Nicholas R. Mattingly Image

Nicholas R. Mattingly

is an associate at Mattingly & Malur, PC. He focuses on patent prosecution and patent portfolio development for startups and large companies, both foreign and domestic. He is experienced in handling patent matters in various technologies including networking, storage systems, mobile devices, biometric identification, cloud storage, digital rights management, digital and analog circuits, electron microscopy, solar cell technologies, particle therapy systems, wireless communications, construction machines, and other various mechanical technologies.

Before going to law school Mr. Mattingly worked as a registered patent agent for Mattingly & Malur. During law school he was a staff member on the University of Baltimore Intellectual Property Law Journal and served as a judicial intern with the Honorable Clayton Greene, Jr. on the Court of Appeals of Maryland.

Recent Articles by Nicholas R. Mattingly

Functional Claiming of Computer-Implemented Inventions in View of Recent Decisions

The opinion focused on whether adequate structure corresponding to the “coordinating” function is disclosed in the specification. After determining that a special purpose computer is required to perform the function, the court searched for an algorithm for performing the function, but did not find one. The court rejected Williamson’s argument that the distributed learning control module controls communications among the various computer systems and that the “coordinating” function provides a presenter with streaming media selection functionality. The disclosures relied upon by Williamson were thought of by the court as merely functions of the distributed learning control module and opined that the specification does not set forth an algorithm for performing the claimed functions.

Avoiding Invocation of Functional Claim Language in Computer-Implemented Inventions

Functional claim language is increasingly being used by practitioners to capture the metes and bounds of an invention, especially in computer-implemented inventions. Sometimes using functional language in a claim limitation is unavoidable. Functional language does not, in and of itself, render a claim improper. However, as recently experienced in Williamson v. Citrix (en banc) and Robert Bosch, using functional language carries a significant risk of having the claim invalidated as indefinite following a determination that the claim invokes § 112(f) even when the patentee does not intend to have the claim treated under § 112(f).