Filewrapper®

Category: Enablement


USPTO Director Andrei Lancu Takes a Look at Early Prosecution
May 24, 2018
Post by Oliver P. Couture, Ph.D.
This week, the USPTO Director, Andrei Iancu, testified before the House Judiciary Committee. In his written statement Director Iancu wrote on topics related to early prosecution that would result in lower costs to clients and would speed up the process of obtaining a patent. A new pilot program that will allow for a pre-search Examiner interview is being planned. The goal of the interview is to allow claim i.......
Read More


Court of Appeals Gets Specific with Enablement
July 11, 2017
Post by Blog Staff
In Storer v. Clark, the Court of Appeals explored whether a provisional application had sufficiently enabled interference subject matter.  In order to prove enablement it must be shown that “one skilled in the art, having read the specification, could practice the invention without ‘undue experimentation.’” ALZA Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010). Undue experimentation is.......
Read More


Post-Grant Reviews under the America Invents Act
January 05, 2017
Post by Blog Staff
The America Invents Act implemented the Post-grant Review (PGR) process as a new means of challenging existing patents. PGR differs from Inter Partes Review (IPR) in that PGR allows for a wider array of invalidity challenges. One example of a new challenge allowed under PGR is the ability to challenge the claims as being indefinite. However, Post-grant Review is only available for patents filed on or afte.......
Read More


Federal Circuit-Statements in Application Properly Used to Enable Prior Art
October 27, 2015
Post by Blog Staff
. One of the basic requirements for the grant of a patent by the USPTO is the invention must be shown to be "new."In practice, this means that the invention must be sufficiently different from the existing prior art, including patents, publications, and existing products. However, in order for a piece of prior art to preclude patentability, it must enable a person of ordinary skill in.......
Read More


2014 Supreme Court Cases Relating to Intellectual Property
January 16, 2014
Post by Blog Staff
On January 10, 2014 the Supreme Court agreed to review a variety of intellectual property cases in the upcoming session, including two patent cases, a copyright case, and a trademark case (including Lanham Act claim). A brief overview of these cases is provided and more detail will be available once decisions are entered by the Court. Limelight Networks, Inc. v. Akamai Technologies, Inc. (U.S., No. 12-786.) Ques.......
Read More


Federal Circuit Confirms Invalidity for Overbroad Written Description
July 23, 2013
Post by Blog Staff
Novozymes v. DuPont Nutrition Biosciences involved patent 7,713,723 directed toward recombinant Bacillus alpha-amylase enzymes engineered to have enhanced acid tolerance and heat tolerance. The patent owner, Plaintiffs-Appellants Novozymes, sued DuPont for infringement. DuPont defended on grounds of non-infringement and invalidity and countersued for a declaratory judgment that the '723 patent was invalid fo.......
Read More


New and Useful - July 10, 2013
July 10, 2013
Post by Blog Staff
· InConvolve v. Compaq Computer the Federal Circuit affirmed in part the United States District Court for the Southern District of New York ruling that Compaq Computer Corp., Seagate Technology, LLC., and Seagate Technology, Inc. did not misappropriate 11 of 15 alleged trade secrets from Convolve, Inc. In addition, the Federal Circuit affirmed the district court’s judgment that 8 claims of U.......
Read More


New and Useful - February 21, 2013
February 21, 2013
Post by Blog Staff
Normal 0 false false false EN-US X-NONE X-NONE Read More


Federal Circuit hears arguments in In re Kubin; what will be obvious in biotechnology?
January 11, 2009
Post by Blog Staff
Thursday, the Federal Circuit held oral arguments in In re Kubin, a biotechnology case involving a patent over a gene sequence in humans, and specifically whether the claims were obvious. This was the first precedential decision by the Board of Patent Appeals and Interferences on the issue of obviousness in this field after KSR, so how the Federal Circuit comes out on the issue has the potential to greatly affe.......
Read More


