News & Analysis as of

Indefiniteness

Lessons for Life Science and Medical Device Companies Post-Nautilus

by Robins Kaplan LLP on

Under the U.S. Patent laws, claims must particularly point out and distinctly claim what the inventor understands her invention to be. Up until three years ago, the inquiry for determining indefiniteness was to ask whether...more

Asserted Claims Found Indefinite in Electrical Connectors Investigation

by Jones Day on

In a recently issued claim construction order, Chief Administrative Law Judge Bullock held that terms included in all asserted claims are indefinite. He accordingly found the asserted claims invalid, stayed the Investigation,...more

PTO Uses Different Approaches “Configured” to Assess Indefiniteness

by McDermott Will & Emery on

In a precedential decision, the Patent Trial and Appeal Board (PTAB) upheld the longstanding US Patent and Trademark Office (PTO) practice of using a lower threshold to assess claim indefiniteness during prosecution relative...more

Am I Being Clear Enough? – PTAB Reaffirms Lower Pre-Issuance Threshold for Indefiniteness in Ex Parte McAward

On August 25, 2017, the Patent Trial and Appeal Board issued a precedential opinion in Ex Parte McAward, reaffirming the Patent Office’s use of a lower pre-issuance threshold for indefiniteness distinct from the Supreme...more

Lower Threshold for Indefiniteness Confirmed by PTAB in Ex Parte McAward

The courts have long stated that one goal of patent law is to provide certainty to both inventors and the public regarding the law that is applied in determining the metes and bounds of a patent claim....more

USPTO Maintains Standard for Indefiniteness in Rare Precedential Opinion

by Orrick - IP Landscape on

Decision on Appeal, Ex parte McAward et al., No. 2015-006416 (P.T.A.B. August 25, 2017) (Judges Linda E. Horner, Annette R. Reimers and Nathan A. Engels) - The Supreme Court’s decision in Nautilus, Inc. v. Biosig...more

In Precedential Decision, Board Says Packard, Not Nautilus, Governs Indefiniteness During Pre-Issuance Examination

by Jones Day on

...In a recent (and rare) precedential decision, the Board reaffirmed that the Supreme Court’s decision in Nautilus does not change “the USPTO’s long-standing approach to indefiniteness” in the context of pre-issuance...more

In re McAward (PTAB 2017)

Patent law can be apparently inconsistent, particularly where claim construction is concerned. For example, claim construction standards that apply in district court are not the same standards that the U.S. Patent and...more

Massachusetts Patent Litigation Wrap Up – July 2017

by Fish & Richardson on

This post is part of a monthly series summarizing notable activity in patent litigation in the District of Massachusetts, including short summaries of substantive orders issued in pending cases. PetEdge, Inc. v....more

A Foolish Consistency may be the Hobgoblin of Little Minds, but it is the Hallmark of a Successful Applicant/Patent Owner

In In re Walter, [2016-2256] (August 21, 2017), the Federal Circuit affirmed the PTAB’s decision in ex parte reexamination of U.S. Patent No. 7,513,711 that all twelve claims of the patent lack adequate written description...more

Federal Circuit Review - July 2017

by Knobbe Martens on

District Court Abused Discretion in Not Finding Case Exceptional - In Rothschild Connected Devices v. Guardian Protection Services, Appeal No. 2016-2521, the Federal Circuit held that a district court abused its discretion...more

Indefiniteness Dooms Patent Claims on Summary Determination

by Jones Day on

Dispositive summary judgment in district court patent cases is somewhat common, but similar early dispositions of Section 337 investigations in the ITC are rare in comparison. One such outcome happened recently in Certain UV...more

Standard for Claim Indefiniteness Virtually Relaxes

by McDermott Will & Emery on

Addressing claim indefiniteness, the US Court of Appeals for the Federal Circuit concluded that the claim term “virtually free from interference” was sufficiently definite to pass § 112 muster. One-E-Way, Inc. v. Sony Corp.,...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

One-E-Way, Inc. v. ITC, Fed. Cir. Case 2016-2105 (June 12, 2017) - A divided panel reverses a determination of indefiniteness by the ITC, ruling that under Nautilus, the claim language, in combination with the...more

Federal Circuit Patent Updates - June 2017

by WilmerHale on

Nexlearn, LLC v. Allen Interactions, Inc. (No. 2016-2107, -2221, 6/19/17) (Moore, Schall, Hughes) Moore, J. Affirming dismissal due to lack of personal jurisdiction....more

Summaries of All Supreme Court and Precedential Federal Circuit Patent Cases Decided Since Jun. 1, 2016

This paper is based on reports on precedential patent cases decided by the Federal Circuit distributed by Peter Heuser on a weekly basis. Please see full publication below for more information....more

Recent Developments In Patent Law May 17, 2017

Update to TC Heartland LLC v. Kraft Foods Group Brands LLC, Case No. 16-341 (May 22, 2017) - In an 8-0 opinion written by Justice Thomas (Justice Gorsuch did not participate), the Supreme Court rules that a defendant...more

Federal Circuit’s Primer on Equivalence Infringement of Chemical Process Patents

by Foley & Lardner LLP on

In an appeal characterized as “unusual,” the Federal Circuit affirmed the grant of a preliminary injunction, holding it likely that plaintiff patent holder would succeed on the merits its claim of infringement of a patent...more

In Determining Whether a Case “Stands Out,” It was Not Improper to Consider Patent Cases Generally

In Nova Chemicals Corp. (Canada) v. Dow Chemical Co., [2016-1576] (May 11, 2017), the Federal Circuit affirmed the district court’s determination that the case was “exceptional” under 35 USC 285, and the award of $2.5 million...more

Willfulness Can Be Predicated on Brief Between Declaratory Judgment Filing and Counterclaim

by McDermott Will & Emery on

In a complex 42-page decision, the US Court of Appeals for the Federal Circuit addressed issues of assignor estoppel, claim indefiniteness, subject matter eligibility, claim preclusion, willfulness and lost profits damages...more

Little Words That Can Make a Big Difference: i.e. Versus e.g.

The difference between “i.e.” (id est, “that is”) and “e.g.” (exempli gratia, “for example”) comes up in patent cases from time to time. While the difference is not always clear to some practitioners, it is clear to the...more

Fed Circ Affirms Conflicting Invalidity Determinations from District Court and PTAB

by Jones Day on

As we have previously discussed on this blog, when considering an issue of patentability such as definiteness under section 112, the PTAB and a district court may properly reach opposite conclusions. In Tinnus Enterprises LLC...more

“Visually Negligible” Is Not Indefinite

by McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed the district court’s decision that the claim term “visually negligible” was indefinite because the specification provided examples of visually negligible indicators,...more

Can You Be Reasonably Certain a Water Balloon Is Substantially Filled? Indefiniteness in Tinnus v. Telebrands

In Tinnus Enterprises, LLV v. Telebrands Enterprises (Fed. Cir. 2016-1410), the CAFC considered whether a claim requiring that a container (think water balloon) be “substantially filled” was indefinite under 35 USC §112....more

CAFC Upholds Preliminary Injunction Despite Unpatentability Ruling of PTAB

by Foley & Lardner LLP on

This week in Tinnus Enterprises LLC v. Telebrands Corp. (Moore, Wallach and Stoll), the Federal Circuit upheld the grant of a preliminary injunction by the Eastern District of Texas, despite a PTAB Final Written Decision...more

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