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23 Rutgers Computer & Tech. L.J. 227 (1997)
The Rosetta Stone for the Doctrines of Means-Plus-Function Patent Claims

handle is hein.journals/rutcomt23 and id is 233 raw text is: THE ROSETTA STONE FOR THE DOCTRINES OF MEANS-PLUS-FUNCTION PATENT CLAIMS RUDOLPH P. HOFMANN, JR. & EDWARD P. HELLER, I I. INTRODUCTION A patent grants to inventors 'the right to exclude others from making, using, offering for sale, selling, or importing the patented invention' in exchange for full disclosure of the invention.1 The patent must contain a complete description of the invention in suf- ficient detail so that a person skilled in the art to which the inven- 2 tion pertains can practice the invention. The patent must conclude Mr. Hoffmian is a registered patent attorney with Schwegman, Lundberg, Woessner & Kluth, P.A., in Minneapolis, Minnesota. Mr. Heller is Chief Patent Counsel for Seagate Technology, Inc., in Scotts Valley California. The authors wish to gratefully acknowledge the assistance of Giles S. Rich, Cir- cuit Judge, United States Court of Appeals for the Federal Circuit, in providing his comments and notes in the preparation of this article, and for sharing his first-hand account of the drafting of the Patent Act of 1952. Over the past three years, the authors have received much assistance from many people in the preparation of this article. Of note are Richard H. Stern, Esq., Herbert H. Mintz, Esq., and Robert A. Armitage, Esq., of Washington, D.C.; John P. Sutton, Esq., of San Francisco; Joseph R. Kelly, Esq., of Minneapolis; and Lisa Hoffman for their suggestions and reviews of drafts. Also, the authors acknowledge the assistance of Janet M. Stark of New York City for locating and copying archival documents of the Drafting Committee. 1. Markman v. Westview Instruments, Inc., 116 S. Ct. 1384, 1387 (1996). 2. The patent applicant must satisfy three requirements for disclosure: a de- scriptive requirement, an enablement requirement, and a best mode requirement. See 35 U.S.C. § 112, 1 (1994). The purpose of the descriptive requirement is to give notice to those skilled in the art to which the invention pertains that the inventor is claiming rights to the respective subject matter. See Stiftung v. Renishaw PLC, 945 F.2d 1173, 1181 (Fed. Cir. 1991). In order to satisfy the enablement requirement, the inventor must set forth in the patent specification sufficient information to teach someone skilled in the art how to make and use the invention. See In re Vaeck, 947 F.2d 488, 496 (Fed. Cir. 1991). Finally, if the inventor conceals a better mode for carrying out the invention than that described in the specification, a resulting patent may be held unenforceable. See Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923,

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