Functional Claiming for Software Patents: Leveraging Recent Court Treatment
Surviving 112(f) and Disclosing Functional Basis for Software to Meet Heightened Standard of Review
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide IP counsel on functional claiming in software patents and USPTO prosecution. The panel will examine recent court treatment and explain how to navigate the issue of functionality given the uncertainties in the prosecution and litigation contexts.
Outline
- How the courts are treating functional claiming since Williamson
- Functional claiming in software patents
- Benefits and risks involved with using functional claims
- Best practices for leveraging Section 112(f) and functional claims for maximum patent protection
Benefits
The panel will review these and other crucial issues:
- What has the impact of the Williamson decision been on functional claim interpretation for software patents?
- What are the benefits and limitations of using functional claims for software patents?
- What are the lessons from recent decisions regarding functionality in software patents?
Faculty
Carl A. Kukkonen, III
Partner
Jones Day
Mr. Kukkonen has more than 20 years of experience in strategic intellectual property counseling, technology... | Read More
Mr. Kukkonen has more than 20 years of experience in strategic intellectual property counseling, technology transactions, and litigation. Specifically, he advises clients on patent infringement and validity, preparation and prosecution of patent applications, prelitigation case assessment, active patent litigation, licensing and partnering agreements, IP due diligence, and brand protection matters. Mr. Kukkonen has prosecuted, analyzed, and litigated patents across various technologies including high-technology/software, medical devices, and energy technology. His experience in the high-tech arena includes database technologies, cybersecurity, artificial intelligence and machine learning, ridesharing/carpooling, robotics, enterprise software, cloud computing, big data, blockchains, mobile phone software and hardware, telecommunications, Internet of Things (IoT), semiconductors, nanotechnology, optical devices, computer and microchip architecture, virtual and augmented reality, and signal and image processing. In the area of medical devices Mr. Kukkonen has handled matters related to medication delivery devices, wireless health care, digital health, bedside patient monitors, breathing apparatus including respirators, incubators, infusion pumps, physiological sensors including cardiac monitors and blood pressure devices, ophthalmic technologies, and bone fixation plates and systems.
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Jonathan Lamberson
Partner
White & Case
As a trial attorney, Mr. Lamberson has attended over a dozen patent jury trials in districts around the country,... | Read More
As a trial attorney, Mr. Lamberson has attended over a dozen patent jury trials in districts around the country, including as lead trial counsel for Microsoft in Microsoft v. Corel, where a jury in the Northern District of California returned a verdict that Corel had willfully infringed six Microsoft patents. He is also a firm expert on fair, reasonable, and non-discriminatory (FRAND or RAND) damages. He led the damages team in the Huawei v. T-Mobile litigation, which involved the assertion of twelve standards-essential patents relating to LTE technology. He also has a significant appellate practice. He has participated in several appeals and has argued before the Federal Circuit and Ninth Circuit. He worked on the appeals in Williamson v. Citrix, where the Federal Circuit went en banc to significantly change the law for means-plus-function claiming. He has a significant post-grant practice as well. He is a member of the USPTO patent bar and has participated in multiple inter-partes review proceedings, arguing before the PTAB.
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