Means-plus-function claim elements can be a sticky wicket during an inter partes review, to borrow a phrase from the cricket lovers out there. These are claim elements drafted under 35.
Last year, the Supreme Court declined an invitation to abrogate the doctrine of assignor estoppel by an assignor sued for patent infringement in Minerva Surgical v. Hologic. .
The patent at issue was the University of Strathclyde's U.S. Patent No. 9,839,706, directed to methods for inactivating Gram-positive bacteria such as MRSA.
In University of Strathclyde v. Clear-Vu Lighting LLC, the Federal Circuit reversed the USPTO PTAB decision finding certain method claims obvious, because the evidence did not support the PTAB’s finding.
(f) a
buffer.
[Wherein the italicized limitations were relevant to the District Court s claim construction and this appeal.]
Maia s products contain amino acids in addition to the synthetic peptide hormone, which Bracco contended satisfy the buffer, surfactant and/or solubilizer limitations recited in the claims. The issue thus resolved as whether these claim limitations encompassed amino acids. One aspect of the District Court s construction was that dependent claims recited Markush groups for these limitations that contained amino acids for each. Another aspect was that the specification recited particular definitions of these terms that encompassed amino acids within their scope. These characteristics of the specification formed the basis for the District Court s construction of the terms buffer, surfactant, and solubilizer to include amino acids (among in each instance many other species). Following claim construction, Maia stipulated infringemen