Rachel Elsby Speaks with Inside Counsel on Post-Halo Cases and Functional Claiming Post-Alice

Akin Gump intellectual property counsel Rachel Elsby has been featured in the Inside Counsel article “Key Issues Involving Post-Halo Cases & Functional Claiming Post-Alice” discussing some of the issues that are of great concern to inside counsel following decisions in the Supreme Court’s Halo and Alice cases.

Elsby said the ultimate effect of the Halo decision, which, the article notes, removed the requirement that patentees show an infringer acted with objective recklessness and lowered the evidentiary burden placed on patentees to prove willfulness, “is likely to be more frequent willfulness challenges that survive summary judgment and are submitted to a jury.” As a result, she said, “patentees are being forced to rethink litigation strategies to ensure that willfulness is addressed at the pleading stage and to ensure that sufficient evidence is obtained through discovery to prove that the infringer engaged in egregious misconduct.”

Elsby argued that patentees, at a minimum, “should have a reasonable basis for pleading that an accused infringer possessed pre-suit knowledge of the patent, and will be able to identify facts indicating the accused infringer’s conduct went beyond typical infringement.”

“One way in which claims may contain functional limitations is when they include means-plus-function limitations,” Elsby explained, which are “expressly provided for in Section 112(f), which provides that an element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure…”

Elsby noted that the Supreme Court’s Alice decision and some of its predecessor cases highlight the difficulties associated with functional claiming, particularly in the software arts. Meanwhile, she said, “the Federal Circuit has held that functional claims involving computer-implemented inventions require the disclosure of an algorithm to satisfy the indefiniteness requirement when the structure that performs the function is a general-purpose computer or microprocessor.”