Written Descriptions

News & Analysis as of

PTAB Provides Guidance for Meeting Burden to Show Written Description for Substitute Claim

September 24, 2014 – In a Final Written Decision finding the patentee’s claim 1 unpatentable, the PTAB denied a motion to add a substitute claim that added hundreds of words to challenged claim 1. The PTAB held that the...more

Description of a Trademark with the USPTO

Continuing our discussion — from yesterday and the day before – about the description of a mark provided to the USPTO during the registration process, the below images from two unrelated federally-registered, non-verbal logos...more

Disclosure of a Single Embodiment Can Provide Sufficient Written Description

Tobinick v. Olmarker - The U.S. Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB), finding that the disclosure of a single embodiment falling with the scope of the claims was...more

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

Decision Date: April 21, 2014 - Court: Patent Trial and Appeal Board - Patents: D617,465 - Holding: Claimed design is obvious and therefore UNPATENTABLE - Opinion: Petitioners Munchkin, Inc. and Toys...more

When Is a Claimed Drug Formulation Enabled and Adequately Described?

Alcon Research Ltd. v. Barr Labs., Inc. - Addressing the requirements for enablement and written description, the U.S. Court of Appeals for the Federal Circuit reversed a district court’s ruling of patent invalidity,...more

If Written Description Matches Claim Scope, No § 112 Problem - GlaxoSmithKline LLC v. Banner Pharmacaps, Inc.

The U.S. Court of Appeals for the Federal Circuit affirmed a district court rejection of a written description challenge to patentability, concluding that under either parties’ construction of a disputed claim term the...more

Written description for functional limitations in view of Alcon Research Ltd. v. Barr Labs

Alcon owns US 5,631,287 (‘287), of which Claim 1 recites “[a] method of enhancing the chemical stability of an aqueous composition comprising a therapeutically-effective amount of a prostaglandin, wherein the method comprises...more

GENERICally Speaking - Vol. 4, No. 1

The Hatch-Waxman Litigation and Life Sciences practice groups at Robins, Kaplan, Miller & Ciresi L.L.P. are pleased to offer the latest edition of their quarterly publication regarding ANDA patent litigation issues and the...more

Invalidating Means Plus Function Claim Requires Expert Testimony - Elcommerce.com, Inc. v. SAP AG, et. al

Revisiting the issue of written description support for a means plus function claim, the U.S. Court of Appeals for the Federal Circuit reversed a finding of invalidity of claims directed to supply chain monitoring, concluding...more

Federal Circuit Finds Easy Solution to Avodart Solvate Written Description Question

Are claims that recite a “solvate” of a chemical compound invalid for lack of written description if the patent does not describe any specific solvates? In GlaxoSmithKline LLC v. Banner Pharmacaps, Inc., the Federal Circuit...more

Federal Circuit Upholds Lyrica Patents

In a non-precedential decision issued February 6, 2014, the Federal Circuit affirmed a district court decision that upheld the four Orange Book listed patents for Pfizer’s Lyrica® product. According to the court’s rules, the...more

Federal Circuit Finds No Written Description Support For Novozymes Amylase Patent

In Novozymes A/S v. DuPont Nutrition Biosciences APS, the Federal Circuit determined that the Novozymes amylase patent at issue did not satisfy the written description requirement of 35 USC § 112, because the disclosure did...more

Business Practice Pointer: Avoiding Verbal Agreements

Many of the business disputes our clients face are the result of a misunderstanding or miscommunication concerning the parties’ respective obligations under a given contract. While many startups or entrepreneurs may not...more

Federal Circuit Upholds Fentora Patents, But Affirms Non-Infringement

In Cephalon, Inc. v. Watson Pharmaceuticals, Inc., the Federal Circuit reversed the district court’s finding that two Orange Book-listed patents for Cephalon’s FENTORA® product were invalid, but affirmed the district court’s...more

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