one skilled in the art

Holding that even "a cursory motion suffices to preserve an issue on JMOL so long as it 'serves the purposes of Rule 50, i.e., to alert the court to the party's legal position and to put the opposing party on notice of the moving party's position as to the insufficiency of the evidence.'"

Holding that a specification's mere disclosure of "a computer program that transmits" is not structure as a matter of law because it is merely a non-limiting "abstraction that simply describes the function"

Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it

Defining patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

Giving the Director authority to designate "at least 3 members of the Patent Trial and Appeal Board" to review "[e]ach appeal, derivation proceeding, post-grant review, and inter partes review"

Requiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing