TIPLJ: Volume 33

January 2025

Use of Means-Plus-Function Claiming to Evade the Enablement Requirement

Citation: 33 Tex. Intell. Prop. L.J. 93 (2025)

Author: Timothy Bonis & S. Sean Tu

About: A.B. candidate Dartmouth College & Professor of Law, West Virginia University College of Law.

Abstract: Monoclonal antibodies are an important class of pharmaceuticals that represent a significant portion of pharmaceutical spending. These high costs can be moderated through competition from alternative products that can drive down prices and offer more effective alternatives for patients. The patent system, however, can pose significant hurdles for competitors. Specifically, broad functional genus claims can prevent competitors from entering the market by blocking new therapies based on old targets.

A recent Supreme Court case invalidated patents with broad functional genus claims for failing to meet the enablement requirement. This decision promotes competition and innovation by ensuring that patents are commensurate with the inventors’ contributions. In response, however, pharmaceutical firms are now using “means-plus-function” claim language in an attempt to recapture broad functional genus claims. We suggest that courts should not allow a claim drafting tool to supersede the substantive enablement requirement for patents. We argue that courts should apply the Amgen enablement requirement to limit overly broad claims even when applicants use means-plus-function claim language.

Undressing AI: Transparency Through Patents

Citation: 33 Tex. Intell. Prop. L.J. 137 (2025)

Author: Henry H. Perritt, Jr.

About: Professor of Law Emeritus, and former dean, Chicago-Kent College of Law, Illinois Institute of Technology. Author of 25 books and more than 100 law review articles on labor and employment law, administrative law, law and technology, and international relations, including Trade Secrets for the Practitioner (3d ed 2024). Democratic nominee for the U.S. House of Representatives, Illinois 10th District, 2002. Former member, National Academy of Sciences Computer Science and Telecommunications Board. Member of the bar: Virginia, Pennsylvania (inactive), District of Columbia, Maryland, Illinois (retired), USPTO, and the Supreme Court of the United States. Commercial helicopter, private instrument airplane, and drone pilot. Extra-class radio amateur (K9KDF). The author wrote an expert system that evaluated the law of employment terminations during the mid-80s boom in AIA. See Henry H. Perritt, Artificial Intelligence Techniques for Evaluating Employee Terminations on a Personal Computer 13 RUTGERS COMPUTER & TECH. L. J. 342 (1987).

Abstract: Pressures for more flexible acceptance of patent applications involving computer inventions and pressures to require greater transparency of generative artificial intelligence (“AI”) products may represent a perfect storm for patent eligibility clarification and for AI transparency. The revolution in artificial-intelligence technology has led to an upsurge in applications for patents covering AI inventions. Whether these inventions are eligible for patent protection intensifies a vigorous debate that has surrounded two Supreme Court decisions in the last ten years that erect barriers to statutory eligibility for patents. These two cases, known collectively as “Alice/Mayo,” superimpose judicial exceptions disqualifying subject matter that literally qualifies under the language of the patent statutes. The controversy, even before AI’s arrival on the scene, pits innovators seeking broader intellectual property protection over computer software and biotechnology against those who claim that aggressive intellectual property rights and enforcement stifles rather than stimulates innovation.

The unusual characteristics of generative AI technology mean that applications for genuine inventions in the area can break down some barriers that have artificially circumscribed patent eligibility. Properly described, these characteristics, combined with commentator suggestions about how Alice/Mayo should be understood and applied, can permit patent law to adapt appropriately, even without legislative reform.

One of the loudest calls for regulating AI demands transparency. Transparency is a requirement for obtaining a patent. Developers have been grudging in their response because of the need to protect trade secrets. Greater reliance on patents to protect AI innovations will meet the proprietary needs of AI developers to protect against free riding on their innovations, while also responding to regulatory and legislative movements to make AI transparent.

Legislation now pending in Congress to amend the patent act and get rid of the judicial exceptions probably is not going to get enacted, but the clamor to regulate AI may intrude into the intellectual property arena, giving new political impetus to changing perspectives on patents for twenty-first century technology. A perfect storm may allow inventors and their patent lawyers to retire from the battlefield and go back into the lab.

The Part for the Whole in Trade Secret Law

Citation: 33 Tex. Intell. Prop. L.J. 197 (2025)

Author: Charles Tait Graves

About: Partner, Wilson Sonsini, San Francisco, and adjunct faculty, UC College of the Law, San Francisco. Camilla Hrdy, Timothy Murphy, and Elizabeth Rowe provided helpful comments.

Abstract: It is elementary that one can be liable for misappropriation of a “trade secret” phrased as a singular whole under the federal and state trade secret statutes. But nothing in these statutes suggests that one can also be liable for acquiring, or misusing, just a fragment of a trade secret, if the fragment by itself does not satisfy the elements of a valid trade secret.

Two recent rulings, however, raise the possibility of such outcomes. These decisions in the Sixth Circuit and the District of Colorado risk a dangerous inflation of trade secret coverage. This article challenges their underdeveloped language with an eye towards protecting the right of employees who change jobs to use information that is not a trade secret.

Under the trade secret laws, anyone can use publicly-available business information, even if one first learned that information as a result of one’s prior job. If someone changes jobs, and uses part of a trade secret but not an entire trade secret at a new job, can the former employer allege a misappropriation claim? Can it do so even if the part is not, alone, a protectable trade secret? If that were the law, companies could artificially tether unprotectable information, which the defendant acquired or used, to some larger, protectable whole that the defendant did not acquire or use, to thus transform information that should be free to use into something that is off-limits.

That is the danger posed by two recent trade secret cases. In both, the core ruling against the defendant was sensible. Each court could have more cautiously expressed a narrower conclusion. But both courts asked broader, black-letter questions they did not need to pose namely, must a defendant acquire, or use, the whole trade secret to be liable for misappropriation? Both courts answered that question in the negative. In doing so, both courts failed to analyze the text of the trade secret statutes, which do not allow for “misappropriation” liability for acquiring, or using something that falls short of a defined “trade secret.” Both also commingled distinct concepts in trade secret case law that stand for different propositions.

These outcomes are not some minor matter. While neither case found liability based on acquisition or use of non-secret information, their loose language could lead to that result in future cases. Trade secret law is an environment where aggressive employers seek to stop their departing employees from competing against them at a new job. Such litigants may cite the loose language in these cases to undercut the proper boundaries of protectable information. If taken at face value, the comments about trade secret law in these cases could radically alter the statutory balance between former employers and departing employees, to the detriment of the latter and to other trade secret defendants more generally.

This article puts both rulings under the microscope to explain why they are incorrect as to the black-letter questions they posed. Several well-reasoned cases, when construing different elements of a trade secret cause of action, have treaded cautiously and skeptically when a plaintiff sought to treat a part as a stand-in for the whole. Most important, we must recognize the latent public policy issue at stake in part-for-the-whole discussions: companies should not be able to sue former employees or business partners for using unprotectable, non-secret fragments of information merely because those fragments could be described as parts of some larger whole that would indeed constitute valid intellectual property. Balancing the legitimate interests of departing employees and former employers, then, requires careful attention to these boundary lines.

Defeating Patent Trolls at the Pleading Stage: A New Approach to Attacking Means-Plus-Function Patents

Citation: 33 Tex. Intell. Prop. L.J. 227 (2025)

Author: Nicholas R. Spagnuolo

About: Associate, Washington D.C., University of South Carolina School of Law. Thanks to Professor Ned Snow at the University of South Carolina Joseph F. Rice School of Law to prepare this manuscript for publication. The views expressed in this Article are those of the author and do not purport to reflect the opinions or views of any employer.

Abstract: Courts have recently been struggling to answer an open question related to whether patent validity can be challenged at the pleading stage. In Alice Corp. v. CLS Bank International, the Supreme Court created a “litigation gatekeeper” for patent eligibility claims. Yet, lower courts come to conflicting conclusions when faced with early-stage motions to dismiss based on validity. No article has focused on how the analytical framework used by district courts in a motion to dismiss for ineligibility under Alice can be extended to other areas of patent law. I conclude that patent validity may be determined as an issue of law for a judge. As an issue of law, validity can be challenged at the pleading stage for a portion of patents that cannot be revived through claim construction.

The Article proposes an analytical framework that mirrors the steps of patent ineligibility for district courts to use when faced with a motion to dismiss for invalidity with means-plus-functions claims. Means-plus-function claims present broad language that makes them more susceptible to abuse by non-practicing entities who intend on asserting overbroad patents to force settlements (known as “patent trolls”). District courts have been wary to entertain motion to dismiss on invalidity at the pleading stage, creating a “settled practice” of delaying a ruling. But, by delaying a ruling, district courts are providing economic ammunition to patent trolls, which creates a hardship for many alleged infringers. In short, by using the provided framework, alleged infringers are protected by resolving claims early in litigation, which lowers the transactional cost of challenging overbroad patents and promotes innovation and growth within the patent system.

“[A] country without . . . good patent laws was just a crab, and couldn’t travel any way but sideways or backwards.”

– Mark Twain (1889)

Balancing Copyright and Journalistic Integrity: Why Courts Should Integrate Originality and Newsworthiness Criteria into the Fair Use Analysis in the Digital Era

Citation: 33 Tex. Intell. Prop. L.J. 273 (2025)

Author: Elisabell Laura Velázquez

About: Elisabell Laura Velázquez is a Juris Doctor Candidate at Stetson University College of Law with an anticipated graduation date of May 2025.

Abstract: In the digital age, information has become more widespread and easily accessible on the Internet. With the digital emergence, the intersection of copyright law and journalism continues to present unique challenges for courts tasked with adjudicating disputes over the fair use of online content. Reporters are frequently violating the Copyright Act when using information posted on the Internet for a press story and Congress is failing to make the necessary changes to the Copyright Act to address the issues arising with the evolution of technology. This article details the evolution of the Copyright Act and the Digital Millennium Copyright Act, assessing the changes that must be made in order to keep up with the modern era. Further, the article explains how courts currently interpret the fair use exception and its application in the practice of journalism. This article explores case law that can be used to amend the fair use exception to better address the issues journalists are facing in the digital age. This article argues the necessity of integrating originality and newsworthiness criteria into the fair use analysis to effectively balance copyright protection with press freedom. The article explains how courts must adapt the fair use doctrine to accommodate the evolving landscape of digital journalism, ensuring that journalists can responsibly navigate copyright issues while fulfilling their crucial role of informing the public in an ethical manner.