General disclosure in prior art not enabling for specific pharmaceutical compound's use in treatment
October 07, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed a district court's holding that a prior art patent was not enabling and thus did not anticipate the patent-in-suit. Applying the In re Wands factors, the district court held undue experimentation would be required in order to produce the claimed invention based on the prior art's disclosure. The Federal Circuit affirmed, and observed the asserted pri.......
Read More


Federal Circuit: And can mean or, if it makes the claim make sense
April 08, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed a district court's permanent injunction against a defendant to prevent infringement of a patent. The district court held the patent not invalid and infringed, based in part on a claim construction that construed the word "and" to mean "or." Specifically, based on the specification and other claims, the court determined such a construc.......
Read More


Federal Circuit reiterates that full scope of claim must be enabled to meet enablement requirement
February 04, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit affirmed a district court's decision holding several claims of two patents invalid for lack of enablement. The district court held that while a portion of the scope of the claims was enabled, the full breadth of the claims were not, and as a result, the claims did not meet the enablement requirement of § 112.The Federal Circuit affirmed. The court stated tha.......
Read More


Paper posted on public FTP site not necessarily printed publication; summary judgment reversed
January 10, 2008
Post by Blog Staff
In a decision this week, the Federal Circuit vacated and remanded the district court's determination that the plaintiff's patents-in-suit were invalid as anticipated by another paper that was publicly available via the patentee's FTP site before the critical date for the span of one week, finding genuine issues of material fact as to whether the paper was "publicly accessible" as required by.......
Read More


Claims to using product made via another claim are dependent claims, noninfringement affirmed
October 04, 2007
Post by Blog Staff
In a battle between two agricultural heavyweights, Monsanto and Syngenta, the Federal Circuit affirmed a district court's ruling that Syngenta did not infringe two Monsanto patents and that a third was invalid for lack of enablement. The patents relate to tolerance to the herbicide glyphosate.The court affirmed the district court's claim construction, noting that certain claims directed toward manipulat.......
Read More


Full scope of claims must be enabled to meet enablement requirement
September 07, 2007
Post by Blog Staff
The Federal Circuit yesterday affirmed a district court's holding of invalidity based on lack of enablement. At issue was a claim that encompassed two different types of structures for side-impact sensing in motor vehicles, a mechanical sensor and an electronic sensor. The court noted that the full scope of a claim must be enabled in order to satisfy § 112, and that "the specification, not the kno.......
Read More


Statements in specification and prosecution history limit claims notwithstanding claim language
August 27, 2007
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed in part and reversed in part a district court's decision granting summary judgment of noninfringement and invalidity. The Federal Circuit found that the district court had properly construed most of the asserted claims as being limited to "automatic computer determination of the finish positions of teeth" based on the specification and prosecution .......
Read More


Ex parte Kubin: Obviousness at the USPTO in biotechnology
July 18, 2007
Post by Blog Staff
As mentioned previously, the BPAI designated an opinion as precedential today addressing the issues of obviousness, enablement, and the written description requirement in the context of biotechnology inventions. These issues were addressed in the context of patenting a gene involved in regulating the immune system. Addressing the obviousness issue, the board determined that the previous knowledge of the protei.......
Read More


Be careful what you wish for: broad claims found invalid
March 22, 2007
Post by Blog Staff
In another case making a return trip to the Federal Circuit, the court held that under its broad claim construction decided in the first appeal, the asserted claims were invalid in two patents as not enabled and in two more as anticipated. In order to secure a finding of infringement, the patentee, Liebel-Flarsheim, argued for the broader claim construction in the first appeal, only to be unable to .......
Read More


View all Filewrapper® Posts

Search Posts

Purpose

The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

Disclaimer

McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

Connect with MVS

Enter your name and email address to recieve the latest news and updates from us and our attorneys.

Subscribe to: MVS Newsletter

Subscribe to: Filewrapper® Blog Updates

  I have read and agree to the terms and conditions of McKee, Voorhees & Sease, P.L.C.