The Hammer Falls — Wham-O!


Last week, President Obama signed the America Invents Act. (I listened to the signing ceremony at Thomas Jefferson High School, and I think that may be the loudest ovation that patent law has ever received.) That signing had immediate consequences, apart from the sound of gleeful patent attorneys rubbing their hands together at the thought of all the advice their clients will now need.

I’ll tell you about one of those consequences that came out of the Federal Circuit, plus there’s an update on a case I wrote about this summer.

Inventio AG v. Thyssen Krupp Elevator Americas Corp., No. 2010–1525 (Fed. Cir. Sep. 16, 2011) (en banc)

First, a quick update on the Inventio case, which I wrote about a few months ago. You may remember that there were two cases that week involving means-plus-function claims. As best we could determine, these cases turned on whether the word “means” appeared in the claims, which seems a bit formalistic.

Means-plus-function is a particular method of writing a patent claim in a way that defines the scope of the claim using “functional language.” Functional language defines a structure in terms of what it does, like a “means for controlling oven temperature.” To understand what structures are claimed, you have to look at the specification to see what the patent describes. The important thing is that means-plus-function claims are mainly limited to structures disclosed in the patent itself, so they tend to be much narrower. As a result, whether a claim is written in means-plus-function form can be a major battle in a patent infringement suit.

The court just denied Thyssen’s petition for rehearing en banc (that is, by the entire Federal Circuit). The interesting tidbit is that Judge O’Malley dissented from the denial (although she didn’t explain why), meaning that she wanted the chance to look at the issue.

Could this be a sign that Judge O’Malley sees a problem with the court’s decisions on means-plus-function claims and software?

You can read the order here.

FLFMC, LLC v. Wham-O, Inc., No. 2011–1067 (Sept. 16, 2011) (Judges Linn, Dyk, and Prost) (per curiam)

Just minutes after President Obama signed the America Invents Act, we witnessed the first potential casualty among false marking cases. (We’ve written about false marking before. Generally, it’s illegal to intentionally mark your product with patent numbers when the product isn’t patented.)

This suit is another one of many suits where the plaintiff filed a qui tam case (that is, a case seeking damages on behalf of the government, where the plaintiff gets to keep a share of whatever it collects). Here, the plaintiff claimed that Wham-O had falsely marked its toys because there were numbers of expired patents marked on them.

Section 16(b)(4) of the new Act makes it harder to show false marking occurred because it clarifies that marking a product with the number of an expired patent isn’t false marking under 35 U.S.C. § 292. And, to add insult to injury, the change took effect on the day the bill was signed into law and applies to every pending false marking suit.

So, the Federal Circuit ordered the parties to tell the court what it should do with the case now that the new law has gone into effect.

You can read the order here.

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