In the patent world, claim scope depends on the meaning given to the individual words in the claim. If the meaning of a word in the claim is not clear, the claim may be attacked as invalid under the indefiniteness standard. Is a claim indefinite if the claim contains a term that is used by … Continue Reading
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
Recently, in Yeda Research and Development v Abbott GMBH & Co. KG, the U.S. Court of Appeals for the Federal Circuit (CAFC) weighed in on the issue of inherent disclosure as a means for satisfying the written description requirement under 35 USC 112. The patent at issue in this case is U.S. Patent No. 5,344,915, … Continue Reading
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
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
How much homology is required to claim a variant of a known nucleic acid sequence when the function of the nucleic acid is recited in the claims? The Patent Trial and Appeal Board (PTAB) provides some insight on this question in Ex parte Livshits (Appeal 2013-001807; US Patent Application 11/106,455). Applicants claimed a method for … Continue Reading
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
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
