May 7, 2013

“Nested Functional Language: Intended Use Or Limitation?,”Law360, May 7, 2013

On Feb. 15, 2013, the Court of Appeals for the Federal Circuit released In re Jasinski, a nonprecedential opinion[1] overturning a Board of Patent Appeals and Interferences (“BPAI”) ruling. The BPAI had issued a decision upholding a rejection of a method claim based on an anticipatory reference by reasoning that functional language used in the method claim was not a limitation.[2] The functional language was cited in the body of the claim and nested within another functional phrase as follows: “comparing said fail memory locations derived by said logical-to-physical mapping software to said various predetermined memory locations to verify the accuracy of said logical-to-physical mapping software.”[3] The BPAI deemed the functional language “to verify the accuracy of said logical-to-physical mapping software” to be merely a statement of intended use.[4]

The CAFC concluded that the functional language was a limitation, citing only to Vizio Inc. v. U.S. International Trade Commission,[5] which stated that “the [functional] language … is properly construed as a limitation, and not merely a statement of purpose or intended use for the invention, because [it] is the essence or fundamental characteristic of the claimed invention.”[6] The functional language in Vizio was recited in both a method claim and as a means-plus-function element of an apparatus claim. Given that the CAFC expressed no hesitation in overturning the BPAI, why did the BPAI find that the functional language used in a method claim was an intended use and not limiting? More importantly, what can be learned from Jasinski in light of Vizio for claim drafting purposes?

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