Written Descriptions

News & Analysis as of

Inphi v. Netlist: Alternative Features Satisfy the Patent Written Description Requirement for a Negative Claim Limitation

It can be tricky to evaluate written description support under 35 U.S.C. § 112 for negative claim limitations since the support may amount to the absence of a feature from an invention that is described positively with...more

Cruciform – the Right Word for the Right Shape

Finding the perfect words to describe an invention is the cross that patent attorneys have to bear. When trying to describe something that it cross-shaped, the word cruciform (see, e.g., U.S. Patent No, 8,517,327) can make...more

Denying Prior Art Status In PTAB Proceedings: Petitioner's Failure to Show Section 112 Support in Priority Applications May Be...

Several of our recent posts have discussed petitioners’ use of priority denial to attack patents with intervening prior art, but the issue of adequate support in an earlier filed application may also work in reverse against...more

Fenestrated- the Right Word for the Right Shape

Patent attorneys are often grasping for words to describe openings, and a word to describe some with one or more openings is fenestrated (see U.S. Patent No. 8,506.984)....more

Use of Priority Denial to Subject Apparent "Pre-AIA" Patents to PGR: Inguran v. Premium Genetics

A recent decision by the PTAB, Inguran v. Premium Genetics, demonstrates that a Petitioner may subject an apparent “pre-AIA” patent, having at least one priority date before and at least one priority date after March 16,...more

Moniliform – the Right Word for the Right Shape

When something is shaped like a string of beads, such as a beaded chain or an arrangement of particles, the word moniliform is the perfect word to describe it. See, for example U.S. Patent No. 7,291,392....more

On Being a Lexicographer

Lexicography – the power to define words – is heady stuff (at least for your typical mild-mannered patent prosecutor). It would seem that this power would be most responsibly applied to words that had no meaning, rather than...more

Claimed to a “T”

Describing and claiming complex shapes can be very challenging. An easy and effective method used by patent attorneys for years is to describe and claim a complex shape by analogy to a familiar shape. The letters of the...more

Cubist Pharmaceuticals, Inc. v. Hospira Inc. (Fed. Cir. 2015)

Mistakes happen; there is even a book, entitled Human Error, that discusses how and why they happen. The Federal Circuit addressed the consequences of human error (or perhaps more accurately, instances where there was a...more

Rugous – the Right Word for the Right Shape

Today’s word, rugous (also rugose) is a new wrinkle on accurately describing an invention, and means something having many wrinkles or creases; ridged or wrinkled...more

Written Description Standard for Negative Claim Limitations - Inphi Corp. v. Netlist, Inc.

Do negative claim limitations need to adhere to a heightened written description standard? That was the question the U.S. Court of Appeals for the Federal Circuit addressed in an appeal from a inter partes reexamination,...more

Inphi Corp. v. Netlist, Inc. (Fed. Cir. 2015)

Many patent attorneys have a visceral, disapproving reaction to negative claim limitations -- elements that specify what a claim does not cover. While a line of Federal Circuit cases has established that negative limitations...more

No Need to Accentuate the Positive — Eliminate the Negative

In Inphi Corporation v, Netlist, Inc., [2015-1179] (November 13, 3015), the Federal Circuit affirmed the BPAI decision affirming the examiner’s final decision declining to reject claims amended during inter partes...more

Attorney, Bob Siminski, Travels to China and Tokyo in Fact Finding Trip with IPO

From October 31 through November 6, Harness Dickey attorney Robert (Bob) Siminski traveled to China and Japan on an intellectual property rights fact finding trip. Mr. Siminski traveled as part of a group of delegates...more

Federal Circuit: Prior Disclosure Is Not Necessarily Prior Art - Dynamic Drinkware v. National Graphics

The U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB or Board), finding that an IPR petitioner failed to meet its burden of proving that a cited prior art U.S. patent reference...more

Dynamic Drinkware, LLC v. National Graphics, Inc. (Fed. Cir. 2015)

It is well accepted that in order to establish that a patent is entitled to claim priority to a previously filed provisional application, it must be shown that the claims of the patent have written description support in the...more

Progressive Obtains No Insurance at Federal Circuit - Progressive Casualty Insurance Co. v. Liberty Mutual Insurance Co.

In a non-precedential decision, the U.S. Court of Appeals for the Federal Circuit affirmed several formal written decisions of the Patent Trial and Appeal Board (PTAB or Board) invalidating the appellant’s patents, while also...more

Claimed Formulation Not Obvious Despite Recitations Falling Within Prior Art Ranges - Allergan, Inc. v. Sandoz Inc.

Addressing obviousness issues, the U.S. Court of Appeals for the Federal Circuit affirmed a lower court’s finding that patents were valid and infringed, despite undeniably including recitations falling within a prior art...more

The Value Of Prophetic Examples

In Allergan, Inc. v. Sandoz, Inc., the Federal Circuit affirmed the district court decision that upheld the validity of the Allergan patents relating to Lumigan® 0.01% glaucoma eye drops against obviousness, written...more

Lumigan Patents Upheld by Unexpected Results

In Allergan, Inc. v. Sandoz, Inc., the Federal Circuit affirmed the district court decision that upheld the validity of the Allergan patents relating to Lumigan® 0.01% glaucoma eye drops. This decision shows that it is still...more

10 Onsite SEO Tips

There are so many complicated aspects to SEO we often forget about the smaller, foundational elements that can have an impact. These kinds of things are often overlooked, easy to change and (unlike a lot of other elements of...more

Design Patent Case Digest: Munchkin, Inc. and Toys “R” US, Inc. v. Luv N’ Care, LTD.

Decision Date: April 21, 2014 and April 14, 2015 - Court: Patent Trial and Appeal Board and U.S. Court of Appeals for the Federal Circuit - Patents: D617,465 - Holding: Claimed design is obvious and therefore...more

Antares Pharma, Inc. v. Medac Pharma Inc. (Fed. Cir. 2014)

When can a sufficient disclosure for patentability purposes nevertheless fail to adequately "describe" the claims of a patent? According to the Federal Circuit in a case issued this week, when the claims are added in a...more

Later Priority Date for IPR-Challenged Patent Where No Written Description in Parent

The Board denied an interesting attack from Patent Owner who suggested that Petitioner’s argument, that the patent-at-issue was not entitled to the priority date of its parent, was barred in inter partes review proceedings...more

PTAB Declines to Revisit Written Description and Prior Art Issues Considered During Prosecution in IPR

In this inter partes review proceeding, the challenged patent, filed in July 2011, purported to be a continuation of a parent application filed in September 2009. Petitioner PRISM argued the challenged claims lacked written...more

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