Category Archives: 35 USC 112

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Prosecution Disclaimer Has No Teeth

Statements made by patent practitioners to the patent office during patent prosecution can come back to bite you in related applications. Prosecution disclaimer allows a court to limit the literal scope of the claims in an infringement action. For prosecution disclaimer to attach, the accused infringer bears a heavy burden in asserting it: “the disavowal … Continue Reading

Be Critical When You Criticize The Prior Art

Your mom was right––sometimes saying bad things (in this case about the prior art) can get you in trouble. Many patent specifications highlight the advantages of the claimed products or methods by pointing out shortcomings of the prior art and describing how the described invention addresses the problems. While such an approach can be effective, … Continue Reading

Ultimate Pointer Prevails in Indefiniteness Challenge

When is a claimed device really a claimed device? Claims for many types of tangible items, particularly computer-related inventions, include functional terminology. As the 213 blog has noted in the past, functional claiming must be approached carefully. So when does functional language present a problem? The Federal Circuit addressed this issue in Ultimate Pointer, LLC … Continue Reading

When Can a Claim Exclude Elements which Might Otherwise Fall under the Claim?

This question was answered in a very recent Federal Circuit case, Inphi Corp v. Netlist Inc., an appeal from the Patent Trial and Appeal Board’s (PTAB) final written decision in an Inter Partes Review (IPR). The petitioner challenging validity argued that the specification did not provide enablement under section 112, first paragraph, for the exclusion … Continue Reading

What are the Rules on Indefiniteness of a Patent Specification under 35 USC § 112?

While the question was answered by the Supreme Court in Nautilus, Inc. v. Biosig Instruments, 134 S. Ct. 2120 (2014), the Federal Circuit, in The Dow Chemical Company v. Nova Chemicals Corporation (Canada), (2014-1431, 2014-1462) clarified  how the indefiniteness analysis is carried out, particularly with regard to the use of extrinsic evidence, burden of proof, … Continue Reading