Written Description Inapplicable to Doctrine of Equivalents

The written description requirement does not extend to equivalents asserted under the doctrine of equivalents, according to a recent order in the District of Delaware. The district judge in Sprint v. Cox resolved dueling summary… Read More

Strategies for Functional Patent Claims

The Federal Circuit’s decision to weaken the presumption against interpreting patent claims under 35 U.S.C. § 112(f) (or 112, sixth paragraph), in Williamson v. Citrix Online, LLC, in 2015, highlighted the challenges that funct… Read More

PTAB: Filled May Be Indefinite, Unfilled Is Adequately Described

Tinnus Enterprises, LLC (“Tinnus”), owner of U.S. Patent No. 9,527,612 B2 (“the ‘612 patent”) recently suffered a setback when the U.S. Patent Trial and Appeal Board ordered institution of a post-grant review of the… Read More

Fed. Cir: Patent Claim Not Indefinite System/Method Hybrid

A patent claim directed to a system comprising multiple elements including a “CRM software application” that according to the claim “presents,” “receives,” and “generates” various data was not indefinite under 35 U… Read More

Knowledge of Skilled Artisan Can Beat Patent Indefiniteness

Knowledge of a person of skill in the art was recently used to revive claims that had earlier been found indefinite under 35 U.S.C. § 112.  Delaware District Court Judge Leonard P. Stark granted a motion for reargument on the is… Read More

“Virtually Free From Interference” Not Indefinite Claim Term

In a precedential and split decision, the Federal Circuit reversed the International Trade Commission and found patent claims reciting the term “virtually free from interference” not indefinite. One-E-Way, Inc., v. Internation… Read More

PTAB: Patent Claims Not Supported Under 35 U.S.C. § 112, ¶1

Providing an example of claimed subject matter lacking written description in a patent specification, the Patent Trial and Appeal Board (PTAB) found selected claims of two patents invalid under 35 U.S.C § 112, ¶1, in parallel Co… Read More

District Court Construes “Small Quantities” as a Definite Term

The term “small quantities of finely-divided liquid” was construed as being a definite term under §112, second paragraph, in the Markman order in Ecoservices, LLC v. Certified Aviation Services, LLC (CDCA; Docket CV 16-01824-… Read More

On-Sale Bar and the AIA: New Language, Same Meaning

Despite a change in statutory language, the applicability of the on-sale bar to pursuing patent rights under the America Invents Act (AIA) is unchanged from prior law, said the Federal Circuit in Helsinn Healthcare S.A. v. Teva Ph… Read More

Written Description Requirement Met by Original Claims

Claims included in an original patent application are part of the written description, which is why the Federal Circuit reversed a summary judgment that claims of U.S. Patent No. 6,947,882 were invalid for lack of written descript… Read More

Upcoming Webinar

Functional Claiming After Williamson v. Citrix
December 14, 2017 at 12:00 pm CST
During the webinar, Charles Bieneman will cover strategies for avoiding – or embracing – functional claim interpretations, and for avoiding findings that functional claim language is indefinite. Register

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