June 6, 2018 Brown Bag CLE: Patent Claims: Functional Claiming Law in 2018 and 2028

Topic:  Patent Claims:  Functional Claiming Law in 2018 and 2028

Slides: Functional Claiming; Draft Some Claims to Survive in 2028


Presented by John Vandenberg, Klarquist Sparkman, LLP, this CLE will propose practice tips to patent practitioners regarding functional claiming.  Topics will include intentional and accidental triggering of 112(f), whether uncertain triggering violates Nautilus, step plus function claims, triggering 112(f) as a possible defense to Alice, functional claiming and claim backdating, 112(f) claim diversity, and the benefits of some claims in a patent family reciting “means for” or “step for.”  John will discuss the governing law today and predictions for 2028.

John has been litigating patents for 34 years, including 27 years defending Microsoft in patent infringement actions. John has first-chair tried numerous IP infringement suits, argued a dozen appeals before the Federal Circuit, and successfully argued before the U.S. Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc. for rejection of the Federal Circuit’s “insolubly ambiguous” and “amenable to construction” test for indefiniteness.  John is the primary author of Patent Defenses, an extensive summary of substantive defenses and related strategies in patent infringement suits, posted at www.patentdefenses.com, and speaks throughout the nation on patent law, district-court patent litigation, PTAB patent trials, and patent appellate practice.

Registration: Please fill-out the registration form at: https://goo.gl/forms/jd1WiuIrDUMD2p322

Brown Bag CLE Schedule and Material: Visit the IP Section’s website at https://ip.osbar.org/ for upcoming Brown Bag CLEs and to download materials for this CLE and past presentations. (CLE materials will be uploaded soon after the CLE.)

MCLE Credit: Applying for one (1) general credit from the Oregon State Bar.

Date: Wednesday, June 6, 2018

Time: 12:00 pm – 1:00 pm

Where: The Cleaners @ Ace Hotel Portland, 403 SW 10th, Portland, OR 97205 (503) 228-2277

Cost*: $20 without lunch (you may bring your own lunch, food carts are just 2-blocks away) $43 with boxed lunch provided by Clyde Common (menu selection provided at the link above). Please bring payment to the CLE (check or cash). Sorry, no credit cards can be accepted.

*Law students: May attend for free depending on seat availability; email the registration contact person indicated below.

Please make checks payable to: Oregon State Bar IP Section. No-shows will be charged for pre-ordered lunches if 48-hour cancellation notice is not received.

The organizer for this CLE is: Mark W. Wilson of Klarquist Sparkman, LLP (email both: [email protected] and [email protected]).  To order a boxed lunch, your registration with lunch order must be received by noon, Monday, June 4. Otherwise, you may register any time prior to the meeting or at the door.